T 2112/16 - Filing Request 1A kills ARs 2, 3 and 5-14

Key points

• In this opposition appeal, the Board considers the claims of the Main Request to be not novel and the claims of AR-1 to lack basis in the application as filed. AR-1a was filed after the Statement of grounds and is not admitted because “prima facie the requirement of Article 123(2) EPC is still not fulfilled and the appellant did not provide any reason why these requests were submitted at this late stage of the proceedings”. The same applies for AR-4.
• The Board then arrives at the admissibility of AR-2, filed with the Statement of grounds. The Board does not admit the request: “the sequence of the auxiliary requests has been changed during the course of the appeal proceedings at least due to the introduction of auxiliary request 1A [after the Statement of grounds], this involving a material change in focus of the claimed invention and thus resulting in an amendment of the case which the Board and the respondents had to deal with.”
• “The selected sequence of the auxiliary requests leads to an evident broadening and lack of convergency in the requests. The feature "X", which is present in auxiliary request 1A, is not present in claim 1 of any of the lower ranking auxiliary requests 2, 3 and 5 to 14 filed with the grounds of appeal. This has the effect of the Board and parties having to consider subject-matter broader than that included in the higher ranking auxiliary request 1A. Such a change made after a party has presented its complete case does not meet the requirement for procedural economy as set out in Article 13(1) RPBA 2020.”
• The Board exercises its discretion under Article 13(1) RPBA 2020 not to admit the auxiliary requests 2, 3 and 5 to 14 into the proceedings.

EPO T 2112/16 - link

Reasons for the Decision


7. Auxiliary requests 2, 3 and 5 to 14


7.1 Auxiliary requests 2, 3 and 5 to 14 were filed with the grounds of appeal. Although the numbering of these requests has not been altered, the sequence of the auxiliary requests has been changed during the course of the appeal proceedings at least due to the introduction of auxiliary request 1A, this involving a material change in focus of the claimed invention and thus resulting in an amendment of the case which the Board and the respondents had to deal with.


7.2 The Board had already alerted the appellant in its preliminary opinion (see point 5.1) that the filing of auxiliary request 1A had the effect of changing its complete case, particularly in respect of all lower ranking requests. Since the appellant has not presented any further arguments regarding this point, the Board sees no reason to change its opinion in this regard.


7.3 The selected sequence of the auxiliary requests leads to an evident broadening and lack of convergency in the requests. The feature "an exhaust inlet and an exhaust outlet of the dispersion chamber are coplanar", which is present in auxiliary request 1A, is not present in claim 1 of any of the lower ranking auxiliary requests 2, 3 and 5 to 14 filed with the grounds of appeal. This has the effect of the Board and parties having to consider subject-matter broader than that included in the higher ranking auxiliary request 1A. Such a change made after a party has presented its complete case does not meet the requirement for procedural economy as set out in Article 13(1) RPBA 2020.


7.4 Accordingly, the Board exercised its discretion under Article 13(1) RPBA 2020 not to admit the auxiliary requests 2, 3 and 5 to 14 into the proceedings.


8. In the absence of any request in the proceedings on the basis of which the patent can be maintained, the impugned decision cannot be set aside and the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.