T 0029/22 - New argument raised, auxiliary request not admitted

Key points

•  "Pursuant Article 12(6) RPBA 2020, first sentence, the Board does not admit auxiliary request 1a which was already filed during the oral proceedings and not admitted by the Opposition Division."
• "Appellant 1 [proprietor] argued that auxiliary request 1a was a direct reaction to the new discussion about the relevance of paragraph [52] of D7 during oral proceedings in opposition. Therefore, auxiliary Request 1a should have been admitted [by the opposition division]." The proprietor argues that paragraph 52 was not mentioned in the preliminary opinion of the OD. The opponent had mentioned paragraph 52 in the written submissions, but based on a different line of argumentation, still according to the proprietor.
• The Board: "The Board [does] not recognise any error in the use of discretion by the Opposition Division not to admit the auxiliary request 1a (Reference is made to points 13-15 of the appealed decision). Indeed, the Opposition Division considered that the lack of novelty of auxiliary request 1a was to be expected in view of their preliminary opinion from 31 January 2020 and the letter of the opponent dated 20 April 2020. While the annex to the summons of the opposition division may be referring to different paragraphs compared to the decision, the letter of the opponent dated 28 April 2020 specifically mentions paragraph [52] as well as [22] and [23] as referred to in the decision of the opposition division. And while the opponent may have emphasised that the non-fusible materials may be made of natural fibers, the passage cited from paragraph [23] discloses that they can be made of "thermoset polymer materials (e.g., polyester, acrylic)"."
• I wonder if the OD could hypothetically have included the reasoning based on paragraph 52 for the first time in the written decision without violating Article 113(1) EPC, and, if not, whether the fact that the opponent presented the argument during the oral proceedings but the OD did not admit a responsive auxiliary request is sufficient to meet Article 113(1) EPC.
• The Board: "Furthermore, the amendments made to auxiliary request 1a were taken from paragraph [0068] of the patent specification, column 13, second sentence (i.e. paragraph [0067] of the A1-publication, sentence bridging column 12 and 13). The amendments were not taken verbatim and raised new issues under Articles 123(2) and 84 EPC."
• The Board does not explain if "raised new issues" means that the opponent had objections, whether having any merits or not, or if the Board sees issues under Article 123(2) and Article 84. The Board does not expand at all on said issues. 
• If the opponent raises a new argument during the oral proceedings that turns out to be essential, and assuming that the argument goes beyond the factual and legal framework of the case, i.e. would be a case amendment under the RPBA, is the proprietor limited to combing the claims as granted?

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/t220029eu1.html

4. Admissibility of auxiliary request 1a - Article 12(6) RPBA 2020, first sentence

4.1 Auxiliary request 1a filed with the statement of grounds of appeal and corrected with letter of 13 January 2023 is based on the main request with the additional feature d1a:

"wherein the polymer material comprises fibers reinforcing the polymer material"

Pursuant Article 12(6) RPBA 2020, first sentence, the Board does not admit auxiliary request 1a which was already filed during the oral proceedings and not admitted by the Opposition Division.

4.1.1 During oral proceedings, appellant 1 referred to its written submission.

Appellant 1 argued that auxiliary request 1a was a direct reaction to the new discussion about the relevance of paragraph [52] of D7 during oral proceedings in opposition. Therefore, auxiliary Request 1a should have been admitted.

Firstly, the critical paragraph [52] of D7 was not even mentioned in the Opposition Division's preliminary opinion dated January 31, 2020.

Secondly, there was no "similar argument" (interlocutory decision, section no. 15) of the Opposition Division in its preliminary opinion. The Opposition Division cited in the preliminary opinion paragraph [26] of D7 not mentioning the fusible yarn 114 whereas the decision missed this paragraph and was based on paragraphs [23]-[24] and [27] and the fusible yarn 114.

Thirdly, the opponent's (first) submission dated 28 April 2020 mentioned indeed paragraph [52], however based on a line of argumentation that was completely different to the line of argumentation in the oral hearing and in the decision of the Opposition Division. In its submission of 28 April 2020 the opponent had argued that the component 304 (mentioned in paragraph [52]) may have the configuration of the knit component 110 (mentioned in paragraphs [22] and [23]) formed from non-fusible yarn 113 containing natural fibers, which could be seen by opponent's underlining (s. section no. 4.2 on page 13 in the opponent's submission dated 28 April 2020).

Moreover, the requirements of Articles 123(2), (3) and 84 EPC for auxiliary Request 1a were also fulfilled. In particular, basis for the amendments could be found in paragraphs [0067], [0013] and [0017] of the A1 publication. Regarding novelty and inventiveness, the arguments presented for the claims of auxiliary Request 1 in view of D7 must also apply, a fortiori, for the claims of auxiliary Request 1a.

4.1.2 The Board confirmed its preliminary opinion stated in its communication pursuant Article 15(1) RPBA 2020. The Board did not recognise any error in the use of discretion by the Opposition Division not to admit the auxiliary request 1a (Reference is made to points 13-15 of the appealed decision). Indeed, the Opposition Division considered that the lack of novelty of auxiliary request 1a was to be expected in view of their preliminary opinion from 31 January 2020 and the letter of the opponent dated 20 April 2020.

While the annex to the summons of the opposition division may be referring to different paragraphs compared to the decision, the letter of the opponent dated 28 April 2020 specifically mentions paragraph [52] as well as [22] and [23] as referred to in the decision of the opposition division. And while the opponent may have emphasised that the non-fusible materials may be made of natural fibers, the passage cited from paragraph [23] discloses that they can be made of "thermoset polymer materials (e.g., polyester, acrylic)".

Furthermore, the amendments made to auxiliary request 1a were taken from paragraph [0068] of the patent specification, column 13, second sentence (i.e. paragraph [0067] of the A1-publication, sentence bridging column 12 and 13). The amendments were not taken verbatim and raised new issues under Articles 123(2) and 84 EPC.