T 1761/19 - Don't forget the rejoinder

Key points

• The opponent appealed. The patentee/respondent files Auxiliary Requests 1-13 with its reply.
• The Board finds the main request to be not inventive and turns to AR-1.
• Claim 1 of auxiliary request 1 differs from claim 1 of the main request by adding the feature of dependent claim 3 as granted.
• The Board, in machine translation: "The appellant raised objections to auxiliary request 1 for the first time during the oral proceedings before the board."
• "She argued that she had already objected to dependent claim 3 in her notice of opposition."
• "Although in the statement setting out the grounds of appeal the appellant made a general reference to the notice of opposition concerning the dependent claims, it must be noted that there it confined itself to asserting that the characteristic of dependent claim 3 as granted was known from documents D4 and D5a.

  Document D4 was not cited by the applicant during the novelty appeal proceedings or as a starting point for the examination of inventive step. The assertion that document D4 discloses the additional feature introduced in claim 1 of auxiliary request 1 does not constitute a reasoned objection with regard to novelty or inventive step."

• "Furthermore, the board found that the subject-matter of claim 1 of the main request was new in view of document D5a (see point 1.2 above). The assertion that the additional feature introduced in claim 1 of auxiliary request 1 is known from document D5a is not such as to call this finding into question. As regards a possible objection of lack of inventive step based on this assertion, what has just been said for document D4 also applies."

• "The inventive step of the subject-matter of claim 1 of auxiliary request 1 would therefore have been substantiated for the first time in the appeal proceedings during the oral proceedings. As the applicant did not invoke exceptional circumstances within the meaning of Article 13(2) RPBA 2020 to justify this modification of its pleas, the board decided, in the exercise of its discretion, not to admit this objection in the appeal procedure."
  
  

• The decision also deals with the point that product features in process claims are limiting. In particular, a method for coating a stack of articles was novel because the articles used as a substrate were not the same as the substrates in the prior art method. 

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/t191761fu1.html

2. Auxiliary request 1: admission of objections

2.1 Claim 1 of auxiliary request 1 essentially differs from claim 1 of the main request by the addition of a process step consisting in “[pressing] towards each other by a pressing device ( 50) the ends of the stack (20) by applying a pressure P on at least part of the visible faces of the cards which form the ends of the stack (20)”. This feature corresponds to the additional feature of dependent claim 3 of the patent, already present in the original application.

The appellant raised objections to auxiliary request 1 for the first time during the oral proceedings before the board.

She argued that she had already objected to dependent claim 3 in her notice of opposition.

2.2 Article 12(3) RPCR 2020, which applies in this case by virtue of Article 25(1) RPCR 2020 and which has remained essentially identical in content to Article 12(2) RPBA 2007, states:

The memorandum setting out the grounds for the appeal and the response must contain all of the grounds invoked by a party in the context of the appeal. They must therefore present in a clear and concise manner the reasons for which it is requested to cancel, modify or confirm the contested decision; they must expressly and precisely set out all the requests, facts, objections, arguments and evidence that are invoked. ...

The appeal procedure is therefore not based a priori on the content of the statement of opposition if these elements have not been invoked in the opponent's statement of appeal. The pleas at first instance are not automatically part of the pleas invoked in the context of the appeal (see “Jurisprudence”, parts

VA4.2.2 b) and VA4.3.5 b)(iii)).

2.3 Although in the statement setting out the grounds of appeal the appellant made a general reference to the notice of opposition concerning the dependent claims, it must be noted that there it confined itself to asserting that the characteristic of dependent claim 3 as granted was known from documents D4 and D5a.

Document D4 was not cited by the applicant during the novelty appeal proceedings or as a starting point for the examination of inventive step. The assertion that document D4 discloses the additional feature introduced in claim 1 of auxiliary request 1 does not constitute a reasoned objection with regard to novelty or inventive step.

Furthermore, the board found that the subject-matter of claim 1 of the main request was new in view of document D5a (see point 1.2 above). The assertion that the additional feature introduced in claim 1 of auxiliary request 1 is known from document D5a is not such as to call this finding into question. As regards a possible objection of lack of inventive step based on this assertion, what has just been said for document D4 also applies.

2.4 The inventive step of the subject-matter of claim 1 of auxiliary request 1 would therefore have been substantiated for the first time in the appeal proceedings during the oral proceedings. As the applicant did not invoke exceptional circumstances within the meaning of Article 13(2) RPCR 2020 to justify this modification of its pleas, the board decided, in the exercise of its discretion, not to admit this objection in the appeal procedure.