T 0565/13 - Fresh ground: deficiency in granted claims

Key points

• If there are any issues of insufficient disclosure of a feature of the dependent claims (but not of the independent claims), insufficient disclosure needs to be argued as ground of opposition in the Notice of opposition. Otherwise, if the OD does not introduce insufficiency as ground of its own motion, and the feature is included in the independent claims in appeal, the then (more) relevant issue of insufficient disclosure will be inadmissible as "fresh ground" unless the proprietor gives consent (G 9/91; T 1053/05). 
• The present decision illustrates this.

T 0565/13 - link

Reasons for the Decision

1. The appeal is admissible.

Procedural matters

2. Article 100(b) EPC had not been invoked as a ground for opposition in the notice of opposition, and was not raised during opposition proceedings. The appellant, nevertheless, argued during the oral proceedings before the board that the subject-matter of the claims of auxiliary request 1 was not sufficiently disclosed for it to be carried out by a person skilled in the art.

Claim 3 of auxiliary request 1 limits the subject-matter of claim 1 of the patent as granted merely by requiring that the claimed product should be obtainable by the process of claim 1, which is identical to claim 13 as granted. The alleged deficiency was therefore already present in the claims as granted.

Under the present circumstances, such a fresh ground of opposition could only be examined with the consent of the respondent (G10/91, point 3. of the opinion), which has not been given. Thus, this fresh ground cannot be admitted into the proceedings.

3. The appellant relied for the first time during the oral proceedings before the board on example 1 of document D2, having discussed during the written proceedings other passages of said document. The respondent has not raised any formal objection against this new argument.

As the content of document D2 has already been thoroughly discussed in the written proceedings, the content of example 1 is very similar to that in column 9, examined by the opposition division and relied upon in appeal, and the respondent has not raised any objection, the board does not see any reason not to admit this new argument.