T 0250/20 - Four oral proceedings

Key points

• In translation: " European Patent No. 2,430,207 relates to a metal part obtained by deformation of a metal strip having an improved appearance. The metal parts thus obtained are more particularly intended, but not exclusively, for the manufacture of skin parts for land motor vehicles."
• "A first oral procedure [in appeal] took place on 21 December 2022, at the end of which an adjournment was decided. "
• A second oral procedure was held on 25 September 2023 at the end of which an adjournment was again decided. 
• A third oral proceeding was held on 11 March 2024, during which it was decided that the main request filed with the letter of 29 February 2024 was not admitted into the proceedings, that the new auxiliary request 1 filed during the oral proceedings (hereinafter "amended auxiliary request 1") in replacement of the previous auxiliary request 1 was admitted and that the subject-matters of its two claims 1 and 2 alone corresponded to the subject-matters of claims 10 and 11 of the patent as granted, respectively. At the end of the oral proceedings an adjournment was again decided.
• A final oral procedure took place on 23 August 2024 at the end of which the operative part of this decision was pronounced. 
  
  
• There is a lot in the decision (but less than could be expected, as the operative requests are significantly limited compared to the claims as granted).
• On the issue of cross-party reliance on arugments: "As stated by Applicants I and II [the opponents], there is no legal provision preventing a party, Applicant I in this case, from resuming in appeal proceedings an objection, line of attack or argument that was raised and maintained by another party in opposition proceedings, in this case Applicant II. The provisions of Articles 12(3) and (4) RPBA do not in any way prevent this way of proceeding. There is no specification therein of what the respondent seeks to allege through the interpretation of the indefinite or definite articles used, namely that only the party that raised and maintained the objection in opposition appeal proceedings would be entitled to pursue it in appeal proceedings. Such a restriction is not inferred from the wording of Articles 12(3) and (4) RPBA.

  This is supported by established case law according to which, for example, an opponent may rely on a ground of opposition invoked by other opponents either during the opposition proceedings or during any subsequent appeal proceedings, cf. JCR, IV.C.2.1.6, T 920/20, point 4.4 of the grounds."

EPO 

The link to the decision and an extract of it can be found after the jump.

R 0005/23 - No petition for review against interlocutory decisions

Key points

• The Enlarged Board (in three-member composition) clarifies that petitions for review cannot be filed against interlocutory decisions of a Board of Appeal.
• The Enlarged Board in headnote (translated): "An interlocutory decision by which a Board of Appeal, in its composition as a substitute Board, has rejected as inadmissible a motion for recusal directed against its three members on the grounds of suspicion of partiality is not a decision against which a petition for review within the meaning of Article 112a EPC can be filed."
• Point 6 of the reasons confirms this holds for any interlocutory decision.
• The Enlarged Board: "The legal consequence of a successful petition for review is, according to Article 112a(5) EPC, the annulment of the decision and the "resumption of the proceedings before the Boards of Appeal"."
• "Accordingly, the review procedure under Article 112a EPC, as the relevant provisions are worded, does not in any event concern decisions which do not terminate proceedings before a Board of Appeal as regards the person concerned."
• " the Enlarged Board of Appeal is of the opinion that the application of Article 106(2) EPC in the context of the review procedure is out of the question. " 
• As a comment, a petition for review filed after the final decision can then also be based (exclusively) on a procedural violation of an interlocutory decision, provided that the petitioner shows that the outcome of the final decision could have been different (and more favourable for it) without the procedural violation; cf. J37/89, r.4.2-4.3 for Art.106(2).

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2360/19 - Rebutting the presumption on priority entitlement

Key points

• In T 0844/18, the Board had decided - after an extensive debate between the parties - that the priority of one of the major patents for 'CRISPR/Cas' was invalid because the PCT application was filed by the company and the priority application (a US provisional application) was filed by the inventors and there was no assignment in place from one of the inventors to the PCT applicants at the PCT filing date.
• The Board applied the established case law at that time (in my view).
• The Enlarged Board, in G 1/22, where the question was whether an informal / oral assignment of the priority right was possible, added the remark in para. 128 that: "An agreement (regardless of its form) can only be held against parties who were involved in the facts establishing the agreement. Co-applicants for the priority application who were not involved in the subsequent application may not be deemed to have consented to the reliance on the priority right by the other co-applicants for the priority application (a situation underlying e.g. T 844/18). The subsequent applicant(s) may however still be entitled to claim priority since the rebuttable presumption of entitlement does not depend on whether the involved applicants acted as co-applicants at any stage."
• This is quite remarkable, given that a large number of divisional patent applications in the patent family of T 0844/18 were still pending. 
• The present case is about a divisional application originating from the same PCT application ('819) filed in 2013.
• "15. The opponents are thus arguing that the appellants [proprietors] have not provided evidence that they are entitled to the priority rights they claim. However, this is precisely what the presumption in G 1/22 states: that the appellants do not have to provide such evidence, but the opponents have to rebut the presumption. There is no evidence that rebuts this presumption in the present case."
• The Board then discusses a settlement between the inventor Mr. Marrafini and the proprietors of the present patent, concluded in 2018. "However, it is common ground between the parties that the inventorship dispute between Marraffini/Rockefeller University and the appellants has been settled in 2018. The entire purpose of the inventorship dispute was to have Marraffini named as inventor, and the Rockefeller University as proprietor, of PCT 819 (and some other PCT applications). "
• " Such settlement of the dispute was, by definition, "retroactive", as putting an end to a dispute that arose in the past, and thus relates to the (earliest) date on which priority was claimed (see G 1/22, reasons 100, 109)."
• G 1/22 r.100: "Even the requirement that the transfer of the right of priority needs to be concluded before the filing of the subsequent European patent application (above point 68) is questionable in the Enlarged Board's view. If there are jurisdictions that allow an ex post ("nunc pro tunc") transfer of priority rights (see the extensive discussion of such transfers under US law in T 1201/14), the EPO should not apply higher standards."
• "However, for clarification, it is recalled that even in the absence of any evidence regarding the settlement of the inventorship dispute, the result would have been the same, based on the presumption of a valid priority claim, which has neither been rebutted by this nor any other evidence on file (see again G 1/22, reasons 100). As also reiterated in G 1/22, reasons 114: There is always a party who is entitled to claim priority, even if this party has to be determined in national proceedings (with this being the same if the dispute is settled outside the courts, by way of amicable settlement or arbitration, as is the case here). Not the least, the present case clearly shows that only the rebuttable presumption of a priority right guarantees that there is a party being entitled to claim priority, and that this right is not "lost" somewhere in an inventorship dispute. Hence the entitlement to priority was validly claimed."
• Im unsure about how this paragraphs should be understood.
• "G 1/22 brings legal certainty to all involved, in particular for the parties that the system was designed to protect."
• The priority is considered to be valid.
• After the clear 'instruction' of the Enlarged Board in para. 128, this is perhaps not a surprising outcome. 
• However, generally, the substantiation of the rebuttal of the presumption of G 1/22 by the opponents should not be a burden to prove a negative. 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0964/21 - Appeal against cost apportionment

