T 2301/12 - Post 2 - A83 or A84; and late translation of prio doc

Key points

• This second post deals with the insufficiency attack, an attack based on an Article 54(3) document that was shown to critically lack priority in appeal, and the remittal of the case because of a late challenge to the priority of the patent. 
• Regarding the insufficiency attack: "The question would arise whether this would justify an objection of insufficiency of disclosure under Article 100(b) EPC 1973 or an objection that the claims are not supported by the description under Article 84 EPC 1973. The Board accepts that the distinction is often rather subtle, and the matter has to be judged having regard to the facts of the particular case in question." 
• "The [opponent's] argument is effectively that claim 1 has been drafted in such a way that it does not reflect, indeed that it excludes, the teaching of the description and drawings. In the Board's view, this objection, which is chiefly focused on the way in which the invention has been presented in the claims, must be seen as an objection that the claims are not supported by the description within the meaning of Article 84 EPC 1973, rather than an objection that the invention is insufficiently disclosed." 
• The Board distinguishes the case from T 409/91, because therein the most preferred particle sizes (according to the patent) could not in fact be achieved. The present objection is against embodiments which fall in a literal sense within the scope of claim 1 but for which "it would be perfectly clear to the skilled person that this is not what the invention is about". The Board considers T 1018/05 more relevant, wherein "values of the parameter not obtainable in practice would not be regarded by the skilled person as being covered by the claims and thus could not justify an objection of insufficiency of disclosure".
• Then the novelty attack. The OD had considered the claims not novel over K4, an Article 54(3) citation. In appeal, patentee submits a translation of the priority document of K4, showing that the priority document lacks the critical feature. Hence, the novelty destroying embodiment of K4 lacks priority and can not be cited.
• Opponent disputed admissibility of the translated priority document K4PT in appeal. The Board: "it must be borne in mind that it was the opponent which introduced document K4 into the proceedings together with the argument that the embodiment comprising the water leakage sensor constituted prior art under Article 54(3) EPC. Whilst it is regrettable that the documents K4P/K4PT were not filed in the proceedings before the Opposition Division, the responsibility in this case does not only fall on the proprietor; it is also incumbent on an opponent asserting that a document constitutes novelty-destroying prior art under Article 54(3) EPC to ascertain and accurately present the full facts in this respect." 
• However, then the opponent made an attack to priority of the patent. "In the oral proceedings [before the Board], the opponent asserted for the first time that document K24 - cited by the opponent during the appeal procedure - represented the "first application" within the meaning of Article 87(1) EPC, and that consequently the priority claim of the opposed patent is invalid." The Board then remits the case, also for a decision about the admissibility of K24, and for the OD to consider whether the validity of the priority of the patent is relevant at all. 

EPO T 2301/12 - link

8. Third auxiliary request: Article 100(b) EPC

8.1 The exposure apparatus of claim 1 of the third auxiliary request comprises:

"a detecting device arranged to detect whether there is a liquid on and in contact with the upper surface of the base member".

8.2 The first argument of the opponent is that this wording (present tense: "whether there is a liquid") defines a detecting device with the capability of determining, at any instant of time, whether liquid is present on the surface or not, i.e. it effectively defines real time detection. Furthermore, "whether there is a liquid" defines the capability of determining whether liquid in any amount is present on the surface.

It is not disputed that numerous configurations of an exposure apparatus having a liquid detecting device are disclosed in the description and drawings in a way which would allow the skilled person to put them into practice. The argument of the opponent is that the wording of claim 1 means that only arrangements which are capable of real time detection and the detection of very small amounts of liquid are claimed, whereas none of the arrangements disclosed in the description and drawings would be capable of either of these types of detection. The invention as defined in claim 1 is therefore insufficiently disclosed.

8.3 Even if the Board accepted the argument that there is a discrepancy between the claims and the description in this regard, the question would arise whether this would justify an objection of insufficiency of disclosure under Article 100(b) EPC 1973 or an objection that the claims are not supported by the description under Article 84 EPC 1973. The Board accepts that the distinction is often rather subtle, and the matter has to be judged having regard to the facts of the particular case in question.

In the present case, the argument is effectively that claim 1 has been drafted in such a way that it does not reflect, indeed that it excludes, the teaching of the description and drawings. In the Board's view, this objection, which is chiefly focused on the way in which the invention has been presented in the claims, must be seen as an objection that the claims are not supported by the description within the meaning of Article 84 EPC 1973, rather than an objection that the invention is insufficiently disclosed. Objections under Article 84 EPC 1973 are not the subject of the present proceedings (see point 7, above).

8.4 Moreover, the Board does not agree with the basic premise of the argument, as it requires reading limitations into the claim which are simply not there. The Board can see no valid reason to conclude that claim 1 is only limited to detecting devices having the capacity for instantaneous detection or the detection of minute traces of liquid.

8.5 The second argument of the opponent is that even if claim 1 is judged not to define real-time detection and the detection of minute amounts of liquid, it nevertheless encompasses embodiments which are capable of these types of detection, and since no such embodiments are disclosed, the invention is insufficiently disclosed over the whole scope claimed.

