T 1323/17 - Losing auxiliary requests upon appealing

Key points

• In this opposition appeal, the OD had considered the claims as granted allowable and had rejected the opposition. The Board considers the claims as granted to lack inventive step.
• The Board does not admit the 16 Auxiliary Requests which corresponded to the auxiliary requests already pending before the OD (but which the OD did not consider and didn't need to consider).
• “ In the absence of any dispute that those auxiliary requests correspond to those filed before the opposition division, the question of whether they should be taken into account by the Board is therefore to be answered having regard to the provision of the Rules of Procedure of the Boards of Appeal, in particular Article 12(4) RPBA 2007 in combination with Article 12(2) RPBA 2007, the latter stipulating that the statement of grounds of appeal and the reply must contain a party's complete case.
  However, neither the [Statement of Reply of Patentee as Respondent in appeal] nor the [later] letter [of Patentee] specify expressly how the amendments introduced are meant to overcome the various objections raised in respect of the main request. Only general statements (e.g. "the process claims are further distinguished from the processes of the prior art" or "This request more narrowly defines the invention in view of the preferred embodiments") devoid of clear analysis are present with the consequence that the first to sixteenth auxiliary requests lack substantiation.
  Although the lack of substantiation of the auxiliary requests was communicated to the respondent in the communication of the Board dated 12 February 2020, no additional submissions were made in this respect. Under these circumstances the first to sixteenth auxiliary requests are held inadmissible under Article 12(4) RPBA 2007 as they do not meet the requirement of Article 12(2) RPBA 2007 (Case Law, supra, V.A.4.12.5).”
• The Board also makes an interesting remark about inventive step, in particular about the technical effect: if the closest prior art and the example in the patent differ in numerous features, but only one of those features is recited in the claim at issue, it must be credible that this singe distinguishing feature provides the technical effect also in the context of the closest prior art. E.g., the claim is a composition with components A, B, and C, and the closest prior art is a composition with components A, B, D, and E (wherein A and B are used in much smaller amounts than in the examples of the patent), then it must be credible that adding C would give the technical effect also in the material of the CPA with small amounts of A and B and in the presence of D and E).
• The Board: “However, considering that the improvement which is sought to be demonstrated by the comparative test is one which is alleged to be achieved over the closest prior art, what counts in the Board's opinion is not only whether a causal link between a distinguishing feature over the closest prior art and an effect is demonstrated in the framework of a comparative test submitted by the applicant or patentee, but also whether the variant of the closest prior art selected as reference (or comparative) example for the comparative test is representative of the closest prior art in the sense that the effect [that was actually] shown to be caused by the distinguishing feature in the context of the comparative test can be expected to take [also] place also in the framework of the closest prior art despite the existence of differences vis-à-vis the reference example of the comparative test.”. 

EPO T 1323/17 -  link





6.3 The main request is therefore not allowable, as the subject-matter of its claim 1 does not involve an inventive step.

Auxiliary requests

7. The respondent indicated in the reply to the statement of grounds of appeal of the opponent submitted with letter of 21 December 2017 that the first to sixteenth auxiliary requests addressed in this reply corresponded to those filed before the opposition division. Those auxiliary requests which however had not been enclosed with the reply were filed with letter of 3 May 2018. In the absence of any dispute that those auxiliary requests correspond to those filed before the opposition division, the question of whether they should be taken into account by the Board is therefore to be answered having regard to the provision of the Rules of Procedure of the Boards of Appeal, in particular Article 12(4) RPBA 2007 in combination with Article 12(2) RPBA 2007, the latter stipulating that the statement of grounds of appeal and the reply must contain a party's complete case. However, neither the reply of the respondent to the statement setting out the grounds of appeal nor the letter of 3 May 2018 specify expressly how the amendments introduced are meant to overcome the various objections raised in respect of the main request. Only general statements (e.g. "the process claims are further distinguished from the processes of the prior art" or "This request more narrowly defines the invention in view of the preferred embodiments") devoid of clear analysis are present with the consequence that the first to sixteenth auxiliary requests lack substantiation. Although the lack of substantiation of the auxiliary requests was communicated to the respondent in the communication of the Board dated 12 February 2020, no additional submissions were made in this respect. Under these circumstances the first to sixteenth auxiliary requests are held inadmissible under Article 12(4) RPBA 2007 as they do not meet the requirement of Article 12(2) RPBA 2007 (Case Law, supra, V.A.4.12.5).

Correction of the minutes

8. Apart from the question whether the request to consider the request for correction of the minutes of the oral proceedings before the opposition division as formulated by the appellant can be considered as a proper request to correct the minutes, it is established case law that the opposition division has sole competence for such a correction (Case Law, supra, III.C.7.10.3). The Board is therefore not empowered to deal with that request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.