T 1259/17 - Deleting dependent claim is case amendment

Key points

• The Board: “The new requests [under Art. 13(1) RPBA 2020, in effect] are distinguished from the previous ones by the deletion of the features of granted [dependent] claims 4, 5 and 12. ” The deleted dependent claims involved added subject-matter, according to the preliminary opinion of the Board.
• The Board: “This amounts to an "amendment of the party's appeal case" within the meaning of Article 13(1) RPBA 2020. Some boards have taken the position that the deletion of claims in a new claim request was not to be regarded as an "amendment to the party's appeal case" if the deletion does not change the factual and legal framework of the case (see for example T 1480/16, reasons 2.3; T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1).”
• “Other boards have taken the position that the deletion of claims was indeed to be regarded as an "amendment to the party's appeal case" and have applied Article 13 RPBA 2020 and assessed whether to admit the request in exercising their discretion in view of the criteria set out in Article 13 RPBA 2020, (T 2091/18, reasons 4; T 494/18 reasons 1.3-1.4; T 1597/16, reasons 4; T 1439/16, reasons 2; T 1224/15, reasons 5; T 908/18, reasons 1; see also T 682/16, reasons 5 to 8; and concerning Article 13(1) RPBA 2007 see T 168/16, reasons 2.1 and 2.2). ”
• “The board follows this [latter] approach as it is in line with the systematic context of Articles 12(3) and 13 RPBA (T 494/18, reasons 1.3-1.4). Article 12(3) RPBA 2020 provides that the statement of grounds of appeal and the reply shall contain a party's complete appeal case. Accordingly, all requests shall be specified expressly at this stage. It follows from this that only those requests that have been filed with a party's statement of grounds of appeal or the reply thereto form part of a party's appeal case.”
• I wonder if we will see a referral to the Enlarged Board.
• Hence, the Board needs to decide on admissibility. The Board turns to the question of whether the amendments are suitable to address the Art.123(2) objections. After a very extensive review in r.2.7 - 2.7.10, the Board finds that the amended claims still lack basis in the application as filed.
•  “Thus none of MR, AR1 to 5 and 7 to 10 is allowable under Article 123(2) EPC. Therefore, the board exercised its discretion not to admit these requests into the proceedings under Article 13(1) RPBA 2020.”
• The Board's assessment of Art. 123(2) under admissibility was extensive and in my view amounts to implicitly admitting the requests. For instance, see the remark in T 0847/20 r.4.1, addressed to an opposition division: “The opposition division has therefore not carried out a prima facie assessment but has fully considered the requests. By doing so, the opposition division has implicitly admitted the requests. Consequently, the Board takes the view that the opposition division wrongly exercised its discretion because, having implicitly admitted the requests, there was no discretion left not to admit them”."
  
  
• The decision also contains interesting points regarding the burden of proof for a technical effect.
• " In such a situation, in which the scope of the claimed composition, apart from the presence of the SRP, is much broader than that of the specific examples in the patent, the burden of proof that all the claimed compositions lead to the alleged advantageous effects mentioned in the patent rests upon the patent proprietor (T 97/00, reasons 3.1.6). In this respect, PP has also to give evidence that an improvement over the closest prior art is achieved over the whole breadth of the claim (T 653/07, reasons 5.1.7; T 1188/00, reasons 4.9)." 

EPO T 1259/17 - 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t171259eu1.html

2. Admittance of MR and AR1-AR5, AR7-AR10

2.1 These new requests were filed for the first time on 24 September 2021. Although PP stated that should the board find that any of the dependent claims against which objections have been raised lack basis it would be willing to delete those claims from the requests on file, it did not react immediately to the board's preliminary opinion (in which claims 4, 5 and 12 were found to contravene Article 123(2) EPC) by filing such amended claim requests. Rather, the PP reacted more then one year later, and even only two weeks before the oral proceedings. At this stage, however, the admittance of an amendment to the party's appeal case is subject to the party's justification for its amendment and may be admitted only at the discretion of the board according to Article 13(1) RPBA 2020.

