T 1679/10 - What is searched

Key points:

• An application was refused by the ED under Rule 137(5) because the claim amendments would have switched the subject-matter to a second, previously not claimed embodiment. The Board agrees that the newly claimed embodiment was not searched. However, the Board notes that Rule 137(5) also requires that the non-searched subject-matter lacks unity of invention with the searched subject-matter. This second requirement was not met, such that it was not correct to refuse the amended claims under Rule 137 (5). 

EPO T 1679/10 - link

Summary of Facts and Submissions

[...] VIII. In the reasons for the decision under appeal, the examining division essentially argued that the amended claims contravened Rule 137(4) EPC because they referred to unsearched subject-matter and were not linked by a single general inventive concept for the following reasons:

The application as filed disclosed two groups of embodiments of a trick mode generation method and system, namely server-side generation embodiments and client-side generation embodiments.

The client-side generation embodiments were not searched because the original set of claims 1 to 10 referred only to server-side embodiments. That was clearly the case for original claims 1 to 9. As to original claim 10, it was so broad that it could have been construed as referring to both types of embodiments; however, it was interpreted by the search division in the light of the other claims as referring to server-side generation embodiments only and the examining division referred the applicant to point 2.5 of the European search opinion drafted by the search division. Any other interpretation of original claim 10 would have resulted in a non-unity objection.

In contrast, the claims according to the main request, in particular the most significant independent claim 7, referred to client-side generation embodiments disclosed in the application as originally filed. These embodiments, and thus also the subject-matter of the claims according to the main request, were not searched.

Reasons for the Decision

[...]

Main request - Rule 137(4) EPC

3. Rule 137(4) EPC [in the applicable version entered into force on 13 December 2007] reads as follows:

"Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept."

Rule 137(4) EPC thus provides that amended claims are not admissible if the following two conditions are met:

(1) the amended claims relate to unsearched subject-matter and

(2) the amended claims lack unity of invention with the originally claimed invention or group of inventions.

4. First condition of Rule 137(4) EPC - amended claims relating to unsearched subject-matter

4.1 The extent of the search for prior art to be conducted when drawing up the European search report is defined in Article 92(1) EPC 1973 (which was applicable when the search report was drawn up for the present application on 26 April 2007, since the revised EPC 2000 had not yet entered into force). Article 92(1) EPC 1973 states that the European search report shall be drawn up "on the basis of the claims, with due regard to the description and any drawings".

The extent to which the description and drawings are to be taken into consideration for the search has been developed further in the jurisprudence of the boards of appeal (see, for instance, decision T 708/00, OJ EPO 2004, 160, point 4, second paragraph, of the Reasons). The Guidelines for Examination in the EPO (hereinafter "Guidelines") at B-III, 3.5 (in the June 2005 version in force when the European search report was drawn up, in the April 2009 version in force at the date of the decision under appeal and in the current version of November 2015) correctly summarise this jurisprudence as follows:

"In principle, and insofar as possible and reasonable, the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended [...]."

The European search report should thus have been drawn up based on the above principles. The board concurs with the finding in decision T 789/07 that features from the description or drawings which should have been searched must be deemed searched for the purposes of Rule 137(4) EPC even if, in the specific case, the search did not actually cover these features (see point 3 of the Catchword and points 9 and 12 of the Reasons).

4.2 In the present appeal case, all the reasons given by the examining division as to why the amended claims related to unsearched subject-matter were based on the finding that all the claims of the application as filed related to server-side generation embodiments and none of them related to client-side generation embodiments.

The appellant, however, disputed the validity of this finding. It argued that original claim 10 should have been construed as relating to client-side generation embodiments and should have been searched accordingly.

The validity of this argument will now be examined.

Claim 10 of the application as filed reads as follows:
"system for processing video data, said system comprising:
storage for receiving a normal video stream; and
a first circuit for generating a trick mode stream from the normal video stream."

The board first observes that original claim 10 is very broad in scope. Nor does it have any dependent claim which could be used for further determining the subject-matter to which it relates.

The board also notes that original claim 10 is silent as to where said storage and said first circuit are physically located. They could be both in a server or both in a user terminal. Either of these two options makes technical sense and corresponds to at least one embodiment disclosed in the application as filed. On the one hand, it could be argued that the use of the word "storage" in original claim 10, which in the description (see paragraphs [0048], [0051] and [0062]) was only used in the context of client-side generation embodiments, might be regarded as an indication that original claim 10 was intended to relate to these embodiments. However, on the other hand, the word "storage" does not exclude server-side generation embodiments because it was implicit to the skilled person that the normal video stream received by a server had to be stored somewhere in the server, at least in a buffer memory.

Hence, the wording of claim 10 of the application as filed, even when considered in the light of the description and drawings, did not give a clear indication of which embodiments this claim was meant to cover.

Moreover, since all the other original claims relate exclusively to the server-side generation embodiments, the overall impression given by the set of original claims is that it only relates to the server-side generation embodiments.

In the light of the above observations, the board considers that the search division could not reasonably expect that original claim 10 would be amended during examination proceedings by adding features from the description and drawings relating to client-side generation embodiments.

For the sake of completeness, the board adds that it would go too far to construe B-III, 3.5 of the Guidelines as meaning that it would be sufficient to have one broad independent claim in the application as filed, with no dependent claims, in order to be entitled to a search extending to all the features of a large number of embodiments covered by the wording of that claim. Hence, in the present case, even assuming arguendo that the search for original claim 10 should have considered client-side generation embodiments, it would still be doubtful that the search should have been extended to the specific feature from the description, now in claim 7 of the main request, that the trick mode stream is generated by encoding the decoded normal video stream using a different encoding scheme easier to decode than the encoding scheme used for encoding the normal video stream.

4.3 For the above reasons, the board concurs with the examining division's conclusion that the subject-matter of claim 7 (and of the corresponding claim 1) of the main request must be deemed unsearched for the purposes of Rule 137(4) EPC.

In other words, the first condition of Rule 137(4) EPC (amended claims relating to unsearched subject-matter) is met.

