T 1668/14 - Amended claims in appeal

Key points

• The Board recalls that according to established case law, " it is not an absolute requirement for admissibility that the appellant should attack the opposition division's decision as flawed. Where amended claims have been filed, an appeal may also be admissible if sufficient reasons are given in the statement of grounds why the amendments are considered apt to remedy the deficiencies identified by the opposition division".
• " Hence, contrary to the position of the opponent in the response to the statement of grounds, an appeal is not necessarily rendered inadmissible by an appellant-proprietor filing amended claims, and defending the claims as amended in the grounds of appeal."

EPO T 1668/14 - link

2. Admissibility of the appeal

2.1 For the appeal to be admissible, a statement of grounds of appeal shall be filed (Article 108 EPC, third sentence) in which:

"the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based" (Rule 99(2) EPC).

2.2 The Boards have developed a consistent body of jurisprudence on the conditions under which an appeal may be rejected as inadmissible for lack of adequate substantiation. This includes the following principles:

(a) If the admissibility requirements are fulfilled in respect of at least one request, the appeal as a whole is admissible, even if this request is subsequently withdrawn (Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.3, second paragraph).

(b) It is not an absolute requirement for admissibility that the appellant should attack the opposition division's decision as flawed. Where amended claims have been filed, an appeal may also be admissible if sufficient reasons are given in the statement of grounds why the amendments are considered apt to remedy the deficiencies identified by the opposition division (Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.5(b)).

(c) Whether the appellant's arguments are convincing or likely to be successful is irrelevant for the purposes of determining the admissibility of the appeal (Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.2, first paragraph, final sentence and 2.6.6).

2.3 Hence, contrary to the position of the opponent in the response to the statement of grounds, an appeal is not necessarily rendered inadmissible by an appellant-proprietor filing amended claims, and defending the claims as amended in the grounds of appeal.

2.4 In the present case, claim 1 of the main request filed with the statement of grounds of appeal is identical to claim 1 of the main request on which the contested decision was based, the subject-matter of which was found to lack novelty over D2. In the statement of grounds of appeal (section 9), arguments are provided why this finding is considered to be incorrect.

The subject-matter of claim 2 of the main request on which the contested decision was based was found not to comply with the requirements of Article 123(2) EPC (see Reasons for the Decision, point 4.2, claim 2 of the main request and claim 2 of auxiliary request I being identical). The reasoning given was that an "essential feature is missing in its wording" (said feature being that "the coil antenna is arranged along the outer rim of the push button"). The proprietor pointed out in the statement of grounds of appeal that the disputed feature had now been added to claim 2 (and claim 3) of the main request "in order to overcome the Article 123(2) EPC objection of the appealed decision".

The subject-matter of claim 3 of the main request on which the contested decision was based was found not to comply with the requirements of Article 123(2) EPC (see Reasons for the Decision, point 5.2, claim 3 of the main request and claim 3 of auxiliary request II being identical). The reasoning given was that the feature "a push button movably arranged in the operation switch" was not originally disclosed. In the statement of grounds of appeal (point 1), a passage of the description is cited, which, it is argued, provides the necessary basis.

2.5 Thus, at least for the main request filed with the statement of grounds of appeal, the proprietor provided explanations why the requirements of the EPC were considered to be met. In view of the principles set out above under point 2.2, the appeal is admissible.

3. Whether the requests of the proprietor are to be admitted into the proceedings

3.1 Main request filed with the letter dated 10 March 2018

3.1.1 The main request filed with the letter dated 10 March 2018 (approximately three and a half years after the filing of statement of grounds of appeal) comprises the following feature:

"a push button (36) arranged to be pressed by a finger of the operator so as to operate the operation switch (30)".

The corresponding feature common to claim 1 as granted, claim 1 of the main request on which the contested decision was based and claim 1 filed with the statement of grounds of appeal was:

"a push button (36) pressed by the operator for operating the operation switch (30)".

3.1.2 According to Article 12(2) RPBA, the statement of grounds of appeal shall contain an appellant's complete case. In the oral proceedings, the proprietor argued that this request should nevertheless be admitted, as the above amendment was made in response to comments made in the Board's communication under Article 15(1) RPBA concerning the interpretation of the term "push button".

Where objections are raised for the first time in a communication of the Board, amendments filed as a direct response are generally admitted into the proceedings and not regarded as late-filed. On the other hand, where such objections were already part of the decision under appeal, and the Board merely re-states or endorses them, any amendments filed in response are, in principle, late-filed (Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.4.4.3 and 4.4.12).

3.1.3 In the present case, the question of how to interpret the term "push button" was already examined in the contested decision. For the main request, the chief point of discussion in the assessment of novelty was whether this term should be considered to restrict the claimed subject-matter only to switches which could be activated by the operator's finger, as argued by the proprietor. The Opposition Division judged that, contrary to the view of the proprietor, the term "push button" should be interpreted broadly, and hence that D2 anticipated the claimed subject-matter (Reasons for the Decision, point 3.3).

