T 0493/12 - Acceleration after remittal

Key points

• In this opposition appeal, the proprietor restricted to the method claims in appeal.
• " The Board holds that the filing with the statement of grounds of appeal of a request which essentially corresponds to a request decided upon by the Opposition Division, wherein claims which were found unallowable by the first instance have been deleted, said request thereby being restricted to subject-matter of a different category for which no negative decision has been issued by the Opposition Division, deprives the contested decision of its basis, and is normal behaviour of a losing party. " 
• There is no provision of the EPC under which any competence is given to a Board of Appeal to decide the time frame of first instance proceedings after remittal (see T 2362/08)

T 0493/12 - link

Auxiliary request 2

3. Admissibility

3.1 Auxiliary request 2 was filed with the statement of grounds of appeal. It is based on the main request wherein granted claims 1 to 5, namely the claims to the reactor system, have been deleted, and granted independent claim 6, directed to a method for starting up the reactor system of claim 1, has been reformulated as claim 1, wherein the features of the reactor system of granted claim 1 have now been incorporated into said claim in full. []

3.2 Appeal proceedings are based inter alia on the statement of grounds of appeal filed pursuant to Article 108 EPC, said statement containing the party's complete case (see Art. 12(1) and (2) RPBA). The Board may however hold inadmissible requests which could have been presented in the first instance proceedings (see Art. 12(4) RPBA).

T 2278/12 - Inventive user interface

Key points

• In this examination appeal for one of Apple's applications for the iPhone (filing date 2007), the Board acknowledges inventive step for a user interface. In essence, when for a webpage with content blocks, a first block (5; see figure below) is clicked and is enlarged, the other blocks are enlarged as well. The first block is centered, and if one of the other blocks (6) in enlarged state is clicked, that block is centered. 
• " The underlying objective problem is regarded again as allowing for an efficient way of swapping between different boxes of content" and whether this problem (or the solution) is technical, is not discussed.

T 2278/12 -link 

T 1785/15 - Appeal against grant

Key points

• An applicant approved the text for grant, not noting the amendments made by the Examining Division. After publication of the mention of the grant, the (now) patentee files an appeal after grant. The appeal is rejected as inadmissible. 
• As a comment, the request for correction of the patent under Rule 140 should likely have been separately rejected as inadmissible based on G 1/10. 

Summary of Facts and Submissions

I. This is a case where the patent proprietor has filed an appeal against the decision dated 2 July 2015 to grant a patent based on EP application no. 09756869.5 pursuant to Art.97(1) EPC.

II. The present application was filed as a PCT application which entered into the regional phase on 23 March 2012. In response to the communication pursuant to Rule 161(1) and 162 EPC, referring to an international preliminary written opinion of the ISA the then applicant on 2 January 2013 submitted amendments to the claims and description. Subsequently, the examining division issued a communication under Rule 71(3) EPC dated 20 February 2015 stating its intention to grant a patent indicating the description, claims and figures on which grant was to be based as well as identifying proposed amendments to the description and claims together with detailed explanations. The complete text for grant (the "Druckexemplar") was enclosed in versions with and without markup. When compared to the version of the claims previously on file, it turns out that the examining division had suggested numerous amendments particularly to claim 1.

On 17 June 2015, the applicant, in reference to the Rule 71(3) communication payed the fee for grant and publishing and filed translations of the accepted claims into German and French pursuant to Rule 71(5) EPC.

Thereupon, a decision to grant a European patent pursuant to Article 97(1) EPC was issued on 2 July 2015. The publication of the mention of the grant in the European Patent Bulletin was envisaged for 29 July 2015.

III. With letter of 21 July 2015 and in reference to a telephone conversation and e-mail correspondence of July 2016 with the first examiner the former applicant (now patent proprietor) requested not to publish the mention of grant as "the claims currently on file contain obvious errors". Amended claims and an adapted description in clean copy and with markup were annexed. It was further requested that the Examining Division "consent to acceptance of the amendments given by [the primary examiner] with e-mail of July 2015".

IV. In a consultation by telephone dated 24 July 2015 the formalities officer on 24 July 2015 informed the patent proprietor that there had "been a misunderstanding ... regarding the stage the application was in the procedure, [that] the binding Decision to Grant a European Patent was already dispatched on 2 July 2015 [and that] therefore it is no longer possible to amend the description and claims as requested (G1/10)". Furthermore, "the option of filing an Appeal against the Decision to Grant, within 2 Months form the issuance of the Decision on 2 July 2015" was pointed out.

V. In response the patent proprietor filed a notice of appeal received 27 July 2015, paid the appeal fee and filed the grounds of appeal on the same day. The appellant-patent proprietor requested that the obvious error be removed the and the application documents be corrected according to what was filed with the grounds, that a new decision to grant a European patent based on the amended claims and description be issued, and that the appeal fee be reimbursed.

T 2184/12 - Gaming system

Key points

• A typical case about a gaming system.
• "It is common ground that, in all its versions, claim 1 includes aspects relating to rules for playing games. For example the concept of a feature game is based on game rules, such as one defining winnings. However it also contains technical features. For example the gaming system claimed comprises a display device, so it has overall technical character. Therefore all versions of claim 1 contain a mix of technical and non technical subject matter, a so called "mixed" invention. I
  n dealing with such "mixed" inventions, the Board adopts the approach as set out in T 1543/06 [] Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step. That requirement cannot rely on excluded (non-technical) subject matter alone, however original it may be. 

T 2184/12 - link

Summary of Facts and Submissions

I. On 11 June 2012 the appellant lodged an appeal against the examining division's decision of 12 April 2012 refusing the European patent application No. 07815223.8 and paid the prescribed fee simultaneously. The statement of grounds of appeal was received on 2 August 2012.

V. Independent claim 1 of the requests reads as follows:

Main request

"A gaming system for playing a game comprising a base game and a feature game, said base game being a spinning reel game comprising a plurality of spinning reels, said gaming system comprising:

a processor for controlling the play of the base game and the feature game; at least one display device connected to the processor for displaying one or more screens of the game; and

input means connected to the processor and the display device, for use by a player in controlling one or more aspects of the game, wherein the processor controls the game such that each symbol in a reel of the base game has a corresponding feature symbol corresponding to the feature game, and wherein feature strips comprising one or more of the feature symbols are displayed between the reels or below a corresponding row of base symbols, wherein during one or more reel spins of the base game the feature symbols within the feature strips are also spun so as to affect the result of the base game depending on where the feature symbols stop with respect to the base symbols of the reels, wherein each of the feature symbols has a corresponding further feature symbol which is displayed over a base symbol".