Key points

• "The patent proprietor and opponents 2 and 3 (appellants) each filed an appeal against the interlocutory decision of the opposition division, in which the opposition division found that European patent No. 2 879 636 in an amended form [namely Auxiliary Request 12] met the requirements of the EPC. The appellant-proprietor's appeal lies also against the o.pposition division's decision to apportion costs against it."
• AR-12 before the OD is the current main request: "The appellant-proprietor requested as a main request that the decision under appeal be set aside and the patent be maintained on the basis of auxiliary request 12 underlying the impugned decision, or as an auxiliary measure that the appeals of appellant-opponents 2 and 3 be dismissed (i.e. maintenance of the patent in the version found to be allowable by the opposition division). Furthermore, it requested that the opposition division's decision as regards the apportionment of costs be set aside."
• Which is interesting, because then the proprietor no longer contests the decision of the OD on the higher ranking sets of claims. Is the appeal against the cost apportionment still admissible? (Rule 97(1)).
• Rule 97(1): "The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal. "
• "The Board therefore concludes that the subject-matter of claim 1 of the main request extends beyond the content of the application as filed, contrary to the requirement of Article 123(2) EPC."
• "Since the further amendments in claim 1 of the auxiliary request, relating to the provision of an additional transmission layer, do not affect the above finding, as also acknowledged by the appellant proprietor, the patent may not be maintained on the basis of this request, also for non-compliance with the requirement of Article 123(2) EPC."
• "The appellant-proprietor requested that the opposition division's decision as to the apportionment of costs be set aside.

  The formulation of that decision is set out in the reasons of the impugned decision (cf. page 35) as follows:

  ".. the Opposition Division apportions to the Proprietor the costs of the remuneration of the representatives of the parties in respect to oral proceedings and for the undue delaying of the procedure in respect of late filing." 

• " the Board wishes to emphasise that an order on the apportionment of costs under Article 104 EPC must clearly state (at least) the kind of costs to be borne by the burdened party. The order referred to above does not in any way comply with this requirement. In this context, it should be noted that the order is so vague that it is not possible to clearly determine in particular,

  (a) whether the costs for the representatives in preparing for the oral proceedings are included, and

  (b) whether the costs for the representatives for both oral proceedings are included."

• "It should also be noted that the addition in the above-mentioned formulation "and for the undue delaying of the procedure in respect of late filing" does not provide a definition of any kind of associated costs and can only be seen as a hint to the reasoning for the decision, which seemingly was based on the principle of procedural economy. 

• " Furthermore, the opposition division's decision also fails in terms of substance. Irrespective of the question of whether a decision under Article 104 EPC constitutes a discretionary decision, it should first be noted in view of the submissions of appellant-opponent 2 that discretionary decisions can also be reviewed by the Boards in terms of their merits. ... A substantive review of a discretionary decision is therefore not excluded according to established case law. [i.e. G7/93]"

• "the fact that the patent proprietor did not contest the validity of one of the priorities of D22 [a prior right under Article 54(3) EPC] until the first oral proceedings before the opposition division cannot justify a different apportionment of costs in the present case."

• " it is noted that the Board also considers the appellant-proprietor's argument that the late filing of amended requests was also due to the late filing of the objections based on D22 to be convincing. "

• "there are no reasons that would justify a different apportionment of costs. Thus, the Board finds it appropriate that each party shall bear its own costs. Consequently, the decision of the opposition division as to the apportionment of costs is set aside."

• 
  

EPO 

The link to the decision can be found after the jump.

T 1423/22 - Calculating new medical data

Key points

• Claim 1 of the main request reads as follows:

  "1. A method for estimating glomerular filtration (GFR) rate in an animal subject, the method comprising:

  (i) measuring the concentration of free symmetrical dimethylarginine (SDMA) in a blood sample from the subject;

  (ii) measuring the concentration of creatinine in a blood sample from the subject; and

  (iii) comparing a value resulting from an equation comprising the product of the concentration of creatinine and the concentration of free SDMA to one or more standard values that correlate to glomerular filtration rate in the animal subject."

• Patent, para. [0002]:  " It is important to be able to measure renal function quickly and accurately. For example, the dosing of drugs must be adapted for patients with renal insufficiency. Thus, making an accurate assessment of renal function is a requirement in clinical medicine."

• " The claimed method differs from that proposed in document D1 in step (iii) (see point 11. above), i.e. in that a value resulting from an equation comprising the product of the sCr and SDMA concentration values is compared to one or more standard values that correlate to the GFR in the animal subject. This was not contested."

• "The claimed method has a technical character as it solves the technical problem of estimating the GFR, a clinical parameter relevant in renal diseases, based on measuring the blood concentrations of two markers (SDMA and sCr). Step (iii), which is non-technical, contributes to solving this technical problem, together with measurement steps (i) and (ii), because the GFR estimated for an animal subject is determined by the recited calculation of a product of measured SDMA and sCr concentration values and a comparison of this product to one or more standard values that correlate to the GFR in the animal subject."

• " the skilled person immediately understands from the wording of the claim that the comparison to standard values, which correlate to a particular GFR, directly and necessarily leads to the estimation of the GFR in the animal subject for which the blood markers were measured. The missing explicit link of how the steps of the claimed method result in the estimation of the GFR can thus be implicitly understood from the method steps. "

• " none of the appellant's arguments as to why the claimed method was obvious when selecting document D1 as the starting point for the assessment of inventive step are persuasive."
• As a comment step (iii) can be a mental step. It could also be computer-implemented, with implicitly a step of displaying the resulting calculating information, perhaps.
• As a further comment, the result of step (iii) is not used to improve step (i) and (ii).
• Cf. T 1741/22 (yesterday's post) for a different approach (it seems).

