T 2117/18 - Attaching the Notice of opposition in appeal

Key points

•  The Board does not admit an inventive step attack of the opponent as appellant.
• The attack was included in the Notice of opposition and was very briefly indicated in one sentence in the Statement of grounds.
• " The appellant submitted that it had made a reference in the statement of grounds of appeal to the contents of its notice of opposition. It had even attached the notice of opposition to the statement of grounds of appeal, thereby allegedly incorporating it.
• "  As a rule, in appeal proceedings, general references to submissions made in the proceedings before the departments of first instance are not taken into account due to a lack of substantiation (T 972/14, Reasons 7; see also T 1744/14, Reasons 4.4, T 1727/15, Reasons 2.9 and T 460/19, Reasons 2). Otherwise, it would be left to the Board and the other party to determine which parts of such submissions are relevant to which parts of the decision under appeal or the arguments of the other party.
• " Attaching the notice of opposition to the statement of grounds of appeal is to be considered equivalent to such a general reference to previous submissions. It does not make a mere general reference in the statement of grounds of appeal to previous submissions more specific either. Evidently, the notice of opposition cannot take account of the decision of the opposition division, which was only taken afterwards." 
• " In its submission dated 13 April 2022, which was only filed after notification of the summons and the Board's preliminary opinion under Article 15(1) RPBA 2020, the appellant provided detailed reasoning for the inventive-step objection starting from document E5/E15. ' 
• " an objection becomes effective - and is thus to be considered to have been validly submitted for the first time - only when sufficient substantiation is provided (for unsubstantiated requests, see T 1732/10, Reasons 1.5 and T 2393/18, Reasons 4.2). In the present case, this was done with the submission dated 13 April 2022. " 
• " The late filing of the objection starting from document E5/E15 was not justified by the appellant with cogent reasons, and the Board is not aware of any exceptional circumstances in this regard either." 
• 
  

EPO T 2117/18

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t182117eu1.html

2.2 Starting from E5/E15 - admittance of the objection

2.2.1 The statement of grounds of appeal was filed before 1 January 2020 and is thus subject to Article 12(4) RPBA 2007 (Article 25(2) RPBA 2020). As Article 12(4) RPBA 2007 explicitly refers to Article 12(2) RPBA 2007, the latter is applicable by way of reference as well (see T 460/19, Reasons 2).

2.2.2 According to Article 12(2) RPBA 2007 (which corresponds substantially to Article 12(3) RPBA 2020), the statement of grounds of appeal must contain a party's complete case. A party must set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on.

2.2.3 In its statement of grounds of appeal (page 15, penultimate paragraph), the appellant alluded to an inventive-step objection starting from E5/E15 ("D5/D15") only in a single sentence at the end of the reasoning for another objection, namely the objection starting from E1 ("D1"):

"Im Ergebnis sind damit für einen Fachmann zumindest wegen der Kombination der Dokumente D14 und D1 die Merkmale der Anspruche 1 und 6 des Streitpatents nahegelegt, so dass diese Anspruche nicht auf eine erfinderische Tatigkeit beruhen. In gleicher Weise gilt diese Schlussfolgerung auch dann, wenn z.B. von dem Dokument D5/D15 als nächstliegender Stand der Technik ausgegangen wird und der Fachmann dies mit dem Dokument D14 kombinieren würde."

The last sentence of this passage can be translated as follows:

Similarly, this conclusion (i.e. the lack of inventive step) also applies if, for example, document D5/D15 is taken as the closest prior art and the skilled person would combine it with document D14.

2.2.4 This single sentence in the statement of grounds of appeal does not sufficiently substantiate the inventive-step objection starting from E5/E15. In particular, contrary to what is required under Article 12(2) RPBA 2007, the appellant did not thereby set out the reasons why the decision under appeal should be reversed or amended, i.e. the reasons why the finding and the reasoning in the decision under appeal are supposedly incorrect.

2.2.5 The appellant argued that it was required under Article 12(2) RPBA 2007 and Article 12(3) RPBA 2020 to set out "concisely" the reasons why the decision under appeal should be reversed, amended or upheld. The requirement to be concise, however, only necessitates the removal of all that is superfluous. It does not exempt a party from the obligation to specify expressly all objections relied on, taking account of the reasoning in the decision under appeal.

2.2.6 In its statement of grounds of appeal, the appellant referred to the reasoning for the objection starting from E1, which was supposedly similar. The reasoning for the objection starting from E1 is, however, not a suitable substitute for the required reasoning for the objection starting from E5/E15. This is particularly evident in view of the Opposition Division's identification of an additional distinguishing feature in relation to E5/E15, namely a plurality of nozzles arranged in a plurality of lines (see impugned decision, II.4.3.1.1).

2.2.7 The appellant argued in the oral proceedings before the Board that it would be self-explanatory why the Opposition Division had erred when stating that a plurality of nozzles arranged in a plurality of lines was not disclosed in E5/E15. The appellant alleged that such nozzles were always provided in cooling devices, due to the size and width of the strips. This is not persuasive for the following reasons.

