T 1265/13 - Omitting feature, not searched

Key points

• In this examination appeal the Main Request was directed to amended claim wherein a feature of claim 1 as filed was omitted. The Main Request is not admitted under (current) Rule 137(5) EPC by the Board, because it is directed to unsearched subject-matter. Moreover, claims of the request address a different technical problem as claim 1 filed, in view of the now omitted feature.

EPO T 1265/13 -  link

Reasons for the Decision

1. Main and first to fourth auxiliary requests

1.1 [] According to the international search report drawn up by the EPO, the search was carried out for the invention defined by the subject-matter of claims 1, 2, 8-41 and 54 as originally filed, all of which - and in particular independent claims 1, 9, 23, 25, 27, 34 and 38 - contained the feature "at least one radio frequency transponder device", which feature at the date of filing of the application was held to be essential for the performance of the invention.

1.2 In the amendments to independent claim 1 of the main and first to fourth auxiliary requests at issue, the above feature, however, was deliberately omitted, with the consequence that the new invention not originally claimed is now defined by subject-matter which was not covered by the search.

1.3 According to Rule 137(4) EPC as in force before 1 April 2010, amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept (see also T 708/00, Reasons 8, and T 2459/12, Reasons 4.2).

1.4 In the present case, this requirement is not satisfied because, as explained at page 13, lines 8 to 11 of the application as filed, the biological sample storage device which comprises a radio frequency transponder device is supposed to receive, store and/or transmit data to a system for processing sample data, while the subject-matter of claim 1 of the main and first to fourth auxiliary requests - which does not comprise the required radio frequency transponder device - cannot receive, store and transmit data, and so does not form a single general inventive concept with the invention originally disclosed and searched.

1.5 The appellant argued that the passage at page 12, line 29 to page 13, line 15 described a biological sample device comprising only a sample plate and a lid, with the consequence that the radio frequency transponder device was not indispensable for the function of the invention, since the presence of a radio frequency transponder device had no bearing on the ability of the device to dry store biological samples.

For the board, this argument is irrelevant since the dry storage of biological samples relates to the problem of how to improve storage of biological material and is a different invention from the one originally defined in the searched claims, the purpose of which included the functions of receiving, storing and transmitting data with the goal of creating an inventory system.

1.6 It follows that the five requests, which in their independent claim 1 omit the feature "at least one radio frequency transponder device", are contrary to the requirements of Rule 137(4) EPC as in force before 1 April 2010, with the consequence that they are not allowable.

T 1741/12 - Unsearched feature added

Key points

• The Board decides to not admit a request, under Article 12(4) RPBA, inter alia because it contains an added feature taken from the description, which may  not have been searched.  " An auxiliary request which incorporate[s] a probably unsearched feature taken from the description [is not to be] admitted, using the board's discretionary power under Article 12(4) RPBA" 
• 
  

EPO T 1741/12 - link

5. Sixth auxiliary request - admissibility

5.1 The sixth auxiliary request essentially corresponds to the fourth auxiliary request as filed with the statement of grounds of appeal.

5.2 Claim 1 (see point IX above) incorporates the feature "checking that ... the heads will not collide with each other". This feature has hitherto never been claimed.

5.3 In accordance with Article 12(4) RPBA, the board has the discretion to not admit requests which could have been presented before the first instance (here, the opposition division). In the board's view, the sixth auxiliary request, since it incorporates entirely new matter taken from the description, could, and indeed should, have been presented before the opposition division and not for the first time in appeal proceedings. The board points out that the primary purpose of opposition appeal proceedings is to examine the correctness of the decision (cf. G 9/91, OJ EPO 1993, 408, 419, reasons, 18) rather than provide an opportunity to amend the claims by introducing new features from the description, requiring entirely new issues to be examined.

5.4 The board further notes that at the oral proceedings before the opposition division, the proprietor expressly declined the opportunity to present another request (cf. point 17 of the minutes).

5.5 The board also points out that, as the features added are taken from the description, it is unclear whether they have been the subject of the search. As a consequence, even in the hypothetical case that the subject-matter of claim 1 were not obvious having regard to the prior art on file, the board would not be in a position to maintain the patent in amended form on the basis of this request, but would have to remit the case to the opposition division for further prosecution (see also the respondent's reply to the statement of grounds of appeal dated 14 February 2013, point 7.1.2). This situation is analogous to that dealt with in decision T 881/09, point 4 of the reasons, where it was decided that an auxiliary request which incorporated a probably unsearched feature taken from the description be not admitted, using the board's discretionary power under Article 12(4) RPBA.

5.6 At the oral proceedings, the appellant argued that the request should be admitted as it was simple to understand, had been filed at the earliest opportunity in the appeal procedure, i.e. with the statement of grounds of appeal (i.e. by way of the fourth auxiliary request), and was specifically focused on the multiple head aspect. The appellant also alleged that the request had not been filed during the opposition procedure as this had taken an unexpected turn when the opposition found the requests on file to lack inventive step.

5.7 The board however considers that the proprietor should have been prepared for the eventuality that its request(s) on file would be refused by the opposition division due to lack of inventive step with respect to the combination of E1 and E2, as this had been raised in the notice of opposition. Further, none of the other reasons alter the fact that the board would be forced to remit the case to the opposition division if the request were to be admitted.

5.8 In the letter dated 30 September 2016, the appellant stated that a reason for filing the sixth auxiliary request was to respond to the board's observations regarding the need for claim 1 to be functionally limited to an adequately defined technical process [to be considered as a non-intellectual activity]. However, leaving aside the fact that the request was essentially filed before the board had made observations (i.e. as the fourth auxiliary request filed with the statement of grounds of appeal), whether or not claim 1 is limited to an adequately defined technical process is not the issue here and therefore alone not a justification for admitting the request.

5.9 For these reasons, the board decided not to admit the sixth auxiliary request (Article 12(4) RPBA).

T 1285/13 - Article 57

Key points 

• "The examining division decided that the requests before it not only lacked an inventive step but also industrial applicability. The examining division decided that the indication of achievable objectives given in the application did not go beyond speculation and vague general statements. Therefore, no defined industrial application was considered to be disclosed. 
• The Board states that " the issue of Article 57 EPC is closely related to the question whether or not the technical problem underlying the invention has been credibly solved. As shown in points 13 to 23 above, the board is convinced that the priority application plausibly discloses a role for miR-1 in the regulation of physiological processes." . The Board therefore finds that the claim meets the requirement of Article 57 EPC.

T 1285/13 -  link

V. Claim 1 of the main request reads as follows:

"1. An isolated nucleic acid molecule having a length of from 18 to 25 nucleotides comprising a nucleotide sequence which has an identity of at least 90% to a sequence shown in SEQ ID NO 58 (miR-1) or a complement thereof."

Reasons for the Decision

Article 57 EPC
30. The examining division decided that the requests before it not only lacked an inventive step but also industrial applicability. The examining division decided that the indication of achievable objectives given in the application did not go beyond speculation and vague general statements. Therefore, no defined industrial application was considered to be disclosed.

