9 Oct 2019

T 0448/16 - Board must remain neutral

Key points 

  • This decision in an opposition appeal was given publication code [C] by the Board, so I discuss it here.
  • The Board considers the claims of the Main Request to involve an unallowable intermediate generalization.
  • " Lifting feature f out of this context (of paragraph [0063] and figure 2B) and adding it in isolation to claim 1 therefore represents a generalisation of the specific structural and functional context in which the feature might be said to originally appear. At the same time it raises it to prominence, giving it a significance over other features that it does not have in the original parent disclosure." 
  • The patentee raised an objection under Rule 106 EPC. " The core of the objection as the Board understands it is that it should have indicated to the appellant-proprietor what features were missing in the various versions of the auxiliary requests " (to address the issue of intermediate generalization due to the isolated extraction of feature F out of the description).
  • The Board in reply recalls that " a board must remain neutral in inter partes proceedings, both in its communications to the parties and in oral proceedings." (R9/09). 
  • The Board dismisses the Rule 106 objection on the ground that "Had the Board, after having discussed the issue exhaustively with the parties, then indicated to the appellant-proprietor, precisely which specific features were missing from claim 1 in any of its versions so that the appellant-proprietor could compose suitable counter-arguments or file a suitably adapted further request, this would have favoured the appellant-proprietor's case over that of the respondent-opponents. Such a course of action would have compromised the Board's duty to remain neutral, and thus the Board saw itself as prohibited from so doing." 
EPO T 0448/16 -  link


9. During the oral proceedings before the Board after non-admission of Auxiliary Request ID, the appellant-proprietor raised, in writing, the following objection under Rule 106 EPC:
"We herewith raise an objection under Rule 106 EPC.
In the first part of the oral proceedings, the Chairman asked the parties to present their cases on the question of added matter over the parent application. After a break for deliberation, the Board indicated that the claims of the main request and all auxiliary requests on file contain added subject-matter, in violation of Art. 76 EPC. The Chairman indicated that the claims of all requests on file, including all auxiliary requests in versions A, B and C are inadmissibly generalized. Proprietor's representatives asked if the Board's opinion had changed over the written preliminary opinion, and for an indication as to the feature/features which caused the violation found. At a later stage in the oral proceedings, the Chairman stated that the generalization relates to feature f). Thereafter, the Proprietor's representatives asked for indication as to why this feature f) was found to be inadmissibly generalized, i.e., which missing aspects of the original disclosure of the parent application caused the objection.
However, the Board was not willing to provide such indication.
Therefore, Proprietor was not in a position to properly react, provide arguments, or remedy possible deficiencies in any of the claim sets on file. In the Proprietor's view, this constitutes a fundamental violation of the right to be heard according to Article 113 EPC".


9.1 The objection relates to how the Board dealt with the issue of added subject matter (cf. feature f) of certain auxiliary requests at the oral proceedings.
The core of the objection as the Board understands it is that it should have indicated to the appellant-proprietor what features were missing in the various versions of the auxiliary requests. This would have allowed the appellant-proprietor either to provide suitable arguments in favour of existing requests or formulate a new request that could have overcome the problem of added subject matter.
9.2 The Board first notes that, in accordance with established jurisprudence of the Enlarged Board of Appeal (see CLBA, IV.F.3.13.5), a board of appeal is not required to provide the parties in advance with all foreseeable arguments in favour of or against a request. In other words, parties are not entitled to advance indications of all reasons for a decision in detail (see for example R0004/11, reasons 2.5).
9.2.1 In the present case, the written opinion discussed the issue of intermediate generalization vis-a-vis the parent for feature f and this was the main issue discussed at length and in detail at the oral proceedings before the Board. The parties should therefore have been aware of this issue well before and during the oral proceedings. Nor is it disputed that the parties had the opportunity to comment on all requests at the oral proceedings. After the filing of the objection, the Board offered the appellant-proprietor a further opportunity to discuss the auxiliary requests. The appellant-proprietor, however, declined.
9.2.2 Moreover, following the established jurisprudence outlined above, the Board was under no obligation to inform the parties in detail, either in its written preliminary opinion or at the oral proceedings, the omission of which particular features of the specific context resulted in an unallowable intermediate generalisation and which additional features a newly formulated claim would need to have for it to be allowable.

9.2.3 It is furthermore established jurisprudence of the Enlarged Board of Appeal (see CLBA IV.F.3.13.6 and, for example, R0009/09, reasons 2.3.3), that a board must remain neutral in inter partes proceedings, both in its communications to the parties and in oral proceedings.
Had the Board, after having discussed the issue exhaustively with the parties, then indicated to the appellant-proprietor, precisely which specific features were missing from claim 1 in any of its versions so that the appellant-proprietor could compose suitable counter-arguments or file a suitably adapted further request, this would have favoured the appellant-proprietor's case over that of the respondent-opponents. Such a course of action would have compromised the Board's duty to remain neutral, and thus the Board saw itself as prohibited from so doing.
9.3 For all these reasons, the Board considered that it had not violated the appellant-proprietor's right to be heard under Article 113 EPC, nor caused a procedural defect. Therefore, the Board dismissed the appellant-proprietor's objection raised under Rule 106 EPC.

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