Key points
- "the simple deletion of dependent claims from a claim request, as in the present case, also constitutes an amendment of the appeal case within the meaning of Article 13(1) and (2) RPBA 2020."
- On the amendment of claim 1 in appeal, the Board that the patentee was not required to present it before the OD: "However, the arguments set out in the contested decision were only touched on briefly in the last paragraph on page 4 of the letter dated 2 October 2019, which was submitted shortly before the oral proceedings. During the oral proceedings before the opposition division, the arguments were discussed only in the context of a single question by the first examiner of the opposition division, see point 5.2 of the minutes.
Thus, although the appellant undisputedly had an opportunity to respond during the oral proceedings before the opposition division, in the circumstances the Board does not consider that the appellant was under an obligation to respond immediately in the limited time available during the oral proceedings before the opposition division, which lasted only 75 minutes in total."
2. Auxiliary request - admittance under
Article 13(2) RPBA 2020
2.1 The auxiliary request is based on the former auxiliary request II, which had been submitted by the appellant with its statement of grounds of appeal.
As the appellant filed the auxiliary request during the oral proceedings before the Board, the provisions of Article 13(2) RPBA 2020 apply. According to this provision, any amendment to a party's appeal case shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.
Any part of a party's appeal case which is not directed to the requests, facts, objections, arguments and evidence contained in the statement of grounds of appeal or the reply constitutes an amendment to a party's appeal case within the meaning of Article 13(1) and (2) RPBA 2020. This includes the filing of an amended claim request (see J 14/19, Reasons 1.4 and 1.5).
Therefore, the simple deletion of dependent claims from a claim request, as in the present case, also constitutes an amendment of the appeal case within the meaning of Article 13(1) and (2) RPBA 2020.
2.2 When exercising its discretion under Article 13(2) RPBA 2020, the board may rely on criteria as set out in Article 13(1) RPBA 2020 (see T 172/17, Reasons 5.4, and T 574/17, Reasons 2.3.1). This in turn provides the possibility of relying on the criteria as set out in Article 12(4) to (6) RPBA 2020, which are referred to in Article 13(1) RPBA 2020.
2.3 In the case at hand, in the communication under Article 15(1) RPBA 2020 the Board had given its preliminary opinion that the amendments to claim 1 of the main request (patent as granted) did not meet the requirements of Article 76(1) EPC. In point 4.4.4 of the communication, the Board further indicated that the question of whether the subject-matter of dependent claims 2 to 14 fulfilled the requirements of Article 76(1) EPC in view of the teaching of the parent application would be discussed during the oral proceedings.
2.4 The amendment to the auxiliary request compared to the auxiliary request II that had already been submitted with the statement of grounds of appeal directly addresses the objection under Article 76(1) EPC regarding the dependent claims, as presented by respondent 2 and as discussed in detail during the oral proceedings before the Board. Deletion of the dependent claims is purely for the purpose of overcoming the objection under Article 76(1) EPC. It does not bring about a shift in the discussion to subject-matter which had not been discussed by the parties before. Furthermore, the amendment does not involve any additional burden for the other party or the Board, but simply eliminates contentious points of discussion.
Overall, although the appellant amended its appeal case only in response to the Board's preliminary opinion, it did so in a manner which clearly served procedural economy. The Board also notes that the new auxiliary request replaced all previous auxiliary requests.
2.5 Furthermore, the amendments to claim 1 of the auxiliary request do not prima facie give rise to new objections regarding the allowability of the amendments or clarity.
2.5.1 As to the question of whether the amended subject-matter is directly and unambiguously derivable from the parent application and the application as originally filed, the same points of discussion apply to claim 1 of the auxiliary request as to claim 1 as granted, since the same embodiment on page 18 and the same figures of the parent application have to be considered as a whole in order to evaluate the allowability of the amendments. This inherently also includes the question of whether the phrase "with little or no intermixing of other gas streams" on page 18, lines 27 and 28 of the parent application provides a disclosure for the feature of claim 1 "that little or no intermixing occurs between the first reactant gaseous material and the second reactant gaseous material", which was already present in claim 1 as granted. The same applies with regard to the question of whether the functional link ("such that") between features 1.5 and 1.6 was derivable from the parent application.