T 1118/12 - Patient group and inherent disclosure

Key points

• "It is undisputed that the compound and the treated disorder disclosed in document D4 fall under the definitions in present claim 1, and that the patients disclosed in document D4 are immune-compromised. The question is whether they also have nasal carriage of S. aureus." "It was known from document D11 that hemodialysis patients showed a mean nasal carriage rate of 51.5% (range from 30.1% to 84.4%)." 
• "In the board's judgement, the skilled person would not have considered that the nasal carriage rates disclosed in document D11 would necessarily also apply to the later study disclosed in document D4. This is so, firstly, because document D11 also discloses that the range of carriage rates reported is large, that older studies tended to find higher carriage rates and that changes in S. aureus nasal carriage may have occurred over the years ([]). Secondly, because the skilled person would have also known that it could not be excluded that the patients of document D4 were treated topically to eliminate nasal carriage ()."
• The Board finds the claim novel over D4.
• The Board recalls that G 2/88 held that "under Article 54(2) EPC the question to be decided is what has been "made available" to the public: the question is not what may have been "inherent" in what was made available (by a prior written description, or in what has previously been used (prior use), for example)" (note that the claim is a second medical use claim).
  

EPO T 1118/12 - link

Claim 1 of auxiliary request 1A reads:
"1. A vaccine comprising a glycoconjugate of a Type 5 polysaccharide antigen of S. aureus and an immunocarrier, and a glycoconjugate of a Type 8 polysaccharide antigen of S. aureus and an immunocarrier, for use in protecting an immune-compromised individual from staphylococcal bacterial infection, wherein said immune-compromised individual has nasal carriage of S. aureus."

Reasons for the Decision

Introduction

1. The present invention relates to the use of staphylococcal glycoconjugate vaccines in preventing Staphylococcus aureus (S. aureus) infection in immune-compromised individuals who have nasal carriage of S. aureus. S. aureus causes a wide spectrum of human diseases, the most important of which is bacteremia, i.e. an invasion of the bloodstream by S. aureus. Before the priority date of the application it was considered that nasal carriage of S. aureus played a key role in the epidemiology and pathogenesis of infection (see document D11, a review article published in the year 1997, page 505, left hand column, first paragraph). Indeed, document D11 also discloses that the nasal carriage-positive patient group has a 6.3-fold higher risk of bacteremia (see page 512, left hand column, second paragraph). According to document D11 (see page 505, right hand column, first paragraph), "Approximately 20% of individuals almost always carry one type of [S. aureus] strain" (so-called "persistent carriers"). Roughly 60% of the population harbors S. aureus intermittently while 20% of the population never carries S. aureus (so-called "non-carriers")".

Auxiliary request 1A (sole request)

Novelty (Article 54 EPC)

2. Claim 1 of auxiliary request 1A is directed to a vaccine comprising glycoconjugates of capsular polysaccharide antigens of S. aureus, for use in protecting an immune-compromised individual from staphylococcal bacterial infection, "wherein said immune-compromised individual has nasal carriage of S. aureus" (see section II above for the complete wording of claim 1).

3. The examining division decided that the disclosure in document D4 anticipated the claimed subject-matter.

4. Document D4, an abstract published in April 2001, discloses the results of a clinical trial involving 1800 hemodialysis patients. In a double-blind, randomised, placebo-controlled trial, the efficacy of a bivalent S. aureus glycoconjugate vaccine that included capsular polysaccharide (CP) type 5 and 8 conjugated to a non-toxic recombinant exoprotein A from Pseudomonas aeruginosa, termed Nabi**(®) StaphVAX**(®), was evaluated. Ten months post-vaccination, 26 S. aureus bacteremias had occurred in the placebo group and 11 in the vaccinated group. This corresponded to a 57% reduction in the occurrence of bacteremia. Document D4 concludes "that StaphVAX**(®) was well tolerated, and can significantly reduce the incidence of S. aureus bacteremia in this at-risk population through approximately 10 months post-vaccination." Document D4 is silent about nasal carriage of S. aureus.

5. It is undisputed that the compound and the treated disorder disclosed in document D4 fall under the definitions in present claim 1, and that the patients disclosed in document D4 are immune-compromised. The question is whether they also have nasal carriage of S. aureus.

6. The reasoning of the examining division in holding that document D4 also disclosed the feature "wherein said immune-compromised individual has nasal carriage of S. aureus" can be summarised as follows: It was known from document D11 that hemodialysis patients showed a mean nasal carriage rate of 51.5% (range from 30.1% to 84.4%). Therefore, at least one third of the hemodialysis patients vaccinated according to document D4 carried S. aureus in their nasal cavity. Since the group of vaccinated patients was so large it was beyond reasonable doubt that at least one patient carrying S. aureus in his or her nasal cavity had been vaccinated. The examining division concluded that "thus, a patient group or individual patients defined by being immune-compromised having nasal carriage of Staphylococcal bacteria was/were inherently vaccinated in the prior art."

7. The Enlarged Board of Appeal, when considering, in its decision G 2/88 (OJ EPO 1990, 93, corr. 469), claims directed to a new use of a known compound, commented on the interpretation of Article 54(2) EPC as follows (see reasons, point 10): "Article 54(2) EPC defines the state of the art as comprising "everything made available to the public by means of a written or oral description, by use, or in any other way." (...) the question of what has been made available to the public is one of fact in each case. (...) In the case of a "written description" which is open for inspection, what is made available in particular is the information content of the written description. (...) In each such case, however, a line must be drawn between what is in fact made available, and what remains hidden or otherwise has not been made available" (emphasis added).

Furthermore, it stated in point 10.1 that "under Article 54(2) EPC the question to be decided is what has been "made available" to the public: the question is not what may have been "inherent" in what was made available (by a prior written description, or in what has previously been used (prior use), for example) (...)". [Note: However, see G 1/92]

8. For determining the information content - or disclosure - of a document, the boards have established certain principles to be observed. Thus, the information content of a document is what the skilled person derives directly and unambiguously, using common general knowledge, from the document as a whole, including features which for the skilled person are implicit in what is explicitly disclosed. In this context "implicit disclosure" means disclosure which any person skilled in the art would objectively consider as necessarily implied in the explicit content, e.g. in view of general scientific laws. In particular, the term "implicit disclosure" should not be construed to mean matter that does not belong to the content of the technical information provided by a document but may be rendered obvious on the basis of that content (see Case Law of the Boards of Appeal of the European Patent Office, 7th edition 2013, sections I.C.3.1 and I.C.3.3).

9. Given the examining division's reasoning that in view of the disclosure of document D11 "a patient group or individual patients defined by being immune-compromised having nasal carriage of Staphylococcal bacteria was/were inherently vaccinated in the prior art" (see point 6 above), the question to be addressed in the light of the observations in points 7 and 8 above is, whether or not the skilled person would have directly and unambiguously derived this disclosure from document D4 when reading it with his common general knowledge about nasal carriage rates taught in document D11.

10. The board notes that the nasal carrier rates disclosed in document D11 were determined on the basis of reports of eight different studies on nasal carriage carried out between 1975 and 1991, while the study disclosed in document D4 was carried out in the year 2000.

