T 2148/14 - AR for claim not attacked in appeal

Key points

• In this opposition case, the patent was granted with claim 1 for a polyethylene composition, an independent claim for preparing that composition using a catalyst, and an independent claim for the catalyst composition, with a dependent claim 8 for a particularly preferred catalyst.
• The polymer composition of claim 1 is found to be obvious.
• At the oral proceedings before the Board, the patentee files an auxiliary request directed to only claim 8 for the catalyst.
• " The justification for filing this request was, according to the [patentee], the realisation that this specific subject-matter had never been attacked during the appeal proceedings." .
• The Board is not impressed: " However by the same token, no submissions on specifically the catalyst were made in the [response of patentee] to the statement of grounds of appeal [of opponent]. In its submissions during the opposition procedure the respondent had addressed the aspect of the use of the catalyst, however not the constitution of the catalyst itself. Neither the use nor the constitution of the catalyst had ever been directly addressed in submissions during the appeal procedure prior to submission of auxiliary request 8 at the oral proceedings before the Board. [...] The presentation, at the very end of the appeal proceedings of a new request, relying on features which had never previously been addressed in the appeal proceedings thus complies neither with the purpose of the appeal proceedings in general, nor with the explicit requirements of the RPBA as set out in Article 12(1) and (2) thereof." 

EPO T 2148/14 -  link

II. The patent was granted with a set of 13 claims, whereby claims 1, 5 and 6 read as follows:

"1. A molding composition comprising polyethylene  [...]

5. A process for preparing the molding composition according to any one of claims 1 to 4, comprising 

6. A mixed catalyst comprising a prepolymerized chromium compound and a metallocene compound."

X. Oral proceedings were held before the Board on 5 June 2018.

In the course of the oral proceedings, following discussion of the main request and auxiliary requests 1-7, the respondent presented a further auxiliary request numbered 8 which was directed to the catalyst in the restricted form as defined in claim 8 [a dependent claim of independent claim 6 for the catalyst] of the patent as granted.

2. Main request

[...]

The arbitrary restriction of properties of a composition to particular ranges represents an obvious route to solving the objective technical problem of providing further compositions.

Hence an inventive step must be denied.

3. Auxiliary requests 1, 2 and 3-7 - admittance

The written submissions of the respondent in respect of all these requests were limited to identifying the amendments made and general statements to the effect that the purpose of the amendments was to increase the distinction with respect to the closest prior art.

No explanation was given as to which aspects of the objections raised by the appellant, or the observations made by the Board in its communication (concerning in particular the subsequently filed auxiliary requests 1 and 2) these requests were designed to address, or how the objections would be overcome as a result of the amendments made.

Accordingly there was an almost total absence of any form of substantiation for all these requests.

Under these circumstances neither the Board nor the other party (appellant) were in a position to assess these requests and their relationship to the cited prior art and the objections raised in respect thereof.

Thus as far as auxiliary requests 3-7 (filed as auxiliary requests 1-5 with the rejoinder to the statement of grounds of appeal) were concerned, it was not apparent what case was being made, contrary to the provisions of Article 12(2) RPBA.

With regard to auxiliary requests 1 and 2, submitted after issue of the summons to oral proceedings and the communication of the Board, it was likewise not possible to understand the purpose of submitting these or the nature of the case being made. Under these circumstances it was not apparent how either the Board or the other party could deal with these requests without adjournment of the oral proceedings (Articles 13(1) and (3) RPBA).

Consequently it is decided that none of auxiliary requests 1, 2 and 3-7 are admitted to the proceedings (Article 12(4) and 13 RPBA).

4. Auxiliary request 8 - submitted at the oral proceedings before the Board

The justification for filing this request was, according to the respondent, the realisation that this specific subject-matter had never been attacked during the appeal proceedings.

However by the same token, no submissions on specifically the catalyst were made in the rejoinder to the statement of grounds of appeal. In its submissions during the opposition procedure the respondent had addressed the aspect of the use of the catalyst, however not the constitution of the catalyst itself (reply to the notice of opposition, pages 2 and 3; letter of 10 January 2014, pages 3 main section; minutes of oral proceedings before the opposition division, section 13). Neither the use nor the constitution of the catalyst had ever been directly addressed in submissions during the appeal procedure prior to submission of auxiliary request 8 at the oral proceedings before the Board.

It is recalled that the appeal procedure is a separate procedure and not merely a continuation of the opposition procedure (Case Law, ibid. Section IV.E.1). This was confirmed and emphasised in Review case R 8/16 (10 July 2017, not published in the OJ EPO), paragraph 38 of the reasons in which it is clarified that a Board has no obligation to peruse the whole file of the first instance proceedings. On the contrary, according to the EBA, it is the duty of the parties to raise issues again in the appeal proceedings in accordance with Articles 12(1) and (2) RPBA as required.

The presentation, at the very end of the appeal proceedings of a new request, relying on features which had never previously been addressed in the appeal proceedings thus complies neither with the purpose of the appeal proceedings in general, nor with the explicit requirements of the RPBA as set out in Article 12(1) and (2) thereof.

Furthermore neither the Board nor the appellant would have been in a position to address these new issues raised without adjournment of the oral proceedings, contrary to Article 13(3) RPBA.

Consequently auxiliary request 8 is not admitted to the proceedings.

5. In the light of the foregoing there is no necessity for the Board to address the further matters raised by the appellant, in particular the objections of added subject-matter and sufficiency of disclosure.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.