T 0430/17 - Remittal and withdrawal opposition

Key points

• The proprietor appeals against the revocation of the patent by the OD on the ground of insufficient disclosure. The  Board finds the patent to be sufficiently disclosed.
• The Board remits the case. However, as the only opposition was withdrawn during the appeal proceedings, the Board remits the case with the order for the OD whether to continue the procedure of own motion under Rule 84(2) s.2 EPC.

T 0430/17 -  link

2.5 In Anbetracht der obigen Ausführungen gelangt die Kammer zu dem Ergebnis, dass der Einspruchsgrund nach Artikel 100 b) EPÜ der Aufrechterhaltung des Streitpatents in der erteilten Fassung nicht entgegensteht.

Da die weiteren Einspruchsgründe von der Einspruchsabteilung noch nicht geprüft wurden und zwischenzeitlich der einzige Einspruch zurückgenommen wurde, wird die Angelegenheit an die Einspruchsabteilung zurückverwiesen zur weiteren Prüfung, ob sie das Verfahren von Amts wegen fortsetzt (Artikel 111 (1) EPÜ).

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Die Angelegenheit wird an die Einspruchsabteilung zurückverwiesen zur Ausübung ihres Ermessens nach Regel 84 (2), Satz 2 EPÜ.

T 0182/14 - Postponement oral proceedings

Key points

• The Board had refused a request for postponement of the oral proceedings.
• According the Notice in OJ 2007 SE 3, p. 115, a request for postponement "should indicate why another representative cannot stand in for the one unable to attend". The patent attorney at issue had stated that the other attorneys in his firm were not mechanical engineers like he was. 
• The Board is not convinced. " Die Kammer merkt diesbezüglich an, dass in der Kanzlei, für die der verhinderte Vertreter tätig ist, laut Internetauftritt wenigstens sieben Patentanwälte der Fachrichtung Maschinenbau beschäftigt sind, zu deren Basiswissen Verbindungsarten gehören sollten." 
• I suppose this is an example of the Board examining facts of own motion under Article 114 EPC.

EPO T 0182/14 -  link

Entscheidungsgründe

1. Antrag auf Verlegung der mündlichen Verhandlung

1.1 Eine mündliche Verhandlung vor den Beschwerdekammern kann nach Artikel 15 (2) VOBK auf einen schriftlichen und begründeten Antrag hin nach dem Ermessen der Kammer ausnahmsweise verlegt werden, wobei der Antrag so früh wie möglich zu stellen ist.

Bei der Ausübung ihres Ermessens berücksichtigte die Kammer zudem die Mitteilung des Vizepräsidenten der Generaldirektion 3 des Europäischen Patentamts vom 16. Juli 2007 über mündliche Verhand­lungen vor den Beschwerdekammern des EPA (ABl. EPA 2007, Sonderausgabe Nr. 3, 115, nachstehend: "Mitteilung").

T 2076/13 - Remittal and own motion

Key points

• In this opposition appeal, both opponents withdrew their opposition. The Board finds the claimed to be sufficiently disclosed. The Board remits the case to the OD, because the EPO may continue the opposition of own motion and because the main purpose of appeal proceedings is to review decisions of departments of first instance.
• There is also a discussion of a parameter feature. " [The] skilled person would be able to identify without undue burden the temperature at which the surface tension and the contact angle are to be measured. For this reason alone, the Board cannot come to the same conclusion as the opposition division that the patent does not meet the requirement of sufficiency of disclosure ". The Board agrees with the rationale of decisions such as T 593/09 and T 608/07.

EPO T 2076/13 -  link

3.3 Regardless of the considerations set out above, the Board observes that deficiencies arising from the presence in a claim of an ambiguously defined parameter or a parameter that could be measured by different methods or under different conditions leading to different values do not necessarily result in a problem of insufficiency of disclosure.

T 0592/13 - Board introduces document

Key points

• In this examination appeal, the Board introduces D6 of own motion, two months before the oral proceedings. The Board finds the claims to be obvious in view of D6 and common general knowledge. D6 was cited earlier for a parallel application of the same applicant, with the same filing date and description. The Board refuses the (main) request for remittal of the case, because D6 must already have been known to the applicant. 
" It is thus clear, in the board's view, that the appellant, or at least its representative, was aware of the existence and pertinence of D6 with respect to the subject-matter of the present application long before the board issued its communication."

EPO T 0592/13 -  link

Reasons for the Decision

3. Main request

3.1 This procedural request is directed to setting aside the decision under appeal and to remitting the case to the examining division for further prosecution.

3.2 The appellant argued that the communication under Article 15(1) RPBA contained no comments on the merits of the decision under appeal, or on its submission in the statement setting out the grounds of appeal, but instead raised new objections based on newly cited document D6. The appellant further argued that it had received the above-mentioned communication on 15 March 2017, so that less than three weeks had been available to report the communication to the applicant, study the documents, formulate a response for the applicant and file written submissions one month in advance of the hearing. Therefore, a remittal would provide the appellant with first-instance examination based on newly cited document D6, and, if needed, appeal at second instance, in accordance with the principles of G 0009/91.