11. In the board's judgement, the skilled person would not have considered that the nasal carriage rates disclosed in document D11 would necessarily also apply to the later study disclosed in document D4. This is so, firstly, because document D11 also discloses that the range of carriage rates reported is large, that older studies tended to find higher carriage rates and that changes in S. aureus nasal carriage may have occurred over the years (see paragraph bridging pages 505 and 506). Secondly, because the skilled person would have also known that it could not be excluded that the patients of document D4 were treated topically to eliminate nasal carriage (see e.g. document D11, page 505, right hand column, first paragraph).

12. Hence, the board concludes from points 8 to 11 above that the skilled person would not have derived directly and unambiguously, using common general knowledge, from document D4 as a whole, the disclosure that nasal carriage-positive patients were vaccinated.

13. Lastly, also in view of the boards' established case law that the use of the same compound in the treatment of the same disease for a particular group of subjects can nevertheless represent a novel therapeutic application, provided it is carried out on a new group of subjects which has a distinct physiological or pathological status (see e.g. T 19/86, OJ EPO 1989, 24, reasons, point 8; and T 893/90, reasons, point 4.2), the board comes to the conclusion that the claimed subject-matter is novel. The patient group concerned is distinguished from the patient group of document D4 by both its physiological (nasal carriage) and pathological (higher risk of bacteremia) status.

14. In view of the observations in points 8 to 13 above the board thus concludes that the subject-matter of claims 1 to 10 is not anticipated by the disclosure of document D4.

15. Similar considerations likewise apply to document D9.

16. Therefore the board decides that auxiliary request 1A fulfils the requirements of Article 54 EPC.

T 0792/12 - Interruption by the Board

Key points

• " The fact, as here, that a Board is not convinced by the representative's arguments on a certain matter, and even interrupts the representative to clarify how the representative sees that a certain argument is at all relevant to the claim in question, or to the matter of novelty or inventive step which is being discussed, does not imply that a Board is not listening or is intent on sticking by its provisional opinion.
  In the present case a significant portion of the representative's submissions particularly with respect to the main request, were a simple repetition of the numerous written submissions prior to oral proceedings, and indeed often a repetition of what had been presented already orally but a few minutes earlier. "

EPO T 0792/12 - link

2. Procedural issues

2.1 The appellant's contention in the course of the discussion on the main request, that the Board seemed intent on sticking by its preliminary opinion, seemed not to want to listen to the arguments of the appellant and appeared to lack impartiality in the case by not being convinced by its arguments and interrupting on several occasions, is rejected.

2.2 In accordance with Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), the Chairman of the Board presides over the oral proceedings and ensures their fair, orderly and efficient conduct. When the Chairman sees a need to interject in a party's submissions to ensure that the proceedings are efficiently conducted, in particular to avoid a party repeating arguments, this is done. A Board is not required to passively listen to repetition. In the same way, a Chairman, or indeed any member of the Board, may interrupt when it is felt necessary to ask questions which the Board for example finds important for reaching its decision. The appellant's insistence that the Board not make any interruption during its pleadings, which it considered to indicate a lack of impartiality, is a misconception by that party of what constitutes a fair hearing.

2.3 The fact, as here, that a Board is not convinced by the representative's arguments on a certain matter, and even interrupts the representative to clarify how the representative sees that a certain argument is at all relevant to the claim in question, or to the matter of novelty or inventive step which is being discussed, does not imply that a Board is not listening or is intent on sticking by its provisional opinion. In the present case a significant portion of the representative's submissions particularly with respect to the main request, were a simple repetition of the numerous written submissions prior to oral proceedings, and indeed often a repetition of what had been presented already orally but a few minutes earlier. It is here of relevance to note that, when interrupted on one last occasion so as to limit further repetition, the representative of the appellant himself argued that during his submissions he had in fact made two new points not mentioned in writing (a general reference to T56/87 and a reference to Article 69 EPC - see above, both duly noted and commented upon in the course of the debate by the Board). The objections of the appellant are, at least for these reasons, unfounded.

T 1802/13 - Mixed invention

Key points

• The distinguishing feature is " evidently concerned with "how" specific cognitive data is actually presented rather than "what" is presented". The board indicates that, in order to decide whether the feature (of how the information is presented) is technical (and can provide inventive step) the main issue to be established is "whether the underlying user interface together with the manner in which cognitive content is presented credibly assists the user in performing a technical task by means of a continued and guided human-machine interaction process. 
• The board judges that the feature relates to presentations of information as such, i.e. to a non-technical feature, which has to be disregarded in the assessment of inventive step.
• Of interest, the Board refers to T decisions with the Board number added (e.g. T 1749/06-3.4.03). Possibly the Board wishes to indicate that some of the cited decisions are of other Boards. I don't believe it is common practice to cite T decisions in this way.

EPO T 1802/13 - link

2.1 Novelty and inventive step

In the board's judgment, present claim 1 does not meet the requirements of Article 56 EPC 1973, for the reasons set out below.

2.1.1 The board does not see any prejudicial errors in the assessment of inventive step as conducted in the decision under appeal, having regard to prior-art documents D1 and D2 (cf. Reasons 3 and 4).

2.1.2 Although the impugned decision relied on D1 as closest prior art, the board agrees with the appellant that document D2 may likewise be regarded as a starting point for assessing inventive step. In particular, it discloses the following features of present claim 1:

A computerised system ("DBS system") comprising:
a) an imaging data storage circuit adapted to store imaging data corresponding to an image of an anatomic volume of a patient (see e.g. Fig. 1);
b) a processor circuit, coupled to the imaging data storage circuit, configured to
b1) generate a model of brain tissue ("diffusion tension imaging DTI") that represents a non-uniform spatial distribution of tissue conductivity including inhomogeneous and anisotropic tissue conductivity, wherein the model includes a representation of an implanted electrode leadwire ("3-dimensional finite element models of the Medtronic 3387 DBS lead") (see abstract; page 590, left-hand column, second and third paragraphs);
b2) calculate, for each of the set of stimulation parameters (e.g. "stimulus amplitude") and prior to use of an electrode leadwire in accordance with the respective set of stimulation parameters, a predicted volume of activation by calculating a second difference ("Delta**(2)Ve") of the electric potential distribution ("Ve") produced by the electrode leadwire ("DBS electrode") using the model of brain tissue which represents the non-uniform spatial distribution of tissue conductivity (see e.g. page 590, right-hand column, last paragraph; page 592, right-hand column, second paragraph; Fig. 1B);
b3) register the image of the anatomic volume of the patient to an atlas of the brain to create a patient-specific atlas of the brain tissue (see e.g. page 590, right-hand column, lines 32-35; Fig. 1B);
c) a computer display, coupled to the processor circuit, configured to display on the computer display a map ("FEM VR Map") in which the electrode leadwire and the predicted volume of activation are displayed (see Fig. 1B).