Reasons for the Decision

1. Background

1.1 The present invention (see published application, page 1, line 6 to page 2, line 11 and claim 1 in all its versions) concerns a spinning reel game. Such a game may have a basic game, a so called base game and a variant of this game with innovative features for maintaining a player's interest, called a feature game. The outcome of a feature game may for example be to double a player's credits.

In particular the invention relates to a gaming system for playing a game comprising a base game and a feature game, wherein the results of the base game depends on where symbols of base game reels stop relative to where feature game symbols stop after both are spun.

1.2 In the context of inventions concerned with games, Article 52 (2) (c) with Article 52 (3) EPC explicitly mentions schemes, rules and methods for playing games as being excluded from patentability as such.

As explained in T 0336/07, reasons 3.3.1. "a game in the usual sense of the word is characterized by ... its rules of play which govern the conduct and actions of the players during game play...[A] set of game rules thus determines how game play evolves from beginning to end in response to player actions and decisions...". That decision went on to emphasise that such a set of rules is "normally so perceived by the players involved, and as serving the explicit purpose of playing a game".

1.3 It is common ground that, in all its versions, claim 1 includes aspects relating to rules for playing games. For example the concept of a feature game is based on game rules, such as one defining winnings. However it also contains technical features. For example the gaming system claimed comprises a display device, so it has overall technical character. Therefore all versions of claim 1 contain a mix of technical and non technical subject matter, a so called "mixed" invention.

1.4 In dealing with such "mixed" inventions, the Board adopts the approach as set out in T1543/06 (Gameaccount), reasons 2.1-2.9, which is based foremost on T0641/00 (OJ EPO 2003, 352). Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step. That requirement cannot rely on excluded (non-technical) subject matter alone, however original it may be. The mere technical implementation of something excluded cannot therefore form the basis for inventive step. A consideration of the particular manner of implementation must focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter.

T 2544/11 - Deleting feature is not broadening

Key points

• Published 21.10.2015. In the auxiliary request, the patentee had amended claim 1 by deleting "chemical" in " chemical cross-linking agents" . Does this contravene Article 123(3) EPC? The patentee had tried to rely on this term for novelty of the claims of the main request. The opponent argues that heat can also be used for cross-linking.
• The Board notes that " Further to the deletion of the term "chemical", the definition of the crosslinking agent specified in claim 1 of auxiliary request 2D further imposes that the crosslinking agent is selected from a specific list of chemical compounds. Therefore, the deletion of "chemical" is in fact compensated by the more specific definition now being present in claim 1."
• The Board further notes that there is no evidence on file that the term""chemical cross-linking agent" [] has any accepted definition or clear, unambiguous meaning in the art, in particular that it represents a limitation of the term cross-linking agent. There is in particular no evidence on file to corroborate the patent proprietor's argument, provided e.g. during the examination or opposition proceedings, according to which a "chemical" cross-linking agent is limited to those agents that are incorporated in the final cross-linked product." 
• Therefore, deleting the feature does not result in extension of the scope of protection and does not contravene Article 123(3) EPC. 

EPO T 2544/11 - link

Claim 1 as granted
"1. A process for the preparation of multiple cross-linked [deleted: derivatives of] hyaluronic acid (HA), which process comprises cross-linking HA via two or more different functional groups, wherein said cross-linking is effected by contacting HA with one or more chemical cross-linking agents so as to form two or more different types of functional bonds, between HA molecules, and wherein said two or more different types of functional bonds are selected from ether, ester, sulfone, amine, imino and amide bonds."

Claim 1 of auxiliary request 2D

"1. A process for the preparation of multiple cross-linked [deleted: derivatives of] hyaluronic acid (HA), which process comprises cross-linking HA via two or more different functional groups,
wherein said cross-linking is effected by contacting HA with one or more cross-linking agents so as to form two or more different types of functional bonds, between HA molecules, wherein said two or more different types of functional bonds are selected from ether, ester, sulfone, amine, imino and amide bonds,
wherein, in said process, a first cross-linking reaction is carried out and a further cross-linking agent, which may be the same or different from the first, is added to the reaction mixture to effect the second cross-link
and wherein the cross-linking agent is selected from formaldehyde, glutaraldehyde, divinyl sulfone, a polyanhydride, a polyaldehyde, a polyhydric alcohol, carbodiimide, epichlorohydrin, ethylene glycol diglycidylether, butanediol diglycidylether, polyglycerol polyglycidylether, polyethylene glycol diglycidylether, polypropylene glycol diglycidylether, or a bis-or poly-epoxy cross-linker."

Reasons for the Decision
[...]

Auxiliary request 2D

3. Art. 123(3) EPC

3.1 The sole objection raised by the opponent concerns the deletion in claim 1, as compared to granted claim 1, of the term "chemical" before "cross-linking agents".

3.1.1 According to the definition given above (see section 2.3.2), a crosslinking agent is a substance, i.e. a chemical compound, not heat or irradiation as argued by the opponent. Although it is agreed that crosslinking may be induced by heat and irradiation, there is no evidence on file that the skilled person would consider those means as substances, i.e. as "cross-linking agents". It is further questionable whether one would consider that heat/irradiation is "contacted with" hyaluronic acid when used, as specified in claim 1.

That reading is also in line with the meaning given to the term "cross-linking agent" in the application as filed: the last part of the paragraph bridging pages 4 and 5 of the application as filed reads "as described in more detail hereinbelow"; page 5, line 23 goes on with a list of chemical compounds suitable as crosslinking agents. Nowhere does the application as filed disclose heat or radiation for crosslinking.

3.1.2 The opponent argued that D17 (col. 15, lines 19-21) implicitly disclosed heat/radiation as crosslinking agents. However, that argument relies on one sentence present in a single patent document. Such a disclosure is not sufficient to depart from the general understanding of that term according to common general knowledge, which is illustrated by the definitions given in the technical dictionaries D13 and D14.