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1741/22 - Displaying medical data

Key points

• The case was publication code [B] by the Board, i.e. of general interest.
"Claim 1 of auxiliary request 10 contains the following limiting features (board's labelling):
(a) A system for analysing glucose monitoring data indicative of a glucose level in a bodily fluid, comprising: an input device, a data processing device, an output device, a display device, and machine-readable instructions that are executed by the data processing device,
(b) [wherein the machine-readable instructions cause the data processing device to] receive continuous glucose monitoring data via the input device, the continuous glucose monitoring data indicating a glucose level sampled for a person in a bodily fluid at a plurality of sample times over a measurement time period in a continuous glucose level measurement, and comprising a plurality of continuous glucose profiles, each of the glucose profiles comprising a plurality of glucose values with a glucose value for each of the plurality of sample times over the measurement period, wherein the plurality of glucose profiles is determined on different days by sampling the glucose level on each day over the measurement period, wherein the measurement period is 24 hours;
(c) [wherein the machine-readable instructions cause the data processing device to] for the plurality of continuous glucose profiles, determine a plurality of minimum glucose values and/or a plurality of maximum glucose values for a selected group or each of the plurality of respective sample times
(d) [wherein the machine-readable instructions cause the data processing device to] provide first display signals representing the plurality of minimum glucose values and/or the plurality of maximum glucose values for the selected group or each of the plurality of respective sample times;
(e) [wherein the machine-readable instructions cause the data processing device to] output the first display signals via the output device to the display device; and display a first graphical representation according to the first display signals on the display device."
• Essentially, the system has a display to display minimum and maximum values from 24 hours of received "continuous glucose monitoring data" (from a wearable glucose measurement device,  I guess). The system itself is not a continuous glucose monitor.
• "The appellants [proprietors] argued that the distinguishing features of claim 1 of auxiliary request 10 over D1 were features (c) and (d), i.e. determining and displaying minimum/maximum glucose values. [D1 shows percentiles]. [The proprietors] stated that the technical effect of the distinguishing features was to provide an "improved analysis of glucose monitoring data". In particular, "the plurality of minimum/maximum glucose values may correspond to medically relevant outlier values", which "would otherwise be averaged out in the context of known methods employing percentiles as in D1". "
• The question is whether these features provide for an inventive step. The Board approaches it from the question of whether the features provide a technical contribution ("contribute to the technical character of the invention").
• As an aside, a test of the Board's reasoning is if it makes sense if the distinguishing feature was "calculating the third harmonic eigenvalue" (instead of minimum/maximum, just making up a fancy term here) and the clear and convincing evidence is that this value, hidden in what was considered random noise before the invention, turns out to be life-saving information. That helps to distinguish between 'this is obvious for any scientist in the field but I don't have the right prior art at hand' and 'it is very smart but not technical'.
• The Board: "if the mere generation of "new data" were sufficient to contribute to the technical character of the invention, Article 52(2) and (3) EPC would contain meaningless limitations of patentable subject-matter, as e.g. mathematical methods are supposed to constantly generate "new data"."
• The Board then sets out that steps C and D are not actual measurement steps and are not, for that reason, technical.
• Note that even including a technical measurement step may not necessarily mean that the further steps of processing the resulting data are automatically technical in the sense of G1/19 (T 0489/14, r.7.4). 
• "The appellants [proprietors] referred to T 2681/16 and to the Guidelines for Examination in the EPO in support of their view. "
• Dealing with the argument based on the GL first in this post: "the Guidelines for Examination in the EPO (in its applicable version of March 2022 and also in its current version of March 2024), section G-II, 3.3, which relates to the technical contribution of mathematical methods, lists "providing a medical diagnosis by an automated system processing physiological measurements" among "examples of technical contributions of a mathematical method". As providing a "medical diagnosis" - whether done by a physician or by an automated system - is devoid of any technical character (see e.g. G 1/04, Reasons 5.3 and 6.3), this example is clearly erroneous. As there is no further explanation, let alone a reference to any case law, the board sees no reason to speculate on how the Guidelines came up with this example (cf. Article 20(2) RPBA)."
• I will quote the relevant parts in G1/04 in full. It would have been helpful if the TBA had identified the relevant sentences - especially because G 1/04 was about Art. 52(4) EPC 1973, i.e. about industrial applicability, not about non-inventions of Art. 52(2) EPC 1973. 
• I will highlight below some parts of G1/04, cited paragraphs, that are at first sight a bit at odds with the TBA's reasoning based on the same paragraphs of G1/04, to the extent I can understand the TBA's reasoning in all its brevity. 
• G 1/04: "5.3 Since diagnostic methods referred to in Article 52(4) EPC are inventions within the meaning of Article 52(1) EPC (cf. point 4 above), it follows that, in a situation where the deductive medical or veterinary decision phase is a purely intellectual exercise, i.e. a step of a non-technical nature, such a method must necessarily further include preceding steps (cf. point 5 above) of a technical nature, in order to satisfy the requirements of Article 52(1) EPC. The subject-matter of a claim including technical and non-technical features may satisfy the requirements of Article 52(1) EPC if the non-technical features interact with the technical features in order to bring about a technical effect (cf. T 603/89 (OJ EPO 1992, 230), point 2.5 of the Reasons). 
• "6.3 In the judgment of the Enlarged Board of Appeal, the qualification of an activity as having a diagnostic character may not depend on who is involved. The wording of Article 52(4) EPC is unequivocal in that the exclusion relates only to the method, and not to the person carrying out the method. Furthermore, no indication can be found in the preparatory documents to the EPC which would restrict the exclusion of diagnostic methods from patentability to a certain group of persons such as medical or veterinary practitioners. Also, as already mentioned under point 6.1 above, defining the medical or veterinary practitioner on a European level within the framework of the EPC is difficult if not altogether impossible. To allow the grant of a European patent to depend on the involvement of such a person would therefore introduce legal uncertainty into the patent granting procedure. Thus, whether or not a method is a diagnostic method within the meaning of Article 52(4) EPC should neither depend on the participation of a medical or veterinary practitioner, by being present or by bearing the responsibility, nor on the fact that all method steps can also, or only, be practised by medicinal or non-medicinal support staff, the patient himself or herself or an automated system. This also reflects the well-known fact that technological advances penetrate human and veterinary medicine and the medical and veterinary profession. Today, and more than at any time before, technology is about to fundamentally alter how and by whom health care is administered, with the result that human and veterinary medicine is gradually being reshaped by technology. In a changing medical or veterinary environment brought about by technological progress, the need for reconsidering the relationship between medical or veterinary practitioners and non-medicinal support staff will become more pressing than ever before. This will have implications for the non-medicinal support staff in terms of profile and expansion in that a great variety of diagnostic and other information will have to be procured and gathered by these persons. Moreover, no distinction should be made in this context between essential method steps having diagnostic character and non-essential method steps lacking it. The reason for this judgment lies in the fact that, again contrary to the requirement of legal certainty, the assessment of the factual and legal situation in connection with these issues could change considerably in time. As has been mentioned under point 6.1 above, consideration might be given to exploring the possibility of protecting the activities of medical and veterinary practitioners by other means on the national level."
• The Board also " disagrees with the finding in T 2681/16 that providing an overall "measure" of the glucose variability and a prediction of glycemic events amounts to a technical effect.". "In the present case and in the case underlying T 2681/16, where the "physical reality" is typically the "patient's blood", the interaction with the physical reality ends once blood glucose measurements are carried out, directly on the relevant physical entity "blood", or indirectly e.g. on another bodily fluid [note; and these physical steps are not claimed in the patents] The [note: actually claimed steps of the ] provision of overall glucose variability and a prediction of glycemic events are mathematical steps or intellectual activities which take place in the absence of this interaction with the physical reality and are therefore not "measurements" in this sense."
• "generating (and displaying) further data by an evaluation or interpretation of these measurements (as done according to features (c) and (d) here) amounts to "measurements" generated merely by a cognitive or mathematical exercise that is inherently non-technical. "
• G 1/19 r.98: "Calculated status information or physical properties concerning a physical object are information which may reflect properties possibly occurring in the real world. However, first and foremost, they are mere data which can be used in many different ways. There may exist exceptional cases in which such information has an implied technical use that can be the basis for an implied technical effect. Still, in general, data about a calculated technical effect is just data, which may be used, for example, to gain scientific knowledge about a technical or natural system, to take informed decisions on protective measures or even to achieve a technical effect. The broad scope of a claim concerning the calculation of technical information with no limitation to specific technical uses would therefore routinely raise concerns with respect to the principle that the claimed subject-matter has to be a technical invention over substantially the whole scope of the claims"
• G 1/19, r.128 mutatis mutandis: " In the Enlarged Board's view, calculated numerical data reflecting the physical behaviour of a system [from measurements] usually cannot establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behaviour adequately reflects the behaviour of a real system underlying the [measurement]. Only in exceptional cases may such calculated effects be considered implied technical effects (for example, if the potential use of such data is limited to technical purposes"
• See also r.98: "calculated status information or physical properties concerning a physical object are information which may reflect properties possibly occurring in the real world. However, first and foremost, they are mere data which can be used in many different ways. There may exist exceptional cases in which such information has an implied technical use that can be the basis for an implied technical effect. Still, in general, data about a calculated technical effect [?] is just data, which may be used, for example, to gain scientific knowledge about a technical or natural system, to take informed decisions on protective measures or even to achieve a technical effect. The broad scope of a claim concerning the calculation of technical information with no limitation to specific technical uses would therefore routinely raise concerns with respect to the principle that the claimed subject-matter has to be a technical invention over substantially the whole scope of the claims (see point E.I.b above, referring to T 939/92)."
• See also the broken technical chain fallacy as reviewed in T 1670/07: "the Board sees something of a well known argument that could be termed the "broken technical chain fallacy" after decision T 1741/08 - GUI layout/SAP. This decision dealt with the fairly common situation that arises in connection with graphic user interfaces (GUIs) where a technical effect might result from the user's reaction to information. The decision essentially concluded (see point 2.1.6) that a chain of effects from providing information to its use in a technical process is broken by the intervention of a user. In other words, the possible final technical effect brought about by the action of a user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user. This applies to the present case because any possible technical effect depends on the user's reaction to the itinerary."
• These observations are without prejudice to the question of whether claims involving the display of medical diagnostic data should benefit from the exception of G1/19 r.98 and r.128 of an implied technical use and effect of the calculated or displayed data, the possible argument being the potential use of the data is (practically, realistically) limited to medical purposes (methods of treatment of patients) and that medical purposes are technical purposes.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0355/22 - Amending to restore inventive step

