T 2604/18 - Second insufficiency attack is new ground for opposition ?

Key points

•  The Board does not admit an objection of insufficient disclosure against claims 2 and 3.
• "2.4 In as far as the appellant [opponent] considers the objection of insufficiency of disclosure against claims 2 and 3 to have been raised by analogy against granted claims 9 and 10 in the notice of opposition, the Board considers that the substance of the latter objection was in essence directed against granted method claim 8 and extended only by dependency to claims 9 and 10. [...] The objection raised later against claims 2 and 3, directed to different features than those defined in granted claim 8, would thus be tantamount to the introduction of a new ground for opposition against subject-matter which had not been opposed so far for these specific reasons. The Board of its own motion [*] does not have the power to admit such a late filed ground for opposition (G 9/91, OJ 1993, 408)."
• As a comment, it is remarkable to see G 9/91 (read, presumably, G 10/91 hn.3, i.e. "fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee") applied to a second objection of under Article 100(b) EPC. However, G 10/91 itself is notoriously unclear about what the term "fresh ground for opposition" means.
• The Board's reasoning also seems difficult to reconcile with Art. 12 RPBA 2020, which gives the Board a discretionary power.
• * - the attack was presented by the opponent.

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/t182604eu1.html

Admittance of the objection under Article 83 EPC in regard to claims 2 and 3

2. The Board decided not to admit the appellant's objection on alleged insufficiency of disclosure against claims 2 and 3.

2.1 In the notice of opposition, the opponent had raised the ground for opposition under Article 100(b) EPC only in regard to claims 8 to 11. It is uncontested that the particular objection of insufficiency of disclosure against claims 2 and 3, which claims are identical with the granted claims, was raised by the opponent only after the opposition period, namely in the oral proceedings before the opposition division. The opposition division did not admit this objection. The reasoning for its decision takes into account the circumstances of its submission as well as its prima facie relevance. The minutes of the oral proceedings, pages 8 and 9, report that the parties were heard on these aspects. The Board has no reason to assume that the content of the minutes is incorrect; a request for correction had not been filed.

2.2 A discretionary decision taken by a department of first instance is generally only overturned by the Board of Appeal where the department of first instance incorrectly exercised its discretion, for example by applying inappropriate criteria or making use of its discretion in an arbitrary way.

2.3 The appellant has however not argued that the opposition division had incorrectly exercised its discretion in this sense. Instead, the essence of its criticism of the division's discretionary decision lies in the fact that the appellant does simply not agree with the substance of the division's prima facie assessment of the late filed objection. The appellant considers the subject-matter of claim 2 at first sight to be unclear to such an extent that the skilled person would not know how to implement it. The opposition division has nevertheless considered the substance of this objection and given an interpretation of the wording of claim 2, leading it to the conclusion that the objection was not prima facie relevant (see e.g. the paragraph before the heading "3.3 AR I - Novelty" on page 12 of the impugned decision). Whether the division's reasoning is entirely correct in substance is not decisive here since it is not apparent that the division made an arbitrary assessment of the appellant's objection.

Therefore the Board considers that the opposition division's discretionary decision not to admit the objection should not be reversed.

2.4 In as far as the appellant considers the objection of insufficiency of disclosure against claims 2 and 3 to have been raised by analogy against granted claims 9 and 10 in the notice of opposition, the Board considers that the substance of the latter objection was in essence directed against granted method claim 8 and extended only by dependency to claims 9 and 10. That the objection against claim 8 addressed the nature of the shift signal and thereby would have extended to or covered the subject-matter of claims 2 and 3, as argued by the appellant during the oral proceedings before the Board, does not correspond to the facts as arising from the opposition file. According to the notice of opposition, section 5.1 on pages 8 and 9, the original objection against claim 8 related to an alleged lack of disclosure concerning the aspect of how, i.e. by which means, signals were transferred or received by the components of the system, rather than addressing the structure of the shift signal as defined in claims 2 and 3. The objection raised later against claims 2 and 3, directed to different features than those defined in granted claim 8, would thus be tantamount to the introduction of a new ground for opposition against subject-matter which had not been opposed so far for these specific reasons. The Board of its own motion does not have the power to