8.6 In the opinion of the Board, at least some of the disclosed embodiments would be capable of real-time detection. In the embodiment of Fig. 12, for example, as soon as liquid LQ falls onto the upper surface 41A of base member 41, its presence would be detected as a result of the respective beams in the light beam matrix being blocked. The fact that very small amounts of liquid might evade detection by, for example, falling between beams is a separate issue (dealt with in the next section). The relevant point is that when liquid is detected on the surface in the embodiment of Fig. 12, that detection would be essentially instantaneous, i.e in real time. The Board is therefore not persuaded by this line of argument.

8.7 The opponent also contends that the inability of the disclosed embodiments to detect very small amounts of liquid leads to an insufficiency of disclosure over the whole range claimed. In support of this, decision T 409/91 (OJ EPO 1994, 653) is cited.

In T 409/91, claim 1 was directed to a distillate fuel oil with wax crystals "having an average particle size less than 4000 nanometres". Although the application taught a method to obtain a fuel oil containing wax particles having a size of 1200 nm, there was no information available as to how to obtain smaller wax particles. The Examining Division found, and the Board agreed, that the subject-matter of claim 1, insofar as it related to particle sizes below 1000 nm, was insufficiently disclosed. The application as filed had to contain sufficient information to allow a person skilled in the art, using his common general knowledge, to carry out the invention within the whole area claimed.

8.8 As is generally the case, to fully understand the significance of this decision it is necessary to refer to the underlying case which led to the appeal (the refusal of EP 87 308 436, published as EP 0 261 958).

According to the application, prior art distillate fuel oils were known to comprise wax crystals "generally of particle size 10000 nanometres or bigger", which, in diesel engines at low temperatures, had the disadvantage that they would not pass through the vehicle paper fuel filters. As set out in the passage on page 3, lines 4-8 of the published application, the invention was based on the realisation that:

"providing the average size is less than 4000 nanometres the wax will begin to pass through the typical paper filters used in diesel engines together with the fuel although we prefer that the size be below 3000 nanometres, more preferably below 2000, even more preferably below 1500 nanometres most preferably below 1000 nanometres where the real benefits of passage of the crystals through the paper fuel filters is achieved."

The claims reflected this teaching, with claims 1-5 defining particle sizes less than 4000, 3000, 2000, 1500, and 1000 nanometres respectively.

Hence, a range of less than 1000 nanometers not only fell within the general scope of claim 1 (less than 4000 nanometers), but was itself explicitly claimed (in claim 5) and explicitly acknowledged in the description as the most preferred embodiment. Since the appellant "has admitted that no way of obtaining such fuel oils [with wax crystals smaller than 1000 nanometers] was disclosed or could be found in the body of relevant common general knowledge", the Board found, unsurprisingly, that the requirements of Article 83 EPC were not met.

8.9 The facts underlying the present case are not comparable to those of T 409/91.

Whilst it is true that, in a literal sense, arrangements for detecting microscopic amounts of liquid fall within the scope of claim 1, it would be perfectly clear to the skilled person that this is not what the invention is about (let alone the preferred embodiment).

8.10 In the opinion of the Board, a decision which is more relevant to the facts of the present case than that cited by the appellant is T 1018/05, in which the following is stated:

• "in the Board's view the above-mentioned established principle of the case law ..., according to which a detailed disclosure of all the variants encompassed by a claim is not necessary if the skilled person, who has common general knowledge at his immediate disposal, is capable of putting them into practice without the burden of exercising inventive skill, is not to be understood as also referring to those variants falling under the literal wording of the claim but which the skilled person would immediately exclude as being clearly outside the scope of practical application of the claimed subject-matter. That is, in cases where the skilled person would construe the claim as not extending to those variants. This is the case, for example, with claims including an open-ended range for a parameter where it is clear for a skilled person that the open-ended range is limited in practice ... Values of the parameter not obtainable in practice would not be regarded by the skilled person as being covered by the claims and thus could not justify an objection of insufficiency of disclosure" (T 1018/05, Reasons, point 2.3).

Applying this to the present case, the Board does not regard the absence of embodiments capable of detecting minute amounts of liquid as justifying the opponent's objection of insufficiency of disclosure.

8.11 A final objection of insufficiency of disclosure was based on the fact that the patent does not teach how to avoid false positive results.

The Board does not fully understand this objection, as the elimination of false positive results is not part of the invention as claimed (or even as described in the patent). The argument that the claim should be interpreted as including this feature appears to be based on a consideration of an arrangement disclosed in document K4, but the Board fails to see why this would have a bearing on the question of sufficiency of disclosure of the present invention.

8.12 For the above reasons the Board concludes that the invention defined by claim 1 of the third auxiliary request is sufficiently disclosed within the meaning of Article 100(b) EPC.

9. Admissibility of documents K4P, K4PT

9.1 The document K4 was introduced in the notice of opposition as "citable under Article 54(3) EPC", and was said to anticipate the claimed subject-matter, as the "water leakage sensor" of paragraph [0091] was a detecting device arranged to detect whether there is a liquid on the upper surface of the base member" (notice of opposition, point 7.6.3.3).

