T 1586/21 - Use the rejoinder

Key points

• The opponent appeals against the decision of the OD that the main request was allowable.
• The Board agrees with the opponent that claim 1 as granted is obvious over D11.
• The patentee as respondent filed Auxiliar Request 1 in appeal. 
• "During the oral proceedings the appellant argued that in their letter they submitted an inventive step objection which contained all arguments put forward during the opposition proceedings as regards auxiliary request 1, which corresponded to the auxiliary request 1 underlying the contested decision and upon which the Opposition Division did not decide."
• The letter was filed after the summons for oral proceedings.
• "The Board judges that the circumstances of the present case do not qualify as exceptional. The respondent with the reply to the statement of grounds of appeal resubmitted the auxiliary requests which correspond to those filed before the Opposition Division. Said reply was filed on 4 April 2022 and the summons for oral proceedings were sent on 22 February 2023. The appellant had ample time to file the objections submitted with letter 3 April 2023 before the summons to oral proceedings in order to complete its appeal case. The more so, since these objections allegedly represent a mere resubmission of objections filed during the opposition proceedings."
• "Since there are no reason justifying the amendment to the appellant's case consisting in filing the inventive step objection with letter of 3 April 2023, and since there are a fortiori no reasons justifying completing and/or substantiating inventive step objections during the oral proceedings before the Board, these objections are not taken into consideration pursuant to Article 13(2) RPBA 2020."
• Note, that if the arguments had been filed under Art. 13(1), they should logically have been admitted  under Art.12(4) (the "admissible raised and maintained exception").
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• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://new.epo.org/en/boards-of-appeal/decisions/t211586eu1

5. Objections concerning the prior art disregarded

5.1 With letter of 3 April 2023, after notification of the summons to oral proceedings, the appellant submitted in general that the auxiliary requests were not allowable for lack of novelty and inventive step. As regards the first auxiliary request, the appellant only specifically submitted that the additional features of claim 1 were known from D2 (point V.2.1 of the a.m. letter). During the oral proceedings, the appellant stated that they intended to argue inventive step starting from D11 in combination with common general knowledge and with D2.

5.2 Under Article 13(2) RPBA 2020 (Rules of Procedure of the Boards of Appeal OJ EPO 2021, A35) any amendment to a party's appeal case made after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

5.3 The appellant failed to justify in the letter of 3 April 2023 the reasons for raising objections based on the prior art for the auxiliary requests at that point of the appeal procedure. During the oral proceedings the appellant argued that in their letter they submitted an inventive step objection which contained all arguments put forward during the opposition proceedings as regards auxiliary request 1, which corresponded to the auxiliary request 1 underlying the contested decision and upon which the Opposition Division did not decide.

5.4 The Board judges that the circumstances of the present case do not qualify as exceptional. The respondent with the reply to the statement of grounds of appeal resubmitted the auxiliary requests which correspond to those filed before the Opposition Division. Said reply was filed on 4 April 2022 and the summons for oral proceedings were sent on 22 February 2023. The appellant had ample time to file the objections submitted with letter 3 April 2023 before the summons to oral proceedings in order to complete its appeal case. The more so, since these objections allegedly represent a mere resubmission of objections filed during the opposition proceedings.

Since there are no reason justifying the amendment to the appellant's case consisting in filing the inventive step objection with letter of 3 April 2023, and since there are a fortiori no reasons justifying completing and/or substantiating inventive step objections during the oral proceedings before the Board, these objections are not taken into consideration pursuant to Article 13(2) RPBA 2020.

6. Since there are no further objections on patentability for the auxiliary request 1, the Board has no reasons to question the non-obviousness of the subject-matter of claim 1 of the auxiliary request 1.

7. The claims of auxiliary request 1 together with the figures of the published patent form therefore a suitable basis for the maintenance of the patent in amended form.

The appellant considered that the description needed adaptation and both parties agreed that the case be remitted to the opposition division for adaptation of the description.