T 2242/17 - Dependent claim 12 in particular

Key points

• The Board does not admit an auxiliary request filed during oral proceedings in this opposition appeal.
• “The Board sees no reason, for example a change in the case, why such a request was not filed in reaction to the communication under Article 15(1) RPBA shortly after its receipt  [five months before the oral proceedings], which would have allowed the respondent [opponent] and the board to prepare for this new request. It also cannot be argued that such a request was to be expected, since the appellant [patentee] did not put the related arguments forward until the oral proceedings. In addition, the patent as granted contains several dependent claims and there was no indication that there was an intention to limit the claims on file using the features of claim 12 as granted in particular.”
• Claim 12 related to the particle size
• “This request would require a new discussion regarding the issue of particle size vs particle size distribution [], which neither the board nor the respondent could really have expected. In view of the very late submission and the unresolved questions that would have had to be discussed for the first time, the board decided not to admit the request into the proceedings (Article 13 (1),(3) RPBA 2007).”
• Hence, this decision appears to suggest that the fact that granted claim 12 specified a particle size feature, does not mean that the opponent should have expected a discussion about that feature at the oral proceedings. At least, the Board's decision to not admit the requests appears to be based not solely on the feature taken from the description. 

EPO T 2242/17 - link

Fifth auxiliary request

3. Article 13(1),(3) RPBA

This request was filed during oral proceedings before the board after the previous requests had been discussed and the board had given its opinion on said requests with respect to novelty and inventive step. It was thus filed at the latest possible moment.

In the communication under Article 15(1) RPBA, which was issued approximately five months before the oral proceedings, the board had already given its preliminary opinion on novelty and inventive step, thereby granting the appellant's request to also deal with said grounds of opposition. At that point in time, the appellant was aware that the requests then on file were most likely to be held not allowable.

The appellant based its main argument with respect to the problem to be solved on the weight percentage of the calcium hydroxide for the first time during oral proceedings. Only after it was informed that said arguments were not convincing for the board did it file the fifth auxiliary request.

This request is a combination of claims 1 and 12 as granted in combination with a feature ("lowering the temperature") originating from the description. The Board sees no reason, for example a change in the case, why such a request was not filed in reaction to the communication under Article 15(1) RPBA shortly after its receipt, which would have allowed the respondent and the board to prepare for this new request. It also cannot be argued that such a request was to be expected, since the appellant did not put the related arguments forward until the oral proceedings. In addition, the patent as granted contains several dependent claims and there was no indication that there was an intention to limit the claims on file using the features of claim 12 as granted in particular.

This request would require a new discussion regarding the issue of particle size vs particle size distribution (see point 1.5 above), which neither the board nor the respondent could really have expected.

In view of the very late submission and the unresolved questions that would have had to be discussed for the first time, the board decided not to admit the request into the proceedings (Article 13 (1),(3) RPBA 2007).

Order

For these reasons it is decided that:

The appeal is dismissed.