T 1771/17 - New request, no new attack

Key points

• AR-2B is filed in this opposition appeal after the summons and in reply to the Board's preliminary opinion. The Board raised an Art. 123(2) objection against AR-2A in the preliminary opinion. That objection was new in the appeal (it was not relevant that the same objection was mentioned in the OD's preliminary opinion because the OD's decision did not reflect the objection). 
• The opponent raises a novelty objection against claim 1 of AR-2B based on D5. The claims of the main request and AR-1 were found to be not novel over D5 by the Board. The Board does not admit the novelty attack against AR-2B.
• The amendment of AR-2B compared to AR-2A was only small. "It follows that any novelty objection raised against claim 1 of auxiliary request 2B would apply equally to claim 1 of auxiliary request 2A.
• The [opponent] appellant, which in the written procedure did not raise any objection against auxiliary request 2A (or against the other auxiliary requests on file), did not provide any cogent reasons why the novelty objection raised against auxiliary request 2B had not been raised earlier against auxiliary request 2A."
• Therefore the request is not admitted.

T 1771/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171771eu1.html

Contrary to the respondent's argument, the subject-matter of claim 1 of the second auxiliary request is therefore not directly and unambiguously derivable from the original disclosure, contrary to the requirements of Article 123(2) EPC.

4.2 Since claim 1 of auxiliary request 2A uses the same combination of articles, the objection also applies to this request.

5. Auxiliary request 2B

5.1 Admittance of the request

Auxiliary request 2B was filed after the summons had been notified and in reaction to the Board's communication indicating its preliminary opinion that the expression "an inner surface of the arm" in the second auxiliary request appeared to be in breach of Article 123(2) EPC. The admission of this request into the proceedings is therefore subject of Article 13(2) RPBA 2020.

It is irrelevant whether the Opposition Division's preliminary opinion might have referred to this expression, as brought forward by the appellant, because this preliminary opinion was not reflected in the contested decision and is therefore not part of the appeal proceedings. Hence, the objection under Article 123(2) EPC was mentioned as such for the first time in the appeal proceedings in the Board's communication, and the respondent had no reason to file auxiliary request 2B earlier.

Moreover, auxiliary request 2B is based on auxiliary request 2A which was already on file and against which no objection was raised by the appellant in the written procedure. The only amendment carried out consisted in the replacement of the article "an" by "the", which clearly addressed the objection. The word "slightly" had already been stricken out in auxiliary request 2A. Therefore, no new issues were raised by auxiliary request 2B. Hence, consideration of this request did not require an adjournment of the oral proceedings.

For these reasons, although auxiliary request 2B had been filed after notification of the summons, the Board considered that exceptional circumstances justifying its admission into the proceedings pursuant to Article 13(2) RPBA 2020 were given.

5.2 Added subject-matter

With the replacement of the article "an" by "the", amended feature 6.2.4.1 clearly specifies that the entire inner surface of the arm is spaced from the needle shaft's outer surface, as originally disclosed in paragraph [0085] of the description as filed.

It is true that claim 1 does not, contrary to the aforementioned paragraph, explicitly recite that the arm's inner surface is "slightly" spaced from the needle shaft's outer surface. However, this is irrelevant, especially in view of the function achieved by the spacing, namely to reduce the drag force on the needle cannula as it is being pulled proximally (see last sentence of paragraph [0085]). Moreover, given the nature of the device claimed, a safety catheter, any spacing within the internal mechanism of the tip protector is necessarily small. Hence, a "slight" spacing is implicit in the claim. The omission of the term "slightly" does therefore not contravene Article 123(2) EPC.

The Board concludes that auxiliary request 2B meets the requirements of Article 123(2) EPC.

5.3 Admittance of the appellant's novelty objection over D5

The appellant raised a novelty objection in view of D5 against claim 1 of auxiliary request 2B. The respondent contested the admittance of this objection.

As indicated in point 5.1 above, claim 1 of auxiliary request 2B differs from claim 1 of auxiliary request 2A only by the replacement of the indefinite article "an" with "the" so that amended feature 6.2.4.1 refers to "the inner surface of the arm" instead of "an inner surface of the arm".

It follows that any novelty objection raised against claim 1 of auxiliary request 2B would apply equally to claim 1 of auxiliary request 2A.

The appellant, which in the written procedure did not raise any objection against auxiliary request 2A (or against the other auxiliary requests on file), did not provide any cogent reasons why the novelty objection raised against auxiliary request 2B had not been raised earlier against auxiliary request 2A.

Consequently, the Board decided not to take into account the appellant's novelty objection against auxiliary request 2B in accordance with Article 13(2) RPBA 2020.

5.4 Further objections

The appellant had no further objections against auxiliary request 2B. The Board does not see any reason against the maintenance of the patent on the basis of this set of claims either.

Order