In the contested decision the Opposition Division agreed that the claimed subject-matter was not novel over K4, the reasoning making reference inter alia to the water leakage sensor.

9.2 In the statement of grounds of appeal the proprietor filed documents K4P (the priority document of K4) and K4PT (a certified translation K4P), and argued that since the filing date of K4 (29 October 2004) was after the priority date of the opposed patent (12 July 2004), the status of K4 as prior art under Article 54(3) EPC was dependent on the validity of its own priority claim.

The proprietor went on to point out that the portion of K4 disclosing a water leakage sensor, namely the final sentence of paragraph [0091], was wholly absent in K4P and in the certified translation K4PT. These documents should therefore be admitted into the proceedings, as they proved that the final sentence of paragraph [0091] of K4 did not form part of the state of the art under Article 54(3) EPC, and hence that the conclusion reached in the contested decision of lack of novelty could not stand.

9.3 Article 12(4) RPBA gives the Board the power to hold inadmissible facts and evidence which could have been presented in the first instance proceedings. The question therefore arises whether the priority application (and a translation thereof) of a document which was already in the proceedings before the Opposition Division constitutes newly introduced evidence within the meaning of Article 12(4) RPBA. The Board leaves this question open, since, even assuming Article 12(4) RPBA gives the Board the discretion not to admit these documents, for the reasons given below, the Board exercises this discretion in favour of admitting them.

9.4 Firstly, it must be borne in mind that it was the opponent which introduced document K4 into the proceedings together with the argument that the embodiment comprising the water leakage sensor constituted prior art under Article 54(3) EPC. Whilst it is regrettable that the documents K4P/K4PT were not filed in the proceedings before the Opposition Division, the responsibility in this case does not only fall on the proprietor; it is also incumbent on an opponent asserting that a document constitutes novelty-destroying prior art under Article 54(3) EPC to ascertain and accurately present the full facts in this respect.

Secondly, even if documents K4P and K4PT are regarded as constituting new evidence, they are documents which are clearly very closely connected to evidence which played an important part in the proceedings before the Opposition Division, and which may have a bearing on considerations (alleged lack of novelty over document K4) which were central to the contested decision.

Thirdly, the attempt to introduce these documents was made in the statement of grounds of appeal, i.e. at the earliest possible moment in the appeal proceedings, giving the opponent ample time to consider them.

9.5 For these reasons the Board decides to admit documents K4P and K4PT, and the arguments based thereon, into the proceedings.

10. The question of Novelty in relation to K4

10.1 Having got this far, it was the intention of the Board to take a decision on the prior art status of document K4, and on whether the claimed subject-matter is novel over K4. This would, for example, have included an examination of the opponent's argument that even if the water leakage sensor is excluded from the state of the art, there are other disclosed embodiments in document K4 which are entitled to the claimed priority and which anticipate the claimed detecting device.

10.2 In the light of events at the oral proceedings, however, this course of action now appears inadvisable. In the oral proceedings, the opponent asserted for the first time that document K24 - cited by the opponent during the appeal procedure - represented the "first application" within the meaning of Article 87(1) EPC, and that consequently the priority claim of the opposed patent is invalid.

10.3 If this were upheld, it could have numerous consequences. For example, K4 (published 4 May 2005) would become prior art under Article 54(2) EPC for the contested patent (filing date 11 July 2005).

Hence, prior to any decision on the patentability of the claimed subject-matter vis-a-vis K4, it would have to be decided whether to admit K24 (and the related documents K24a, K24b and K24c) into the proceedings (this is contested by the proprietor), and whether the validity of the priority claim of the opposed patent is a subject of the proceedings. If so, it would then be necessary to examine the validity of the priority claims of the contested patent and K4, and decide on the prior art status of K4.

The Board believes that this analysis can best be undertaken by a single deciding body. As both parties have asked that matters which were not dealt with in the contested decision should be decided before two levels of jurisdiction, the case will in any event be remitted to the department of first instance pursuant to Article 111(1) EPC. It therefore makes sense to allow this matter also to be considered by the Opposition Division.

11. Further procedure

11.1 The Board has decided to exercise its discretion under Article 111(1) EPC 1973 to remit the case to the department of first instance for further prosecution, thereby allowing both parties to have the other matters referred to above considered before two instances.

11.2 For the avoidance of any doubt, in the present decision the Board has decided the following:

• - the main request and the first to third auxiliary requests filed with the notice of appeal are admitted into the proceedings;
• - the patent cannot be maintained according to the main request or the first or second auxiliary requests, as these requests do not meet the requirements of Article 123(2) EPC;
• - the claims of the third auxiliary request meet the requirements of Article 123(2) EPC;
• - the claims of the third auxiliary request meet the requirements of Article 84 EPC 1973;
• - the invention defined by claim 1 of the third auxiliary request is sufficiently disclosed within the meaning of Article 100(b) EPC 1973;
• - the documents K4P and K4PT are admitted into the proceedings.

All other matters remain to be decided by the Opposition Division in the remitted procedure.

Order

For these reasons it is decided that:

The decision under appeal is set aside.

The case is remitted to the department of first instance for further prosecution.