Key points

•  The proprietor restores inventive step by adding a feature to claim 1 that is already taught in the closest prior art.
• This would be an interesting thing to test on the (new) EQE.
• "D9 also relates to carbon-based additives for lead-acid batteries (paragraphs [0001] and [0011]) and is a suitable starting point for assessing inventive step."
• "The opponent is of the view that the objective technical problem is merely providing an alternative because oxidized carbon black "A" ([(] Table 1 of the contested patent) showed comparable performance with the control carbon black "CB" (Table 4 and Figure 4) "
• The Board:"Oxidized carbon black "A" is not encompassed by claim 1 because the volatile content is slightly below the claimed range of at least 5.5 wt.%. The observation that oxidized carbon black "A" does not solve the technical problem posed in this case nevertheless leads to the conclusion that the technical problem is not solved across the entire scope of the claim. Oxidized carbon black "A" differs from samples "B" to "E" in that it has a lower volatile content and a higher BET surface area. The claim, however, encompasses oxidized carbon blacks having a similar volatile content to sample "A" and an even higher BET surface area of up to 2 100 m**(2)/g. Such samples are closer to sample "A" than to samples "B" to "E". Considering that sample "A" does not solve the problem posed, it cannot be concluded that the problem would be solved by any such other samples encompassed by the scope of the claim."
• "In the light of the above, the objective technical problem is merely that of providing an alternative."
• The Board finds the modification to be obvious.
• Turning to the lower-ranking auxiliary request: "While the limitation does not provide an additional delimitation from D9, it does affect the question of whether the technical problem posed (see point 9.3) has been solved across the whole scope claimed.

  13.2 Oxidized carbon black "A" (BET surface area of 1 520 m**(2)/g, volatile content of 5.28%, Table 1 of the contested patent) is not included in the scope of the claim as its BET surface area is too high and its volatile content slightly too low. This example on its own thus does not call into question whether the problem is successfully solved. Moreover, the question of whether any technical effect may be achieved if the oxidized carbon black has an even higher BET surface area than sample "A" and a similar volatile content no longer arises since these samples are outside the scope of the claims."

• " For these reasons, and in the absence of any counter-evidence, the technical problem of obtaining improved dynamic charge acceptance and minimised water loss may be considered solved."