3.1.3 D15 and D16, both submitted by the opponent, relate to the meaning of the term "agent", which is defined as encompassing anything producing an effect. However, the term "agent" is more generic than the term "crosslinking agent" used in claim 1. D16 clearly shows that terms such as "adregenic blocking agent", "agent orange", "alkylating agent", "chelating agent" or "reducing agent" concern more specific definitions that are only related to "substances". On the basis of the evidence on file, it is concluded that, in the same manner, the more specific definition provided in D13 and D14 limits crosslinking agents to "substances" and excludes means such as heat or irradiation.

3.1.4 The passage of D3 (page 3, lines 46-50) relied upon by the opponent, also does not provide any definition of the term "crosslinking agent" but rather exemplifies heat or irradiation as "an agent which activates the carboxy function".

3.1.5 Further to the deletion of the term "chemical", the definition of the crosslinking agent specified in claim 1 of auxiliary request 2D further imposes that the crosslinking agent is selected from a specific list of chemical compounds. Therefore, the deletion of "chemical" is in fact compensated by the more specific definition now being present in claim 1.

3.1.6 However, there is no evidence on file that the term "chemical cross-linking agent" (emphasis by the Board) has any accepted definition or clear, unambiguous meaning in the art, in particular that it represents a limitation of the term cross-linking agent. There is in particular no evidence on file to corroborate the patent proprietor's argument, provided e.g. during the examination or opposition proceedings, according to which a "chemical" cross-linking agent is limited to those agents that are incorporated in the final cross-linked product. Such a definition would, in addition, be in contradiction with D14.

3.2 In that light, it cannot be considered to have been shown that the term "chemical" before "cross-linking agents" in granted claim 1 implied any limitation in respect of the meaning of the term "crosslinking agent" that would not be fulfilled by the definition of the crosslinking agents now being present in claim 1.

Therefore, it was not shown that the deletion (as compared to granted claim 1) of the term "chemical" before "cross-linking agents", effectively leads to an extension of the protection conferred by the patent in suit that would contravene the requirements of Art. 123(3) EPC.

T 0412/12 - Inserting an auxiliary request

Key points

• After Auxiliary Request 4 had been deemed allowable by the Board, the Patentee submitted an " Auxiliary Request 0" (ranked between the rejected Main Request and the rejected first Auxiliary Request). The Board is not amused and does not admit the request into the proceedings. 

T 0412/12 - link

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Hauptantrag: Änderungen

2.11 Die in Anspruch 1 des Hauptantrags durchgeführte Änderung von ursprünglich "wenigstens einer" in "wenigstens zwei" weitere (größere) Öffnungen geht daher über den Inhalt der Anmeldung in der ursprünglich eingereichten Fassung hinaus, entgegen den Erfordernissen des Artikels 123(2) EPÜ.

3. Hilfsanträge 1 bis 3: Änderungen

Auch der Gegenstand des Anspruchs 1 der Hilfsanträge 1 bis 3 schreibt "wenigstens zwei" weitere (größere) Öffnungen im Stellelement vor. Da in Anspruch 1 der Hilfsanträge 1 bis 3 zumindest das Merkmal, wonach zwei Öffnungen des Stellelements gegenüberliegend angeordnet sind, nicht enthalten ist, können auch die Hilfsanträge 1 bis 3 nicht die Erfordernisse des Artikels 123(2) EPÜ erfüllen, siehe oben zum Hauptantrag.

4. Hilfsantrag 4: Änderungen

4.1 Hilfsantrag 4 entspricht der von der Einspruchsabteilung aufrechterhaltenen Fassung. Anspruch 1 des Hilfsantrags 4 beruht auf den ursprünglichen Ansprüchen 1 bis 6 und 8. Die Beschreibung wurde entsprechend angepasst.

[...]

Der Gegenstand des Anspruchs 1 des Hilfsantrags 4 erfüllt daher die Erfordernisse des Artikels 123(2) EPÜ.

9. Hilfsantrag 0: Zulässigkeit

9.1 Die nach Auffassung der Kammer unzulässige Erweiterung in Hinblick auf die Mengenangabe "wenigstens zweier weiterer" in Anspruch 1 der Haupt- und Hilfsanträge 1 bis 3 sei nach Ansicht der Patentinhaberin Beschwerdeführerin für sie überraschend gewesen. Als Reaktion habe sie deshalb nach abgeschlossener Diskussion der geltenden Haupt- und Hilfsanträge 1 bis 3 angekündigt, einen neuen Hilfsantrag einreichen zu wollen. Der nach Diskussion und Beratung zu Hilfsantrag 4 schließlich als Hilfsantrag 0 neu vorgelegte Hilfsantrag solle rangmäßig zwischen Haupt- und Hilfsantrag 1 berücksichtigt werden. Im Hilfsantrag 0 sei im Kennzeichen des Anspruchs 1 des bisherigen Hauptantrags die Formulierung "wenigstens zweier weiterer Öffnungen" durch "weiterer Öffnungen" ersetzt worden. Das übrige Kennzeichen sei entsprechend angepasst worden. Dadurch werde die untere Grenze, also genau "zwei weitere Öffnungen", nicht mehr beansprucht.

T 0061/14 - Parameter and at least one way

Key point

• If, as in the present case, an essential feature of the invention is expressed by a parametric definition the question is whether the parameter is so defined that the person of the art, on the basis of the disclosure of the patent as a whole and using his common general knowledge, could identify, without undue burden, the technical measures leading to the claimed subject-matter (Case Law of the Boards of Appeal, 7th ed. 2013, II.C.4).

• In this context, it needs to be examined whether the patent in suit and the common general knowledge provide sufficient information allowing the skilled person
• to obtain particles having the required percentage of interconnected pores, for example by disclosing at least one way to carry out the invention, and
• to obtain substantially all embodiments within the ambit of claim 1, either
• by providing sufficient instructions in the patent in suit, or
• by relying on the common general knowledge of a person skilled in the art, or
• by a reasonable amount of trial and error leading a skilled person to the claimed subject-matter after the evaluation of some possible initial failures.
• The Board, further: " It can thus be considered that the particles obtained according to examples 1-4 of the patent in suit have a percentage of interconnected pores close to 100%." However, the claimed range of at least 20 % interconnected pores is not sufficiently disclosed because the patent does not teach a strategy for modifying the % interconnected pores and trial and error requires that the skilled person is able to evaluate the % interconnected pores. 