2.2 As Article 13(2) RPBA 2020 does not apply in the present case, since the first summons was sent before 1 January 2020 (Article 25(2) RPBA 2020), instead Article 13(1) RPBA 2020 and Article 13 RPBA 2007 are applicable (Article 25 RPBA 2020; T 950/16, reasons 3.2; T 715/16, reasons 2.2; T 1511/15, reasons 3). As the detailed wording in Article 13(1) RPBA 2020 reflects much of the case law developed under Article 13(1) RPBA 2007 (see T 32/16, reasons 1.1.2 and 1.1.3), the assessment can be based on Article 13(1) RPBA 2020.

2.3 Article 13(1) RPBA 2020 is applicable in case of "any amendment to a party's appeal case filed after the grounds of appeal or the reply". The new requests are distinguished from the previous ones by the deletion of the features of granted claims 4, 5 an 12. This amounts to an "amendment of the party's appeal case" within the meaning of Article 13(1) RPBA 2020.

2.3.1 Some boards have taken the position that the deletion of claims in a new claim request was not to be regarded as an "amendment to the party's appeal case" if the deletion does not change the factual and legal framework of the case (see for example T 1480/16, reasons 2.3; T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1).

2.3.2 Other boards have taken the position that the deletion of claims was indeed to be regarded as an "amendment to the party's appeal case" and have applied Article 13 RPBA 2020 and assessed whether to admit the request in exercising their discretion in view of the criteria set out in Article 13 RPBA 2020, (T 2091/18, reasons 4;

T 494/18 reasons 1.3-1.4; T 1597/16, reasons 4;

T 1439/16, reasons 2; T 1224/15, reasons 5; T 908/18, reasons 1; see also T 682/16, reasons 5 to 8; and concerning Article 13(1) RPBA 2007 see T 168/16, reasons 2.1 and 2.2). The board follows this approach as it is in line with the systematic context of Articles 12(3) and 13 RPBA (T 494/18, reasons 1.3-1.4). Article 12(3) RPBA 2020 provides that the statement of grounds of appeal and the reply shall contain a party's complete appeal case. Accordingly, all requests shall be specified expressly at this stage. It follows from this that only those requests that have been filed with a party's statement of grounds of appeal or the reply thereto form part of a party's appeal case.

2.3.3 As a consequence, all the claim requests filed on 24 September 2021 are to be regarded as an amendment to PP's appeal case and their admittance is subject to the board's discretion under Article 13(1) RPBA 2020.

2.4 According to Article 13(1), third sentence, RPBA 2020. the party shall provide reasons for submitting the amendment at this stage of the proceedings. The board does not find a persuasive justification for the extremely late filed new requests. If the PP wished to file requests without claims 4, 5 and 12 as granted in order to avoid objections under Article 123(2) EPC it could and should have done so at an earlier stage. The PP announced its willingness to file new requests if the board should find that any of the dependent claims lacked basis, but did not immediately react to the board's negative preliminary opinion in this regard. Thus, the other parties could not expect that PP was still willing to defend such limited requests which it then filed more than one year after having received the preliminary opinion and only two weeks before the oral proceedings. It is to be further noted that, according to Article 12(3) RPBA 2020 (see also Article 12(2) RPBA 2007) the statement of grounds of appeal and the reply shall contain a party's complete appeal case, and so specifying inter alia all the requests. This implies that PP had to file its requests as soon as possible and is thus not allowed to wait until the board gives its preliminary opinion as regards the appellant's objections.

2.5 The criteria for the exercise of the discretion set out in Article 13(1) RPBA 2020 include inter alia the suitability of an amendment to resolve the issues which were raised either by another party in the appeal proceedings or by the board, and in the case of an amendment to a patent, whether the party has demonstrated that the amendment prima facie overcomes said raised issues.