• The Board consides the technical facts and concludes that the claim is inventive.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1050/22 - Discordant examples, and lists of possible upper and lower limits

Key points

• "In the present case, as explained above and starting from the disclosure in D5, feature (e) represents a first selection from the list of ranges which may emerge from the endpoints shown in claim 3 and page 7, while feature (g) represents a further selection from a second list of ranges that may be created on the basis of the endpoints shown in claim 1 and page 8 of D5. In the absence of any pointer to the particular combination of claim 1 of the main request, the combination of the range amounts for features (e) and (g) as claimed represents added subject-matter. The Board does indeed not identify any passage of the description or any example as possible pointer for the combination of such selections. Examples A, M and N, which were cited by the respondent, correspond to the only examples wherein the compounds and their amounts match with the claimed compounds and amounts. Most of the remaining examples, in particular examples B-K, show however discordant compositions, so that the examples cannot be seen as a clear pointer to the defined combination of features."
• " The selection of originally explicitly disclosed limit values defining several (sub)ranges to define an individual range may not necessarily generate subject-matter extending beyond the original disclosure, but the further combination of such individual range with another individual range emerging from a second list of ranges and relating to a different feature is not considered to be derivable from the original disclosure, unless there is a clear pointer to such a combination (see for instance T 1511/07 point 2.1,, T 1731/18, point 1.5 of the reasons, and the Case Law of the Boards of Appeal, 10th edition, 2022 II.E.1.6.2.a). In the present case, the basis for the definition of the indicated combination of ranges is even less evident due to the presentation in the claims and the description of D5 of lists of upper and lower limits rather than defined ranges (Cf. T 1408/21 point 1.4 and see the Case Law of the Boards of Appeal, 10th edition, 2022 II.E.1.6.2.c). "
• "A relevant pointer is usually a specific indication or teaching in the original application directing the skilled person to a specific combination. Such specific indication can originate from the original claims and/or from disclosed specific embodiments, in particular when the examples of the application as filed present an uniform disclosure with regard to the concerned combination of features and all fall under the scope of the claims. However, the presence of discordant examples may well indicate that the examples do not provide any clear pointer to the combination of features. 
• "Consequently, the main request does not meet the requirements of Article 76(1) EPC."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2133/21 - Broadest in context

Key points

•  "According to the legal approach to claim construction, it is a well-established principle laid down by Board of Appeal case law that a non-specific definition in a claim, here "prepolymer", must be given its broadest technical sensible meaning taking into account the context in which it appears, which also includes linguistic considerations."
  
  
• In this case, the proprietor argued for a broad claim interpretation, the opponent for a narrow one because  [short break as a brainteaser here]
  
  
• ...two of the examples in the patent exhibiting a certain technical effect were in accordance with the claim under the proprietor's broad interpretation.
  
  
• The Board agreed with the opponent's claim interpretation,
• finds the objectively solved technical problem to be the provision of an alternative,
• and concludes that the claim, therefore, includes obvious embodiments,
• such that the claimed subject-matter does not involve an inventive step.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1941/21 - Clinical trials; Novelty after inventive step

Key points

• "D4 discloses the protocol and design of a clinical trial for evaluating the efficacy and tolerability of [the compound] TUDCA in the treatment of ALS, wherein TUDCA is administered at 1g b.i.d (2g daily) for a year to 18-75 years old Caucasian male or female ALS patients who had first symptoms of ALS by no more than 1.5 years and were in treatment with a steady regime of riluzole and vitamin E for a minimum of three months (see D4: title; page 6, arms and interventions; page 7, outcome measures; page 7, eligibility). Further, document D4 describes in detail the rational for using TUDCA in these clinical trials. It mentions in particular that TUDCA is endowed with antioxidant, antiapoptotic and neuroprotective activities and describes the detailed pharmacological mechanisms of action for each activity (see D4, pages 5-6). The results of the trial announced in D4 have not been made available to the public."
• I.e., D4 discloses the method features of the second medical use claim at issue (""1. Tauroursodeoxycholic acid [TUDCA] or a pharmaceutically acceptable salt thereof for use in the treatment of a neurodegenerative disorder in a mammal, characterized in that said neurodegenerative disorder is amyotrophic lateral sclerosis."')
• "The problem [solved by the claim over D4] was defined by the opposition division in its decision as the provision of an effective treatment for ALS. "
• "The problem appears to be solved in view of the examples of the contested patent in paragraphs [0028]-[0038]. The patent shows for instance that the baseline-adjusted absolute ALSFRS-R score was significantly higher in TUDCA-treated than in placebo-treated patients "
• Note:  "This study shows that one year of treatment with TUDCA at the prescribed dose was associated with slower deterioration of function in ALS patients. This disease modifying effect is additional to that of riluzole, as both treatment groups [i.e. "placebo" and TUDCA] were under riluzole and vitamin E treatment. " (patent, para. [0036]
• "Clinical trials are usually initiated on the basis of encouraging results from preclinical experiments. Thus, the announcement of a phase II clinical trial protocol for a particular therapeutic agent and a disease may provide the skilled person with a reasonable expectation of success. "
• "Such reasonable expectation of success is, however, to be denied in a situation where a skilled person would have been discouraged from carrying out the clinical trials, such as when the state of the art provides the skilled person with reasons for not pursuing the solution envisaged in the clinical trial or provides the skilled person with an expectation of failure. Consequently, "a reasonable expectation of success" is linked with the specific circumstances of the case and requires a case-by-case evaluation of all the facts at hand at the priority date of the contested patent. In the present case, the Board holds that the state of the art suggested to the skilled person a clear expectation of failure."
• "The disclosure of document D9 demonstrates indeed that the skilled person could not base any reasonable expectation of success of the use of TUDCA in treatment of ALS on the announcement in document D4 of a phase II clinical trial for the treatment of ALS with TUDCA.

  D9 is a scientific article published in 2012 which gives a general review of the treatment of amyotrophic lateral sclerosis (ALS) at that time. D9 mentions 89 different drugs which, before the filing date of the opposed patent, had been used in clinical trials for ALS based on allegedly promising preclinical data [...]. 

• "Importantly, [D9] discloses that, for all the drugs listed in the document, promising preclinical data, such as biochemical or cellular assays, have been provided, but nevertheless the majority of the clinical trials failed"

• "Accordingly, the Board concludes that, starting from document D4 and in view of the further cited prior art, the skilled person would not have arrived at the claimed subject-matter in an obvious manner and that the subject-matter of claim 1 of the main request involves an inventive step."

