T 0842/22 - Not admitted ground admitted in appeal

Key points

• New grounds of opposition can only be admitted in appeal with the consent of the proprietor.
• What if the OD held a ground of opposition inadmissible?
• " Appellant 2 argued, for the first time, five days before the oral proceedings before the opposition division (with letter dated 2 July 2021), that claim 1 defined, after the amendment, a cam with [certain features]".
• "The opposition division noted that the grounds according to Article 100(c) EPC had not been raised before and that therefore the above objection introduced a fresh ground of opposition. Having found that the above objection was not prima facie relevant, the opposition division decided not to admit it into opposition proceedings."
• "In the present case, however, the Board exceptionally follows the arguments of [opponent] appellant 2, requesting to set aside the discretionary decision of the opposition division and to admit its objection of added subject-matter, for the following reasons."
• " The Board concurs with appellant 2 that clarity is not the correct basis for assessing added subject-matter and further that the above interpretation is not reasonable, as it goes beyond the literal meaning of the contentious feature, and against the general principles set out in the case law (CLB, II.A.6.1), according to which the wording of a claim should be read and interpreted on its own merits and given its broadest technically sensible meaning."
• "In view of the above, the Board concludes that the opposition division, when taking the discretionary decision not to admit the late-filed objection of added subject-matter, did not apply the criterion of prima facie relevance in a reasonable way. Hence, the late-filed ground of opposition based on Article 100(c) EPC was wrongly not admitted into the proceedings by the opposition division and is to be considered as forming part of the legal and factual framework of the appeal proceedings."
• The case is not remitted.
•  "the main request cannot be allowed"
• The patent is maintained based on an auxiliary request. 
• The point is somewhat controversial; see CLBA  C.A.3.4.5. The approach of the present decision seems correct to me. 

EPO 

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

T 0842/22 30-10-2023 | Epo.org

2. Fresh ground of opposition - Article 100(c) EPC

2.1 During the oral proceedings before the Board the appellants objected to the admission into the proceedings of the written declarations D14 and D15 provided by the respondent. There is, however, no need to discuss the issue of their admittance in the present decision, since, even if their content is taken into account, to the benefit of the respondent, the ground for opposition according to Article 100(c) EPC raised by the appellants is found to be admissible and to prejudice the maintenance of the patent as granted, as set out below (see point 2.7.4 of this decision).

2.2 Claim 1 of the main request (patent as granted) comprises the following features:

"- a first locking element extending upwardly from the bottom part defining a cam with an at least partly downwardly facing locking plane with a length and a width that extends outwardly downwards, such that the length of the cam partly extends through the opening in the front surface of the cover part in a closed position of the packaging unit",

whereby the highlighted wording "that extends outwardly downwards" represents an addition with respect to claim 1 as originally filed.

2.3 Appellant 2 argued, for the first time, five days before the oral proceedings before the opposition division (with letter dated 2 July 2021), that claim 1 defined, after the amendment, a cam with an at least partly downwardly facing locking plane with a width that extends outwardly downwards.

This meant, according to appellant 2, that the claim encompassed embodiments in which the width of the locking plane increased in a direction outwardly downwards.

As the originally filed documents nowhere mentioned such an increasing width of the locking plane, claim 1 extended beyond the content of the originally filed documents.

2.4 The opposition division noted that the grounds according to Article 100(c) EPC had not been raised before and that therefore the above objection introduced a fresh ground of opposition.

Having found that the above objection was not prima facie relevant, the opposition division decided not to admit it into opposition proceedings.

The opposition division based its prima facie analysis on the assumption that the contentious feature,

"a length and a width that extends outwardly downwards"

could not be read by a skilled person as encompassing the allegedly non-disclosed embodiments to which appellant 2 refers, in which the width of the locking plane increases outwardly while sloping in a downward direction (appealed decision, section II.3.1.1).

This was because a width extending outwardly downwards would not have been "clear", "coherent" and "technically consistent" with the subsequent feature of claim 1

"such that the length of the cam partly extends through the opening in the front surface of the cover part in a closed position of the packaging unit" (appealed decision, section II.3.1.2).

2.5 Appellant 2 requested that the Board overrules the above discretionary decision of the opposition division and admit the fresh ground of opposition into appeal proceedings.

According to appellant 2 the opposition division did not apply the criterion of prima facie relevance in a reasonable way.

This was because the clearly formulated feature

"a length and a width that extends outwardly downwards"

was not interpreted in a reasonable way by the opposition division.

2.6 The respondent replied that the decision not to admit this fresh ground into the proceedings was based on the correct criteria and that these criteria (prima facie relevance) were applied correctly and in a reasonable way.