5. Second condition of Rule 137(4) EPC - amended claims lacking unity of invention with the originally claimed invention or group of inventions

5.1 The examining division found in its decision that, since all the features of original claims 7 and 8 were known from D1, the special technical feature (STF) of the original set of claims was the feature in original dependent claim 9 that the trick mode stream comprised pictures having a lower resolution than pictures from the normal video stream. This STF had the technical effect of reducing the bandwidth requirements for the transmission of the trick mode stream (see decision under appeal, sections B.1, B.4.2 and B.4.3).

In contrast, the STF of the claims of the main request was the use of a different encoding scheme for the trick mode stream which was easier to decode than the encoding scheme used for encoding the normal play stream (see claim 7 of the main request). This STF had the technical effect of reducing the processing requirements for the decoding of the trick mode stream (see decision under appeal, sections B.4.4 and B.4.5).

5.2 The board concurs with the examining division that the provision of a lower resolution trick mode stream results in a reduction of bandwidth requirements. However, this STF also has the technical effect of reducing the processing requirements for the decoding of the trick mode stream (see paragraph [0034] of the application). Hence, the STF of the original set of claims and the STF of the claims of the present main request both solve the same technical problem of reducing the processing requirements for the decoding of the trick mode stream. They thus relate to a single general inventive concept.

5.3 The examining division took the view that the technical effect of reducing processing requirements was not achieved.

It stated: "whilst the potential may be there, neither the claims, nor the description hold features to demonstrate or implement an actual reduction of processor load (other considerations enter in the decoding of low-resolution streams, e.g. interpolation, deblocking...)" (see decision under appeal, B.4.3.2).

The board does not agree. In general, a lower resolution video stream is easier to decode, i.e. requires less processing resources, than a "normal" resolution video stream. Of course, processing requirements are also influenced by other parameters, such as the video standard. The skilled person would, however, be aware that the decoding effort is in general related to the resolution of the video stream. This technical effect is also clearly indicated in the application as filed (see paragraph [0034]). It is noted that, as presented throughout the entire description, the focus of the invention is on easier decodability, with a limited number of different measures being disclosed to achieve this effect. Such measures are essentially lower resolution of the trick mode stream, fewer data dependency restrictions and more random access points (see paragraphs [0003] to [0006], [0031], [0034], [0035] and [0050]).

The examining division also took the view that D1 disclosed on page 4, lines 5 to 10, a server-side trick mode generation system that encoded the trick mode stream into a standard MPEG stream, meaning that the processing requirements for the decoding of the trick mode stream were the same as the processing requirements for the decoding of the normal play stream. Considering that the clients used a single decoder for both the normal stream and the trick mode stream decoding, the processing requirement for the decoding had a lower limit which was set by the decoding of the normal play stream, and that lower limit was already achieved with the method and system of document D1.

The board disagrees with this finding. Firstly, the invention is not restricted to the use of a single decoder. Secondly, the trick stream will normally be processed independently of the normal video stream, which results in lower processing requirements due to its lower resolution.

5.4 For the above reasons, the board is of the view that the original set of claims and the claims of the main request relate to the same general inventive concept. In other words, there is unity of invention between these two sets of claims, even a posteriori in the light of prior-art document D1.

The same conclusion of unity of invention applies between the client-side generation embodiments and the server-side generation embodiments.

It follows from the above that the second condition of Rule 137(4) EPC (lack of unity) is not met.

6. Conclusion on Rule 137(4) EPC for the main request

The board is thus of the view that the amended claims meet the first condition (amended claims relating to unsearched subject-matter) but not the second condition (lack of unity) of Rule 137(4) EPC.

Since both conditions have to be met, the examining division wrongly concluded that the main request was "not allowable" under Rule 137(4) EPC.

Remittal

7. The subject-matter of the amended claims according to the main request, which includes (unsearched) features taken from the description, has not yet been examined by the department of first instance with respect to the substantive requirements of the EPC. Hence, the board considers it inappropriate at the present stage of the proceedings to carry out examination of the amended claims itself. As a consequence it cannot accede to the appellant's request to grant a patent on the basis of the claims of the main request.

Instead, the board, exercising its discretion under Article 111(1) EPC 1973, has decided to remit the case to the department of first instance for further prosecution. The appellant obviously has no objection, since it "suggested" such remittal on page 14 of its statement of grounds of appeal.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

T 1788/14 - Wrong composition OD

Key points:

• Two members of the OD had also participated in the examination procedure. Hence, the composition of the OD was in violation of Article 19(2) EPC. The decision is set aside, the case is remitted, and the appeal fee is reimburesed.

EPO T 1788/14 - link

Entscheidungsgründe

1. Wesentlicher Verfahrensfehler

1.1 Die Zusammensetzung der Einspruchsabteilung ist in Artikel 19 (2) EPÜ geregelt, wonach die folgenden Erfordernisse zu erfüllen sind (Hervorhebung in Fettdruck von der Kammer hinzugefügt):

"(2) Eine Einspruchsabteilung setzt sich aus drei technisch vorgebildeten Prüfern zusammen, von denen mindestens zwei nicht in dem Verfahren zur Erteilung des europäischen Patents mitgewirkt haben dürfen, gegen das sich der Einspruch richtet."

1.2 Vorliegend wurde bei Besetzung der Einspruchsabteilung gegenüber der Prüfungsabteilung lediglich ein neuer Vorsitzende bestimmt, wie aus den oben genannten Unterlagen (siehe Abschnitt II.) hervorgeht.

1.3 Damit ist das Erfordernis von Artikel 19 (2) EPÜ für die Zusammensetzung der Einspruchsabteilung für das Einspruchsverfahren gegen das europäische Patent Nr. 1 713 653 nicht erfüllt, da zwei Mitglieder der Einspruchsabteilung auch im Verfahren zur Erteilung des betreffenden europäischen Patents mitgewirkt haben.

1.4 Gemäß ständiger Rechtsprechung der Beschwerdekammern stellt die Verletzung von Artikel 19 (2) EPÜ einen wesentlichen Verfahrensfehler dar, wodurch die Entscheidung der Einspruchsabteilung aufzuheben ist (vgl. z.B. T 382/92, nicht im ABl. EPA veröffentlicht).

2. Zurückverweisung an erste Instanz (Artikel 111 (1) EPÜ)

Die Kammer hat den vorliegenden Fall in der Bearbeitung vorgezogen und hält es deshalb für geboten, die Sache zur weiteren Prüfung durch eine korrekt zu besetzende Einspruchsabteilung an die erste Instanz zurückzu­verweisen (Artikel 111 (1) EPÜ).

