T 0483/17 - Don't forget the rejoinder

 Key points

• The OD rejected the opposition. The Board finds the public prior use PU-1 to be sufficiently proven. The public prior use was in the sphere of the opponent and must be proven up to the hilt, but "this does not mean that the opponent has to provide each and every theoretically possible piece of evidence. Instead, it is sufficient that the evidence put forward convinces the Board."
• The Board considers claim 1 of the Main Request to be not novel and turns to AR-1 filed with the Appeal Reply Brief of the patentee as respondent. 
• The opponent submits an inventive step attack starting from the (now proven) prior use during the oral proceedings. 
• “The appellant [opponent] raised an objection of lack of inventive step starting from prior use PU1 at the latest possible opportunity, namely at the end of the oral proceedings before the Board. Auxiliary request 1 was filed by the respondent with its reply to the grounds of appeal and it corresponds to auxiliary request 1 of the opposition proceedings. It was therefore known to the appellant long before the oral proceedings in the appeal proceedings.”
• “The fact that the objection had already been put forward in opposition proceedings does not imply that it is part of the appeal proceedings. It instead proves that the objection could (and should) have been raised earlier in the appeal proceedings. There are no exceptional circumstances which justify the objection being raised only at this late stage of the appeal proceedings, and the appellant has not put forward any cogent reasoning for admitting this objection either.”
• So, attacks do not carry over from the first instance proceedings but need to be repeated in appeal.
• Moreover, the appropriate time for submitting attacks in reply to requests filed with an Appeal Reply Brief of a patentee as respondent is the appellant's rejoinder, which can be found only in the Explanatory  Notes to the RPBA. 
• “Furthermore, although the objection is based on documents which are part of the appeal proceedings, it constitutes a completely new line of attack, which took both the respondent and the Board by surprise and which cannot reasonably be expected to be dealt with at such late stage of the proceedings. The Board therefore decided not to admit the inventive-step objection starting from the prior use PU1 into the proceedings”

2. Main request - Novelty in view of public prior use

2.1 Since the sale and delivery of five roller bearings from the appellant/opponent (SKF) to a third party (Hansen Transmissions) is completely out of the sphere of the respondent/patent proprietor (NTN Corp.), according to the case law of the Boards of Appeal, proof has to be provided "up to the hilt". The determination of the prior use thus requires that the facts giving rise to the prior use must be established without gaps (see T 472/92, OJ 1998, 161, point 3.1 of the Reasons); however, this does not mean that the opponent has to provide each and every theoretically possible piece of evidence. Instead, it is sufficient that the evidence put forward convinces the Board.

On the other hand, a prior use has not been sufficiently proven if the proprietor successfully pointed out any inconsistencies or drew attention to any gaps in the opponents chain of proof (see T 472/92, op. cit.).

2.2 Applying these principles, the Board considers it established that the alleged prior use took place.

[...]

2.7 The Board thus comes to the conclusion that the prior use is sufficiently proven and that retainer segments according to drawings PU1-D or D* formed of PEEK according to standard 1054077 (PU1-E) were made available to the public. As also accepted by the appellant, such retainer segments exhibit all the features of claim 1 [of the Main Request], which is thus not novel.

3. Auxiliary request 1 - extension of subject-matter and protection

Claim 1 of auxiliary request 1 contains the features of granted claims 1 and 5. Contrary to the appellant's submission, the protection conferred by the claim has thus not been extended but limited compared with the granted claim 1. The requirements of Article 123(3) EPC are therefore fulfilled.

[...]

5. Auxiliary request 1 - Admissibility of inventive-step objection

The appellant [opponent] raised an objection of lack of inventive step starting from prior use PU1 at the latest possible opportunity, namely at the end of the oral proceedings before the Board.

Auxiliary request 1 was filed by the respondent with its reply to the grounds of appeal and it corresponds to auxiliary request 1 of the opposition proceedings. It was therefore known to the appellant long before the oral proceedings in the appeal proceedings. The fact that the objection had already been put forward in opposition proceedings does not imply that it is part of the appeal proceedings. It instead proves that the objection could (and should) have been raised earlier in the appeal proceedings. There are no exceptional circumstances which justify the objection being raised only at this late stage of the appeal proceedings, and the appellant has not put forward any cogent reasoning for admitting this objection either.

Furthermore, although the objection is based on documents which are part of the appeal proceedings, it constitutes a completely new line of attack, which took both the respondent and the Board by surprise and which cannot reasonably be expected to be dealt with at such late stage of the proceedings.

The Board therefore decided not to admit the inventive-step objection starting from the prior use PU1 into the proceedings (Article 13(1), 13(3) RPBA 2007 in conjunction with Article 13(1) and Article 25(3) RPBA 2020).

6. For the reasons given above, none of the objections raised prejudice the maintenance of the patent according to auxiliary request 1.