2.6 In the case at issue, the board came to the conclusion that the amendments made in all these requests were not suitable to resolve the issues raised under Article 123(2) EPC for the following reasons:

2.7 Claim 1 of the main request (MR) reads as follows (amendments to granted claim 1 underlined and to original claim 1 in bold character):

"1. A granular laundry detergent composition comprising a lipase which is a polypeptide having an amino acid sequence which:

(a) has at least 90% identity with the wild-type lipase derived from Humicola lanuginosa strain DSM 4109;

(b) compared to said wild-type lipase, comprises a substitution of an electrically neutral or negatively charged amino acid at the surface of the three-dimensional structure within 15 Å of El or Q249 at any of positions 1, 11, 90, 95, 169, 171-175, 192-211, 213-226, 228-258, 260-262 with a positively charged amino acid; and

(c) comprises a peptide addition at the C-terminal; and/or

(d) comprises a peptide addition at the N-terminal; and/or

(e) meets the following limitations:

i) comprises a negative amino acid in position E210 of said wild-type lipase;

ii) comprises a negatively charged amino acid in the region corresponding to positions 90-101 of said wild-type lipase; and

iii) comprises a neutral or negative amino acid at a position corresponding to N94 of said wild-type lipase and/or has a negative or neutral net electric charge in the region corresponding to positions 90-101 of said wild-type lipase;

the detergent composition comprising up to 10 wt% aluminosilicate (anhydrous basis) and/or phosphate builder, the composition having a reserve alkalinity of greater than 4, the composition comprising 0.05 to 5 wt% soil release polymer."

2.7.1 The board, upon considering the latest arguments of the PP in letter of 24 September 2021, confirms its preliminary view as set out in the communication dated 7 August 2020 that the composition of claim 1 at issue was not directly and unambiguously disclosed as such in the original application, inter alia because there is no basis for combining the new feature (soil release polymer) with all other features, in particular the substitutions' positions, the options (c)-(e), and the features "granular" and "laundry".

2.7.2 According to the original application (page 1, lines 4-5), the invention relates to "laundry detergent compositions". Furthermore, the original application acknowledges prior art laundry detergent compositions (page 1, lines 7, 18) and mentions that testing carried out on "cotton swatches" (page 6, line 16) has to do with laundering. Although the term "laundry" was disclosed originally in a generic way and mentioned in original claim 9 (as invoked by the PP, but concerning the wash with the composition of preceding claims), beyond these generally applicable items of disclosure there is no hint at the combination with all other features of claim 1 at issue, not even in the original claims. For instance, if starting from the term "laundering" in claim 9, in claim 8 the feature "granular" is only preferable and not necessarily linked to the soil release polymer (SRP) of claim 7, as the cross-reference between claims is generic ("any preceding claim") and original claim 1 does not even define a list of substitutions-positions.

2.7.3 As regards the feature "granular", this is only disclosed as an especially preferred embodiment of the "solid" detergent in the original application (last paragraph of page 20, lines 21-22) and correspondingly defined in original claim 8 with "preferably". Also, claim 8 refers generically to any previous claim, such as claims 1 and 7 (the latter referring to SRP). Hence, claim 8 merely defines a preferred form of a preferred embodiment of a composition of original claim 1, which however was open, since it did not disclose which of the now defined positions might be combined therewith and with SRP or with any of options (c)-(e).

2.7.4 In fact, the mentioning of the substitutions (page 3, lines 27-29) in the original application does not disclose the now claimed list of positions (at any of positions 1, 11, 90, 95, 169, 171-175, 192-211, 213-226, 228-258, 260-262) as a general or preferred embodiment thereof (see page 3, lines 24-26), but as exemplary positions of the preferred embodiment of page 3, lines 27-29 ("e.g. at any positions "). Moreover, the positions are disclosed in a separate list, independent from all other features such as "granular" and "soil release polymer", and from other particulars such as options (c), (d) and (e) defined in original claim 1.

2.7.5 The original exemplary list of positions furthermore does not disclose which lipase variant comprises further (optional) features (c)-(e) (mentioned in separate and independent lists thereof) and which one is suitable for use in a "granular" laundry composition comprising a "soil release polymer". This applies a fortiori to the features of the dependent claims, in particular those not defined in the original claims.

