T 1436/18 - No circumventing of Art. 12(4) RPBA 2007

Key points

• The Board, on the admissibility of auxiliary requests 2 to 5: 

  2.4.1 AR2 to AR5 are not literally, but in their gist (as explained below) identical to auxiliary request 5 (AR2), auxiliary request 7 (AR3, AR4) and auxiliary request 8 (AR5) which were withdrawn during oral proceedings [before the OD]. "

• "It is therefore not apparent why the auxiliary requests 5, 7 and 8 were not maintained pending during the opposition proceedings, or, alternatively, why AR2 to AR5 were not filed in the first instance proceedings, in order to be decided by the opposition division. In fact, it appears that the appellant 1 (proprietor), by filing AR2 to AR5 in appeal, seeks to circumvent the withdrawal of the similar auxiliary requests 5, 7 and 8 filed in opposition proceedings."

• " The board concludes that these minor amendments in AR2 to AR5 on file compared to the withdrawn requests are only of formal nature and do not justify the resubmission of subject-matter that could have been presented in the first instance and was not."

•  The requests are not admitted under Art. 12(4) RPBA 2007

• The Board, however, admitted AR-6 filed with the appeal and found those claims to be allowable.

EPO 

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/t181436eu1.html

2.4 AR2 to AR5

2.4.1 AR2 to AR5 are not literally, but in their gist (as explained below) identical to auxiliary request 5 (AR2), auxiliary request 7 (AR3, AR4) and auxiliary request 8 (AR5) which were withdrawn during oral proceedings (minutes, point 4). It is therefore not apparent why the auxiliary requests 5, 7 and 8 were not maintained pending during the opposition proceedings, or, alternatively, why AR2 to AR5 were not filed in the first instance proceedings, in order to be decided by the opposition division. In fact, it appears that the appellant 1 (proprietor), by filing AR2 to AR5 in appeal, seeks to circumvent the withdrawal of the similar auxiliary requests 5, 7 and 8 filed in opposition proceedings.

2.4.2 In detail, AR2 and AR3 on file substantially correspond to auxiliary requests 5 and 7 of the first instance. Compared to the version of the first instance, the wording of feature M1.4* is amended as follows:

a) The cartridge holder and the housing are not "interconnectable" and "fixable", but "interconnected" and "fixed".

b) It is specified that the insert portion is located "on a proximal end" of the cartridge holder (14) and that the corresponding receptacle is "located at a distal end section" of the housing.

c) The insert portion is "received" and not "axially inserted".

Additionally, the feature introduced with AR2 on file is limited to:

d) the "bearing [deleted: or an abutment shoulder]".

2.4.3 However none of these amendments results in a different technical content compared to the version of the claim submitted in the first instance.

The amendments a and b only constitute a formal clarification without any change in the subject-matter.

"Received" - in the context of in insert portion, a receptacle and an axial abutment as defined in the claim - is identical to the wording "axial inserted".

Finally, the term "abutment shoulder" is understood as a specific example of the more generic term "bearing". Thus deleting the wording "or an abutment shoulder" does not change the claimed subject-matter.

2.4.4 AR4 (as AR3) also substantially corresponds to auxiliary request 7 of the first instance. Amendment a to d are the same as for AR3. Additionally, the feature introduced with AR2 is adapted as follows:

e) "a proximally directed inserting movement of the cartridge holder relative to the housing".

However, in the context of the claim as a whole, this amendment of the previous wording of auxiliary request 7 "a mutually inserting movement of the housing and the cartridge holder" only constitutes a re-formulation of the same technical information.

2.4.5 AR5 is similar to auxiliary request 8 of the first instance. Amendments a to e are the same as discussed before. Furthermore the passage in the characterising portion of auxiliary request 8 "and to reach a clearance-free effective abutment of the piston and the piston rod upon the final assembly configuration of the drug delivery device" is deleted in claim 1 of AR5. This passage however only repeats the meaning of "eliminating axial clearance between piston and piston rod" in the drug delivery device. By deleting the mentioned passage the claim becomes more concise without changing the content of the claimed subject-matter.

2.4.6 The board concludes that these minor amendments in AR2 to AR5 on file compared to the withdrawn requests are only of formal nature and do not justify the resubmission of subject-matter that could have been presented in the first instance and was not.

2.5 Thus AR1 to AR5 were not admitted into the appeal proceedings.