T 0061/14 -  link

Reasons for the Decision

1. The appeal is admissible.

Sufficiency of disclosure

2. Claim 1 is directed to an embolisation particle and requires at least 20% of its pores to be interconnected.

3. It is not in dispute that interconnectivity is a property of some porous materials, and that the term "interconnected" is frequently used in the art (see for example D29, page 73, last line).

It has not been disputed that the percentage of interconnected pores required by claim 1 refers to all the pores of the claimed particle, not only to those which extend to the surface.

With respect to the definition of "interconnected pores", paragraph [0041] of the patent in suit discloses:

"Substantially interconnected pores (also referred to as "open") as used in the present application means pores that are in fluid communication with each other within a solid material."

4. The claimed invention relies on a structural property of the claimed embolisation particle, namely that at least 20% of its pores are interconnected. The appellant considered this feature to be essential for the invention, and that not every embolisation particle has the percentage of interconnected pores required by claim 1.

An invention should be disclosed in a manner sufficiently clear and complete for it to be carried out, throughout the whole scope claimed, by a person skilled in the art, on the basis of the disclosure in the patent specification and the general technical knowledge in the art.

If, as in the present case, an essential feature of the invention is expressed by a parametric definition the question is whether the parameter is so defined that the person of the art, on the basis of the disclosure of the patent as a whole and using his common general knowledge, could identify, without undue burden, the technical measures leading to the claimed subject-matter (Case Law of the Boards of Appeal, 7th ed. 2013, II.C.4).

In this context, it needs to be examined whether the patent in suit and the common general knowledge provide sufficient information allowing the skilled person

- to obtain particles having the required percentage of interconnected pores, for example by disclosing at least one way to carry out the invention, and

- to obtain substantially all embodiments within the ambit of claim 1, either

- by providing sufficient instructions in the patent in suit, or

- by relying on the common general knowledge of a person skilled in the art, or

- by a reasonable amount of trial and error leading a skilled person to the claimed subject-matter after the evaluation of some possible initial failures.

5. At least one way to prepare the claimed embolisation particles

5.1 Examples 1 to 4 of the contested patent provide instructions on how to obtain embolisation particles. The percentage of interconnected pores of the particles obtained in these examples has however not been measured.

5.2 The appellant argued that although the percentage of interconnected pores of the particles of examples 1 to 4 had not been determined, it was apparent from the figures of the patent in suit that it was close to 100% and thus in accordance with claim 1. Paragraph [0037], which disclosed that figures 4A to 4E showed scanning electron micrographs of embolisation particles "made according to the protocols described herein", and paragraph [0040] disclosed that figure 4E showed the interior surface of a cut particle in which "interior pores are clearly interconnected". The state of the art also disclosed polymer scaffolds having a connectivity greater than 99% (D22, page 484, last full paragraph) and from 99.7 to 100% (D23, table I), which proved that such particles could be obtained.

5.3 It can thus be considered that the particles obtained according to examples 1-4 of the patent in suit have a percentage of interconnected pores close to 100%.

5.4 However, sufficiency of disclosure presupposes that the skilled person is able to carry out substantially every embodiment falling within the ambit of the claims (Case Law of the Boards of Appeal, 7th ed. 2013, II.C.4.4).

Claim 1 of the patent as granted is directed to a embolisation particle having pores "at least 20%" of which are interconnected, i.e. from 20% to 100%. Sufficiency of disclosure requires that the skilled person is able to prepare not only particles having 100% of their pores interconected but also other embodiments falling under the claim, for example particles having 50% of their pores interconnected.

5.5 The appellant relied on paragraph [0051] of the patent specification as teaching a skilled reader how to control or modify the percentage of interconnected pores of an embolisation particle.

However, this paragraph describes the influence of the period of time of separation of porogen and polyvinylalcohol prior to crosslinking only on the pore size, not on the percentage of interconnected pores.

5.6 The appellant has not provided any evidence showing that, at the filing date, it was generally known to a person skilled in the art how to modify the percentage of interconnected pores of an embolisation particles, and nor is any such evidence immediately apparent.

5.7 According to the case law, a reasonable amount of trial and error is permissible when it comes to sufficiency of disclosure, provided that a skilled person finds adequate information leading necessarily and directly towards success through the evaluation of initial failures (Case Law of the Boards of Appeal, 7th ed. 2013, II.C.5.6.1).

The appellant argued that interconnection was due to the coalescence of porogen globules as the polymer became more firm by crosslinking. For that reason, a skilled person would

- reduce the number of pores by reducing the amount of porogen, as fewer pores would be statistically less likely to interconnect, and

- reduce the amount of time over which the polymer was allowed to crosslink, by varying the concentration of the crosslinking agent and reactant.

By mere trial and error, a skilled person could obtain every embolisation particle according to claim 1.

However, such a trial-and-error strategy could only allow a skilled person to obtain every embodiment of the claimed invention without undue burden if he were guided necessarily and directly towards success by the evaluation of possible initial failures. In the present case, the skilled person required a suitable method for evaluating whether any change in the reaction conditions would lead to a lower percentage of interconnection.

It thus remains to be examined whether the percentage of interconnected pores can be determined.

It has not been challenged that the patent in suit does not disclose how to measure the percentage of pores which are interconnected.

As mentioned above, "interconnectivity" is a frequently mentioned property of porous solids. However, it often provides a merely qualitative definition and, if quantified, it is measured in terms of the relative amount of pore volume accessible from the outside (also called open pore volume) and not in terms of the relative amount of pores which are interconnected, which is the feature required by claim 1.

5.8 In a first line of argument, the appellant relied on the figures of the patent specification. Figure 4E related to a cut of an embolisation particle according to the claimed invention, whose interior pores were "clearly interconnected" (paragraph [0040]). This figure showed that the percentage of pores which were interconnected could be determined by mere visual inspection of a cut of a particle.

Figure 4E merely provides a qualitative analysis of the porous structure, from which the appellant concludes that all the pores are interconnected.

However, this strategy does not allow to estimate, let alone measure, either the total number of pores of the embolisation particle, or how many of them are interconnected, which are the values required for calculating the percentage of interconnected pores required by claim 1. The skilled person could conclude that a particle's pores are completely interconnected (i.e. a percentage close to 100%) but would not be able to reach any conclusion for any percentage of interconnected pores lower than that. For that reason, the patent in suit does not provide the required information for determining the percentage of interconnected pores.

