T 0773/21 - An obligation to submit futile objections before the OD (?)

Key points

• The OD considered D22 to be not novelty destroying for AR-2 (the OD's extensive reasoning is on pages 17 - 20 of the decision).  The claim request was held to be not novel over D6. Request AR-3B, with an additional feature, was filed during the oral proceedings, was admitted, and was held to be novel over D6.
• "Claim 1 of the third auxiliary request is the combination of respective claim 1 of the first and second auxiliary requests, i.e. claim 1 of the first auxiliary request with the additional feature (M1.10) [that is specified in AR-2]."
• In other words, claim 1 of  AR-3 adds a feature to claim 1 of AR-2. Unless I overlook something, this means that the OD, having found AR-2 to be novel over D22, would have found AR-3 to be novel over D22 as well.
• The Board agrees that AR-2 is not novel over D6 and does not consider novelty over D22 of that request. 
• The opponent had attacked AR-3 as not novel over D22 in the statement of grounds. The Board does not admit the attack.
• The Board: "It is undisputed that this request was submitted for the first time during the oral proceedings and an objection of lack of novelty of claim 1 in view of document D22 has not been raised expressis verbis by the opponent during the oral proceedings before the opposition division."
• "The board finds that an objection raised with regard to other requests previously dealt with or still pending cannot be tacitly transferred to a newly submitted request. As long as an objection is not explicitly stated or submitted, it cannot be considered to have been raised or filed. "
• "The opponent could and should have formally raised this objection during the oral proceedings before the opposition division which it did not. In particular, this formal objection would not have compromised the efficiency of the procedure, as it could have been dealt with in a very brief discussion. "
• So, an obligation to make a futile attack: "Dear Chair of the OD, I know you have already decided that the claim is novel over D22, but I formally make the same attack for AR-3".
• What purpose does this obligation serve? It would not have added any substantive reasoning to the decision of the OD, the OD could just have said in their decision that claim 1 of AR-3 is novel over D22 for exactly the same reasons as for AR-2 (which reasons, three pages of them, are in the decision already and were thus available to the Board to review).
• " the opponent has not been able to convincingly demonstrate that it had admissibly raised the objection of lack of novelty in respect of document D22 for this request, let alone that it had maintained it until the decision of the opposition division, as indicated in Article 12(4), first sentence, RPBA."
• "It is not known why the opponent did not raise this objection during the oral proceedings before the opposition division. It might have forgotten to do so or it could have been that at that time, the opponent was convinced that this objection no longer served its purpose."
• ? - Perhaps because the OD had already decided that the higher ranking AR-2 is novel over D22, so that the amendment of adding a feature in AR-3B does not change that finding?
• "Since it is precisely to be avoided that a party changes its mind about objections at will in the course of the proceedings, it would have been important to clearly raise the objection of lack of novelty of claim 1 in view of document D22 at the oral proceedings before the opposition division at least formally."
• "Moreover, not having raised this objection during the oral proceedings before the opposition division leads now to the situation that the opinion of the opposition division with regard to the subject-matter defined in claim 1 is not known and cannot be reviewed by the board."
• "Even though the opposition division's opinion on the second auxiliary request is known [i.e. the three pages of extensive reasoning of the OD why that claim 1 is novel over D22, PJL], it cannot be simply transposed to the third auxiliary request - variant B, since the subject-matter of the respective claim 1 is different."
• Well, if the amendment is adding a feature, the view on novelty of the OD of the claim with that additional feature seems certain? 
• "The prima facie relevance of document D22 is however a necessary condition for admitting this objection at this advanced stage into the proceedings. "
• Cf: Article 12(4): "the suitability of the amendment to address the issues which led to the decision under appeal" (not: overcome the issues, that is in Art. 13(1)). 
• "The opponent could also not convince the board in the written proceedings that document D22 directly and unambiguously discloses all features defined in claim 1, since according to the board's preliminary opinion stated in its communication under Article 15(1) RPBA, document D22 did not disclose the width relationship of D and d of claim 1 (see point 14.5.3 of the communication). Therefore, a prima facie relevance of document D22 is not given because otherwise it should have been recognised by the opposition division and/or by the board having reviewed the extensive previous written discussions. Moreover, the discussion on this topic might well turn out to be extensive which would be contrary to procedural economy."
• So, the Board has formed a preliminary opinion on the matter,  i.e. has studied the claim and the novelty thereof over D22, but denies the opponent the opportunity to discuss this issue during the oral proceedings. 

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t210773eu1