Novelty after inventive step

• "D8 [EP 2 422 787 A1, being prior art under Art.54(2)] relates to compositions comprising low doses of diazoxide for use in the treatment of a mammal afflicted with ALS, in particular a human (see D8, claims 1 and 3). Further, D8 discloses in claim 9 that diazoxide can be combined with "an additional therapeutic agent useful in the treatment of amyotrophic lateral sclerosis" including TUDCA, which constitutes a single selection from a list. Consequently, a composition comprising diazoxide and TUDCA for use in the treatment of a mammal afflicted with ALS is derivable directly and unambiguously from D8."
• "Accordingly, even if D8 does not provide any in vitro or in vivo experiments with regard to the efficacy of TUDCA in the treatment of ALS, D8 provides an enabling disclosure for a combination treatment based on diazoxide and TUDCA, in view of the explicit disclosure in D8 of the efficacy of diazoxide. "
• "D8 supports the utility of low dose diazoxide in the treatment of ALS with experimental results, in particular in Example 2. This example shows that low doses of diazoxide improve survival in the SOD1-G93A transgenic mice model for amyotrophic lateral sclerosis. The utility of diazoxide in treatment of ALS described in D8 has not been disproved."
• Note, for D8, a pre-clinical experiment (animal study) is sufficient for an enabling disclosure. Cf. the remarks about D9 above.
• "As a general rule, a claim to the use of a known compound for a particular purpose or to a product for use in a particular medical purpose, which is aimed at obtaining a technical effect described in the patent, should be interpreted as including that purpose as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public. This functional feature has however been made public in the present case."
  
  
• "In the Board's view, the discovery of a new property of a particular ingredient of a known composition, i.e. here TUDCA in the composition comprising diazoxide and TUDCA, used for a known and identical general purpose, i.e here the treatment of a mammal afflicted with ALS, can indeed not confer novelty to the particular ingredient used for the same general purpose, namely TUDCA for the treatment of ALS. Novelty can only be recognized if this new property is applied in a new use."
• The claim does not specify "a composition comprising TUDCA for use in the treatment of ALS". The Board's reasoning is difficult to follow.
• Consequently, the disclosure in D8 of treatment of ALS based on diazoxide and TUDCA, wherein the efficacy of diazoxide is supported by experimental data and has not been disproven, anticipates the subject-matter of claim 1 of the main request.
• " Claim 1 of auxiliary request was amended by the addition of the feature " in a human, characterized in that it is administered for at least 30 weeks".
• "Since there is no disclosure of any duration of treatment in D8, the subject-matter of claim 1 of auxiliary request 2 is not anticipated, and auxiliary request 2 meets the requirements of Article 54 EPC."
• As a comment, there is no discussion at all of why the added feature of administration of 30 weeks provides for an inventive step over D8. I don't understand why, except that the opponent had no inventive step objections starting from D8. I understand ALS is a chronic disease?

EPO 

The link to the decision and an extract of it can be found after the jump.

J 0002/22 - Interruption of proceedings

Key points

• There is a lot going on in this decision. The applicant is a natural person living in London and acting without a professional representative.
• The application was filed as a PCT application. The applicant entered the European phase late, with further processing. More precisely, he filed Form 1200 on the last day of the period for requesting further processing, using web-form filing. The fees were received by the EPO on 18 October. 
• The EPO issued an invitation under Art.7(3) Rfees on 21 November 2019 to file evidence that payment was initiated on 16 October and pay the (then applicable) surcharge. 
• "With e-mails of 2 January 2020 and 24 January 2020 the appellant was reminded of the deadline to reply to the communication of 21 November 2019 concerning fee payment."
• This is remarkable because email is officially not a permitted means of communication in procedures (still).
• "On 23 April 2020, the appellant submitted a written confirmation by his bank XXX of 11 March 2020 that the payment of fees had effectively been requested on 16 October 2019, but had only been sent two days later."
• I understand the EUR 150 surcharge was paid. 
• "Such evidence was indeed provided, if only on 23 April 2020, by a written confirmation of XXX of 11 March 2020 that the payment of fees had effectively been requested on 16 October 2019, and that it had been sent only two days later, i.e. on 18 October 2019 (notably because of initial doubts on the bank's side that such payment has indeed been the appellant's intention)."
•  "In a telephone consultation on 13 July 2020 with a Formalities Officer, the appellant announced that he had meanwhile "found" the communication of 21 November 2019."
• "Upon an internal investigation, receipts of 25 November 2019 were unearthed, signed by the appellant, confirming handover of the communications of 21 November 2019 to him."
• This is remarkable. I wonder what kind of documents these are that are not included in the file but are only "unearthed" later.
• " With a further communication of 20 October 2020, the Receiving Section informed the appellant that notifi cation of the communication of 21 November 2019 had thus been duly effected, and the time limit for reply ing thereto had expired on 3 February 2020, so that his response of 23 April 2020 had (finally) been too late. The Receiving Section announced their intention to issue a decision rejecting the request for further pro ces sing, and gave the appellant the opportunity to respond within two months. "
• The spurious spacing in the text is from the HTML publication of the decision. 
• " By fax of 4 January 2021, the appellant responded, inter alia stating that he had made the necessary payment on the due date of 16 October 2019, but it had been delayed for two days by his bank, for reasons outside his control. He had been diagnosed with a serious medical condition which had the effect that he could enter fairly suddenly and without warning into periods of diminished cognitive capacity, making ma nage ment of day-to-day correspondence difficult. One such episode occurred late 2019 and into early 2020. It was during this time that the communication of 21 No vember 2019 was sent but due to his health difficulties at that time he was not aware of its arrival and the dead line set therein. [....] He pointed at Rule 142 EPC, according to which the pro ceedings should be interrupted in case of legal incapacity. 
• 4 January 2021 was indeed the first Monday after the EPO's end-of-year closing and hence the last day of the period from 20.10.2020.
• It is remarkable that the pro se applicant points to Rule 142 EPC, a rule that could be easily overlooked even by some EQE candidates.
• The Board finds that proceedings are retroactively interrupted from 21 November 2019, so that the invitation under Rfees7 was not validly notified. 
• At least that is how I understand point 2 of the order; see also para. 35 of the reasons.
• "the valid notification on a natural person as party to the proceedings presupposes their legal capacity (cf. Rule 142(1)(a) EPC; as to the term and the conditions see below). The notification on a legally incapable person who is not properly repre sen ted is null and void, as are other procedural acts involving or regarding them (cf. Articles 467, 468, 473 and 475 French Civil Code (FCC); 170 German Code of Civil Procedure (ZPO), 1(1), 6 Austrian Code of Ci vil Procedure (ZPO); cf. Austrian jurisprudence, see Le gal Information System of the Republic of Austria ,,RIS-Justiz" RS0006948, RS0122203, RS0083724). '" 

A uniform standard for legal incapacity of applicants?