5.9 In a second line of argument, the appellant relied during the written procedure on the disclosure of documents D23, D23, D30 and D31 as showing that the determination of pore interconnectivity could be carried out by well-known techniques.

However, document D22 refers to relative interconnected volume and not to the relative number of interconnected pores (see last full paragraph on page 484). The same goes for document D23 (see page 1153, second paragraph under 2.6). D30 refers to the characterisation of a porous material but does not quantify its interconnectivity, let alone in terms of the percentage of interconnected pores. D31 develops an allegedly new parameter, namely the "accessible void value", as a measurement of the interconnectivity of a substrate, and proves that quantifying said magnitude is anything but trivial. None of these documents refers, as required by claim 1, to the percentage of pores which are interconnected. Thus, the prior art did not provide information on how to measure the percentage of interconnected pores.

5.10 Therefore, even if a skilled person attempted to modify the experimental details provided in the patent with the aim of preparing particles having a different relative amount of interconnected pores, for example by modifying the nature or the amount of porogen, or the crosslinking time, due to the lack of information on whether the particles obtained fulfilled the requirements of claim 1 that person could not be guided to the claimed embodiments through evaluation of some possible initial failures.

6. The appellant argued that the respondent had not provided any evidence showing that the claimed particles could not be obtained. The disclosure of a patent could only be put into question by raising reasonable doubts, substantiated by verifiable facts, and no such facts had been provided.

However, in the present case, the respondent raised serious doubts in the form of comprehensible and plausible arguments regarding the lack of information in the patent in suit on key issues.

7. The board concludes for these reasons that the patent specification does not disclose the claimed invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art and that, for that reason, the ground under Article 100(b) EPC precludes the maintenance of the patent as granted.

8. The appellant acknowledged that the situation regarding insufficiency was the same with respect to the embolisation particles or the methods for producing such particles which represent the subject-matter of every auxiliary request.

As the board found that the embolisation particles of claim 1 of the main request were not disclosed in a manner sufficiently clear and complete, this conclusion also applies to the subject-matter of claim 1 of all the auxiliary requests, with the consequence that none of these requests is allowable.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0861/12 - Paying fee is no Notice of appeal

Key points

• The Board decides that online payment of the appeal fee is not sufficient, a separate Notice of appeal is required. The Board confirms the established case law that payment is not sufficient, even if the payment gives sufficient information to allow to identify the patent and purpose of the payment.
• The decision also contains an extensive discussion of a request for postponement of the oral proceedings based on other oral proceedings on the same day. 

T 0861/12 - link

Entscheidungsgründe

1. Antrag auf Verlegung der mündlichen Verhandlung

[...]

1.4 In ihrem Schriftsatz vom 5. Januar 2016 nannte die Ein­sprechende als schwerwiegenden sachlichen Grund für die Verschiebung im Sinne von Nr. 2.1 der Mitteilung, dass der mit der Sache vertraute zugelassene Vertreter an diesem Termin bereits zu einer mündlichen Verhandlung in einem anderen Verfahren geladen worden und daher verhindert sei. Als Beleg für die Verhinderung ihres Vertreters reichte die Einsprechende eine Kopie eines ein anderes Verfahren betreffenden Ladungsbescheids ein.

Die Kammer stellte nicht in Frage, dass ein Vertreter nicht an zwei mündlichen Verhandlungen, die in unter­schiedlichen Verfahren für denselben Termin anberaumt wurden, beide Mandanten vertreten kann. Es stand für die Kammer damit fest, dass der mit der Sache vertraute Ver­treter aus einem sachlichen Grund an der Teilnahme der anberaumten mündlichen Verhandlung verhindert war. Allerdings verkannte die Einsprechende, dass bei dieser Sachlage nach den oben dargelegten Grundsätzen kein Rechtsanspruch auf Verlegung des Termins der kolli­dierenden mündlichen Verhandlung besteht. Vielmehr setzt eine Verlegung nach Nr. 2.3 der Mitteilung voraus, dass eine Ersetzung des verhinderten Vertreters ausgeschlos­sen oder unzumutbar ist (siehe oben Punkt 1.3). Die Gründe hierfür sind vom Antragsteller substantiiert darzulegen.

T 0819/14 - Inventive alternative

Key points

• The Board finds an alternative to be inventive. The problem to be solved is to provide an alternative arrangement. The opponent argued that the distinguishing features were workshop modifications. 
• " The argument that these modifications were simple workshop modifications which would not require any inventive activity is not persuasive because the person skilled in the art, not being endowed with any inventive capability, would have needed a hint to do so. Lacking such a hint has the consequence that the person skilled in the art would have had no reason to carry out any of the required modifications and also no reason to believe that doing so would involve any expectation of success."

T 0819/14  - link

2.2 Differences with the subject-matter of claim 1

This document does not disclose that the longer base forms a support surface for engaging with a corresponding bottom surface of a recess. In the drawings of D2, the shorter base of the trapezium is shown as engaging with the bottom of the recess. Since the longer base forms part of the connection to the stem then it is not suitable for engaging with a corresponding bottom surface of a recess. Moreover the enlarged head of D2 has only one inclined side.

D2 discloses that the connecting pieces 7d may be split and replaced by a male / female connection, see D2, page 4, left hand column, line 21 through to right hand column, line 6. This passage does not however disclose that there is one male and one female connector but rather leaves this point open.

2.3 Problem to be solved

According to the appellant the problem to be solved is to provide an alternative arrangement to that known from D2. For the sake of argument, this problem is used in the following.

T 0055/11 - New arguments at OP

Key points

• Arguing lack of inventive step over D13 in combination with D1, instead of D1 in combination with D13, for the first time at oral proceedings, is a new argument. The Board can admit this new argument at its discretion.

T 0055/11 -  link

Reasons for the Decision

1. The appeals are admissible.

2. Procedural issue

2.1 In the communication referred to in point II above, the board made the comment (see point 8.4) that in the oral proceedings it would be necessary to discuss whether or not the presence of the characterising features of claims 1 and 20 with respect to D1 or D5 imply an inventive step, in particular in view of D11 or D13.