2.1.3 As regards feature c), it is apparent to the board that the "FEM VR Map" shows the DBS electrode and the modelled volume of activation, while the screen relating to "Human DTI" displays the patient's brain atlas (see e.g. caption of Fig. 1B: "... The right panels of the top row shows[sic] the volume ratio ... for the entire axial slice (far right) and the ... region that was used in the finite element model (middle right)"). Thus, those displays indeed do not directly and unambiguously disclose the superimposition of the electrode leadwire and the predicted volume of activation on the patient's brain atlas as called for by claim 1. 

Consequently, the sole difference between present claim 1 and the disclosure of D2 is that
i) a map is displayed in which the electrode leadwire and the predicted volume of activation are superimposed on the patient-specific atlas of the brain tissue.

2.1.4 The focal question is now whether distinguishing feature i) has a technical effect or whether it relates merely to presentations of information as such within the meaning of Article 52(2)(d) and (3) EPC. In this context, the board notes that the superimposition of both the monitored data ("electrode leadwire") and the calculated data ("predicted volume of activation") on the patient's brain atlas is evidently concerned with "how" specific cognitive data is actually presented rather than "what" is presented.

2.1.5 The appellant submitted that the case law of the Boards of Appeal relating to presentation of information had "relied heavily on the understanding that it is important how the data is displayed not what is displayed" (cf. appellant's letter dated 7 April 2016, first page, last paragraph). The appellant seems to rely for authority on the conclusions drawn in T 1749/06-3.4.03 of 24 February 2010 (see Reasons 4.1.3), which are further elaborated by reference to the corresponding PCT provisions in recent case T 651/12-3.4.03 of 14 April 2016 (see Reasons 3.2, page 15, last paragraph to page 16, second paragraph).

In that regard, the board recalls that e.g. T 1143/06-3.5.01 of 1 April 2009, relied on by several boards, states that "a feature which relates to the manner how cognitive content is conveyed to the user on a screen normally does not contribute to a technical solution to a technical problem. An exception would be if the manner of presentation can be shown to have a credible technical effect" (see Reasons 5.4, emphasis added by this board). This is also reflected (almost verbatim) in the Guidelines for Examination in the European Patent Office (see G-II, 3.7, second paragraph e.g. in the version of November 2016).

Similar to the issue of "what" is presented (see e.g. T 336/14-3.5.05 of 2 September 2015, Headnote), the board finds that - regarding the technicality of the manner in which (i.e. "how") information is presented - the main issue to be established is whether the underlying user interface together with the manner in which cognitive content is presented credibly assists the user in performing a technical task by means of a continued and guided human-machine interaction process (basically related to the question "for what purpose" the content is presented).

This was the case in T 928/03-3.5.01 of 2 June 2006, cited by the appellant in its letter dated 7 April 2016 (cf. second page, first paragraph), where it was held that displaying, in an interactive video soccer game, guide marks indicating the direction in which the football is to be passed by the active soccer player at predetermined locations of the screen solved the objective technical problem of resolving conflicting technical requirements, namely that (1) a portion of an image is desired to be displayed on a relatively large scale and that (2) the display area of the screen is not too small to show a complete zone of interest (cf. Reasons 4.3). In the context of distinguishing the claimed subject-matter from the prior art by the manner in which information is presented, a technical effect and a contribution to inventive step were also acknowledged in recent cases T 1375/11-3.4.03 of 31 March 2016 (relying on the problem of improving ergonomics and user-friendliness in an online gambling system including physiological considerations; see Reasons 4.3) and T 1715/11-3.2.04 of 22 July 2015 (relying on the problem of facilitating man-machine interactions; see Reasons 3).

2.1.6 Coming back to the present case, in the appellant's opinion, distinguishing feature i) had the technical effect of "lowering the cognitive burden of a user", resulting in a more efficient man-machine interface (cf. statement setting out the grounds of appeal, fourth page, last paragraph), while the objective problem addressed by feature i) was the "provision of an improved system that provides a more efficient method of selecting the electrode parameters for DBS" (cf. appellant's letter dated 7 April 2016, first page, fourth paragraph).

2.1.7 However, it is established jurisprudence of the Boards of Appeal that "lowering the cognitive burden of a user" per se cannot in principle be considered to be a technical effect (see e.g. T 1741/08-3.5.06 of 2 August 2012, Reasons 2.1.6; T 1539/09-3.5.06 of 18 July 2013, Reasons 4; T 1237/10-3.5.07 of 16 October 2015, Reasons 5.4). Nor is it derivable from present claim 1 - beyond mere speculation - that it credibly brings about the technical effect of accurately predicting the electrodes' properties and providing that information to the surgeon in an efficient manner (contrary to the appellant's assertion in the statement setting out the grounds of appeal, page 5, eighth paragraph).

Rather, the board holds that feature i) corresponds to presenting cognitive content which addresses solely the user's mental process instead of credibly and causally assisting the user (surgeon) in performing the task of neurosurgical operations via a continued and/or guided human-machine interaction process. In particular, the board finds that the mere fact that two specific types of information (i.e. "electrode leadwire" and "predicted volume of activation") are presented in a superimposed manner with regard to another type of information ("patient-specific atlas") is not sufficient - contrary to the situation in case T 928/03-3.5.01 - to conclude that the underlying system is thereby indeed improved or that the corresponding method is more efficient. Rather, this remains mere speculation. For example, such a superimposition of different data may arguably - depending on the display resolution and/or the user's (surgeon's) cognitive capabilities or preferences - detrimentally affect the comprehensibility and usability of the data presented and thus might even deteriorate the efficiency of selecting the optimal DBS electrode parameters.

Accordingly, the board judges that feature i) relates to presentations of information as such, i.e. to a non-technical feature, which has to be disregarded in the assessment of inventive step according to the established jurisprudence of the Boards of Appeal (see e.g. T 641/00-3.5.01, OJ EPO 2003, 352, first headnote).

2.2 In view of the above, the main request is not allowable under Article 56 EPC 1973.

J 0013/13 - Rule 36 (old) time limit

Key points

• An objection under Rule 43(2) EPC does not trigger a new 24-months time limit for filing a divisional application under Rule 36(1)(b) EPC (old) because it is not based on lack of unity of invention. The introductory phrase "without prejudice to Article 82" in Rule 43(2) EPC means that the rule does not change the application of Article 82 EPC, not that the rule is based on Article 82 EPC. 

EPO  J 0013/13 - link

Sachverhalt und Anträge

I. Die Beschwerde richtet sich gegen die Entscheidung der Eingangsstelle vom 18. März 2013, die europäische Patentanmeldung Nr. XXXXXXXX.X nicht als Teilanmeldung der früheren Anmeldung Nr. YYYYYYYY.Y zu behandeln und den Antrag auf Wiedereinsetzung zurückzuweisen.

T 1689/12 - Reformatio in peius of claims

Key points

• The Board does  not admit a claims request previously submitted but withdrawn before the OD. Even if the OD was entirely negative in its preliminary opinion and the patentee had withdrawn the request so as to streamline the discussion.
• The Board indicates that because Article 100(c) EPC was not a ground for opposition raised by the opponent, the claims as granted are " regarded as being based on the original disclosure" . 
• The claims as maintained by the OD can not be challenged by the non-appealing opponent, in view of the prohibition of reformatio in peius. Even if the claims request at issue contains added claims.
• The Board accepts the addition of an independent claim under Rule 80 EPC as being exceptional case. 