• "Legal incapacity of a person means that they are suffering from a disturbance of their mind which makes them unable to form the necessary voluntary intention to carry out legal transactions binding upon them, e.g. to make valid contracts (Case Law of the Boards of Appeal, 10th ed. 2022, III.D.4.3; J 900/85, OJ 1985, 159). In the context of the procedural system of the EPC, which does not distinguish between civil and proce dural legal capacity (see below), this also means that they cannot act on their own in proceedings before the EPO."
• "The Boards' jurisprudence in this context tells the standards regarding (private) natural persons (i.e. based on the relevant national law) apart from those regarding professional representatives (i.e. a uniform standard based on the autonomous law of the EPC, see Case Law III.D.3.2 and III.D.3.4[...]); J 900/85; J 903/87, OJ 1998, 177)."
• The present Board: "However, there is no stringent reason for making such a distinction, at all, and as to why the principles laid out in J 900/85 for professional representatives should not equally apply to natural persons, i.e. the assess ment be made on the basis of the autonomous law of the EPC"
• I've studied the Travaux to Rule 90 EPC 1973. A relevant passage can be found in 7669/IV/63, page 63, with a discussion of a fundamental difference between French, Dutch and Belgium law on the one hand and German law on the other hand, relating to legal incapacity of natural persons (page 43 of the PDF); concluding on p.64, first paragraph, last sentence, that 'the personal statute' applies in the sense of private international law, i.e. the law of the country of residence.
• The EPO no longer has the individual PDF files of the Travaux on their website, only large ZIP files with collections of files. I can not link to the relevant document or page anymore.
• As a comment, the Legal Board seems to follow the German approach to legal incapacity. There could be valid reasons for doing so, but that is beyond the scope of this blog post.
• "only unified standards according to the autonomous law of the EPC can guarantee equal treatment of the parties in proceedings before the EPO, as an essential element of fair trial"
• So, an applicant/natural person can be 'mentally fit' to conclude contracts under the national law of his/her place of residence and still 'unfit' in the procedure before the EPO, according to this decision.

The facts of the case

• In the present case, the appellant himself ... to support the request for interruption of the proceedings - had put his health issues on the table, together with me di cal documentation: the medical certificates of 3 April 2020, of 26 October 2020, and of 13 September 2021, all from the N.N. Medical Centre. Already according to them, the appellant suffered from a number of medical conditions, specifically recurrent depres sion, PTSD and dissociative seizures, and he had a tendency to experience several months long episodes where he was in a major depressive state, leaving him often unable to leave bed
• "Given the circumstances of the case and the evidence already on file at first instance, the appellant's legal capacity could no longer simply be presumed without further investigation and, in the absence of further medical evidence to the contrary, he could no longer be treated like any other party presumed to be able to act validly in the proceedings on their own, and without proper representation."
• "As the appellant is domiciled in London, the board ap proached the Court of Protection, in particular, which has a main office in London and regional hubs and is responsible for a range of decisions in financial and welfare matters for people in England and Wales who lack mental capacity. "
• " Reaching out to the Court of Protection, and the Office of the Public Guardian (an administrative and super visory body to the Court of Protection, see Part 2, Section 57, of the Mental Capacity Act 2005), did not return any responses. "
• "These further documents, atop the medical documentation already on file, and in the light of the appellant's be haviour and submissions in the proceedings, finally provide sufficient evidence to conclude that the appel lant did not possess legal capacity during a substan tial part of the proceedings, and that this problem per sists to date. In view thereof, further investi ga tions into the appellant's state of health, or even an ex-officio medical examination, could be dispensed with, at least for the time being."

Effects of the interruption

• "as outlined above, the notification of the Receiving Section's communication of 21 November 2019 is null and void, since the appellant was in a state of legal incapacity at that time, and is there fore without effect. The same applies to the entire sub sequent proceedings, i.e. the procedural steps taken by the departments of first instance and the appellant since then. This includes, in particular, the contested decision and its notification.
• These proceedings are thus (to be declared) null and void, with the consequence that the impugned decision is deemed to have never become legally effective. 

Declaration of interruption by the Board

• "The declaratory decision on interruption is to be taken by the board, and there is no room to involve the Legal Division at this stage"
• "The Deci sion of the President of the EPO concerning the res ponsibilities of the Legal Division of 21 November 2013, OJ 2013, 600, did not transfer any powers and competences from the Boards of Appeal to the Legal Division on the basis of Rule 11 EPC ("allocation of duties to the departments of first instance"), but only concerned the allocation of functions between these first-instance departments. "