In its reply to this communication, appellant III made an inventive step argument against granted claims 1 and 20 upon the basis of document D1 in combination with document D13.

2.2 During the oral proceedings, when discussing inventive step of granted claims 1 and 20 starting from document D1 and taking into account document D13, appellant I argued for the first time that the subject-matter of said claims also lacked an inventive step starting from document D13 and taking into account document D1.

Thereupon appellant II requested that this new argument should not be admitted into the appeal proceedings.

T 1873/11 - The power to hold inadmissible

Key points

• The patentee notes that Article 12(4) RPBA speaks of "the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings", not discretion. 
• However, the Board decides that the exercise of this power is discretionary. 
• The power also applies to requests which were presented and admitted in first instance proceedings, but withdrawn. 

T 1873/11 - link

Sachverhalt und Anträge

I. Die Beschwerde der Patentinhaberin richtet sich gegen die Entscheidung der Einspruchsabteilung, das europäische Patent Nr. 1 435 079 zu widerrufen.

[...] Am 25. Februar 2016 fand eine mündliche Verhandlung vor der Kammer statt. [...]

Die Beschwerdeführerin beantragte ferner folgende Rechtsfrage der Großen Beschwerdekammer vorzulegen:

"Kann eine Beschwerdekammer unter Berufung auf ihre Befugnis (power) - nicht Ermessen (discretion) - nach Art. 12(4) VOBK einen im Einspruchsverfahren zurückgenommenen Antrag im Einspruchsbeschwerdeverfahren als unzulässig zurückweisen?

Nein: (T1188/09, sowie die in Rechtsprechung der Beschwerdekammern des EPA, 7. Auflage, IV.E.3.2.1 e), Abs. 2 zitierten Entscheidungen)

Ja: (T1525/10, sowie die in Rechtsprechung der Beschwerdekammern des EPA, 7. Auflage, IV.E.4.3.2 c), Abs. 1 zitierten Entscheidungen)".

Die Beschwerdegegnerin (Einsprechende) beantragte, die Beschwerde zurückzuweisen. Zudem beantragte sie, keinen der Anträge (Hauptantrag, Hilfsanträge I bis V) ins Verfahren zuzulassen.

Entscheidungsgründe

Hilfsanträge I und II - Zulassung

3.1 Bevor die Kammer eine Entscheidung über die Zulässigkeit dieser Anträge treffen konnte, war der Antrag der Beschwerdeführerin auf Vorlage einer Frage an die Große Beschwerdekammer (siehe II. oben) zu erörtern, da die Vorlagefrage die Befugnis bzw. das Ermessen der Kammer unter Artikel 12 (4) VOBK betrifft, so dass falls eine Vorlage notwendig gewesen wäre, die Verhandlung zu vertagen gewesen wäre. Bezüglich der Vorlagefrage brachte die Beschwerdeführerin mehrere Argumente vor, die im Folgenden behandelt werden.

3.1.1 Der Behauptung der Beschwerdeführerin, dass die Verwendung des Begriffs "Befugnis" in Artikel 12 (4) VOBK (in Kontrast zu dem Begriff "Ermessen" in Artikel 13 (1) VOBK) eine Ermessungsentscheidung durch die Kammer ausschließe, kann die Kammer nicht folgen. 
Vielmehr impliziert der Begriff "Befugnis" gerade die Entscheidungsmöglichkeit Anträge etc. unter bestimmten, in der Verfahrensordnung genannten Umständen nicht ins Verfahren zuzulassen, wobei eine Nichtzulassung selbstverständlich einer Begründung bedarf. Der Begriff "Befugnis" drückt daher lediglich aus, dass für die Kammer auch dann keine Verpflichtung zur Nichtzulassung besteht, wenn die im Absatz 4 genannten Voraussetzungen erfüllt sind. Nach Auffassung der Kammer, die mit der Rechtsprechung der Kammern übereinstimmt, handelt es sich daher um eine Ermessensentscheidung (vgl. Rechtsprechung der Beschwerdekammern, 7. Auflage, IV.E.4.3.2 c), erster Absatz, zweiter Satz).

3.1.2 Zweitens brachte die Beschwerdeführerin vor, dass der vorliegende Fall, bei dem die Anträge vor der ersten Instanz zurückgenommen worden sind, nicht unter Artikel 12 (4) VOBK falle. Die Kammer ist jedoch der Auffassung, dass der Wortlaut des Artikels "Anträge ... die bereits im erstinstanzlichen Verfahren hätten vorgebracht werden können" nicht ausschließt, dass die Anträge tatsächlich im erstinstanzlichen Verfahren vorgebracht wurden, wie im vorliegenden Fall. Diese Interpretation wird von der Rechtsprechung geteilt (vgl. Rechtsprechung der Beschwerdekammern, 7. Auflage, IV.E.4.3.2 c), erster Absatz, dritter Satz: "Dies gilt ... umso mehr für Anträge, die im erstinstanzlichen Verfahren eingereicht und abschließend wieder zurückgenommen wurden").

3.1.3 Drittens behauptet die Beschwerdeführerin das Bestehen einer divergenten Rechtsprechung. Die Kammer sieht jedoch in der zitierten Rechtsprechung keine Divergenz, sondern vielmehr unterschiedliche Ergebnisse beim Ausüben des Ermessens der Kammern in unterschiedlichen Fallkonstellationen. Hierzu merkt die Kammer an, dass im oben zitierten Absatz der "Rechtsprechung", der einen Fall behandelt, der dem vorliegenden entspricht, die Kammer entschieden hat, die Anträge nicht erneut zuzulassen. Die weiteren Teile der Rechtsprechung, die die Beschwerdeführerin zitierte, und bei denen die Anträge zugelassen worden sind (d.h. IV.E.3.2.1 e) und IV.E.4.5.2), entsprechen nicht der vorliegende Sachlage, weil beide hauptsächlich die Frage betreffen, ob eine Patentinhaberin, die im erstinstanzlichen Verfahren nicht die Aufrechterhaltung der erteilten Ansprüche verfolgt hat, im Beschwerdeverfahren (insbesondere nach Einreichung der Beschwerdebegründung bzw. -erwiderung) zu der erteilten Fassung zurückkehren darf. Die dort genannten Entscheidungen der Kammern betreffen daher nicht die in Artikel 12 (4) VOBK angesprochenen Umstände. Die von der Beschwerdeführerin zitierte Rechtsprechung weist insofern daher keine Divergenz auf.