Thus, filing of the auxiliary request does not give rise to additional points of discussion concerning the allowability of amendments.
2.5.2 Amended claim 1 of the auxiliary request specifies that "little or no intermixing occurs between the first reactant gaseous material and the second reactant gaseous material from output channels to exhaust channels interspersed between the output channels".
Contrary to the argument made by respondent 2, the addition of the phrase "from output channels to exhaust channels interspersed between the output channels" to the wording of claim 1 as granted does not prima facie render the claimed wording unclear.
Claim 1 as granted specifies in general terms that little or no intermixing occurs between the reactant gases. Stating in more specific terms that little or no intermixing occurs between the reactant gases from output channels to exhaust channels interspersed between the output channels clarifies the claimed subject-matter, in fact, since the amendment specifies the area and dimension in which this is to be achieved.
Moreover, the wording of claim 1 is not simply wishful thinking. On the contrary, claim 1 of the auxiliary request also specifies how the little or no intermixing of reactants from output channels to exhaust channels interspersed between the output channels can be achieved, namely by the gas flow of the inert purge gas.
Therefore, the amendment does not prima facie render the wording of claim 1 unclear.
2.6 As the auxiliary request consists of claim 1 of former auxiliary request II, the Board considers it appropriate also to address - in the context of admittance of the auxiliary request - why it had intended to admit former auxiliary request II into the appeal proceedings (see point 5. of the Board's communication under Article 15(1) RPBA 2020). Claim 1 of the former auxiliary request 2 (and thus also claim 1 of the present auxiliary request) was filed with the statement of grounds of appeal and amended to recite the additional feature "from output channels to exhaust channels interspersed between the output channels", which directly addressed the objection of the opposition division in point II.3.12 of the contested decision that the omission of this feature resulted in an intermediate generalisation. Hence, both the basis for the amendment in the parent application and the reason the amendment overcomes the objections raised in the contested decision were immediately apparent. The appellant had also provided reasons, as required by Article 12(4) RPBA 2020, second paragraph, as to why it filed the former auxiliary request II only in the appeal proceedings, albeit at the earliest possible opportunity in those proceedings.
2.6.1 Nor can it be inferred from the discussions during the opposition proceedings that the appellant should already have submitted former auxiliary request II to the opposition division, in the sense of Article 12(6) RPBA 2020. In the preliminary opinion annexed to the summons to attend oral proceedings before the opposition division, the opposition division indicated that the opponent's objections under Article 100(c) EPC were not convincing.
Only during preparation for the oral proceedings did respondent 2, then opponent 2, submit new arguments in its letter dated 2 October 2019, the main argument being the absence of a definition of the shape and design of the inlet channels ("the gas flows are provided from a series of open elongated output channels, substantially in parallel"). This objection was then extensively discussed during the oral proceedings before the opposition division, see point 3 of the minutes.
However, the arguments set out in the contested decision were only touched on briefly in the last paragraph on page 4 of the letter dated 2 October 2019, which was submitted shortly before the oral proceedings. During the oral proceedings before the opposition division, the arguments were discussed only in the context of a single question by the first examiner of the opposition division, see point 5.2 of the minutes.
Thus, although the appellant undisputedly had an opportunity to respond during the oral proceedings before the opposition division, in the circumstances the Board does not consider that the appellant was under an obligation to respond immediately in the limited time available during the oral proceedings before the opposition division, which lasted only 75 minutes in total.
2.7 In view of the above, the Board decides to admit the auxiliary request into the appeal proceedings under Article 13(2) RPBA 2020.
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