This was because the finding of the opposition division was correct, that the claim interpretation upon which the objection of unallowable extension was based did not make technical sense, as it was at odds with the subsequent features of the claim.

The objection was also based upon a claim interpretation which was not logical.

This interpretation also resulted in structural features, as shown by documents D14 and D15, which were impossible to realise in the technical field of the patent in suit.

2.7 It is established case law that, in an appeal against a decision taken by a department of first instance in exercise of its discretion, it is not for the Board to review all the facts and circumstances of the case as if it was in that department's place and decide whether or not it would have exercised discretion in the same way. The Board should overrule the way in which the opposition division exercised its discretion in reaching a decision in a particular case only if the Board concludes that the opposition division did so in accordance with the wrong principles, without taking the right principles into account or in an arbitrary or unreasonable way, thereby exceeding the proper limits of its discretion (CLB, V.A.3.4.1 b; G 7/93, OJ EPO 1994, 775).

In the present case, however, the Board exceptionally follows the arguments of appellant 2, requesting to set aside the discretionary decision of the opposition division and to admit its objection of added subject-matter, for the following reasons.

2.7.1 The opposition division's prima facie assessment on whether the contentious feature, which was added to originally filed claim 1, extends beyond the content of the application as filed was not based on an analysis of the content of the application as filed, but rather on the assumption that a skilled reader would have disregarded, for reasons of clarity, those embodiments which were indicated by appellant 2 as being now explicitly taught but not originally disclosed.

The clear and explicit wording

"a length and a width that extends outwardly downwards"

was construed, by the opposition division, as meaning that it is rather the length, not the width, which extended outwardly downwards.

The Board concurs with appellant 2 that clarity is not the correct basis for assessing added subject-matter and further that the above interpretation is not reasonable, as it goes beyond the literal meaning of the contentious feature, and against the general principles set out in the case law (CLB, II.A.6.1), according to which the wording of a claim should be read and interpreted on its own merits and given its broadest technically sensible meaning.

2.7.2 The opposition division motivated this claim interpretation with the need to keep consistency with the subsequent feature of the claim, which reads

"such that the length of the cam partly extends through the opening in the front surface of the cover part in a closed position".

The claim interpretation at the basis of the objection raised by appellant 2 is however, prima facie, not at odds with the subsequent feature of the claim, because the restriction on the length of the cam mentioned in said subsequent feature clearly does not relate to the width of the cam.

2.7.3 The argument of the respondent that the claim interpretation of appellant 2 is not logical, because a width, being a distance measured along a straight line, cannot extend in two distinct directions ("outwardly", and "downwardly") at the same time is not convincing.

This is because the claim interpretation at the basis of the objection raised by appellant 2 is that the width extends, in the sense that it increases, in only one direction, whereby this direction is inclined outwardly, meaning away from the front surface of the cover part of the packaging unit, and downwardly.

2.7.4 The respondent also argues, referring to documents D14 and D15, that the interpretation at the basis of the objection raised by appellant 2 would be discarded by a skilled person because it defines packaging units which cannot be made of moulded pulp, because of the geometry of the cam.

Based on the above allegation the respondent submits that the findings of the opposition division that this interpretation would not be considered by a skilled person, were correct in substance.

2.7.5 This line of argument is also not convincing.

The arguments put forward by the respondent, along with documents D14 and D15, fall short of demonstrating the impossibility of producing a packaging unit made of moulded pulp with a cam with an at least partly downwardly facing locking plane having a width that extends outwardly downwards.

This is because these documents can only provide evidence on the issues encountered, when trying to produce the packaging units depicted therein, with the means available to their author.

Therefore, D14 and D15, while potentially informative on specific methods and resources for producing packaging units, cannot definitively prove the broader impossibility of producing packaging units made of moulded pulp with a cam with an at least partly downwardly facing locking plane having a width that extends outwardly downwards.

In addition, as argued by appellant 2, claim 1 is a product claim and, since the way it is produced is not part of the claim, no manufacturing method for producing it can be excluded, including also as argued by appellant 2, processing steps after moulding for providing the cam as claimed on the packaging unit.

In conclusion, even by taking into account the content of the written declarations to the benefit of the respondent, these do not convincingly prove that it is impossible to create a packaging unit as claimed.

2.8 In view of the above, the Board concludes that the opposition division, when taking the discretionary decision not to admit the late-filed objection of added subject-matter, did not apply the criterion of prima facie relevance in a reasonable way. Hence, the late-filed ground of opposition based on Article 100(c) EPC was wrongly not admitted into the proceedings by the opposition division and is to be considered as forming part of the legal and factual framework of the appeal proceedings.