T 0011/25 - Fresh ground in appeal

Key points

• With the statement of grounds of appeal, the opponent raised for the first time an objection under Article 100(c) EPC. 
• In the appellant's [opponent]s' view, the objection should be admitted as it was closely linked to the objection of sufficiency of disclosure discussed before the opposition division (see point 1.3.1 above). Originally the features were disclosed in the order Fl-F2-F4-F5-F3 but in granted claim 1 the order was Fl to F5. This resulted in an aliud that did not find basis in the original application.
• The Board: 2.2 Even assuming that the objection of added subject-matter is linked, in substance, to the objection of sufficiency of disclosure, still the ground for opposition under Article 100(c) EPC was not submitted and substantiated in opposition proceedings, as acknowledged by the appellant (opponent). It thus constitutes a fresh ground for opposition. As the respondent (patent proprietor) explicitly did not approve the introduction of the new ground for opposition, the objection under Article 100(c) EPC can not be considered in appeal proceedings pursuant to G10/91.
• The Board, under sufficiency: "As the claim does not specify when steps F4 and F5 are executed (before or after the automatic uncoupling), the opposition division correctly stated (decision, 2.1.5) that this objection is rather a clarity objection, and clarity is not a ground for opposition."
• Suppose the proprietor argues, for the first time in appeal,  that in claim 1 the order of the steps was undefined, and because of that, the claim met Art. 83 (and suppose the argument is admitted). Suppose the opponent wishes to point out that the application as filed only provides a basis for the steps in a specific order, and that the opponent was initially unaware that the pre-grant amendment changing the order of the steps changed the meaning of the claim. Can the objection under Art. 123(2) be admitted (independent of the consent of the patentee)?

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t250011eu1