T 1239/24 - No need for pre-emptive attacks on carry-over requests

Key points

• The OD rejected the opposition. The opponent appeals.
• "Any consideration of auxiliary requests in the appeal necessarily presupposes that such claims have become the subject of the appeal proceedings in a permissible manner. However, this could not have been the case at the time the grounds of appeal were filed. The auxiliary requests at issue were not part of the decision under appeal. It is not incumbent upon the appellant-opponent to address, in its grounds of appeal, the auxiliary requests submitted in the opposition proceedings, without knowing whether they will be maintained in the appeal proceedings. 
• The patent proprietor responding to the appeal, on the other hand, is expected to set out ("clearly and concisely", see Article 12(3) RPBA) in its response to the appeal the reasons why the subsidiary claims overcome the objections raised in the grounds of appeal against the main request (see Case Law Book of the Boards of Appeal, 11th edition, V.A.4.3.5.b) and, for example, T 1041/21, Reasons 5.1.4; and T 1690/22, Reasons 2.12). 
• It is in response to a well-substantiated submission of auxiliary requests by the respondent that an appellant is obliged to submit a substantiated response with respect to the issue of inventive step."
• This refers to the rejoinder to be filed by the appellant. 

EPO 

The link to the decision is provided after the jump.

T 1199/25 - Inevitable results

Key points

• G 2/88, point 10 (in the context of second non-medical use claims): "in some cases, the information which the written description actually contains, teaching the carrying out of a process for example, also makes available further information which is the inevitable result of carrying out such teaching [see T 12/81]."
• The EBA continued: "In each such case, a line must be drawn between what is in fact made available, and what remains hidden or otherwise has not been made available."
• Turning to the present case: the opponent argued that "The opposition division had erred in treating the PEG molecular weight as "hidden information". The relevant question was not whether D23a identified the PEG molecular weight as an essential parameter, but whether that feature was objectively and necessarily implied by the disclosure. A feature was part of a disclosure if it was the inevitable consequence of what was expressly described, irrespective of whether the skilled person's attention was specifically directed to it."
• The Board: "the presence of a PEG moiety having an average molecular mass of 1-3 kDa is disclosed because such a liposome is the inevitable consequence of carrying out the method disclosed at page 20, lines 14 to page 21, line 16 and ..."
• "The calculation made by the respondents that the liposome produced comprises PEG of average molecular weight of 2 kDa ... was not disputed by the appellant[,] and the board considers that it is correct."
• Evidence of inherent properties does not need to be prior art. 
• This does not mean that D23a gives basis, in the sense of Art. 123(2) EPC, for specifying a PEG moiety having an average molecular mass of 1-3 kDa as a feature (if D23a is a patent application).
• "For these reasons, D23a, and therefore D23, directly and unambiguously discloses a liposome falling within the definition of claim 1, encapsulating RNA encoding an immunogen."
• I explored the topic in my article in epi Information 4/2020. As discussed therein, the phrase "falling within" distinguishes the test for novelty from the test for Art. 123(2); the phrase "directly and unambiguously discloses" expresses the common element of those two tests.

EPO 

The link to the decision is provided after the jump.