T 0888/17 - Second appeal, two oral proceedings

Key points

• In case T 2614/11 notified 03.03.2015, the Board had remitted the case to the OD to decide on the adaption of the description to the claims found allowable by the Board. By decision of 02.02.2017, the OD took a decision. The opponent appealed. The BoA held oral proceedings on 28.06.2018 (09:00 - 09:45); the patentee did not attend these. The patent raised new objections against the amended description pages filed on 17.05.2018. The BoA decided to continue the proceedings in writing. The BoA issued on 17.07.2018 summons for second oral proceedings as well as a  Communication, the patentee filed an amended page 2 on 14.08.2018. The opponent requested a correction of the minutes of the oral proceedings by letter of 03.09.2018. The second oral proceedings took place on 05.11.2018 (from 13:00 to 14:15), the patentee did not attend these. 

EPO T 0888/17 -  link

III. By the decision T 2614/11, the case was remitted to the department of first instance with the order to maintain the patent on the basis of the third auxiliary request as submitted with the letter of 9 October 2014 and a description to be adapted thereto.
[...]
IV. The appeal by the opponent lies from the decision of the opposition division that the adapted description met the requirements of Article 84 EPC and that the amended patent on the basis of auxiliary request 3 met the requirements of the EPC.

VI. The opponent (hereinafter the appellant) filed an appeal against said decision. [...]

VIII. The Board sent a communication dated 23 April 2018. In its communication the Board stated in particular that the term "novel" which is present in the description in relationship with the claimed process and the beadlet obtainable by said process infringed Article 84 EPC. An objection under Article 84 EPC as regards all other points mentioned by the appellant appeared unjustified to the Board.

IX. In response to the Board's communication, the respondent filed amended pages 2, 4, 5, 6 and 7 of the description with letter dated 17 May 2018.

X. Oral proceedings took place on 28 June 2018 in the absence of the respondent. During said oral proceedings, the appellant pointed out that in paragraph [0001] of page 2 of the description, there was still a reference to the term "novel beadlets", which had been objected to under Article 84 EPC by the Board. [...]

XI. A second communication dated 17 July 2018 was sent by the Board. In this communication, the Board requested the respondent to clarify whether it wanted to maintain the term "novel beadlets" in said paragraph [0001], line 4. [...]

XII. With letter dated 14 August 2018, the respondent filed an amended page 2 of the description, where the term "novel" was deleted from paragraph [0001], line 4. It also clarified that this deletion had been inadvertently omitted in the previously filed amended version of the description.

XIII. By letter dated 3 September 2018, the appellant requested correction of the minutes of the oral proceedings of 28 June 2018. By the same letter it raised an objection under Rule 106 EPC.

XIV. In its communication dated 28 September 2018, the Board gave its preliminary opinion on the request for correction of the minutes. It also gave reasons as to why it considered the objection under Rule 106 EPC to be without merit.

XV. A second oral proceedings took place on 5 November 2018 in the absence of the respondent.

Note: these second oral proceedings lasted from 13:00 to 14:15. The issue of whether example 4 was consistent with the claims was discussed, as well the request for correction of the minutes.

Reasons for the Decision

4.3.3 An objection under Article 84 EPC as to the presence of features relating to "coating" in the description is thus unjustified.

4.4 Presence of the terms "novel beadlets" and "novel process" in the description

4.4.1 All terms "novel beadlets" and "novel process" have been deleted from the description, and this objection under Article 84 EPC is therefore moot.

4.4.2 The Board wishes to point out that the presence of one remaining unique term "novel beadlets" on page 2, paragraph [0001] filed by the respondent with letter dated 17 May 2018 dated in preparation of the oral proceedings planned for the 28 June 2018 would not have been a cause for revoking the patent in view of the general teaching of the description of the specification. The requirement for support of the claims must be viewed as a formal matter to ensure that the description and claims have the same extent; the Board does not see how the presence of an unique term "novel beadlet" in the description could have extended the scope of the claims.

4.5.4 Consequently, an objection under Article 84 EPC as to the disclosure of example 4 is unjustified.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside. The case is remitted to the opposition division with the order to maintain the patent in the following version:

Claims 1 to 29 corresponding to the claims of auxiliary request 3 filed with letter dated 9 October 2014;

Description: Page 2 filed with letter dated 14 August 2018, pages 4, 5, 6 and 7 filed with letter dated 17 May 2018, and pages 3, 8 to 12 filed with letter dated 15 June 2016.

2. The request for correction of the minutes is refused.