EPO T 1689/12 - link

Reasons for the Decision

1. Main request

1.1 The main request corresponds to the former fourth auxiliary request filed with the statement setting out the grounds of appeal. As put forward in the annex to the summons to oral proceedings, point 8.1.1, this auxiliary request corresponds to the then auxiliary request 4 in opposition, which was withdrawn by the appellant during the oral proceedings before the opposition division (see minutes, point 1).

Hence, its subject-matter has not been dealt with in the impugned decision. This was not contested by the appellant.

1.2 As stated in T 1067/08, not published in OJ EPO, point 7 of the reasons, the "purpose of the inter partes appeal procedure is mainly to give the losing party a possibility to challenge the decision of the opposition division on its merits and to obtain a judicial ruling on whether the decision of the opposition division is correct (G 9/91 and G 10/91, OJ EPO 1993, 408, 420)".

This means that "parties to first-instance proceedings are not at liberty to bring about the shifting of their case to the second instance as they please, and so compel the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance. Conceding such freedom to a party (and/or to the department of first instance) would run counter to orderly and efficient proceedings. In effect, it would allow a kind of "forum shopping" which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be absolutely unacceptable for procedural economy generally".

In order to forestall such conduct, Article 12(4) RPBA provides that the Board has the power to hold inadmissible any requests which could have been presented - in the present case, could have been maintained - in the first-instance proceedings.

The Board applies, to the benefit of the appellant, a more lenient "should have been presented" in this requirement, i.e. "should have been maintained", in the present case. In any case, the jurisprudence of the Boards of Appeal is quite clear in this respect: the request should have been subjected to the decision under appeal so that the Board can conduct a final review of the reasons for the decision given on this point (see e.g. T 1067/08, supra, point 8.1 of the reasons; Case Law of the Boards of Appeal, 8th Edition, 2016, IV.E.4.1.4 and IV.E.4.3.2.d)

Therefore, taking into consideration the above principles, the main request is not admitted into the proceedings (Article 12(4) RPBA).

1.3 As put forward in its written submission dated 26 August 2016 and at the oral proceedings, the appellant argues that this request (the then auxiliary request 4 in opposition) was filed in due time and sufficiently in advance during the opposition proceedings for the respondent/opponent to react. The opposition division even took position on its subject-matter in its preliminary opinion which, hence, was then part of the discussions.

The appellant withdrew this request for increasing procedural efficiency as it was sure, in view of the negative preliminary opinion of the opposition division, that it would not be regarded as allowable. Further, the opposition division made it clear at the very beginning of the oral proceedings that only a limited number of requests would be discussed. Hence, the appellant, by withdrawing this request, followed the opposition division's demand and helped to ensuring an efficient procedure. It should not be penalised for that.

The appellant further argues that this very request was presented with the statement setting out the grounds of appeal, pursuant to Article 12(2) RPBA. Since its subject-matter is not complex and does not raise issues which the Board or the respondent cannot reasonably be expected to deal with without adjournment of the oral proceedings, it should be admitted into the proceedings. It is surely not an abuse of the proceedings.

1.4 The Board cannot share this view for the reasons already given under point 1.2 above.

In addition, it is not because a request has been filed at some point during the opposition proceedings that the patent proprietor maintains the right to reintroduce it later in the proceedings, if withdrawn. By withholding the request, the impugned decision is completely silent on it. This means that the patent proprietor will present for the first time in appeal its arguments against the preliminary opinion of the opposition division, without the latter having dealt with these arguments. This does not enable the Board to review the decision in this respect. It may have been procedurally efficient for the patent proprietor, it runs counter to procedural efficiency before the Board.

Finally, the Board cannot see any development during the oral proceedings before the opposition division or any reasons in the impugned decision which could have made the re-introduction of the request in appeal acceptable pursuant to Article 12(4) RPBA. The fact that the subject-matter of this request is seen by the appellant as being not complex with no need to adjourn the oral proceedings concerns Article 13 RPBA, which is not the issue here.

2. Auxiliary request 1

Apart from the set of claims according to the patent as maintained by the opposition division, this auxiliary request further comprises additional claims 2-11 and 14, claims 2 and 14 being independent claims.

2.1 Admission into the proceedings

2.1.1 At the oral proceedings the respondent objected to the admission of this auxiliary request into the proceedings arguing that the subject-matter of the added independent claims 2 and 14 had been deliberately withdrawn during the opposition proceedings.

For supporting its view it referred to annex 4 of the minutes (see also annex II of the impugned decision), corresponding to the set of claims of the patent as maintained by the opposition division, in which it appears that the appellant actively deleted in claim 1 (see hand-written amendments/strikethrough) the subject-matter of claim 2 of the auxiliary request ("arranged in"). The same deletion was made in claim 3 of annex 4 of the minutes for the subject-matter of claim 14 of the present auxiliary request. Having them now in the auxiliary request amounts to requesting their reintroduction in appeal.

Consequently, the auxiliary request should not be admitted into the proceedings for the same reasons as those given for the main request under point 1 above.

2.1.2 The Board cannot share this view since the subject-matter of claims 2 and 14 of the auxiliary request, contrary to the respondent's view, has never been withdrawn by the appellant. As a matter of fact, their subject-matters are comprised in, at least, the auxiliary requests 2, 2A and 5A dealt with in the impugned decision (see claims 1 and 13 of the then auxiliary requests 2 and 2A; claims 1 and 12 of the then auxiliary request 5A). The subject-matters are hence part of the factual and legal scope of the impugned decision to be reviewed by the Board.

The fact that these requests were regarded as not allowable by the opposition division on grounds not related to the patentability of their subject-matters, e.g. novelty and/or inventive step, is irrelevant. What matters is that these requests, more importantly their subject-matters, were at the basis of the impugned decision (see point XI, uncontested by the respondent) and, hence, not withdrawn. Consequently, the situation for the main request under point 1 above does not apply.

2.1.3 The subject-matters of the again added independent claims 2 and 14 correspond to the first alternative of the independent claims 1 and 13 of the former sixth auxiliary request filed with the statement setting out the grounds of appeal, pursuant to Article 12(2) RPBA. Their subject-matters were dealt with by the respondent in its reply dated 23 January 2013, points 6 and 7, and also by the Board in the annex to the summons to oral proceedings, points 10.2 to 10.4.

As a result, these claims, i.e the auxiliary request, cannot raise issues which the Board or the respondent could not reasonably be expected to deal with without adjournment of the oral proceedings, pursuant to Article 13(3) RPBA.

Therefore, the Board sees no reason not to admit the auxiliary request into the proceedings.

2.2 Objections against claims 1 and 13

2.2.1 As argued in its written submission dated 30 August 2016 and at the oral proceedings, the respondent considers that claims 1 and 13 of the auxiliary request do not fulfill the requirements of Article 123(2) EPC. The respondent holds the view that this objection should be admitted into the proceedings and taken into account by the Board as it reviews the impugned decision completely; only valid patents are to be maintained.

