T 0770/21 - Opponent should present multiple inventive step attacks

Key points

• The claim differs from D2, D4, D6, D7 and D8 by the claim preamble. The claim is directed to "a bicycle derailleur motor gear unit". The documents disclose motor gear units, but not that they are for a bicycle derailleur (and/or the motor gear units are for different vehicles). 
•  Feature 1.0 [=the preamble] requires that the claimed motor gear unit has to be suitable for a bicycle derailleur. As argued by the respondent (patent proprietor) and also found by the opposition division (decision, point 10.1.1.2), feature 1.0 implies certain limitations to the motor gear unit, e.g. in size, weight or transfer ratio. Thus, the planetary gear units disclosed in document D2, D4, D6, D7 or D8 have to be suitable for the claimed application. "
• Turning to admissibility of the inventive step attacks: "The Board exercised its discretion under Article 12(4),(6) RPBA 2020 to not admit the inventive step attacks starting from one of the documents D2, D4, D6, D7 or D8 as they could and should have been presented in the first instance proceedings."
• " the opposition division indicated already in the summons to oral proceedings that in their opinion it was not only the size that qualified a planetary gear to be suitable for a bicycle derailleur. However, in their letter dated 10 December 2020 (points 2.1 and 6), the opponent countered this view and argued - under the auxiliary assumption that feature 1.0 was not disclosed in any of the documents D2, D4, D6, D7 or D8 - that then the closest prior art could be seen in P1 or P3."
• "Already at this stage, the opponent could and should have put forward the attacks on inventive step starting from one of the documents D2, D4, D6, D7 or D8. The impugned decision does not comprise any new issues with regard to the findings to feature 1.0 (point 10.1.1.2) which would justify the admittance of the attacks submitted for the first time with the opponent's statement of grounds of appeal."
• The Board considers the claims to be non-obvious over P1 and P3.

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t210770eu1

8. Inventive step - Admission of attacks starting from one of the documents D2, D4, D6, D7 or D8 - Article 12(4), (6) RPBA 2020

8.1 The Board exercised its discretion under Article 12(4),(6) RPBA 2020 to not admit the inventive step attacks starting from one of the documents D2, D4, D6, D7 or D8 as they could and should have been presented in the first instance proceedings.

8.2 During opposition proceedings, submissions based on each of D2, D4, D6, D7 and D8 were presented under Article 54 EPC. The argument of the appellant that it would not have made sense to present inventive step attacks starting from one of these documents before the opposition division because they considered that the term bicycle derailleur implied further limitations in addition to the size of the planetary gear is not convincing.

8.3 It is true that the opposition division indicated already in the summons to oral proceedings that in their opinion it was not only the size that qualified a planetary gear to be suitable for a bicycle derailleur. However, in their letter dated 10 December 2020 (points 2.1 and 6), the opponent countered this view and argued - under the auxiliary assumption that feature 1.0 was not disclosed in any of the documents D2, D4, D6, D7 or D8 - that then the closest prior art could be seen in P1 or P3.

8.4 Already at this stage, the opponent could and should have put forward the attacks on inventive step starting from one of the documents D2, D4, D6, D7 or D8. The impugned decision does not comprise any new issues with regard to the findings to feature 1.0 (point 10.1.1.2) which would justify the admittance of the attacks submitted for the first time with the opponent's statement of grounds of appeal.