T 1558/23 - Deleting an alternative in a claim after the preliminary opinion

Key points

• The OD decided to maintain the patent in amended form based on the main request (which were not the same claims as the claims as granted).
• "In the impugned decision, the opposition division's conclusions included that claim 1 of the main request fulfilled the requirements of Article 123(2) EPC."
• Logically, the OD must also have found the claims to be novel and inventive. 
• "the board concludes that claim 1 of the main request does not meet the requirements of Article 123(2) EPC, meaning that the main request is not allowable."
• "The respondent [proprietor submitted the sets of claims of auxiliary requests 9 to 17 after notification of the communication under Article 15(1) RPBA and prior to oral proceedings before the board.

  Claim 1 of these auxiliary requests differs from claim 1 of the main request and auxiliary requests 1 to 8, respectively, in that the alternative of [a compound] that led to the above conclusion of added matter has been deleted."

• " Since auxiliary requests 9 to 17 were submitted after the issuance of the board's communication pursuant to Article 15(1) RPBA, their admittance is governed by the provisions of Article 13(2) RPBA."

• "It thus follows that, in the case in hand, deleting formula MxM**(Vi)yQ representing one alternative of the vinyl terminated polyorganosiloxane i) in claim 1 of any of auxiliary requests 9 to 17 represents an amendment to the respondent's appeal case under Article 13(2) RPBA."

• "The respondent submitted that auxiliary requests 9 to 17 had been filed as a direct response to the board's communication pursuant to Article 15(1) RPBA, by which the board had objected to claim 1 of the main request and auxiliary requests 1 to 8 under Article 123(2) EPC. This objection had come as a surprise to the respondent since the opposition division, in its decision, had not considered this objection convincing. The board's objection therefore represented an exceptional circumstance justifying the admittance of auxiliary requests 9 to 17 into the proceedings. The board disagrees. In its communication, the board had simply reiterated what the appellant had submitted in its statement of grounds of appeal. "

• "As regards the respondent's argument that the amendment in claim 1 clearly overcame the board's objection without raising any new issues, the board notes that this, if anything, may satisfy the requirements of Article 13(1) RPBA. However, the requirements of Article 13(2) RPBA are not the same as those of Article 13(1) RPBA. On the contrary, as set out in the Explanatory Remarks to the Rules of Procedure, the Rules of Procedure implement a "convergent approach" represented by Articles 12(4), 13(1) and 13(2) RPBA, with Article 13(2) introducing an additional and independent requirement for admittance. Therefore, compliance with Article 13(1) or Article 12(4) does not imply compliance with Article 13(2) RPBA."

• Since the OD had found the broader claim, with both alternatives to be novel and inventive, the amendment would not have caused a shift of the debate on patentability, it seems to me.

• On the other hand, it appears that the attack was clearly in the SoG (and the same as raised before the OD) and the possible solution - deleting the alternative - must have been clear to the proprietor. 
  

   

   

• The patent is revoked.

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t231558eu1