2.2.2 The Board cannot share this view taking account of the principle of the prohibition of reformatio in peius. When the patent proprietor is the sole appellant as in the present case, "the patent as maintained by the Opposition Division in its interlocutory decision cannot be objected to by the Board of Appeal, either at the request of the respondent/opponent or ex officio" (see G 1/99, OJ EPO 2001, 381, point 4.1 of the reasons).

Further, as stated in T 856/92, not published in OJ EPO, point 2 of the reasons, "[S]since no appeal was filed against the maintenance of these claims (the proprietor of the patent is the sole Appellant), neither the Board nor the Opponent may challenge the maintenance of the patent on the basis of these claims (see decision of the Enlarged Board of Appeal G 9/92, OJ EPO 94, 875; in particular first paragraph of the headnote). No comment is therefore required with respect to these claims" (in bold emphasis added by the Board; see also Case Law of the Boards of Appeal, 8th Edition, 2016, IV.E.3.1 and IV.E.3.1.5; T 1626/11, not published in OJ EPO; point 1 of the reasons).

In the present case, no appeal was filed against the set of claims according to the patent as maintained, of which claims 1 and 3 correspond to claims 1 and 13 of the auxiliary request.

As a consequence, the independent claims 1 and 13 of the auxiliary request cannot be challenged in the present appeal so that the objections raised by the respondent against them are not admitted into the proceedings.

2.3 Amendments

2.3.1 Article 100(c) EPC is not a ground for opposition raised by the opponent. The claims of the patent as granted are regarded as being based on the original disclosure.

2.4 Objection under Rule 80 EPC

2.4.1 As argued at the oral proceedings, the respondent considers that the device of claim 2 of the auxiliary request is a preferred embodiment of the device of claim 1 of the auxiliary request. In claim 1 it is referred to the stabilizing device being mounted anywhere on the beam ("arranged at"), while in claim 2 the stabilizing device is specified to be arranged in the beam. Claim 2 should therefore have been drafted as dependent on claim 1. As a consequence, the requirements of Rule 80 EPC are not fulfilled as introducing a further independent claim cannot be considered as having been occasioned by a ground for opposition.

2.4.2 The Board cannot share this view for the following reasons given by the appellant at the oral proceedings.

Claim 2 cannot be seen as a mere preferred embodiment to that of claim 1, i.e. as comprising all features of the device of claim 1 with only additional restrictive features. It is indeed not specified in claim 2 that the air-knife needs to be "fixedly connected to the stabilizing members" while this is the case in claim 1. In claim 2, the relative arrangement of the air-knife and the stabilizing device/members is not specified as it is in claim 1. The air-knife can be mounted anywhere on the beam, unrelated to the stabilizing device/members. The air-knife can hence be mounted outside the beam while the stabilizing device as a whole is arranged in the beam. It is therefore clear to the Board that claims 1 and 2 of the auxiliary request concern two distinct embodiments.

This also applies mutatis mutandis to the method claims 13 and 14.

T 181/02, not published in OJ EPO, point 3.2 of the reasons, states after having referred to T 610/95, neither published in OJ EPO, that:

"Only in exceptional cases can the replacement of a granted single independent claim by two or more independent claims be occasioned by a ground for opposition, for example in cases where a granted independent claim covers two specific embodiments. In such a case it has already been regarded as admissible under Rule 57a EPC 1973 [Rule 80 EPC 2000] to file two independent claims, each protecting one of these two embodiments (see T 223/97)" (in bold emphasis and addition by the Board; see also Case Law of the Boards of Appeal, 8th Edition 2016, IV.D.4.1.4.b).

The Board considers that the present case is such an exceptional case. As a result, the Board fails to see in which respect the auxiliary request contravenes the requirements of Rule 80 EPC.

The Board further notes that taking into consideration the restrictive view of the opposition division on the filing of two independent claims which has resulted in the non-allowability of some of the then requests on the basis of Rule 80 EPC (see impugned decision, points 3.1.7 and 3.1.8), the appellant had no other choice but to file for the first time such a request in appeal with two independent claims covering two distinct embodiments.

2.4.3 The requirements of Article 123(3) EPC are also fulfilled since each of the independent claims 2 and 14 comprises a further limitation with respect to the claims 1 and 12 of the patent as granted, respectively. This has not been contested by the respondent.

2.4.4 The features added to claims 2 and 14 of the auxiliary request with respect to claims 1 and 12 of the patent as granted, respectively, also do not introduce non-compliance with Article 84 EPC. This has not been contested by the respondent.

T 0745/11 - Broad but clear

Key points

• The Board reiterates, as established case law, that broad claims are not per se unclear.
• The Board finds that it is not relevant that the term at issue possibly has no clear, unitary, objective and widely accepted definition. The requirement of clarity of Article 84 EPC does not require, that each term used in a claim is entirely clearly defined. Rather, it is desirable to use terms of the art with a precise meaning when formulating the claims. Even the jargon of the art does not, generally, involve a completely clear or formally defined semantics. As a rule, the applicant should have the possibility to define the invention in the claims in the usual language (jargon). In the opinion of teh Board, it is desirable that, if an Examining Division considers the generally used jargon to be unclear, the Examining Division indicates, which specific problem of interpretation or limitation the term at issue causes. 

EPO T 0745/11 - link

Hauptantrag - Klarheit

3. Bei dieser Beschwerde geht es ausschließlich um das Erfordernis der Deutlichkeit nach Artikel 84 EPÜ und insbesondere darum, ob die Zurückweisung der Anmeldung wegen der Verwendung des Ausdrucks "Funktion" in Anspruch 1 gerechtfertigt war.

3.1 In der Entscheidung wird nicht ausgeführt, welche konkreten Auslegungsprobleme oder Abgrenzungsprobleme (zum Beispiel Unsicherheit bei der Abgrenzung gegenüber einem Dokument, das zum Stand der Technik gehört) sich für das beanspruchte Verfahren aufgrund der behaupteten Unklarheit des Begriffs "Funktion" ergeben.

3.2 Die Entscheidung legt auch nicht näher dar, wie eine deutlichere Angabe des Verfahrens hätte erfolgen können. Hierzu wird durch die Prüfungsabteilung ohne weitere Begründung lediglich festgestellt, dass die von der Anmelderin im seinerzeitigen Hauptantrag vorgenommene Einschränkung, dass die technische Funktion "eine elektrische, eine mechanische oder eine optische Funktion" darstellt, nicht dazu beitragen könne, den Funktionsbegriff selbst klarzustellen.

Diese Argumentation deutet darauf hin, dass die Entscheidung den Kontext des für unklar erachteten Begriffs nicht ausreichend berücksichtigt.