Further procedure

• "In view of XXX's confirmation, it can be con cluded that the payment of the fees for further processing was made, and that the omitted acts were also completed, in due time. There is no harm in the fact that this confirmation was only submitted on 23 April 2020, outside the two-month deadline set out in the communication of 21 November 2019, since the notifi cation of that communication being null and void could not have triggered such deadline."
• Consequently, the request for further processing was validly made and further processing will have to be granted in the continued proceedings before the first instance. The legal consequences of Article 121(3) EPC will then apply and the proceedings at first instance will have to be further continued by dealing with the appellant's requests for entry into the European phase and for examination by the EPO as designated Office, which were validly filed on 16 November 2019, together with the request for further processing.
• " The UN Convention on the Rights of Persons with Disabilities, having been ratified by the Contracting States of the EPC, and the EPOrg Extension and Validation States, provides:"
• This seems to be an example of the systemic interpretation of the EPC; see the article of McLachlan discussed here (to cite: "This article starts from the proposition that Article 31(3)(c) [VCLT] expresses a more general principle of treaty interpretation, namely that of systemic integration within the international legal system. The foundation of this principle is that treaties are themselves creatures of international law. However wide their subject matter, they are all nevertheless limited in scope and are predicated for their existence and operation on being part of the international law system.")
• "Accordingly, national legal systems sport a variety of safeguards that persons protected by the Convention can enjoy equal access to justice. Notably, there are various mechanisms to ensure that persons lacking legal capacity can participate in legal proceedings through the appointment of (legal) representatives."
• " The appellant is in fact habitually resident in London. The system for dealing with legal incapacity in England and Wales revolves around the Court of Protection, based on the Mental Capacity Act 2005, which can, inter alia, appoint a "deputy" (for property and financial affairs or for personal welfare) to make decisions on behalf of a person who has lost legal capacity ("pro tected party"), and to also represent them as their "litigation friend" in any proceedings to which the deputy's power extends "
• " this system does not appear to provide for an easily accessible procedure for the appointment of a representative at the request of other persons or institutions, or even authorities such as the EPO, without specific permission from the court "
• "The appointment of a deputy as the appellant's liti gation friend/legal representative in accordance with the national procedures of the Court of Protection and with a view to representing him in the present proceedings before the EPO would have been the preferred option under the EPC (cf. Rule 142(1)(a) EPC "... or the person authorised by national law to act on [their] behalf")."
•  I think this part of Rule 142 EPC addresses one of the possible grounds for an interruption, and does not relate to the manner of appointment of a representative of a natural person with mental health problems. Hence, the quote 'cf.' is correct but not very helpful. 
• "Since the appellant is in a state of legal incapacity, as outlined in detail above, he could not validly authorise them directly as his representatives of choice "
• " For the time being, therefore, there is thus no al ternative to the EPO themselves appointing a represen tative, in particular the competent department of first instance, and thus resuming and continuing the proceedings before them."
• "Rule 151(2) EPC provides for the appointment [by the EPO] of a com mon representative for a multitude of applicants, in certain circumstances. The concept of the appointment of a representative for legal proceedings is thus in herent in the system of the EPC, and can, as a matter of principle, be applied to any case such as the present one, where a representative is essential to gua rantee the participation of a legally incapable person as party and thus a fair trial. Such an appoint ment by the administrative or judicial authority of the proceedings is also in accordance with the principles of procedural law generally recognised in the Contracting States to the EPC (see Article 125 EPC)."
• "On this basis, the competent department of first in stance will have to appoint a representative and continue the proceedings. "
• Which is interesting. The Legal Board could perhaps have clarified if this also means that the EPO will pay the invoices of the solicitors or patent attorneys. 
• The procedure will now be resumed under Rule 141(2) (by analogy) once the EPO has appointed the representative. 
• Unlike a court-appointed guardian of a mentally ill person, the EPO-appointed representative will not manage the applicant's bank account (as I understand it) and will not receive a court-approved renumeration. 
• I also wonder when the appointment of the EPO-appointed representative will lapse. I assume when the mental state of the applicant improves to above the threshold of Rule 142(1)(a)? (Incidentally, see his calculation of 4 January 2021 as the last day of the period mentioned above, cf. point 37 of the reasons). 
• I wonder whether the application of Rule 151(2) by analogy is the solution envisaged in Rule 142 for the case of lack of a representative. Rule 142 was amended in 2020 to clarify that the proceedings are resumed once "the European Patent Office has been informed of the identity of the person authorised to continue the proceedings" and " If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings, it may set a date on which it intends to resume the proceedings of its own motion." 
• It is also unclear to me if, under Rule 151(2) EPC which is about multiple applicants, the EPO appoints a professional representative or one of the applicants as the common representative. 

Remedies for Rfees7(4)

• Further processing is not explicitly excluded, nor re-establishment, but there is some old case law stating that the Rfees are 'outside' the EPC (in a case about a debit order filed in Dutch (J170/83). However, meanwhile, it is clear that Rule 139 EPC applies to debit orders (J8/19). Singer EPÜ, notes to the Rfees, is silent on it. 
• The period of Rfees7(4) is specified by the EPO, the applicant could have requested extension of the period before it expired.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0224/22 - Deciding on the admissibility of the lower ranking requests; obiter findings

Key points

• "The appeals by the patent proprietor (appellant 1) and opponent 2 (appellant 2) lie from the opposition division's interlocutory decision to maintain the patent in amended form on the basis of auxiliary request 1."
•  "During the opposition proceedings, the patent proprietor filed 44 auxiliary requests after the negative opinion of the opposition division and before the final date according to Rule 116(1) EPC. They were admitted into the proceedings by the opposition division. "
• Question: how, then, can the OD decide on the admissibility of the lower-ranking requests, i.e. the requests ranking lower than AR-1 that was held allowable by the OD? 
• "The present board cannot agree that the opposition division exercised their discretion in an unreasonable way or based on the wrong criteria. They considered that the requests were a serious attempt to address objections raised by the opponents. They also considered the time of filing appropriate in view of their negative opinion. These criteria are appropriate criteria to rely on when deciding on the admission of late requests."
• "According to established case law, the boards do not have the power to disregard on appeal submissions correctly admitted by the opposition division in exercise of their discretion (Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.3.4.4). Therefore, the auxiliary requests are part of the appeal proceedings."
• I have some doubts if AR-2, which was not considered in substance (on the merits) by the OD is a request "on which the decision under appeal was based" in the sense of Art. 12(2) and (4) RPBA.
• I think the case law only applies to requests that were admitted and considered on the merits, but I've not double-checked this. 
  
  
• "The subject-matter of claim 1 of auxiliary request 1 thus does not involve an inventive step (Article 56 EPC)."
• "No objection against auxiliary request 2 was raised in due time."
• The patent is to be maintained on the basis of AR-2.
  
  
• Compare T 1614/21: "The Board agrees with the respondent that the statement at the end of sheet 11 of the grounds for the decision under appeal, i.e. the passage in which auxiliary requests 2*, 3* and 4* are referred to as "late-filed" and "considered as not admissible", is an obiter dictum (auxiliary request 1 having been considered allowable by the opposition division). Regarding the right to be heard, this statement is problematic as the admittance of these requests was "not discussed" with the parties "during the oral proceedings" (decision under appeal, sheet 11) or in writing. "
• See also T 0948/19, where the Board wishes to have more obiter* findings of the OD: "In this context, the following should be noted: In a last-instance decision, when a request is not allowed on other grounds it is normally superfluous to address further objections raised against that same request that were found unconvincing after having been discussed at oral proceedings. However, the situation is different for a decision of an opposition division, which may be the subject of an appeal. In this case, if the Board is not convinced by the reasons the opposition division gave in support of precluding the maintenance of the patent on the basis of a certain request, the lack of a decision to review in respect of the aforementioned further objections may result in a remittal for the consideration of said further objections, resulting in a delay in the proceedings."
• * - I understand the part in italics to relate to "further objections raised against that same request that were found unconvincing [by the OD] after having been discussed at oral proceedings". 

EPO 

The link to the decision can be found after the jump.