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.