3.1.4 Die Kammer ist deshalb der Auffassung, dass die von der Beschwerdeführerin gestellte Frage eindeutig zu bejahen ist und dass die diesbezügliche Rechtsprechung nicht divergent ist. Angesichts der in Artikel 112 (1) a) EPÜ definierten Voraussetzungen für eine Vorlage kommt die Kammer daher zu dem Schluss, dass keine uneinheitliche Rechtsanwendung vorliegt und dass, obwohl die Frage offensichtlich von grundsätzlicher Bedeutung ist, sie ebenfalls eindeutig und im Einklang mit der bestehenden Rechtsprechung ohne eine Vorlage an die Große Beschwerdekammer beantwortet werden kann.

3.1.5 Die Kammer hat daher den Antrag der Beschwerdeführerin auf Vorlage einer Frage an die Große Beschwerdekammer zurückgewiesen.

3.2 Die Kammer war daher ohne Vertagung der mündlichen Verhandlung in der Lage eine Entscheidung über die Zulassung der Hilfsanträge I und II zu treffen. Diese Anträge sind mit jenem Hauptantrag und jenem Hilfsantrag identisch, die mit Schreiben vom 13. April 2011 eingereicht und während der mündlichen Verhandlung vor der ersten Instanz vom 13. Mai 2011 wieder zurückgenommen wurden. Das Vorbringen der Beschwerdeführerin zu dieser Frage deckt sich im Wesentlichen mit jenem zur Vorlagefrage (siehe 3.1.1 bis 3.1.3 oben). Die Beschwerdeführerin hat keine weiteren Argumente vorgebracht, weshalb diese Anträge zu diesem späten Verfahrensstadium zugelassen werden sollten.

3.3 Die Kammer übte ihr Ermessen unter Artikel 13 (1) VOBK daher dahingehend aus, die Hilfsanträge I und II der Beschwerdeführerin nicht ins Verfahren zuzulassen.

T 2086/13 - Setting aside and res judicata

Key points

• In this case, the Board had set aside in an earlier appeal the decision of the OD to revoke the for lack of inventive step, because that decision of the OD was insufficiently reasoned. In the first decision, the OD had not admitted insufficient disclosure as new ground, after remittal it did. The patentee argues that the OD should only have decided on inventive step after remittal and not have reopened the debate on insufficient disclosure. The Board does not agree.
• "The board holds that the procedural situation is far simpler. With decision T 306/09, the board decided that the (first) decision of the opposition division was tarnished by a fundamental procedural violation, and had to be set aside. Given that the decision only had a single legal effect, it was then set aside in its totality, including the part related to the admission of the ground of opposition under Article 100(b) EPC. Therefore, during the opposition proceedings following the remittal ordered by T 306/09, none of the decided issues remained, but had to be decided again. The decision did no longer exist, and therefore had no longer any binding effect on the opposition division. In this manner the division was also not prevented from examining again the new opposition grounds." 
• The Board seems correct in that the first OD decision has no effect whatsoever after the remittal - irrespective of the reasons for the remittal. The further aspect is that the Board did not in appeal review the decision to not admit sufficiency as ground of opposition, so that there is no res judicata. Furthermore, the doctrine of reformatio in peius does not extend to each point decided by the OD (e.g. T 327/92, CLB IV.E.3.1.a).

T 2086/13 - link

Reasons for the Decision

1. The appeal is admissible.

[...]

Alleged procedural violation by admitting the fresh ground under Article 100(b) EPC into the opposition proceedings

4. This is the second appeal in relation to the opposition proceedings against European patent No. 1 471 950. The outcome of the first appeal T 306/09 was to set aside the decision of the opposition division and remit the case to the opposition division due to a substantive procedural violation.

4.1 In the decision contested in the first appeal proceedings, the opposition division made use of its discretion not to admit into the proceedings the ground of opposition under Article 100(b) EPC, which had been raised after the nine-month opposition period.

After the remittal ordered by T 306/09, the opposition division admitted said ground into the proceedings, and decided to revoke the patent on that ground.

4.2 The appellant argued that the admission by the opposition division of this ground represented a procedural violation. With decision T 306/09, the board remitted the case "for further prosecution", "further" meaning examining whether any request on file defined an inventive subject-matter, given that the lack of inventive step have been decided by the opposition division with an insufficient reasoning, which the board had found not to comply with the requirements of Rule 111(2) EPC. Since this was the sole point found to be deficient by the board in T 306/09, the opposition division was only allowed to examine on remittal the question of inventive step and, consequently, not to "reopen" other issues such as the admissibility of the ground of opposition under Article 100(b) EPC. The appellant argued that "It is trite law that the findings of a lower tribunal will stand unless specifically overturned by a higher court".

4.3 The board cannot see any such limitation of the scope of the second opposition proceedings, i.e. the proceedings between the earlier and the present appeal. The appellant appear to argue implicitly that the parts of the first decision of the opposition division dealing with other issues beyond inventive step somehow became res judicata. In the opinion of the board, this would result in an untenable situation. In the present case, this would mean that some appeal grounds of the opponent put forward in its appeal of 31 March 2009 against the first decision would be disposed of either without any possibility for an appellate review (see e.g. the opposition ground of extension of subject-matter under Article 100(c) EPC), or if the first appeal decision T 306/09 were indeed considered as "the" appellate review, then such a decision is obviously not reasoned concerning this opposition ground, although it has been properly raised and reasoned in the first appeal. However, the deciding board had no obligation to consider any other issues for its decision on the finding of a substantial procedural violation, given that the first decision only had a single legal effect (the maintenance of the patent in an amended form). This single legal effect had to be revoked as soon as one ground against it were found well founded, and the deciding board did not err when it did not decide on any other issue.

4.4 The board holds that the procedural situation is far simpler. With decision T 306/09, the board decided that the (first) decision of the opposition division was tarnished by a fundamental procedural violation, and had to be set aside. Given that the decision only had a single legal effect, it was then set aside in its totality, including the part related to the admission of the ground of opposition under Article 100(b) EPC. Therefore, during the opposition proceedings following the remittal ordered by T 306/09, none of the decided issues remained, but had to be decided again. The decision did no longer exist, and therefore had no longer any binding effect on the opposition division. In this manner the division was also not prevented from examining again the new opposition grounds.

