T 0314/17 - Ex officio examination in opposition appeal

 Key points

• This is an appeal of the opponent against the OD's decision to reject the opposition.
• The Board finds claim 1 of the main request to lack inventive step; the same applies to AR-1 and AR-2.
• “The Board would first note that although the auxiliary requests were filed with the reply to the appeal, the appellant [opponent] made no specific objections to them, also not in reply to the Board's preliminary opinion, where this fact was brought to the parties' attention. The appellant [opponent]  had however presented arguments with respect to the subject-matter of the dependent claims present in the main request, upon which claim 1 of auxiliary requests 3, 4 and 8 are based.  The Board, having considered the auxiliary requests ex officio, stated in item 5.4 of its preliminary opinion that E6 seemed to disclose the features regarding the two curvatures added to claim 1 of auxiliary requests 3 and 4, effectively depriving the claim of an inventive step. his corresponds to the attacks regarding dependent claims 3 and 4 made by the appellant [in the Statement of grounds]”.
• The Board gives further detailed reasons for lack of inventive step of the requests and confirms the preliminary opinion.
• The decision was issued without oral proceedings, the patentee withdrawing the request for oral proceedings and the Board revoking the patent.

EPO T 0314/17

https://www.epo.org/law-practice/case-law-appeals/recent/t170314eu1.html

2. Auxiliary requests 3 and 4 - Article 56 EPC

2.1 The Board would first note that although the auxiliary requests were filed with the reply to the appeal, the appellant made no specific objections to them, also not in reply to the Board's preliminary opinion, where this fact was brought to the parties' attention. The appellant had however presented arguments with respect to the subject-matter of the dependent claims present in the main request, upon which claim 1 of auxiliary requests 3, 4 and 8 are based.

2.2 The Board, having considered the auxiliary requests ex officio, stated in item 5.4 of its preliminary opinion that E6 seemed to disclose the features regarding the two curvatures added to claim 1 of auxiliary requests 3 and 4, effectively depriving the claim of an inventive step. This corresponds to the attacks regarding dependent claims 3 and 4 made by the appellant on page 7 of its grounds of appeal, where it objected to these claims on the basis of a lack of inventive step.

2.3 The respondent did not present any counter-arguments to the preliminary opinion of the Board and specifically asked for a decision of the merits of the case to be issued in writing without holding oral proceedings. The Board thus sees no reason to alter that preliminary conclusion, which is herewith confirmed on the more detailed reasoning following hereafter. Since the Board already indicated that the subject-matter of claim 1 of the main request lacked inventive step, specifically mentioning E6 among other prior art with a ratio A/B smaller than 1, and given that the Board noted that E6 was considered to indeed disclose the additional features of auxiliary requests 3 and 4, this conclusion could not come as a surprise but should rather be expected.

[...]

2.10 For the above reasons, the subject-matter of claim 1 of auxiliary requests 3 and 4 is obvious to a skilled person when starting from E1 and considering the teaching of E6. Auxiliary requests 3 and 4 are therefore not allowable due to lack of inventive step in their claimed subject-matter.

[...]

3.6 The subject-matter of claim 1 of auxiliary requests 5, 6, 7 and 8 therefore does not to fulfil the requirement of Article 123(2) EPC at least for the reasons given above. Auxiliary requests 5, 6, 7 and 8 are therefore not allowable.

3.7 In the absence of any request which meets the requirements of the EPC, the patent has to be revoked (Article 101(3)(b) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.