3.3 Die Richtlinien für die Prüfung, November 2015, führen unter F-IV, 4.2 zur Auslegung von Ansprüchen folgendes aus:

"Der Wortlaut eines jeden Patentanspruchs ist so zu verstehen, dass sich für die einzelnen Wörter die Bedeutung und die Reichweite ergeben, die sie auf dem betreffenden Gebiet normalerweise haben, es sei denn, die Beschreibung verleiht den Wörtern in bestimmten Fällen durch ausdrückliche Definition oder auf andere Weise eine besondere Bedeutung. [...] Der Patentanspruch muss auch so gelesen und verstanden werden, dass er technisch einen Sinn ergibt."

Nach der ständigen Rechtsprechung der Beschwerdekammern ist die Breite eines Anspruchs jedenfalls nicht mit mangelnder Klarheit gleichzusetzen, ein breiter Anspruch ist somit nicht per se undeutlich (siehe Rechtsprechung der Beschwerdekammern des Europäischen Patentamts, II.A.3.3).

T 0998/12 - Withdrawing requests is binding

Key points

• This decision illustrates that the Boards are not very willing to admit claim requests that had been submitted, but withdrawn, before the OD.
• The Board also notes that a withdrawal of a request is binding and irrevocable. " dass die Rücknahme eines Antrages als Prozesserklärung bindend und grundsätzlich unwiderruflich ist sowie die Anhängigkeit des betreffenden Antrages unmittelbar entfallen lässt. " 
• Actually, there is also some case law indicating that subject-matter is not easily abandoned in appeal.
  

EPO  T 0998/12 - link

3. Hilfsanträge 2-4 - Zulassung in das Verfahren

Nach Artikel 12 (4) VOBK kann die Beschwerdekammer Anträge nicht ins Beschwerdeverfahren zulassen, die bereits im dem Beschwerdeverfahren vorangegangenen Verwaltungsverfahren, hier im Einspruchsverfahren, hätten vorgebracht werden können.

Es ist unstreitig, dass die den Hilfsanträgen 2-4 entsprechenden Hilfsanträge im Einspruchsverfahren explizit zurückgenommen wurden.

Diese Anträge hätten folglich ohne weiteres im Einspruchsverfahren vorgebracht werden können und im Sinne einer effizienten Verfahrensführung auch gestellt werden müssen, um eine vollständige Entscheidung der Einspruchsabteilung auch insoweit herbeizuführen, die dann zur Grundlage des Beschwerdeverfahrens geworden wäre.

Eine Zulassung dieser Anträge nunmehr in das Beschwerdeverfahren führte dazu, dass die Kammer entweder erstmals - unter Umgehung der Einspruchsabteilung - und zugleich letztinstanzlich über diese Anträge zu entscheiden hätte, oder diese zur weiteren Prüfung an die Einspruchsabteilung zurück­verweisen müsste. Ersteres liefe dem primären Charakter des Beschwerdeverfahrens zur Überprüfung der angefochtenen Entscheidung zuwider, Letzteres widerspräche Verfahrenseffizienz.

Bei alledem ist zudem zu berücksichtigen, dass die Rücknahme eines Antrages als Prozesserklärung bindend und grundsätzlich unwiderruflich ist sowie die Anhängigkeit des betreffenden Antrages unmittelbar entfallen lässt. Auch wenn diese Wirkung zuvörderst für das Verfahren vor der jeweiligen Instanz gilt, vorliegend für das Verfahren vor der Einspruchsabteilung, so wäre es mit dem Sinn und Zweck dieses Verfahrensrechtsinstituts unvereinbar, wenn die vorgenannte Rechtswirkung im Ergebnis dadurch unterlaufen werden könnte, dass der nämliche Antrag in dem nachfolgenden Beschwerdeverfahren erneut gestellt wird. Damit wäre faktisch mittelbar eine "Rücknahme" der Rücknahme ermöglicht.

Die Kammer übt daher dass ihr gemäß Artikel 12 (4) VOBK zukommende Ermessen dahingehend aus, die Hilfsanträge 2-4 nicht in das Verfahren zuzulassen.

T 0710/15 - Late arguments, documents, and attacks

Key points

• " Article 114(2) EPC confers on the opposition division the discretionary power not to admit new facts or evidence when "not submitted in due time by the parties concerned". It is not a basis to disregard arguments not submitted in due time. " 
• " Rule 116(1) EPC (former Rule 71a EPC 1973) should therefore not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded (see T 39/93, headnote). Also, the fact that the opposition division expressed a preliminary opinion in its communication annexed to the summons of oral proceedings does not necessarily justify the filing of new evidence, unless this is in reaction to new aspects raised in the communication. Such new aspects have not been substantiated by the appellant." 
• " As to the alleged lack of inventive step in view of document E1 alone, submitted in writing within the time limit set under Rule 116(1) EPC, the board notes that lack of novelty over document E1 was already substantiated in the notice of opposition (lack of inventive step was argued with regard to different prior art). Under these circumstances, a specific substantiation of the ground of lack of inventive step starting from E1 in the notice of opposition was not necessary - or indeed generally possible after arguing lack of novelty over E1 []. It is true that in its reply to the notice of opposition the patentee had identified the features distinguishing the subject-matter of granted claim 1 from E1. However, considering that oral proceedings had been requested by the opponent and thus further action by the opposition division was in any case to be expected, there was no objective reason for the opponent to reply immediately with an objection of lack of inventive step starting from E1." 

T 0710/15 -  link

Reasons for the Decision

1. Alleged partiality of chairman of opposition division

1.1 The objection of partiality fails, for the reasons explained below. The board does however consider that the opposition division committed errors of judgement in not admitting some of the opponent's submissions.

1.2 The generally accepted principle that nobody should decide a case in respect of which a party may have good reasons to assume partiality applies also to the members of EPO first-instance departments taking part in decision-making activities affecting the rights of any party (see "Case Law of the Boards of Appeal of the European Patent Office", 7th edition 2013, page 636). This reflects a basic principle of procedural law in the EPC contracting states (cf. Article 125 EPC), namely that all the members of a tribunal must be above any suspicion of bias. As held by the Enlarged Board of Appeal in G 5/91 (OJ EPO 1992, 617, Reasons, point 6), the question whether or not an objection of suspected partiality is justified can only be decided in the light of the particular circumstances of each individual case.

1.3 The fact that the patentee had asked for the replacement of the chairman, and that this request was not granted by the latter's director, does not constitute, in the board's view, a sufficient reason for assuming that the opposition division, and in particular its chairman, were unable to act without bias. Furthermore, the fact that no questions were asked by the members of the opposition division at the oral proceedings cannot be taken as an indication of misconduct, as this is normal practice when the facts and arguments have been presented by the parties in a sufficiently clear and exhaustive manner.

1.4 The appellant also alleged that the partiality of the opposition division became evident by the decisions taken in the course of the oral proceedings, in particular:

1.4.1 A new argument with respect to Article 123(2) EPC in relation to granted claim 1 (basically an objection under Article 100(c) EPC) was put forward and discussed, with regard to a feature in granted claim 1 which had not been submitted before in writing (see contested decision, point 1.3). The opposition division considered this objection to be a new and late-filed fact, and did not admit it under Article 114(2) EPC.