Use of the opposition division's discretion to admit the ground of opposition under Article 100(b) EPC into the proceedings

5. The appellant further argued that, notwithstanding the arguments under the previous point, the ground under Article 100(b) EPC was not prima facie relevant and, for that reason, the division should not have admitted it into the proceedings.

The opposition division considered this ground not only prima facie relevant but so relevant as to revoke the patent in suit solely on this ground. For this reason alone, the division did not use its discretion to admit this fresh ground of opposition in an unreasonable manner.

Sufficiency of disclosure:

6. Claim 1 of the main request is directed to a method of evaporating a multi-component liquid solution. The method requires a vibrating plate atomiser positioned on a horizontal surface. The atomiser ejects said liquid solution forming a cloud or mist of small droplets, which are allowed to fall back towards said surface, and it is configured to eject the droplets having the largest size to the height H.

The characterising portion of the claim requires a mathematical relationship among:

- the diameter Dp of the largest droplets (in cm)

- the height H at which these largest droplets are ejected (in cm), and

- the vapour pressure Pv of the least volatile component of the liquid (in Pa),

defined by the following inequality:

1.6 x 10**(14) x Dp**(4) / [H x Pv] <= 1

which can be re-written as:

Pv >= 1.6 x 10**(14) x Dp**(4) / H

Thus, the inequality requires the vapour pressure of the component of the liquid having the lowest vapour pressure to be greater than or equal to a value that depends on the diameter of the largest droplets and on the height at which said droplets are ejected.

7. It has not been contested that, in order to carry out the claimed invention, the skilled person needs to choose and combine two physical entities, namely a vibrating plate atomiser and a multi-component liquid solution.

It has further not been contested that the patent in suit does not contain any working example disclosing a specific multi-component liquid solution and a specific vibrating plate atomiser suitable for the claimed method of evaporating.

Both parties agreed that the diameter of the largest droplets Dp and the height H depend not only on the atomiser, but also on the liquid, as they also vary with its density and its surface tension.

The skilled person, trying to perform the claimed invention, is then confronted with the problem of choosing a multi-component liquid solution fulfilling the requirements of the claim.

8. The appellant argued, however, that the changes in Dp and H deriving from the nature of the liquid were negligible and that in fact the sole variable of the inequality to which any attention should be given was Pv, which could vary by various orders of magnitude. The appellant acknowledged that a certain degree of trial and error was required to perform the invention and to find the adequate multi-component liquid solution, but argued that the skilled person, after a failure, will immediately be led to working embodiments by iteration.

9. Even though a reasonable amount of trial and error is permissible when it comes to sufficiency of disclosure, the skilled person has to have at its disposal, either in the specification or on the basis of common general knowledge, adequate information leading necessarily and directly towards success through the evaluation of initial failures.

In the present case, however, the skilled person can only determine by mere trial and error which methods of evaporating a multi-component liquid solution fulfil the inequality required by claim 1. The patent in suit does not provide any teaching on which embodiments could be suitable for the claimed invention or any other guidance which could lead the skilled person towards success.

In fact, the dependency of the variables H and Dp, both on the atomiser and the multi-component liquid solution it contains, makes any prediction difficult. The appellant has not provided any indication on which type of liquid compositions would be suitable for the claimed method other than referring to "liquid fragrances or liquid insecticides" without any further information as to their components. The appellant did not rely, either, on information which could belong to the general technical knowledge of the skilled person at the date of filing, and which could lead that person towards the appropriate type of composition for a particular atomiser. The appellant further acknowledged that the inequality of claim 1 would not be fulfilled by many multi-component liquid compositions on a defined vibrating plate atomiser.

Under these circumstances, the skilled person, confronted with every possible vibrating plate atomiser and every possible multi-component liquid solution, can only find, by trial and error, whether a particular combination of multi-component liquid solution and atomiser fulfilled the inequality of claim 1. In the opinion of the board, this amounts to an undue burden.

The board thus concludes that the claimed invention is not sufficiently disclosed for it to be carried out by a person skilled in the art and that the ground under Article 100(b) EPC precludes the maintenance of the patent as granted.

10. The appellant argued that, even when confronted with a failure, the skilled person would be led to success immediately. If a multi-component liquid solution in a particular vibrating plate atomiser were not to fulfil the inequality of claim 1, the skilled person would recognise that its least volatile component should be left out. If the inequality were still not fulfilled, the one before the least volatile compound should also be removed. This process simply needed to be repeated until a liquid solution could be used in a specific atomiser.

However, even assuming, as alleged by the appellant, that the skilled person only had to remove from a multi-component liquid solution its least volatile component(s) until the inequality is fulfilled, that person would need to start by testing every conceivable composition on every possible atomiser in order to carry out the invention throughout the whole scope of the subject-matter claimed. This level of trial and error amounts to an undue burden for the person skilled in the art.

11. The appellant argued that the respondent had failed to provide examples which could show a lack of accuracy of the inequality of claim 1.

However, the objection explained above does not arise from a lack of accuracy of the inequality but hinges on whether the skilled person had sufficient information in order to select those multi-component liquid solutions suitable for the claimed invention on a specific vibrating plate atomiser.

12. The subject-matter of claim 1 of auxiliary request I is restricted as it requires the multi-component liquid solution to comprise a multi-component liquid fragrance or a multi-component liquid insecticide. The appellant argued that any issue concerning the selection of the liquid solutions suitable for the claimed method should be overcome by the restriction in claim 1 to these specific types.

However, the amount of multi-component liquid fragrances and insecticides at the disposal of the skilled person is vast. Confronted with them, the skilled person does not have any teaching which could lead him to those suitable for the claimed method for the reasons already explained (see point 9 above).

The board thus concludes that the subject-matter of claim 1 of auxiliary request I is not described in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, with the consequence that this request is not allowable.

13. The appellant acknowledged that the arguments with respect to the sufficiency of the disclosure of the patent in suit applied in the same manner to claim 1 of auxiliary requests II, 3, IV and V.

The board thus concludes that the subject-matter of claim 1 of these requests is not described in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, with the consequence that these requests are also not allowable.

Order

For these reasons it is decided that:

1. The appeal is dismissed.