It was therefore to be expected that the proprietor should file its complete case in respect of this objection with the statement of grounds of appeal, whether by means of argument, amendment or both.

In fact, in the statement of grounds of appeal, the proprietor confined itself to arguing for a narrow interpretation of the existing text, citing document D14 (an extract from Wikipedia) in support. No attempt was made to establish a more limited definition of "push button" by way of amendment.

3.1.4 The fact that the Board subsequently expressed doubts about the proprietor's argument in this respect (communication under Article 15(1) RPBA, point 8.2) does not constitute raising a new issue during the appeal proceedings, but simply sets out a provisional opinion on an issue which was part of the impugned decision. The Board does not therefore accept that the filing of a new main request with an amended definition of "push button" can be justified as a response to issues which arose for the first time during the appeal proceedings.

3.1.5 The main request filed with the letter dated 10 March 2018 is therefore late-filed, and may only be admitted and considered at the Board's discretion (Article 13(1) RPBA).

3.1.6 In exercising this discretion, the boards generally refuse to consider late-filed requests unless they are directed to subject-matter which is prima facie allowable. In other words, it should be immediately apparent that the amendments made successfully address the issue raised, without giving rise to new ones (Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.4.4.2(a)).

In the present case, the basis for the amendment was given as paragraph [0048] of the published application (page 19, lines 9-14 of the description as filed), which reads:

"In the preferred embodiment, the owner of the vehicle 2 places the portable device 20 against the push button 36 of the ignition switch 30 and presses the push button 36 with the portable device 20. Alternatively, the owner may press the push button 36 with his or her finger while holding the portable device 20 in the vicinity of the push button 36."

3.1.7 Thus, what is disclosed is a push button which allows the switch to be operated by pressing it with a finger, provided the portable device is in the vicinity of the push button. The claim, however, comprises embodiments in which the switch may be operated by pressing it with a finger, irrespective of the location of the push button. The Board does not believe that such embodiments are disclosed in the application as filed, and the subject-matter of the proposed amendment is therefore not prima facie allowable, as it raises a new issue in relation to the requirements of Article 123(2) EPC.

3.1.8 The main request filed with the letter dated 10 March 2018 is found to be late-filed and not prima facie allowable, and is consequently not admitted into the proceedings (Article 13(1) RPBA).

3.2 Main request filed at oral proceedings before the Board

3.2.1 Claim 1 of the main request filed at oral proceedings before the Board reverts to the wording of claim 1 as granted in relation to the push button, and the following feature is added:

"wherein the switch device (35, 55) is suited to be arranged in an instrument panel (3) such that the push button (36) is exposed from the instrument panel (3)."

3.2.2 According to the proprietor, this amendment ensures that the push button, by being exposed from the instrument panel, may be pressed by the finger of the operator, thus establishing a difference over D2.

This amendment represents a further attempt to define the claimed "push button" more precisely, and hence, for the reasons mentioned above in connection with the previous request, it is not a response to issues which arose for the first time during the appeal proceedings. The main request filed at oral proceedings before the Board is therefore late-filed, and may only be admitted and considered at the Board's discretion (Article 13(1) RPBA).

3.2.3 The basis for this feature was given as the last sentence of paragraph [0034] the published application (page 13, lines 4-7 of the description as filed), which reads:

"The switch device 35 is installed in a manner that the peripheral portion 33a of the bezel 33 and the push button 36 of the ignition switch 30 are exposed from the instrument panel 3."

3.2.4 It is far from clear that this amendment successfully overcomes the objection raised, since the Board does not see prima facie why describing the push button as being exposed from the instrument panel would necessarily establish a difference over D2.

3.2.5 Moreover, since the passage providing the purported basis for this amendment discloses that the push button of the ignition switch and the peripheral portion of the bezel are exposed from the instrument panel, this amendment introduces prima facie the new issue of a possible intermediate generalisation, contrary to the requirements of Article 123(2) EPC.

3.2.6 In the light of the above, the main request filed at oral proceedings before the Board is found to be late-filed and not prima facie allowable, and is consequently not admitted into the proceedings (Article 13(1) RPBA).

6. Summary

The main request filed with the letter dated 10 March 2018, the main request filed at oral proceedings before the Board and auxiliary requests I-IX are not admitted into the proceedings (Article 13(1) RPBA). Auxiliary requests X and XI are admitted into the proceedings, but comprise subject-matter which extends beyond the content of the application as filed, contrary to the requirements of Article 123(2) EPC. Hence the patent cannot be maintained pursuant to Article 101(3)(a) EPC according to either of auxiliary requests X or XI.

Order

For these reasons it is decided that:

The appeal is dismissed.