T 0652/20 - Modifed novelty attack not admitted

Key points

• The opponent cited Example 12 of document E3 as novelty destroying before the OD. In appeal, the opponent argues that Example 12 of document E3 is novelty destroying. The Board does not admit the attack.
• " In its statement setting out the grounds of appeal, the appellant - opponent raised a lack of novelty objection versus the composition of example 12 of E3 based on the argument that chitin contained therein would represent a sebum-absorbing powder having a sebum uptake of 35 mL/100 g or more [as specified in the claim]" 
• " During the first instance proceedings the [opponent] relied exclusively on fibroin as sebum-absorbing powder in its objection of lack of novelty over example 12 of E3. Fibroin was consequently the sole component considered as potential sebum-absorbing agent in the impugned decision. Hence, the lack of novelty reasoning of the [opponent] based on chitin as sebum-absorbing powder was provided for the first time in the entire proceedings with its statement setting out the grounds of appeal." 
• " During the oral proceedings, the [opponent] explained that this argument was not new. According to the [opponent], its objection of lack of novelty raised during the first instance proceedings concerned the whole composite material containing fibroin and chitin. These two components only differed in the mechanism by which sebum uptake occurred. Merely a new item of evidence substantiating the achievement of the claimed sebum-uptake parameter (A9) had been provided in reply to the decision of the opposition division pointing out the lack of evidence therefore" .
• The Board does not admit the modified attack under Art. 12(4) RPBA.
• " The new lack of novelty reasoning of the [opponent] raises an entirely new discussion regarding the physico-chemical properties of chitin. It does therefore not address the reasoning of the first instance decision as such but merely the conclusion thereof, namely that the composition of example 12 of E3 did not anticipate the subject-matter of granted claim 1. This opinion of the opposition division had furthermore already been expressed in the annex to the summons to oral proceedings in opposition.
• Moreover this new discussion regarding the physico-chemical properties of chitin would introduce complexity, in particular regarding the question of whether chitin has indeed a sebum-uptake according to claim 1, and would hence be against procedural economy." 
• The new documents supporting the attack are not admitted either.
• 
  

EPO 

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/t200652eu1.html

Reasons for the Decision

1. Admittance of new items of evidence and arguments

1.1 New reasoning of lack of novelty, document A9 and document A12

1.1.1 In its statement setting out the grounds of appeal, the appellant - opponent raised a lack of novelty objection versus the composition of example 12 of E3 based on the argument that chitin contained therein would represent a sebum-absorbing powder having a sebum uptake of 35 mL/100 g or more. Document A9 was filed in support thereof.

During the first instance proceedings the appellant - opponent relied exclusively on fibroin as sebum-absorbing powder in its objection of lack of novelty over example 12 of E3. Fibroin was consequently the sole component considered as potential sebum-absorbing agent in the impugned decision. Hence, the lack of novelty reasoning of the appellant - opponent based on chitin as sebum-absorbing powder was provided for the first time in the entire proceedings with its statement setting out the grounds of appeal.

During the oral proceedings, the appellant - opponent explained that this argument was not new. According to the appellant - opponent, its objection of lack of novelty raised during the first instance proceedings concerned the whole composite material containing fibroin and chitin. These two components only differed in the mechanism by which sebum uptake occurred. Merely a new item of evidence substantiating the achievement of the claimed sebum-uptake parameter (A9) had been provided in reply to the decision of the opposition division pointing out the lack of evidence therefore (see paragraph bridging pages 6 and 7 of the impugned decision).

This argument is not convincing. As apparent from the impugned decision (see item 10.2.3., page 6, 3**(rd) paragraph to page 7, 1**(st) paragraph) and the notice of opposition of the appellant - opponent (see e.g. page 7, 3**(rd) paragraph), exclusively fibroin had been considered as possible sebum-absorbing powder in example 12 of E3 during the first instance proceedings. In particular, the lack of evidence of fulfilment of the claimed sebum-uptake value mentioned by the opposition division in its decision concerns exclusively fibroin.

1.1.2 Accordingly, the Board considers that this new reasoning based on chitin constitutes an amendment to the appellant - opponent's case and its admittance is subject to the discretion of the Board according to Article 12(4) RPBA 2020.

1.1.3 The Board observes that the appellant - opponent, contrary to the requirement of Article 12(4) 2**(nd) sentence RPBA 2020, did not provide any reason in support of the admission of document A9 in its statement setting out the grounds of appeal.

The new lack of novelty reasoning of the appellant - opponent raises an entirely new discussion regarding the physico-chemical properties of chitin. It does therefore not address the reasoning of the first instance decision as such but merely the conclusion thereof, namely that the composition of example 12 of E3 did not anticipate the subject-matter of granted claim 1. This opinion of the opposition division had furthermore already been expressed in the annex to the summons to oral proceedings in opposition.

Moreover this new discussion regarding the physico-chemical properties of chitin would introduce complexity, in particular regarding the question of whether chitin has indeed a sebum-uptake according to claim 1, and would hence be against procedural economy.

1.1.4 Accordingly, the new reasoning of lack of novelty based on chitin and document A9 are not admitted into the appeal proceedings (Article 12(4) RPBA 2020).

1.1.5 As a consequence, document A12 filed by the appellant - patent proprietor in reaction of this reasoning is also not admitted into the appeal proceedings (Article 12(4) RPBA 2020).

1.2 Documents A10 and A11