Da beide Parteien für den Fall einer Zurückverweisung an die Einspruchsabteilung ihre hilfsweise gestellten Anträge auf mündliche Verhandlung zurückgezogen haben, kann die Entscheidung im schriftlichen Verfahren ergehen.

3. Rückzahlung der Beschwerdegebühr (Regel 103 (1)(a) EPÜ)

Da der von der Kammer festgestellte wesentliche Verfahrensfehler (siehe Punkt 1.4) die Ursache für die Zurückverweisung an die Erstinstanz darstellt, entspricht die Rückzahlung der Beschwerdegebühr der Billigkeit gemäß Regel 103 (1)(a) EPÜ.

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Die Angelegenheit wird zur weiteren Prüfung durch eine korrekt zu besetzende Einspruchsabteilung an die erste Instanz zurückverwiesen.

3. Die Rückzahlung der Beschwerdegebühr wird angeordnet.

T 1763/12 - Apportionment of costs

Key points: 

• A highly relevant prior art document is submitted by the opponent three days before the oral proceedings and is admitted into the proceedings by the Board. The case is remitted. However, the Board makes an apportionment of costs, such that the costs for the oral proceedings of the patentee are to be born by the opponent.

EPO T 1763/12 - link

Summary of Facts and Submissions

VII. With letter of 23 November 2015, appellant-opponent 2 submitted the following document:

O6A: US 5,332,429

VIII. During the oral proceedings held on 26 November 2015, the appellant-patent proprietor withdrew its main request.

Reasons for the Decision

1.3 Conclusion

In view of the above considerations, the Board in the exercise of its discretion decides to admit document O6A into the appeal proceedings.

2. Remittal to the first instance

The appellant-patent proprietor has requested that the case be remitted to the opposition division in case document O6A was admitted.

In order to give the appellant-patent proprietor sufficient time to react to the new evidence and in order not to deprive it of the possibility of being heard by the two instances, the Board allows its request. The case is therefore remitted to the department of first instance for further prosecution (Article 111(1) EPC).

3. Apportionment of the costs

Appellant-opponent 2 did not give any reason why document O6A was submitted only at such a late stage of the proceedings and why it could not file this document earlier. The consequence was that the discussion at the oral proceedings before the Board was limited to the issue of admittance of O6A without considering any substantive matter. This would have been avoided if the document had been filed earlier.

Accordingly, the Board considers it to be equitable that the expenses incurred by the appellant-patent proprietor in connection with the oral proceedings be borne by appellant-opponent 2 (Article 104(1) EPC, Article 16(1)(c) RPBA).

Order

For these reasons it is decided that:

1. Document O6A is admitted into the proceedings.

2. The case is remitted to the department of first instance for further prosecution.

3. The costs of the appellant-patent proprietor for the oral proceedings before the Board shall be borne by appellant-opponent 2.

T 1533/13 - Arguments with requests

Key points

• In the written submissions in appeal, the patentee submitted new requests with a new parameter feature in claim 1. The Board decides to not admit these, even though the feature was also present in claim 1 of Auxiliary Request 5 submitted with the statement of grounds. The reason is that " the appellant provided no explanation at all in the statement of grounds of appeal as to why all these parameters had been introduced into the auxiliary requests and which of the opposition division's objections was thus overcome." 
• " Due to the fact that in the present case there is no explanation why the ten auxiliary requests were filed with the statement of grounds of appeal, and in particular why the various parameters had been introduced, the respondent could have only speculated about the role of these new parameters. The whole purpose of the requirement [to give an explanation] is to avoid the need for that kind of speculation." 

EPO T 1533/13 - [C] - link

Reasons for the Decision

[...]

1.6 The appellant additionally argued that the decreased ratio had already been present in claim 1 of the fifth, ninth and tenth auxiliary requests filed with the statement setting out the grounds of appeal. The respondent could therefore have been expected to address the question whether the decreased ratio was inherently present in the cited prior-art examples immediately after receiving the statement setting out the grounds of appeal. The respondent thus had enough time to carry out the relevant experiments.

1.6.1 The board does not agree. The appellant filed ten auxiliary requests with the statement of grounds of appeal, containing various parameters, namely, apart from the decreased ratio in claim 1 of auxiliary requests 5, 9 and 10, the soluble content (claim 1 of auxiliary requests 1 to 6), the absorption under pressure "AAP" (claim 1 of auxiliary request 1), the water content (claim 1 of auxiliary requests 2 to 5 and 7 to 10), and the ratio of particles with a diameter lower than 150 mym (claim 1 of auxiliary requests 6 to 10). The appellant provided no explanation at all in the statement of grounds of appeal as to why all these parameters had been introduced into the auxiliary requests and which of the opposition division's objections was thus overcome.

1.6.2 The mere filing of amended claims does not exonerate the appellant from the task of expressly specifying in the statement of grounds of appeal the relevance of the amendments for overcoming the objections on which the decision under appeal is based (T 933/09, point 7). This requirement ensures that the board and the other party are in a position to understand the reasons why the decision is alleged to be incorrect.

1.6.3 Due to the fact that in the present case there is no explanation why the ten auxiliary requests were filed with the statement of grounds of appeal, and in particular why the various parameters had been introduced, the respondent could have only speculated about the role of these new parameters. The whole purpose of the requirement referred to in point 1.6.2 above is to avoid the need for that kind of speculation.

1.6.4 In the absence of any explanation, the respondent would have had to find out the relevance of these parameters by itself, and in particular which of them had been introduced into the auxiliary requests in order to distinguish the claimed product from the cited prior-art samples. The respondent could therefore not be expected to carry out elaborate experiments in order to test whether the products of the cited prior-art examples had the claimed parameters, and thus be prepared for any potential future argument the appellant might make.

1.6.5 The difficulties created for the respondent by the late filing of the appellant's claim requests are in fact corroborated by the appellant's argument that it had only just realised that it was the decreased ratio that best reflected the claimed invention. If it took the appellant four years (just counting from the date of filing the notice of opposition) to realise this, the respondent can hardly be expected to know, without any explanation from the appellant, that this feature is decisive for distinguishing the claimed invention from the cited prior art.