2.7.6 For instance, the general disclosure of feature (c) "peptide addition at the C-terminal" on page 4 of the original application, only mentions under a separate heading that the optional peptide is "attached to C-terminal L269" (leucine 269) of the sequence list of D16, without disclosing its combination with any other position/substitution in the mature protein sequence.

2.7.7 Thus, the original application does not disclose which substitution "at any of positions 1, 11, 90, 95, 169, 171-175, 192-211, 213-226, 228-258, 260-262)" may be combined with a peptide addition at any C-terminal. In other words, whether a specific, or only some or even all of listed substitutions may be combined with feature (c) is not directly and unambiguously disclosed in the original application. For instance, a composition with a variant having (positive) amino acid R in position 210 and a generic peptide added at the C-terminal was not disclosed in the original application.

2.7.8 Also optional feature (d) "peptide addition at the N-terminal" is mentioned in general terms in the context of original claim 1 without the list of positions now defined, neither is it mentioned at all in the detailed description of the invention on pages 3 to 5 of the original application (where also features (c) and (e) are disclosed). Thus, the combination of a specific or of all substitutions at the positions listed with feature (d) (optionally defined in claim 1) is not directly and unambiguously disclosed in the original application.

2.7.9 Finally, optional feature (e) of claim 1 at issue is mentioned in a generic way in the original application in the context of original claim 1 (and so not including the list of positions for substitutions now defined in claim 1 at issue, but the more general definition of page 3, lines 24-26 and first clause of lines 27-28). Feature (e) is detailed on page 4, from line 20, under a separate heading and in general terms in lines 21-23, wherefrom it is apparent that e.g. amino acid 210 should be unchanged or E210D/C/Y (i.e. should be negative) (for the amino acid grouping see page 6, lines 4-12, of the original application), as in original claim 1. Instead, the list of positions in claim 1 at issue encompasses the possibility for position 210 of having a positive amino acid such as R, at least when features (c) and/or (d) are present, even in combination with a positive amino acid in position 94. This particular combination of substitutions (positive amino acid in 210, or in both 94 and 210) with feature (e) is not disclosed either in the original application, let alone in combination with the other features of claim 1.

2.7.10 Since the composition of claim 1 ("granular laundry detergent composition" in combination with a soil release polymer and with the defined variants and any of options (c),(d),(e) was not directly and unambiguously disclosed in the original application, it does not comply with Article 123(2) EPC, so that the main request is not allowable.

2.8 Claim 1 of each of AR1, 2, 3 and 7 to 10 is at least objectionable under Article 123(2) EPC in the same way as claim 1 of the MR, as it contains all the features of this claim, and so it is not suitable to overcome the objections raised under Article 123(2) EPC. Hence, the board need not decide whether the further features or limitations included in claim 1 of each of these requests comply with Article 123(2) EPC.

2.9 Claim 1 of AR4 is not allowable also because it is not based on the original disclosure of page 4, lines 3 and 4, according to which the now defined subset of listed substitutions are located within 10Å of E1. Contrary to the position of PP in letter of 24 September 2021 (last paragraph of page 4), the subset of positions now defined in claim 1 of AR4 is encompassed by the generic definition of page 3, lines 27-29, which however does not directly and unambiguously disclose that these most preferred substitutions may, let alone all, be located also between 10 and 15 Å of E1 or Q249. Thus, already this amendment per se represents an intermediate generalisation of the disclosure of the original application not complying with Article 123(2) EPC.

2.10 Claim 1 of AR5 includes a further selection, arising from the deletion of option (d), the new combination of claim 1 not being directly and unambiguously disclosed originally. In fact, claim 1 still encompasses the embodiment with a positive amino acid such as R in 210 in combination with feature (d) (now c) and with a positive amino acid in position 94.

2.11 Thus none of MR, AR1 to 5 and 7 to 10 is allowable under Article 123(2) EPC. Therefore, the board exercised its discretion not to admit these requests into the proceedings under Article 13(1) RPBA 2020.

2.12 In view of these findings a decision on the objections under Articles 83 and 56 EPC, dealt with in the board's preliminary opinion, is not necessary.