T 2398/16 - Deleting alternative from claim 1, unexpected shift

Key points

• Claim 1 of the Main Request specified two shapes for a hook, namely J-shaped and 'palm tree-shaped'. The Board in this opposition case considers the embodiment with the J-shaped hook to be obvious. The Patentee then files in oral proceedings a 'new main request' wherein the first alternative (J-shaped) is deleted from claim 1, leaving only the 'palm-tree shaped' embodiment. 
• The Board does not admit the request.
• “The auxiliary request deletes the alternative with J-shape overhanging in a single direction, thus limiting the claim to the palm tree-shaped hook. J-shape hooks [...] had always been the main focus of the opposition and of the following appeal proceedings to date. Nor was the palm tree shape [...] ever the sole subject of any request. The New Main Request therefore represents an unexpected shift of the subject of the debate. It is highly questionable whether either the Appellant-Opponent or the Board can fairly be expected to deal with this unexpected shift within the framework of the oral proceedings.”
• Moreover, the embodiment is prima facie not inventive.

EPO T 2398/16 - link

3. New Main Request filed in the oral proceedings before the Board

3.1 The New Main Request was filed at the oral proceedings before the Board, and amounts to an amendment to the Appellant-Proprietor's case in the sense of Article 13 of the Rules of Procedure of the boards of Appeal (RPBA) in the applicable version of 2007 pursuant Article 25(3) of the revised Rules of Procedure in effect from 1 January 2020. According to Art 13(3) RPBA 2007, any amendment sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the parties cannot reasonably be expected to deal with without an adjournment.

3.2 The approach consistently adopted by the boards when exercising their discretion in admitting an amendment filed at the very last stage during oral proceedings consists in identifying whether good reasons exist for filing the amendment so far into the proceedings - for example if it is occasioned by developments in the proceedings. Unless such a justification exists, amendment to a party's case will be admitted only if it does not extend the scope or framework of discussion as determined by the decision under appeal and the statement of the grounds of appeal, and is moreover clearly allowable, see Case Law of the boards of Appeal, 9th edition, 2019 (CLBA) V.A.4.5.1 b) and the case law cited therein.

3.3 The auxiliary request deletes the alternative with J-shape overhanging in a single direction, thus limiting the claim to the palm tree shaped hook. J shape hooks further supplemented by the additional parameter of the thickness had always been the main focus of the opposition and of the following appeal proceedings to date. Nor was the palm tree shape in combination with the same minimum base thickness as molded ever the sole subject of any request. The New Main Request therefore represents an unexpected shift of the subject of the debate. It is highly questionable whether either the Appellant-Opponent or the Board can fairly be expected to deal with this unexpected shift within the framework of the oral proceedings.

3.4 Moreover, the Board observes that D1 at column 15, lines 3-6, mentions palm tree hooks as a possible application of its teaching. Consequently, it is by no means immediately apparent that this amendment overcomes the lack of inventive step as held above. Thus, the New Main Request is not clearly allowable.

4. For these reasons, the Board decided to use its discretion under Articles 13(1) and (3) RPBA 2007 with Article 114 (2) EPC not to admit this request in the proceedings.

5. As the claim 1 of the Main Request fails to meet the requirements of Art.52(1) and 56 EPC and the New Main Request filed at the oral proceedings before the Board is not admitted, the patent must be revoked pursuant to Article 101(3)(b) EPC.