Article 114(2) EPC confers on the opposition division the discretionary power not to admit new facts or evidence when "not submitted in due time by the parties concerned". It is not a basis to disregard arguments not submitted in due time (see Case Law of the Boards of Appeal of the European Patent Office, 7th edition, III.B.2.3.1, III.C.4.4, IV.C.1.4.4; see also G 4/92). Raising during oral proceedings a new objection under a ground for opposition previously validly invoked might be belated. However, the issue at stake is whether the opponent has raised a new argument or a new fact, i.e. whether in the present case the opposition division was right to invoke Article 114(2) EPC when not admitting the allegedly late-filed objection.

New arguments are generally understood as new reasons based on the facts and evidence which have already been put forward. The board endorses the view taken in case T 604/01 (see point 6.1 of the Reasons) or T 395/00 (see point 11 of the Reasons) with regard to amendments under Article 123 EPC, namely that the fact and evidence necessary in order to examine whether or not the patent and claims comply with the requirements of Article 123(2) EPC are the amendment as such in view of the application as filed and the patent as granted, i.e. the evidence available when filing the opposition.

In the present case, the ground for opposition under Article 100(c) EPC raised in the notice of opposition was discussed during oral proceedings with regard to two features of granted claim 1 (contested decision, points 1.1 and 1.2), one of which related to the "first part" being a "flat base part". However, the amendment in claim 1 as granted which further specifies the "first part" reads "...in such a way that said first part (9) is a flat base part and is arranged to be connected to different types of said second part (9') for different types of interconnection between the wiper blade (2) and the oscillating arm (8)", i.e. it combines two features ("and"), the second of which was objected to under Article 123(2) EPC for the first time during oral proceedings. The board considers that in this case the same "amendment" is concerned, namely which features have to be included when further specifying the first part on the basis of features taken from the description (e.g. on the basis of page 2 of the application as filed), which raises the question of whether an intermediate generalisation is considered to be admissible. This issue was already mentioned in the notice of opposition (see page 3, point 1.2.1). It is noted that the case at hand differs from T 187/01, where an objection under Article 100(c) EPC raised for the first time in appeal against a granted feature which had not been contested before was considered to be a new fact and therefore disregarded.

Therefore, the board finds that the new objection does not introduce new facts or evidence, but merely a new argument under a ground of opposition already validly raised. Thus, the opposition division was wrong in invoking Article 114(2) EPC when dismissing this new objection. Such an error of judgement does not however prove the partiality of the chairman or the opposition division.

1.4.2 The opposition division considered document E23 and the objection of lack of inventive step over E1 combined with E23 to be a late-filed fact and therefore also document E23 to be late-filed, although submitted on the final date for written submissions set under Rule 116(1) EPC (contested decision, point 2.3.1.2).

However, the legal and factual framework of opposition proceedings is defined in principle by the notice of opposition, as set out in Rule 76(c) EPC (former Rule 55(c) EPC 1973). As concluded in decision T 1002/92, late-filed facts, evidence and related arguments which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC 1973 in support of the grounds of opposition should only exceptionally be admitted into the proceedings if, prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the patent. Rule 116(1) EPC (former Rule 71a EPC 1973) should therefore not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded (see T 39/93, headnote). Also, the fact that the opposition division expressed a preliminary opinion in its communication annexed to the summons of oral proceedings does not necessarily justify the filing of new evidence, unless this is in reaction to new aspects raised in the communication. Such new aspects have not been substantiated by the appellant.

Thus, the board sees nothing wrong, and in particular no indication of partiality, in the way the opposition division exercised its discretion under Article 114(2) EPC by not admitting late-filed document E23 and related arguments, taking into consideration the criterion of prima facie relevance.

The appellant also alleges in this context that the basis of the reasoning was not correct as it refers to amendments made to claim 1. The contested decision states (page 10, last paragraph) that "this new fact has nevertheless not been raised in response to amendments to claim 1". This passage does not refer to "amendments" as the basis of the reasoning given, but implies that filing new documents and further objections might be justified if filed in response to amendments to claim 1.

The board also finds that the opponent had ample opportunity to argue on the prima facie relevance of document E23, since the minutes of oral proceedings explicitly state (see points 23 to 25) that document E23 had been "sufficiently substantiated" in writing, and that the parties were also given the opportunity to exchange their views with regard to document E23 during the oral proceedings. The opponent explained e.g. the basic teaching of E23 (point 25: "that different types of arms can be connected with the blade in E23") in response to the patent proprietor disputing the relevance of E23. Moreover, as can be derived from the contested decision (see point 2.3.1.2), in its letter dated 17 November 2014 the opponent had substantiated an objection of lack of inventive step over E1 in combination with E23, which included arguments relating to the prima facie relevance of E23. Therefore, also the opponent's right to be heard had been respected.

1.4.3 As to the alleged lack of inventive step in view of document E1 alone, submitted in writing within the time limit set under Rule 116(1) EPC, the board notes that lack of novelty over document E1 was already substantiated in the notice of opposition (lack of inventive step was argued with regard to different prior art). Under these circumstances, a specific substantiation of the ground of lack of inventive step starting from E1 in the notice of opposition was not necessary - or indeed generally possible after arguing lack of novelty over E1 (in this respect, see e.g. T 597/07, or T 131/01). It is true that in its reply to the notice of opposition the patentee had identified the features distinguishing the subject-matter of granted claim 1 from E1. However, considering that oral proceedings had been requested by the opponent and thus further action by the opposition division was in any case to be expected, there was no objective reason for the opponent to reply immediately with an objection of lack of inventive step starting from E1.

Accordingly, the board finds that the opposition division was wrong in judging that an objection of lack of inventive step in view of E1 should have been raised at an earlier stage of the proceedings and in therefore not considering this line of argument (see contested decision, point 2.3.2.2.4.1). The same applies to its refusal to admit a substantiation of this inventive- step objection during oral proceedings as late-filed under Article 114(2) EPC (see contested decision, points 2.3.2.2.4.2 and 2.3.2.2.4.3). Again, however, such errors of judgement do not indicate that the chairman or the opposition division was partial.

1.5 It follows from the above that the decision of the opposition division not to admit the new argument based on Article 123(2) EPC and the objections of lack of inventive step over E1 alone and E1 combined with E23 must be set aside. The above argument and objections are thus introduced into the proceedings.

2. Not remitting the case to the department of first instance

2.1 According to Article 111(1) EPC, the board may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. It is established case law (see Case Law of the Boards of Appeal, 7th edition 2013, IV.E.7.6.1) that there is no absolute right to have an issue decided upon by two instances and that e.g. the general interest in bringing the proceedings to a close within an appropriate period of time has to be taken into account. 2.2 Considering that the new argument in respect of Article 123(2) EPC does not per se justify a remittal and that the opposition division has already commented, in the contested decision, on the new objections of lack of inventive step (see page 11, stating that- "separation of parts of the connecting device are contrary to the teaching of E1" and- "E23 comprises a totally different construction of ... the connecting device, ... which hampers prima facie a combination with the wiper of E1"),the board in exercising its discretion conferred by Article 111(1) EPC has decided not to remit the case to the department of first instance, but to take a decision on the merits of the case. | |