1.7 The appellant furthermore argued that the decreased ratio was already present in granted dependent claim 3. Also for this reason, in its view, the respondent could have been expected to carry out the relevant experiments before the present claim requests were filed.

The board does not agree with this argument either, basically for the same reasons as given above in point 1.6. More specifically, apart from dependent claim 3, the patent as granted contains eight further dependent product claims (claims 2 and 4 to 10) that contain all sorts of parameters, namely - apart from the decreased ratio - the water content, the increased ratio of the mass medium particle size, the liquid permeation time under pressure, the absorbency against pressure at 1.9 kPa, the vortex water absorption speed, the fluidity after moisture absorption, the logarithmic standard deviation of particle size distribution, and the bulk density after saturated swelling in a physiological saline solution. Again, the respondent cannot be expected to carry out numerous elaborate experiments to find out whether the products of the cited prior-art examples meet all these parametric definitions, just in case and so as to be prepared for any claim request which might potentially be filed by the appellant in the course of the appeal proceedings.

1.8 Lastly, the appellant argued that the claim requests constituted a reaction to the board's preliminary opinion. More specifically, the introduction of the decreased ratio was a reaction to the board's observation that for novelty it was relevant whether the products of inter alia example 32 of D1 and example 7 of D11 inherently contained agglomerated particles.

However, the board does not agree. The question of whether the products of the prior-art examples contain agglomerated particles was already an issue during the opposition proceedings, where the opposition division decided that the presence of agglomerates was disclosed in example 32 of D1 and example 7 of D11 (point 2.8, item 4 and point 2.12, item 6 of the opposition division's decision). Hence, this was not a new issue raised in the board's communication. In any case, the late filing of the requests prevented the respondent from properly reacting to the change of the appellant's case (see point 1.4 above).

1.9 The board therefore decided not to admit the main request MRbis and the first and second auxiliary requests AR1bis and AR2bis into the proceedings (Article 13(1) and (3) RPBA).

1.10 In the absence of any further claim requests, the appeal is to be dismissed (Article 113(2) EPC).

T 2443/11 - Unsearched features

Key points:

• An objection under Rule 137(5) EPC was raised and maintained by the Board because features of unsearched claims were introduced into claim 1 (i.e features from claims relating to the sixth invention which had not been searched). The objection concerned a a postiori lack of unity of invention, no claims were identified as inventive in the supplementary ESR or in the appeal procedure. 
• Note that, according to Guidelines H-II 7.2, Rule 137(5) " does not apply when the applicant has not paid the search fee in respect of a non-unitary invention relating to the originally filed claims" .
• This approach contrasts with e.g. T 0755/14. 

EPO T 2443/11 - link

Reasons for the Decision

[...]

Fifth auxiliary request

10. All other objections raised with regard to the preceding requests persist for this request.

11. Rule 137(5) EPC

11.1 In an obiter dictum of the decision under appeal (see point 15), an objection under R. 137(5) EPC was raised, because the set of claims related to unsearched subject-matter which did not combine with the originally claimed invention to form a single inventive concept. Only the subject-matter of original claims 1 to 4 had been searched and could therefore be the basis for amended claims. In particular, it was argued that unsearched aspects of the sixth invention (previously filed claims 1 and 19 to 21) had been incorporated into independent claim 1 regarding the partitioning of the input molecular description data into a plurality of data blocks and routing said blocks to the affinity engines in a particular manner.

11.2 This objection has not been overcome by the present request, since amended claim 1 is directed to such unsearched subject-matter by claiming "... transmitting the molecular descriptors to the plurality of affinity engines using the plurality of data paths wherein the molecular descriptors are allocated across the plurality of data paths as a plurality of data blocks and the rate at which an individual data block is transmitted along a data path to its destination affinity engine depends on the data bandwidth associated with the data path and on the processing performance of the destination affinity engine".

Sixth and seventh auxiliary requests

12. These two requests were filed at a late stage of the oral proceedings and are therefore late-filed with regard to Article 12(2) RPBA.

12.1 According to the appellant, the intention behind the filing of these requests was to address the issue under Rule 137(5) EPC (see point 11 above).

12.2 The objection under R. 137(5) EPC was presented as obiter dictum in the decision under appeal and was dealt with in the annex to the summons for proceedings. Nevertheless, the appellant had not dealt with this issue earlier in the appeal proceedings, either in the statement setting out the grounds of appeal or in the letter of 21 September 2015.

12.3 Hence, the sixth and seventh auxiliary requests were not presented in reaction to new objections raised during oral proceedings, since all the objections were known to the appellant with the summons. This is in contrast to the requirements set out in Articles 12(2) and 13(1) RPBA.

12.4 Furthermore, both requests prima facie do not overcome the objection under Rule 137(5) EPC.

12.5 For these reasons, and in view of the advanced state of the proceedings, the board decided not to admit these two requests into the appeal proceedings by exercising its discretion according to Article 13(1) and (3) RPBA.

13. Since none of the admissible requests fulfils the requirements of the EPC, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 1691/11 - Be aware of each

Key points:

• The Board finds the invention to be insufficiently disclosed because of the use of the word "each". The patentee argued that the claim should be interpreted as "at least one". 
• The Board: " Additionally, a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and thus to interpret the claim differently (see also T 431/03, Reasons 2.2.2). Every applicant should be aware of the requirements of the EPC and, when presenting a certain text (description and claims) in proceedings before the European Patent Office, is responsible for drafting the claims clearly and concisely and thus setting the limits of the desired scope of protection." 

EPO T 1691/11 - link

Reasons for the Decision

1. Claim 1 of all requests

1.1 Claim 1 of all requests includes the features of

"at least two independent programmable motors" and

"at least one of the transferring devices being coupled to each of the programmable motors". These features are clear and unambiguous.

[ In the decision under appeal, the opposition division held that these features would need interpretation and should be understood as meaning that "every transferring device is coupled to at least one independent programmable motor".]

1.2 The clear linguistic structure of the claim does not allow any different interpretation. An interpretation of a claim is only possible for a claim whose wording lacks clarity. This is not the case here. No need for interpretation arises.

