T 1088/21 - Oppo rejected, ARs not admitted

Key points

• "The Opposition Division came to the conclusion that none of the grounds of opposition brought forward by the Opponent prejudiced maintenance of the patent, and rejected the opposition.

  IV. The opponent appealed, arguing, inter alia, that claim 1 of the patent lacked novelty in view of D1. They requested that the decision be set aside and the patent revoked."

• The Board: "Therefore claim 1 of the main request lacks an inventive step in view of D1 (Articles 52(1), 56 and 100(a) EPC)."

• "Auxiliary requests 1 to 6 were submitted for the first time with the reply to the grounds of appeal.  They are amendments in the sense of Article 12(4), first sentence, RPBA, and may be admitted only at the discretion of the Board, subject to the provisions of Article 12(4) to 12(6) RPBA. "

• "the question of inventive step, for claim 1 of the patent as granted in view of D1, was raised in the notice of opposition. Auxiliary requests representing fall-back positions in reaction to such an attack could and should have been filed with the reply to the opposition (Article 12(6), second sentence, RPBA). And indeed, some auxiliary requests were then filed, that were not pursued on appeal."

The qustion is: why should the proprietor have submitted them, vis-a-vis the judicial review in appeal? The OD would not have commented on them at any rate"

• "auxiliary requests 3 to 6 are furthermore clearly not suitable for addressing the issue of lack of an inventive step in view of D1, identified above with regard to the main request (Article 12(4), fifth sentence, RPBA), for the following reasons [giving one sentence reasons why the feature of each auxiliary request does not provide for an inventive step over D1]
• The patent is revoked.    

 

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t211088eu1

41. Therefore claim 1 of the main request lacks an inventive step in view of D1 (Articles 52(1), 56 and 100(a) EPC).

42. Consequently, the main request is not allowable.

Auxiliary requests 1 to 6

43. Auxiliary requests 1 to 6 were submitted for the first time with the reply to the grounds of appeal.

44. They are amendments in the sense of Article 12(4), first sentence, RPBA, and may be admitted only at the discretion of the Board, subject to the provisions of Article 12(4) to 12(6) RPBA.

45. In their reply to the appeal, the proprietor did not justify their submission at that stage of proceedings, contrary to the requirements of Article 12 (4), third sentence, RPBA. They sought to do so only after the Board's preliminary opinion, and again during oral proceedings.

46. The Board is not persuaded by the argument that these requests could not have been submitted before the Opposition Division, nor by the argument that they are reactions to new objections, brought forward for the first time in the opponent's grounds of appeal.

47. As already indicated above, the question of inventive step, for claim 1 of the patent as granted in view of D1, was raised in the notice of opposition. Auxiliary requests representing fall-back positions in reaction to such an attack could and should have been filed with the reply to the opposition (Article 12(6), second sentence, RPBA). And indeed, some auxiliary requests were then filed, that were not pursued on appeal.

48. Also, the grounds under Articles 100(b) and (c) EPC, that auxiliary requests 1 and 2 are argued to address, had already been brought forward with the notice of opposition.

49. These, and auxiliary requests 3 to 6 are furthermore clearly not suitable for addressing the issue of lack of an inventive step in view of D1, identified above with regard to the main request (Article 12(4), fifth sentence, RPBA), for the following reasons:

(a) Auxiliary request 1 adds a limitation, namely that the luminaire unit has a light source, that is also disclosed in D1;

(b) Auxiliary request 2 removes, from claim 1 of the main request, a feature that was defined as optional, so there is no change in subject-matter;

(c) Auxiliary request 3 further defines the luminaire unit as configured to transmit a message different from the first message to the other luminaire units, the different message lacking any definition as to its content or any link to any other feature of the claim, and being, therefore, unable to contribute to any technical effect;

(d) Auxiliary request 4 further defines the first light control action as including adapting at least one of a set of well-known lighting parameters, including, for instance, brightness, which represents a trivial addition to the on/off actions disclosed in D1, if these on/off actions are themselves not understood as brightness control actions;

(e) Auxiliary request 5 further specifies merely that the switch signals are comprised of a sequence of signal states or pulses, but that says only that some digital signals are involved; and

(f) Auxiliary request 6 further defines that the wireless transceiver of the luminaire unit complies with a well-known communication protocol.

50. Hence, even if auxiliary requests 3 to 6 seem to introduce further differences vis a vis the disclosure of D1, they are unrelated to one another and to the electrical connection identified above as the difference with regard to claim 1 of the main request, and each unsuitable to address the issue of lack of an inventive step in view of D1.

51. The Board, therefore, sees no reason to admit any of Auxiliary requests 1 to 6 into these appeal proceedings (Article 12(4) and 12(6) RPBA).