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

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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).