1.3 Additionally, a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and thus to interpret the claim differently (see also T 431/03, Reasons 2.2.2). Every applicant should be aware of the requirements of the EPC and, when presenting a certain text (description and claims) in proceedings before the European Patent Office, is responsible for drafting the claims clearly and concisely and thus setting the limits of the desired scope of protection. A perfectly clear wording of the claim, such as presented here as claim 1, is thus that which needs to be considered under Article 83 EPC, rather than another speculative interpretation of the claim.

1.4 Despite the wording of claim 1 being unambiguous, in the decision under appeal, the opposition division held that these features would need interpretation and should be understood as meaning that "every transferring device is coupled to at least one independent programmable motor".

T 0081/13 - Clarity trap

Key points:

• In this examination appeal, claim 1 as filed contained a parameter feature (viscosity) which was deemed to be unclear. "The appellant argued that an unclear and unmeasurable viscosity value was not essential and could be omitted for this reason from the claim. This omission should also be possible to escape the Aricle 84 EPC/Article 123(2) EPC "squeeze" which leads to an "inescapable trap".
• The Board: " In reality, if the omission of such feature reflecting essential properties of a claimed product is not possible, its replacement by an equivalent feature providing inevitably the same essential property can be considered as normally feasible. This is usually possible through the incorporation of adequate technical features able to provide inevitably said property. As a last resort, the claimed subject-matter could even have taken the form of an exemplified subject-matter. " However, in the present case, the description did not give information about the components of the composition.
• The viscosity feature was: "a viscosity of less than 30,000 mPa.s (centipoise) as determined by a Brookfield viscometer model RVTDV-II, spindle E at 5 rpm prior to addition of the propellant". This feature was unclear because the temperature and shear rate were not specified. 

EPO T 0081/13 - link

Reasons for the Decision

1. Main request - Clarity

1.1 The subject-matter of claim 1 of the main request relates to an oral care mousse specified by its viscosity, to be specific "a viscosity of less than 30,000 mPa.s (centipoise) as determined by a Brookfield viscometer model RVTDV-II, spindle E at 5 rpm prior to addition of the propellant".

This parameter is a feature contributing to the definition of the claimed dentifrice composition, to which it confers particular properties, and as such can only be seen as an essential feature. The viscosity allows in particular the formation of a mousse with the evaporating propellant.

T 1126/11 - Unity of invention

Key points:

• In this case, claim 1 was amended by adding a feature that was originally presented in a dependent claim that had not been searched. In the search report, the claims were considered to lack unity of invention and to define four inventions. The amended claim was not admitted (Rule 137(5) EPC) and the application was refused as lacking claims (Article 78(1)(c) EPC).
• However, Rule 137(5) EPC requires not only that the amendment relates to non-searched subject matter, it also requires that the amended claim lacks unity of invention with the claims pending at the time of the EPO search [note 08.10.2017: see T0386/12] as filed as searched. The Board finds that the application, in view of the description, concerns only one invention, therefore the claim should have been admitted.
• "Es mag sein, dass im Einzelfall auch abhängige Ansprü­che Erfindungen oder Gruppen von Erfindungen bilden. Hier ist dies jedoch nicht der Fall. Beansprucht wird ein Gegenstand, der mit der ursprünglich beanspruchten Erfindung durch eine einzige erfinderische Idee verbun­den ist. Letztere wird am einzigen Ausführungsb­eispiel deutlich, das eine Chipkarte in Kommunikation mit einem Endgerät zeigt. Die über­mit­telten Kommandos betref­fen hierbei eine Geldkar­ten­zahlung []. Die technische Aufgabe ist die Erhöhung der Ausführungs­geschwindigkeit des tragbaren Datenträgers, d.h. der Chipkarte []. Folglich be­inhaltet der Gegenstand der Erfindung, der als Lösung dieser Aufgabe beansprucht wird, eine einzige erfin­derische Idee."
• The applicant had paid additional search fees for the claims relating to the deemed second and third invention. These fees are refunded.
• The appeal fee was not refunded, as an incorrect finding of lack of unity of invention is not a procedural violation.

EPO T 1126/11 - link

Entscheidungsgründe

[...]

3. Nichtzulassung und fehlende Einheitlichkeit

3.1 Die Prüfungsabteilung hat von der Recherche an bis einschließlich zur Zurückweisungsentscheidung den Einwand erhoben, dass der ursprüngliche Anspruchssatz nicht einheitlich sei. Er enthalte vier Erfindungen.

3.2 Der Anmelder hat zusätzliche Recherchegebühren für die Erfindungen 2-3 bezahlt, jedoch nicht für die 4. Erfin­dung (siehe Schreiben vom 17. Januar 2008).

3.3 Der Anmelder hat während der Prüfungsphase zwei geän­derte Ansprüche 1 eingereicht, die Anspruch 1 des zur Entscheidung stehenden Haupt- und Hilfsantrags bilde­ten. Sie enthalten beide das Merkmal einer Kommu­nika­tion mit einem Endgerät, das schon im ursprünglichen Anspruch 12 vorhanden war.

3.4 Da dieser zur nicht recherchierten 4. Erfindung gehört, hat die Prüfungsabteilung beide geänderte Anspruchs­sätze nach Regel 137(5) und (3) EPÜ nicht zugelassen und die Anmeldung wegen fehlender Ansprüche nach Artikel 78(1)c) und 113(2) EPÜ zurückgewiesen.

T 0809/12 - Result to be achieved

EPO Headnote:

If an independent claim contains a feature defined by a result to be achieved which essentially corresponds to the problem underlying the application, to comply with Article 84 EPC 1973 the remaining features of the claim must comprise all essential features necessary for achieving that result.

Comment - The hadnote requires a bit of analysis. Of course, any claim must contain "all essential features necessary for achieving that result", not only claims containing a result-to-be-achieved feature - as the Board acknowledges. In fact, the Board distinguishes over T 68/85 and subsequent case law that held that it is not necessary to include all such features, if this would unduly restrict the claim. The Board notes that in T 68/85, the claimed technical result (i.e. result to be achieved recited as feature in the claim) did not in fact correspond to the problem underlying the application.

 EPO T 809/12 - [C] - link

Reasons for the Decision

[...] 2.2 Claim 1 contains, apart from structural features such as the thickness of the first and second Ni or NiCr inclusive layers, the feature "said coated article has a DeltaE* value (glass side) no greater than 2.5 after or due to heat treatment". The question to be answered by the board is whether this feature leads to non-compliance with Article 84 EPC 1973.

