T 0888/14 - Combining dependent claims

Key points

• In this opposition appeal, claim 1 of auxiliary request 1 (filed after the Summons) results from the combination of claim 1 as granted with dependent claim 2 as granted. The Board has to decide on admissibility. 
• " During the oral proceedings the board noted that none of the features incorporated in claim 1 of each of these requests and based on dependent claims as granted had been addressed during the appeal proceedings, and that the letter accompanying the requests contained no substantive submission on the technical significance of these features, in particular on the possible relevance of the same for the issue of inventive step. The board considered that in these circumstances the admissibility of each of the requests depended on the question of whether the corresponding amendments would prima facie overcome the objection of lack of inventive step of the subject-matter of claim 1 of the main request. " 
• The Board then decides that they amended claims are not prima facie allowable and does not admit the requests. Hence, even combining claim 1 with claim 2 is not safe. 

EPO T 0888/14 - link

3.1 Auxiliary requests 1 to 5 - Admissibility

Claim 1 of auxiliary requests 1 to 5 results from the combination of claim 1 as granted with dependent claim 2 as granted, with dependent claim 3 as granted, with dependent claim 4 as granted, with dependent claims 3 and 4 as granted, and with dependent claims 2 to 4 as granted, respectively.

During the oral proceedings the board noted that none of the features incorporated in claim 1 of each of these requests and based on dependent claims as granted had been addressed during the appeal proceedings, and that the letter accompanying the requests contained no substantive submission on the technical significance of these features, in particular on the possible relevance of the same for the issue of inventive step. The board considered that in these circumstances the admissibility of each of the requests depended on the question of whether the corresponding amendments would prima facie overcome the objection of lack of inventive step of the subject-matter of claim 1 of the main request. As noted by the board during the oral proceedings, one of the relevant criteria for admitting amendments after arrangement of oral proceedings under Article 13 RPBA is that it must be immediately apparent to the board, with little investigative effort on its part, that the amendments made successfully address the issue raised without giving rise to new ones (see "Case Law of the Boards of Appeal" EPO, 8th edition 2016, section IV.E.4.2.5, and decisions cited therein).

Therefore, the amendments in claim 1 of both auxiliary requests 2 and 3 do not prima facie overcome the objection of lack of inventive step of the subject-matter of claim 1 of the main request and for this reason the board, exercising its discretion, decides not to admit auxiliary requests 2 and 3 into the proceedings (Article 13 (1) RPBA).

3.1.3 The features incorporated in claim 1 of auxiliary request 4 are the same as those incorporated in claim 1 of auxiliary requests 2 and 3, and the features incorporated in claim 1 of auxiliary request 5 are the same as those incorporated in claim 1 of auxiliary requests 1, 2 and 3.

The patent proprietors submitted during the oral proceedings that each of these two combinations of features provided the variations in whiteness in the scale required for the specific purpose of monitoring changes in whiteness in clothing after laundry.

However, the subject-matter of claim 1 of auxiliary requests 4 and 5 is generally directed to a fabric whiteness guide, and not to the use of the same in a specific context, let alone in the context of laundry and of the possible effects induced by the same on the whiteness of fabrics. In addition, in the context of document D6 the skilled person would also have to select the appropriate colours of the colour guide in accordance with the specific colours of the fabrics to be evaluated, and no selection invention can be seen in the mere selection of different white colours running between a relatively optimal white and a lower white, and in particular a lower white with a yellowish colour when compared to the relatively optimal white.

In view of these considerations and of those already presented in points 3.1.1 and 3.1.2 above, the board considers that the amendments in claim 1 of both auxiliary requests 4 and 5 do not prima facie overcome the objection of lack of inventive step of the subject-matter of claim 1 of the main request. For this reason the board, exercising its discretion, decides not to admit auxiliary requests 4 and 5 into the proceedings (Article 13 (1) RPBA).