T 2964/18 - An illustrative example

Key points

•  In this post, I will walk through the decision to show how admissibility issues affect the outcome. The Board decides on 6 admissibility issues. 
• For the main request, the Board first decides on claim interpretation.
• The OD decided to maintain the patent in amended form. The opponent appeals. The Board then finds claim 1 to be not novel over D17 (claims as maintained by OD).
• AR-1 filed with the appeal reply brief of respondent/patentee is not admitted. This request was filed as AR-3 before the OD; the OD did not arrive at that request.
• "The board notes that the mere fact that auxiliary request 1 was formally filed during the opposition proceedings does not render it automatically part of the appeal case since its admittance had not been examined by the opposition division (T 0319/18, reasons, point 2.2)." 
• The Board decides that the request was not substantiated:  "The very general statement on page 10 of the reply to the appeal expressing that the auxiliary requests aimed to "further distance the claimed subject matter from the cited prior art in order to address allegations of lack of novelty and lack of inventive step" cannot be seen as an explanation of the technical significance of the amendment carried out in claim 1 of auxiliary request 1. Neither the board nor the appellant are put in a position to understand why the feature added to claim 1 would overcome the objections raised against claim 1 of the main request. Thus, auxiliary request 1 has not been substantiated." 
• " The fact that the appellant had not raised any objection against the (not yet filed) auxiliary requests has no bearing on this requirement. Thus, the statement on page 10 of the reply referred to above does not comply with the requirement for the respondent to present its complete case." 
• " Indeed, it is not immediately apparent which technical contribution the feature added to claim 1 of auxiliary request 1 would have brought over, inter alia, the disclosure of document D17. Requests which are not self-explanatory are considered to be submitted only on the date of their substantiation (see T 0217/10, reasons, point 5)." 
• The request was not substantiated and is not admitted.
• In AR-2, the Board finds use claim 11 to lack an inventive step. " there was no need for the board to take a decision on the admittance of this novelty objection of the appellant."  
• Requests 2A and 2B, filed after summons for oral proceedings in appeal, are not admitted.
• " The respondent argued that the amendments to the main request in auxiliary requests 2a and 2b consisted only in the deletion of claims." 
• " the deletion of both independent claims 1 and 12 of the main request did change the respondent's case to such an extent that new issues had to be discussed which the opponent could not be expected to be familiar with. It is not the task of an opponent to speculate about what amendments a patentee might make at a very late stage of the proceedings and to prepare pre-emptively for all of them (T 0248/13, reasons, point 4.5).' 
• " the board is of the view that the deletion of claims inevitably results in an amendment of the respondent's case. In fact, this deletion implies that it is requested that the patent be maintained in a form different than previously requested, with legal consequences for the patent's validity and scope. The board cannot see how this deletion could not be regarded as an amendment of the requests filed at the outset of the appeal proceedings. In the board's view, the respondent's case is amended if the claims are changed; it is not necessary that in consequence of these changes also the subject of the proceedings is changed. If the amendment of the claims does not lead to a different discussion on the merits, this will be a circumstance which the competent board may consider when, inter alia, exercising the discretion under Article 13(2) RPBA 2020.' 
• Turning to AR-3, the patentee objects to the admissibility of the attack based on D7. However, the attack was included on page 36 of the Statement of grounds and is hence admissible.
• AR-3 is found to lack an inventive step.
• AR-4 is admitted. No substantiation was required for the claim amendments involving deleting claims.
• The appellant had raised inventive step objections to the corresponding claims in the SoG, based on newly filed documents D25 and A027. However, these documents are not admitted.
• " for the reasons stated above, D25 and A027, and any objections based on them, have not been admitted into the proceedings. It follows that all objections based on these documents, inter alia, the above-mentioned inventive-step objections against claim 11 of auxiliary request 4, must remain unconsidered."
• The new inventive step objection, raised during the oral proceedings, is not admitted.
• " the board holds that in the current case, the number of auxiliary requests (17) filed with the reply to the appeal is not excessive, especially in view of the numerous inventive-step objections raised by the appellant in the statement of grounds of appeal. In fact, all D25, A027, D2, D7, D11, D12 and D19 had been indicated by the appellant as documents possibly representing the closest prior art for the claimed subject-matter. [] As a consequence, the board concludes that no exceptional circumstances exist which would justify raising the above-mentioned inventive-step objections only at the oral proceedings. " 
• AR-4 is found to be sufficiently disclosed. " None of the appellant's objections against the claims of auxiliary request 4 is admissible and convincing."
• The case is remitted with an order to maintain in amended form based on AR-4.

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/t182964eu1.html