2.3 The application concerns low-E coated articles and methods of making the same. According to the description, page 3, second paragraph, "there ... exists the need in the art for a low-E coating or layer system which after heat treatment substantially matches in color ... its non-heat treated counter part. In other words, there exists a need in the art for a low-E matchable coating or layering system". Further according to the description, page 13, lines 4 et seq., "The value ... DeltaE* ... [is] important in determining whether or not there is matchability, or substantial matchability, in the context of the invention". The contentious feature relating to the DeltaE* value thus amounts in essence to claiming the effect aimed at by the invention, i.e. improved matchability of the coated article. Put differently, the feature relating to the DeltaE* value is defined as a result to be achieved corresponding essentially to the problem underlying the application.

T 0050/10 - Priority and sequences

Key point

• The Board confirms that disclosure of a DNA sequence (with indication of the open reading frame ORF) can provide priority for a claim for the (corresponding) amino acid sequence.
• The opponent had submitted that "The single disclosure of an ORF at one single position in the priority document, in contradiction to the remaining disclosure of the whole document, could not be regarded as a direct and unambiguous disclosure." The Board does not comment specifically on this argument.

EPO T 50/10 - link

Reasons for the Decision

[...] Article 87 EPC - Priority right

9. There is a dispute between the parties about whether the subject-matter of claim 1 can validly claim a right of priority from the earlier application US 60/073 763 filed on 5 February 1998.

10. According to Article 87 EPC a European patent application may validly claim the right of priority from a previous first application if both relate to "the same invention". The concept of "the same invention" expressed in Article 87 EPC has been interpreted by the Enlarged Board of Appeal in decision G 2/98 (OJ EPO 2001, 413, point 9 of the reasons) as meaning subject-matter which the person skilled in the art can derive directly and unambiguously, using common general knowledge, from the previous application as a whole.

11. In the present case, the issue is thus whether the 655 amino acid polypeptide having the sequence of SEQ ID NO: 1, that is the subject-matter of claim 1, can be directly and unambiguously derived from application US 60/073 763.

12. The board notes that the application US 60/073 763 does not contain a discrete sequence identical to SEQ ID NO: 1 of the patent. However in Example 6 there is a disclosure of a "cDNA insert [...] 2418 bp in length as in Figure 2C or SEQ ID NO: 2 [with] a long ORF that began at position 239 and ended with the stop codon TAA at position 2204-06." (see page 21, lines 17 to 22). Translation of this ORF yields a protein of 655 amino acids which is identical to SEQ ID NO: 1 as mentioned in the patent - it being part of the basic technical knowledge of the skilled person that translation of a nucleic acid sequence into the corresponding amino acid leads to a defined amino acid sequence. Furthermore, the translated amino acid sequence of this region is included in the longer sequence shown in Figure 2A of the priority application. Thus, the board is satisfied that, given the information about the positions of the start and stop codons of the ORF concerned, the skilled person can derive the polypeptide having SEQ ID NO: 1 as claimed, directly and unambiguously, using common general knowledge, from application US 60/073 763 as a whole.

13. It follows from this that the subject-matter of claim 1 and of the dependent claims 2 to 8 and 10 to 16 validly claims the priority date from application US 60/073763, this date being 5 February 1998.

14. Since documents D3 to D5 are all published after that date, all objections of lack of novelty and lack of inventive step made on the basis of these documents must fail.

15. Hence, the board is satisfied that the requirements of Articles 54 and 56 EPC are fulfilled.

T 0694/10 - Anonymous TPO in appeal

Key points

• In this opposition case, the Board disregards anonymous third party observations because they are not relevant.
• Note that in T 1439/09 and T 146/07, the Board had held that anonymous third party observations in appeal are to be disregarded anyway as they are anonymous (irrespective of their relevance). The present decision seems to open the possibility of such observations being considered by the Board, if they are relevant.

EPO T 694/10 - link

Entscheidungsgründe

[...] 3. Einwendungen Dritter

3.1 Nach der Ladung zur mündlichen Verhandlung wurden anonyme Einwendungen Dritter nach Artikel 115 EPÜ gegen die Patentierbarkeit der beanspruchten Erfindung erhoben.

3.2 Im vorliegenden Fall waren die Einwendungen Dritter für die Entscheidung nicht relevant und wurden daher auch nicht berücksichtigt.

T 2001/14 - Buying time after Rule 71(3)

Key points - [C] (online 21.09.2015) -  appeal exceptionally allowable

• After oral proceedings before the Examining Division, a Rule 71(3) EPC Communication is issued for the sole request. The applicant files new requests. These are not admitted (Rule 137(3) EPC) and the application is refused. The applicant appeals. " In the statement of grounds of appeal, the appellant did not challenge the legal basis given in the appealed decision, nor did it give any reasons why the decision under appeal was wrong. In particular, no reason was given as to why, in the given circumstances of the present case, the division had not exercised its discretion under Rule 137(3) EPC in accordance with the right principles or had exercised its discretion in an unreasonable way"
• Instead, with the statement of grounds of appeal, the appellant filed new amended claims according to a main request and a first auxiliary request, as well as new claims according to a second auxiliary request, the claims being "identical with the statement of claim set out in the Official Communication under Rule 71(3) EPC".
• The appeal is exceptionally held admissible based on the second auxiliary request, as the filing of that request removes the factual basis of the decision. The case is remitted for further prosecution based on that request.
• After the appeal decision, the present application is withdrawn. The day before the oral proceedings before the Board, a divisional application had been filed, about 3 years after the Rule 71(3) communication for the parent, and of course after the abolition of the Rule 36 limit on filing divisional applications.
• This decision was earlier discussed at the DeltaPatents blog.

EPO T 2001/14 - link 

Summary of Facts and Submissions

I. The appeal concerns the decision of the examining division refusing European patent application No. 09159210.

II. The examining division issued a communication under Rule 71(3) EPC dated 30 July 2012 informing the applicant that it intended to grant a patent on the basis of a set of claims of a sole request submitted by the applicant during oral proceedings before the examining division.

