T 1257/15 - What is a new ground?

Key points

• The opponent had submitted before the OD criticism of what specific features are implied by the term "to interface" in claim 1 as granted, and of whether this term can provide a distinction over the prior art. In appeal, he bases an insufficiency attack on the feature. Insufficiency was not explicitly submitted before the OD. Is it a new ground for opposition submitted in appeal, which can only be admitted with the consent of the patentee? 
• The Board decides it is such a fresh ground. " These criticisms [of the feature, before the OD] do not amount to raising, not to speak of substantiating, an objection of lack of sufficient disclosure under Article 100(b) EPC" 

EPO T 1257/15 -  link

V. The appellant's [opponent's] submissions - as far as relevant for the decision - may be summarized as follows:

The invention further lacks a sufficient disclosure. The skilled person is not able to perform the invention since it is not clear what is meant by "to interface" and "interfaces" in features 1.8 and 1.10, respectively.

Reasons for the Decision

4. The appellant's objection of insufficient disclosure was raised for the first time with the statement of grounds of appeal. This amounts to raising a fresh ground for opposition under Article 100(b) EPC in appeal proceedings. In this respect, the appellant/opponent's reference to criticisms raised during the proceedings before the department of first instance in respect of what specific features are implied by the term "to interface" and of whether this term can provide a distinction over the prior art (see letter of 3 February 2015, page 3, lines 1, 2) is irrelevant, as these criticisms do not amount to raising, not to speak of substantiating, an objection of lack of sufficient disclosure under Article 100(b) EPC. Since in accordance with decisions G7/91 and G8/91 (OJ 993, 356 and 346) a fresh ground for opposition can only be admitted into the appeal proceedings if the patentee agrees to its introduction, cf. the Case Law of the Boards of Appeal, 8th edition, IV.D.3.2, and in the present case the patentee did not agree, the fresh ground for opposition is not admitted.

Order

For these reasons it is decided that:

The appeal is dismissed.