T 0373/12 - After G 3/14

Key points

• This is the follow up decision to G 3/14. 
• Because the composition of the Board had changed since the first oral proceedings, the debate on the Main Request was reopened. In the first decision, the Board had found that the Main Request lacked inventive step and had referred questions to the Enlarged Board about the examination of clarity of the Auxiliary Request. 
• The OD had refused to admit AR-1. The appellant had not requested a review of this decision of the OD, but had re-submitted the request in appeal. The Board exercises its own discretion and decides to admit the request.
• The Board analyzes the requirement of Article 123(2) EPC in view of an added comma.
• The Board assesses inventive step based on the unclear feature, as required by G 3/14: " It is true, as submitted by the respondent, that the exact meaning of a coating covering "substantially all" of the surface area of the liner is a matter of interpretation which could vary from one person to another. However, this feature is not completely without technical meaning, since the person skilled in the art is able to identify some arrangements that, irrespective of the particular interpretation which is chosen, do not satisfy this requirement. Indeed none of the prior-art documents discloses a liner with this feature." The Board then finds that the claims involve an inventive step.

T 0373/12
For the decision, click here.  (Note: decision of 29.10.2015, issued 08.12.2015)

Summary of Facts and Submissions

I. By its decision posted on 19 December 2011 the opposition division revoked European patent No. 1814480.

II. The appellant (patent proprietor) lodged an appeal against that decision in the prescribed form and within the prescribed time limit.

III. First oral proceedings before the Board of Appeal (in a different composition) were held on 2 April 2014. At the end of those oral proceedings the Board decided to refer some questions under Article 112 EPC to the Enlarged Board of Appeal, which decided upon them in decision G 3/14.

Second oral proceedings before the Board of Appeal were held on 29 October 2015. Since the composition of the Board had changed compared with the first oral proceedings, the parties were given the possibility to submit arguments also in respect of matters which, albeit not finally decided upon, were already debated during the first oral proceedings.

Reasons for the Decision

1. Main request - Sufficiency of disclosure

..

Therefore, the patent in suit discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

2. Main request - Inventive step

...

Therefore, the subject-matter of claim 1 does not involve an inventive step in view of the combination of E3 and E2.

3. Admission of the first auxiliary request into the appeal proceedings

The first auxiliary request was filed during the oral proceedings before the opposition division, which did not admit it into the proceedings.

The appellant did not demand to have this request re-considered by the opposition division but re-submitted it in appeal, for consideration by the Board. Therefore, the Board is not limited to a review of the discretionary decision of the opposition division, which declined to admit this request, but can exercise its own discretion, as provided by Article 12(4) RPBA, over whether to admit the request in appeal proceedings (see also T 1253/09 of 25 April 2012, points 6 and 7 of the Reasons).

Auxiliary request 1 was submitted to address, by incorporating into claim 1 the features of claim 3 as granted, the issue of the interpretation of the term "periphery", which played a crucial role in the decision of the opposition division (point 5.4). Hence, this request does not alter the legal and factual framework of the case significantly and does not result in a "fresh case".

Moreover, since the importance of the interpretation of the term "periphery" became apparent during the oral proceedings before the opposition division and from its written decision, the belated submission of auxiliary request 1 is to be seen as a reaction to the course of said oral proceedings and said written decision.

Finally, as auxiliary request 1 has been re-submitted at the earliest possible stage of the appeal proceedings (with the statement of grounds of appeal), the respondent had sufficient time to prepare its reaction to it.

Under these circumstances, the Board decided to admit this request into the proceedings.

4. Auxiliary request 1 - Clarity

The objection of lack of clarity in respect of auxiliary request 1, in particular in connection with the feature according to which the prosthetic liner is coated over substantially all of its surface area, raised by the respondent in the first oral proceedings, was not maintained at the second oral proceedings. As a matter of fact, claim 1 of auxiliary request 1 essentially corresponds to the combination of granted claims 1 and 3. In particular, the feature above was comprised in the latter claim. Hence, compliance of claim 1 with the requirements of Article 84 EPC cannot be examined (see decision G 3/14).

5. Auxiliary request 1 - Article 123(2) EPC

5.1 According to claim 1 of auxiliary request 1, the prosthetic "further comprises at least one layer of coating (47) containing Parylene whereby the prosthetic liner (38) is coated over substantially all of its surface area". In view of the use of the term "whereby", without any comma preceding it, the claim stipulates that the coating over substantially all of the surface area of the liner is the result of the Parylene coating. In other words, substantially all of the surface area of the liner is coated with Parylene. The parties also understood the claim in this way.