III. The applicant did not consent to the text proposed for grant but instead, with a letter dated 10 December 2012, submitted claims of a new main request and requested the grant of the patent on the basis of these claims, or, as an auxiliary request, based on the claims as indicated in the communication under Rule 71(3) EPC.

IV. By a letter dated 12 December 2012, the applicant withdrew the "auxiliary request as of December 10, 2012".

V. In a communication dated 2 January 2013, the examining division expressed its preliminary view that, prima facie, claim 1 of the main request then on file would lead to objections that had already been overcome during oral proceedings and that, considering that two auxiliary requests had already been discussed during the oral proceedings, the applicant was not considered to be entitled to call into question the outcome of the previous course of the proceedings. It further informed the applicant that the application would be refused under Article 90(5) and Rule 137(3) EPC.

VI. With a letter dated 13 May 2013, the applicant submitted claims of a new auxiliary request 1.

VII. In its decision the examining division exercised its discretion as provided for in Rule 137(3) EPC and did not consent to the amendments to the claims of the main request filed with the letter dated 10 December 2012 and of the auxiliary request 1 filed with the letter dated 13 May 2013. The examining division gave reasons in the decision under appeal why it refused its consent to these amendments, which replaced the text of the application on the basis of which a patent could have been granted according to the communication under Rule 71(3) EPC dated 30 July 2012. Since only the claims according to the main request and the auxiliary request 1 were then on file, the application was refused.

VIII. The applicant (appellant) appealed against the decision of the examining division.

Within the two-month period under Article 108, first sentence, EPC, a notice of appeal was filed and the prescribed appeal fee was paid (Article 108, first and second sentences, EPC). The statement setting out the grounds of appeal was filed within the four-month period under Article 108, third sentence, EPC.

In the statement of grounds of appeal, the appellant did not challenge the legal basis given in the appealed decision, nor did it give any reasons why the decision under appeal was wrong. In particular, no reason was given as to why, in the given circumstances of the present case, the division had not exercised its discretion under Rule 137(3) EPC in accordance with the right principles.

Instead, with the statement of grounds of appeal, the appellant filed new amended claims according to a main request and a first auxiliary request, as well as new claims according to a second auxiliary request, the claims being "identical with the statement of claim set out in the Official Communication under Rule 71(3) EPC".

IX. The board sent a communication under Article 15(1) RPBA annexed to the summons to oral proceedings.

In that communication, the board expressed doubts that the appeal was admissible since the statement of grounds of appeal appeared unsubstantiated and thus seemed not to comply with the requirements of Article 108, third sentence, and Rule 99(2) EPC.

The board also stated that the claims according to the second auxiliary request filed with the statement of grounds of appeal were identical to the claims which formed the basis for the communication under Rule 71(3) EPC dated 30 July 2012 and this fact could play a role for the question whether the appeal was admissible in view of the jurisprudence of the boards of appeal.

The board also informed the appellant that, if the appeal was found admissible, the debate would continue in the oral proceedings on the allowability of the appeal and that the first issue for discussion on the allowability of the appeal would be the admission of the requests in view of Article 12(4) RPBA. The board expressed its view that the admissibility of the main request and the first auxiliary request then on file was highly doubtful whereas the second auxiliary request could be considered admissible because the claims of this request formed the basis on which the examining division intended to grant a patent.

X. With a letter dated 13 May 2015, the appellant filed new claims according to a new main request and according to new first to third auxiliary requests.

XI. At the oral proceedings before the board the appellant (applicant) requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 5 of the main request, or claims 1 to 4 of the first auxiliary request, or claims 1 to 4 of the second auxiliary request, or claims 1 to 3 of the third auxiliary request, all requests filed with letter dated 13 May 2015. [...]

Reasons for the Decision

1. Admissibility of the appeal

1.1 According to Article 108, third sentence, EPC a statement setting out the grounds of appeal must be filed in accordance with the Implementing Regulations within four months of notification of the decision. Furthermore, Rule 99(2) EPC provides that in the statement of grounds of appeal the appellant must indicate the reasons for setting aside the decision, or the extent to which it is to be amended and the facts and evidence on which the appeal is based.

1.2 It is an established general principle that the grounds for appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases his arguments, without first having to make investigations of its own (see Case Law of the Boards of Appeal of the European Patent Office, 7th edition, September 2013, section IV.E.2.6.3 a)). Moreover, the grounds of appeal must deal with the main reasons given for the contested decision (see, for example, T 213/85, OJ EPO 1987, 482, point 3 of the Reasons).

1.3 The examination of whether the requirements of Article 108, third sentence, and Rule 99(2) EPC are met has to be made on the basis of the statement of grounds of appeal and of the reasons given in the contested decision, taking into account any amendments made to the claims (see for example J 22/86, OJ EPO 1987, 280, point 2 of the Reasons; T 162/97, point 1.1.2 of the Reasons).

1.4 In the present case the examining division exercised its discretion as provided for in Rule 137(3) EPC and did not consent to the amendments to the claims of the main request filed with the letter dated 10 December 2012 and of the auxiliary request filed with the letter dated 13 May 2013. The examining division gave reasons in the decision under appeal why it refused its consent to these amendments, replacing the text of the applica­tion on the basis of which a patent could have been granted according to the communication under Rule 71(3) EPC dated 30 July 2012. Since only the claims according to the main request and the auxiliary request were then on file, the application was refused.

1.5 In decision G 7/93 (see point 2.6 of the Reasons) the Enlarged Board of Appeal stated that if an examining division has exercised its discretion under Rule 86(3) EPC 1973 (which corresponds to Rule 137(3) EPC) against an applicant in a particular case and the applicant files an appeal against the way in which such discretion was exercised, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the first-instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first-instance department. The Enlarged Board of Appeal added that if a first-instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the boards of appeal and that a board of appeal should only overrule the way in which a first-instance department has exercised its discretion if it comes to the conclusion either that the first-instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.

1.6 In the statement of grounds of appeal, the appellant did not challenge the legal basis given in the appealed decision, nor did it give any reasons why the decision under appeal was alleged to be wrong. In particular, no reason was given as to why, in the circumstances of the present case, the appellant thought that the division had not exercised its discretion under Rule 137(3) EPC in accordance with the right principles or had exercised its discretion in an unreasonable way. Since the appellant did not provide in the statement of grounds of appeal any reasons as to why the decision was alleged to be incorrect, the reasoning contained in the statement is insufficient to meet the requirements of Article 108, third sentence, and Rule 99(2) EPC. This would usually mean that the appeal has to be found inadmissible (Rule 101(1) EPC).

