T 1660/22 - Disclosed disclaimer, and lacking rejoinder

Key points

• The OD found the claims as granted to be allowable.  The opponent appeals. The Board arrives at AR-5, filed before the OD and resubmitted by the patentee/respondent in their reply to the appeal.
• AR-5 specifies the absence of a catalyst in the claimed process.
• " The subject-matter of claim 1 contains a (disclosed) disclaimer. The question to be assessed is whether the remaining claimed subject-matter was directly and unambiguously disclosed in the application as filed (G 2/10 ...)" 
• " The original disclosure also contained the method for producing HFSI without a catalyst, as is apparent from the published original application (A1). A1, paragraphs [0024], [0025], [0028] and [0032] disclose that a catalyst is optional. Paragraph [0031] even discloses that the reaction does not require a catalyst to give acceptable results. Example 2, carried out without a catalyst and showing a yield of 98%, supports this statement. Therefore, the remaining subject-matter, i.e. the method for producing HFSI at a high yield by reacting HXSI with HF under reflux conditions to remove HX, in the absence of a catalyst, is directly and unambiguously derivable from the application as originally filed." 
• Turning to the admissibility of the inventive step objections, " In the statement of grounds of appeal, the appellant merely attacked the dependent claims of the main request. The disclaimer contained in claim 1 of auxiliary request 5 was, however, not contained therein. Moreover, the appellant did not submit arguments against the auxiliary requests as filed during the opposition proceedings and as resubmitted with the reply to the appeal. The appellant's submissions in particular did not address an embodiment without a catalyst. Only during the oral proceedings before the board did the appellant argue against the inventive step of claim 1 of auxiliary request 5." 
• The Board's reasoning is not unambiguous but is consistent with the view that the opponent was not required to comment on AR-5 in the statement of grounds (as the OD did not reach AR-5 in their decision) but should have filed a rejoinder when AR-5 was resubmitted in appeal.
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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/t221660eu1

4. Auxiliary request 5

4.1 Amendments, Article 123(2) EPC

The subject-matter of claim 1 contains a (disclosed) disclaimer.

The question to be assessed is whether the remaining claimed subject-matter was directly and unambiguously disclosed in the application as filed (G 2/10 order; Case Law of the Boards of Appeal, 10th ed., II.E.1.7.2 b)).

The original disclosure also contained the method for producing HFSI without a catalyst, as is apparent from the published original application (A1). A1, paragraphs [0024], [0025], [0028] and [0032] disclose that a catalyst is optional. Paragraph [0031] even discloses that the reaction does not require a catalyst to give acceptable results. Example 2, carried out without a catalyst and showing a yield of 98%, supports this statement.

Therefore, the remaining subject-matter, i.e. the method for producing HFSI at a high yield by reacting HXSI with HF under reflux conditions to remove HX, in the absence of a catalyst, is directly and unambiguously derivable from the application as originally filed.

The dependent claims do not add subject-matter either.

4.2 Inventive step, Article 56 EPC, Article 13(2) RPBA 2020

In the statement of grounds of appeal, the appellant merely attacked the dependent claims of the main request. The disclaimer contained in claim 1 of auxiliary request 5 was, however, not contained therein.

Moreover, the appellant did not submit arguments against the auxiliary requests as filed during the opposition proceedings and as resubmitted with the reply to the appeal.

The appellant's submissions in particular did not address an embodiment without a catalyst.

Only during the oral proceedings before the board did the appellant argue against the inventive step of claim 1 of auxiliary request 5.

They argued that the objection should be admitted because it was based on the documents on file.

The objection against claim 1 of auxiliary request 5 under Article 56 EPC is an amendment to the appellant's case.

At this stage of the proceedings, the consideration of a request is subject to Article 13(2) RPBA 2020, according to which an amendment shall not be taken into account unless there are exceptional circumstances which have been justified with cogent reasons.

The use of documents already on file for a new attack does not qualify as exceptional circumstances, nor are such apparent.

The objection under Article 56 EPC against auxiliary request 5 can thus not be taken into account.

4.3 The subject-matter of auxiliary request 5 is thus patentable.