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.

2.3 It is hence necessary to consider whether the new submission or argument of appellant I constitutes an amendment to said party's case and whether it should be taken into consideration.

Article 12 RPBA sets out what are to be considered the basis of the appeal proceedings. Article 13(1) RPBA provides that any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion.

The present board considers that in deciding whether a new argument has the effect of amending a party's case within the meaning of Article 13(1) RPBA it must be established on a case-by-case basis whether the new argument is a departure from, or just a development of, the original arguments filed with the grounds of appeal or the reply thereto. This approach is in line with the analysis made in T 1621/09, see in particular point 9 of the Reasons.

2.4 In the present case, the new argument cannot be seen as merely a further development or elaboration of appellant I's previous position. The new analysis is based on a different choice of closest prior art (document D13 instead of document D1), and this in turn means that, compared to the previous argument, it is necessary to consider different reasons (based now on document D13) why the skilled person would find it obvious to arrive at the distinguishing features having regard to the prior art.

This new argument must therefore be seen as constituting an amendment to appellant I's case within the meaning of Article 13(1) RPBA, which may be admitted and considered only at the discretion of the board.

2.5 In the present case, the board, in the exercise of its discretion, decided to admit the new arguments put forward by appellant I. The reasons for this are as follows:

In its communication under Article 15(1) RPBA (which also forms part of the appeal proceedings according to Article 12(1)(c) RPBA), the board indicated that inventive step based upon D1 in combination with D13 might be discussed at oral proceedings, and hence appellant II could have foreseen that the argument which appellant I is now relying on might well become a subject for discussion. Documents D1 and D13 were both before the opposition division and have been extensively discussed throughout the proceedings. In addition, the combination of D13 with D1 compared to D1 with D13 does not change the inventive step argument in terms of technical features and problem to be solved.

In addition this new argument is not incompatible with, or contradictory to, appellant I or III's previous case, nor does it raise any complex issues.

2.6 During the oral proceedings, appellants I and III were therefore allowed to start from document D13 as starting point for assessing inventive step of claims 1 and 20 as granted, and of the independent claims of the auxiliary requests then on file.