5.2 The feature according to which the prosthetic liner is coated over substantially all of its surface area was literally disclosed in claim 3 as originally filed. However, it remains to be established if the application as originally filed discloses also that said coating extends over substantially all of the surface area contains Parylene.

5.3 In the claims as originally filed Parylene is mentioned in dependent claim 2, on which claim 3 depends. According to claim 2, the improved prosthetic liner of claim 1 further comprises "at least one layer of coating containing Parylene". Originally filed claim 3 reads: "The improved prosthetic of claims 1 or 2, whereby the prosthetic liner is coated over substantially all of its surface area". It is true that it comprises a comma before the word "whereby", which is not present in claim 1 of auxiliary request 1, and that it may also depend on original claim 1, which does not specify that the lubricious coating contains Parylene. However, when original claim 3 is considered as being dependent on claim 2, the straightforward interpretation of the claim is that the coating over substantially all of the surface area of the liner is the only one mentioned in the claim, namely the Parylene coating.

Moreover, even if the person skilled in the art had some doubts as to the correctness of this interpretation, these doubts would be dispelled by the rest of the patent application. Both the description (in particular page 4, line 21 to page 5, line 3) and the drawings (Figure 2) disclose Parylene as a preferred coating. The Parylene coating is not described in combination with other coatings and preferably covers the entire liner, with the possible exception of the gripping zones. Hence, there is no doubt that, when a Parylene coating is present and the prosthetic liner is coated over substantially all of its surface area, it is indeed said Parylene coating that covers substantially all said surface area.

5.4 Accordingly, claim 1 of auxiliary request 1 has not been amended in a way which extends beyond the content of the application as filed.

6. Auxiliary request 1 - Inventive step of claim 1

6.1 It is true, as submitted by the respondent, that the exact meaning of a coating covering "substantially all" of the surface area of the liner is a matter of interpretation which could vary from one person to another. However, this feature is not completely without technical meaning, since the person skilled in the art is able to identify some arrangements that, irrespective of the particular interpretation which is chosen, do not satisfy this requirement. Indeed none of the prior-art documents discloses a liner with this feature.

In particular, E2 discloses a coating of Parylene only on the exterior of the liner (see for instance claims 1 and 2). Since the whole inner surface does not have the coating, it cannot be said that "substantially all" of the surface area of the liner is coated as required by claim 1, and this requirement constitutes an additional distinguishing feature. Therefore, the findings in respect of claim 1 of the main request cannot, contrary to the view of the respondent, be transposed to claim 1 of auxiliary request 1.

6.2 The respondent submitted that, if this additional distinguishing feature were acknowledged, E2 represents the closest prior art for claim 1 and that starting from the device known from E2 the problems to be solved were the reduction of milking and the improvement of lubrication of the inner surface. Solving both these problems by providing (a) an enhanced umbrella and (b) a Parylene coating on the inside of the liner was obvious in view of the teaching of E1 or E3 and of E2 itself respectively.

6.3 The subject-matter of claim 1 of auxiliary request 1 does indeed differ from the device of E2 by said features (a) and (b).

However, since the method of wearing the liner disclosed in E2 is rolling (see page 4, lines 29 to 30), the person skilled in the art had no reason to improve the lubrication of the inner surface in order to ease the wearing of the liner. On the contrary, he would keep the inner surface tacky, to reduce movement and, as a consequence, milking. Hence, E2 does not render the provision of feature (b) obvious.

Nor is such a teaching to be found in E1 or E3, since neither of them discloses a lubricious coating on the inner surface of the liner.

Therefore, starting from E2 the person skilled in the art had no reason to provide the Parylene coating on substantially all the surface of the liner, as required by claim 1.

Accordingly, the subject-matter of claim 1 of auxiliary request 1 involves an inventive step.

7. Auxiliary request 1 - Inventive step of claim 4

The same conclusion applies to the subject-matter of claim 4, because the claimed method also involves the coating with Parylene of substantially all the surface of the liner, rendering it non-obvious over the prior art.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent in the following version:

- claims 1 to 6 of auxiliary request 1 filed at the oral proceedings before the Board,

- description: columns 1 to 5 as filed at the oral proceedings,

- drawings: figures 1 to 3 as granted.