2.2.8 When exercising its discretion under Article 12(4) RPBA 2007, a Board may exceptionally consider an amended claim request in the statement of grounds of appeal or the reply thereto to be self-explanatory for the purposes of sufficient substantiation under Article 12(2) RPBA 2007 (see T 568/14, Reasons 8.4). This can be the case if the reasons why the decision under appeal should be reversed or amended follow - indirectly, but still unambiguously - from the claim request itself and the context in which it is made. It may, for example, be self-explanatory why an amended claim request which consists exclusively in the addition of the features which the Opposition Division considered to be missing under Article 123(2) EPC overcomes that particular objection. In such a situation, the amended claim request may render (part of) the reasoning in the decision under appeal irrelevant.

2.2.9 The above case law on self-explanatory claim requests is, however, not applicable to objections. Contrary to an amended claim request, the unsubstantiated reference to an objection which was not deemed convincing does usually not have the potential to render part of the reasoning in the decision under appeal irrelevant. The reasons why the decision under appeal should be reversed or amended do not follow indirectly from the unsubstantiated reference to a certain objection.

2.2.10 Also in the present case, it is not self-explanatory why the Opposition Division's finding and reasoning with regard to the objection starting from document E5/E15 were supposedly incorrect, including with regard to the additional distinguishing feature concerning the plurality of nozzles arranged in a plurality of lines. Leaving aside whether the appellant's allegation that such nozzles are always provided due to the size and width of a cooling device's strips is technically convincing, such a line of argument can be understood in an unambiguous manner only if it is made explicitly.

2.2.11 In order to substantiate an objection in the appeal proceedings which the Opposition Division did not consider convincing, it is thus necessary to provide specific reasons why the finding and the reasoning in the decision under appeal are supposedly incorrect with regard to this objection. Arguments which have already been put forward in the opposition proceedings may be included in these reasons, but must be put in the context of the decision under appeal.

2.2.12 The appellant submitted that it had made a reference in the statement of grounds of appeal to the contents of its notice of opposition. It had even attached the notice of opposition to the statement of grounds of appeal, thereby allegedly incorporating it.

2.2.13 As a rule, in appeal proceedings, general references to submissions made in the proceedings before the departments of first instance are not taken into account due to a lack of substantiation (T 972/14, Reasons 7; see also T 1744/14, Reasons 4.4, T 1727/15, Reasons 2.9 and T 460/19, Reasons 2). Otherwise, it would be left to the Board and the other party to determine which parts of such submissions are relevant to which parts of the decision under appeal or the arguments of the other party (T 1151/11, Reasons 3).

2.2.14 Attaching the notice of opposition to the statement of grounds of appeal is to be considered equivalent to such a general reference to previous submissions. It does not make a mere general reference in the statement of grounds of appeal to previous submissions more specific either. Evidently, the notice of opposition cannot take account of the decision of the opposition division, which was only taken afterwards.

2.2.15 In conclusion, the Board considers the inventive-step objection starting from document E5/E15 as contained in the statement of grounds of appeal to not be sufficiently substantiated under Article 12(2) and (4) RPBA 2007.

2.2.16 In its submission dated 13 April 2022, which was only filed after notification of the summons and the Board's preliminary opinion under Article 15(1) RPBA 2020, the appellant provided detailed reasoning for the inventive-step objection starting from document E5/E15. Contrary to its previous statement in the statement of grounds of appeal, it also provided reasons why the objection starting from document E5/E15 was technically different from the objection starting from document E1 (see submission dated 13 April 2022, point 3.4). The appellant submitted that it had merely refined the objection starting from document E5/E15 in its submission dated 13 April 2022.

2.2.17 This is not persuasive. As stated above, the objection starting from document E5/E15 was not sufficiently substantiated in the statement of grounds of appeal. Providing the required substantiation for a previously unsubstantiated objection does not qualify as a mere refinement. Rather, an objection becomes effective - and is thus to be considered to have been validly submitted for the first time - only when sufficient substantiation is provided (for unsubstantiated requests, see T 1732/10, Reasons 1.5 and T 2393/18, Reasons 4.2). In the present case, this was done with the submission dated 13 April 2022. Hence, the objection starting from document E5/E15 as contained in the submission dated 13 April 2022 was submitted after notification of the summons to oral proceedings, constitutes an amendment to the appellant's appeal case, and is subject to Article 13(2) RPBA 2020.

2.2.18 Under Article 13(2) RPBA 2020, any amendment to a party's appeal case made after notification of a summons to oral proceedings is, in principle, not taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

2.2.19 The late filing of the objection starting from document E5/E15 was not justified by the appellant with cogent reasons, and the Board is not aware of any exceptional circumstances in this regard either.

2.2.20 When applying Article 13(2) RPBA 2020, a Board may also rely on the criteria referred to in Article 13(1) RPBA 2020 (T 172/17, Reasons 5.4, T 1846/17, Reasons 1.5). These criteria include the suitability of the amendment to resolve the issues raised. In the present case this translates to whether the objection starting from document E5/E15 will prima facie be successful. This is not the case for the same reasons as given in point 2.1 above for the objection starting from document E1.

2.2.21 Therefore, the Board did not take the objection starting from document E5/E15 filed with the submission dated 13 April 2022 into account under Article 13(2) RPBA 2020.

2.3 In conclusion, the Board sees no reason to deviate from the finding in point II.4.3.2 of the impugned decision that the subject-matter of claims 1 and 6 involves an inventive step.

3. Auxiliary requests 1 to 8

In view of the above conclusion on the main request, there is no need to discuss auxiliary requests 1 to 8.

Order

For these reasons it is decided that:

The appeal is dismissed.