1.7 With the statement of the grounds of appeal, the appellant filed new amended claims according to a main request and a first auxiliary request, as well as new claims according to a second auxiliary request. The claims according to this second auxiliary request are indicated as being "identical with the statement of claim set out in the Official Communication under Rule 71(3) EPC dated July 13, 2012 [sic]".

In its decision, the examining division exercised its discretion under Rule 137(3) EPC and refused its consent to replace the text of the applica­tion on the basis of which a patent could have been granted by the requests then on file. These reasons for refusing the examining division's consent apparently do not apply to the claims of the second auxiliary request, filed with the statement of grounds of appeal, since these claims relate to precisely the claims intended for grant according to the communication under Rule 71(3) EPC dated 30 July 2012.

In view of the above, the mere filing of the second auxiliary request is to be interpreted as removing the factual basis for the refusal, thereby overcoming the reasons for the refusal.

In these exceptional circumstances, the requirements of Article 108, third sentence, and Rule 99(2) EPC are considered to be met in respect of the second auxiliary request.

1.8 Since the admissibility of an appeal can only be assessed as a whole (see T 509/07, point 1.4 of the Reasons) the appeal is admissible.

2. Admission of the main request and the first and second auxiliary requests, all requests filed with letter dated 13 May 2015.

2.1 According to Article 12(2) RPBA, the statement of the grounds of appeal must contain a party's complete case. Any amendment to a party's case after it has filed its grounds of appeal may, according to Article 13(1) RPBA, be admitted and considered at the board's discretion. The discretion must be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

2.2 The sets of claims submitted as the main request and as first and second auxiliary requests were filed with the letter dated 13 May 2015 in reply to the board's communication under Article 15(1) RPBA about one month before the oral proceedings. Hence the amendments to the appellant's case were filed after the statement of the grounds of appeal. The new requests are there­fore an amendment to the appellant's case within the meaning of Article 13(1) RPBA. Consequently, the ad­mission of these requests is at the board's discretion.

2.3 The appellant argued that the new sets of claims were a reaction to the board's communication. As it could be deduced from this communication that the second auxiliary request then on file was the most promising request, the new sets of claims were based on that request.

However, this argument does not apply to the set of claims according to the first auxiliary request, which evidently relates to subject-matter that is signi­ficantly different from the subject-matter claimed in the second auxiliary request underlying the board's communication (which corresponds to the present third auxiliary request).

Furthermore, it was already evident in the first-instance proceedings that the claims according to the former second auxiliary request were promising since they formed the basis for the communication of the examining division under Rule 71(3) EPC, informing the applicant that it intended to grant a patent. The communication under Article 15(1) RPBA of the board did not add anything in this respect as it related merely to the board's provisional opinion concerning procedural issues, namely the admissibility of the appeal and the admission of the requests then on file.

The claims of the main request and the first and second auxiliary requests are therefore not considered to be a response to points raised in the board's communication.

2.4 The appellant also argued that the new sets of claims were filed late for procedural economy, as this avoided the examining division having to deal with a large number of auxiliary requests.

However, if the present main request and the first and second auxiliary requests were admitted into the appeal proceedings, the board might well remit the case to the department of first instance for substantive examination of these requests in two instances. The examining division would then have to deal with the requests, while the conduct of the appellant would have led to a considerable delay in the proceedings. Furthermore, the examining division would possibly have to re-open substantive examination with the possible result of further communications and even a second refusal and subsequent appeal proceedings.

The filing of the claims of the main request and the first and second auxiliary requests at this late stage of proceedings is therefore considered to be contrary to the interests of procedural economy.

2.5 Furthermore, were the board to deal with the substantive examination of the claims according to the present main request and the first and second auxiliary requests, complex discussions might well ensue, in particular in relation to the requirements of clarity and the basis in the original application documents as well as novelty and inventive step. This is for example to be expected in relation to the features deleted as compared to the subject-matter of claim 1 of the present third auxiliary request, e. g. those relating to the display.

2.6 In view of the above considerations, exercising its discretion under Article 13(1) RPBA, the board does not admit the main request and first and second auxiliary requests into the proceedings.

3. Admission of the third auxiliary request filed with letter dated 13 May 2015 and further procedure

3.1 The third auxiliary request was filed after the statement of the grounds of appeal and it is therefore an amendment to the appellant's case within the meaning of Article 13(1) RPBA. However, since the claims of the present third auxiliary request are identical to those of the second auxiliary request, filed with the statement of grounds of appeal, it is appropriate for the board to also consider the provisions of Article 12(4) RPBA when exercising its discretion under Article 13(1) RPBA.

The claims according to the present third auxiliary request are also identical to the claims which formed the basis for the communication under Rule 71(3) EPC dated 30 July 2012. In these exceptional circumstances, the board sees no reason not to admit the third auxiliary request under Article 12(4) RPBA although this request was withdrawn in the first-instance proceedings and re-filed with the statement of grounds of appeal. Therefore the board admits the third auxiliary request into the proceedings.

3.2 Since the claims of the third auxiliary request are identical to those forming the basis on which the examining division intended to grant a patent, it is considered to be appropriate to remit the case to the department of first instance for further prosecution on the basis of the present third auxiliary request (Article 111(1) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

T 0528/11 - Scope of appeal

Key points

• The scope of an appeal of an opponent can be restricted to particular claims if the other claims are not attacked. 
• Board:  " Whilst claims 1 and 2 have been extensively discussed under Articles 83 and 56 EPC in the decision under appeal, all other claims were referred to only in a general manner []. In the statement of Grounds of Appeal, the appellant maintained the objections raised under Articles 83 and 56 EPC against claims 1 and 2 as upheld by the opposition division (claims as granted). No other claims were attacked in the Grounds of Appeal. Thus, the scope of the appeal is limited to claims 1 and 2." 
• In addition, new evidence filed with the Statement of grounds was not admitted as it could have been filed in the first instance proceedings. 

EPO T 528/11 - Link

Reasons for the Decision

Admissibility of new evidence