3.3 The board would first point out that the findings of G 0009/91 apply to opposition proceedings only. Rather, G 0010/93 has confirmed that, in an appeal from a decision of an examining division refusing a European patent application, the board of appeal has the power to examine whether the application meets requirements of the EPC that the examining division did not take into consideration. In the present case the board considered while studying the appeal that document D6 was much more relevant to the issue of inventive step than the other documents, in particular D1 and D2, used by the examining division in its Article 56 EPC objection which led to the refusal of the application.

Further, it is important to note that document D6 was cited during the prosecution of European patent application Nr. 07115471.0 filed by the same applicant, on the same date, and which comprised the same description and drawings as the present application. Also the representative throughout the prosecution of this application was the same as in the present case.

D6 had been cited as an "X" document in the search report for application 07115471, issued in the same month (April 2008) as the search report for the present application, and was the basis for an inventive-step objection. It is thus clear, in the board's view, that the appellant, or at least its representative, was aware of the existence and pertinence of D6 with respect to the subject-matter of the present application long before the board issued its communication.

Nor did the appellant request a postponement of the oral proceedings, which could have given it the time it says it needed to study the document. It also decided not to attend the oral proceedings on 11 May 2017 which would have given it a further opportunity to present its case. In addition, the level of technical complexity of both the present application and document D6 is such that seven weeks before oral proceedings seems a reasonable amount of time for a technical study of the case. This is corroborated by the fact that the appellant provided a thorough analysis of D6 with respect to the first and second auxiliary requests in response to the board's communication.

For these reasons, the board judges that a remittal to the examining division is not appropriate in the present case and decides not to allow the appellant's main request.

4. First auxiliary request

D6 discloses in column 6, lines 17 to 45 a method for enabling input on a handheld electronic device with a reduced keyboard (see Figure 1A) wherein, after a user has entered initial characters, i.e. a text object, on the display using prior-art techniques, the device displays candidate words matching the initial characters, i.e. proposed completions of the text object. As an example, D6 describes that if the user has entered the letters "PLE" in the display, a dictionary look-up routine may display the word "PLEASE", "PLEAD, and "PLEDGE" on a portion of the display (see Figure 4).

The differences between the subject-matter of claim 1 and the disclosure of D6 are thus that:

a) the prior-art technique for entering the initial letters is explicitly defined as being a disambiguation scheme of ambiguous input, outputting a list comprising a number of disambiguated interpretations, and

b) the device does not display a list of proposed completions when the last input of the user is at a location disposed elsewhere than at the terminal end of the displayed text object.

Features a) and b) are juxtaposed in the claim since the trigger for displaying a completion list defined in feature b) does not depend on the kind of prior-art technique used for entering the text object.

As to feature a), it is a common measure in the field of hand-held devices with reduced keyboards, such as the one shown in Figure 1A of D6, to use the so-called T9 disambiguation scheme illustrated in D4 (see the abstract). The skilled person would thus obviously consider using the T9 scheme as a technique for entering the text object.

[...] Therefore, the board holds that feature b) represents a mere alternative providing advantages and drawbacks mainly based on the user's preferences and thus with no inventive merit in itself.

For these reasons the board judges that the subject-matter of claim 1 does not involve an inventive step, having regard to the disclosure of D6 and common general knowledge, as exemplified by D4 (Article 56 EPC).

T 0648/12 - Personal experience of the Board

Key points

• In this examination appeal, the Board agrees with the applicant that the skilled person would  not combine D1 wih D2, to arrive at the claimed training device. However," From personal experience, however, the board is aware that Polar Electro Oy in the past marketed the portable training device S710. Document D6 contains archived screen shots from the manufacturer's website from February 2002 and earlier." The case is then remitted for further examination on the basis of D6.

EPO T 0648/12 - link

Reasons for the Decision

1. Inventive step starting from document D1 (Article 56 EPC 1973)

[...] The board thus concludes that the skilled person, starting from D1, would not be motivated to combine D1 with any other prior art document that is directed to that different purpose.

Document D2 is one of those documents. The board thus concurs with the appellant in that the skilled person, starting from D1, would not be motivated to combine D1 and D2.

2. New citation D6

From personal experience, however, the board is aware that Polar Electro Oy in the past marketed the portable training device S710. Document D6 contains archived screen shots from the manufacturer's website from February 2002 and earlier.

It appears from document D6 that the portable training device S710 was sold before the oldest priority date claimed for the present application (30 May 2002).

Furthermore, it appears from D6 that S710 could be programmed by a computer via an infrared or sonic link using "Polar Precision Performance Software".

Training programmes could be downloaded to S710 that were capable of guiding a user through an interval training involving heart rate target zones (with heart rate limit pairs and visible and audible alarms) as well as recovery intervals. Further, S710 could be used to determine distance and speed.

Hence it appears that the portable training device S710 of Polar was directed at the same purpose as the claimed invention, and in addition that most of the features of the independent claims of the present requests were present in that device.

S710 and document D6 relating to it thus seem to be highly relevant for the assessment of novelty and inventive step.

3. In view of this new citation, it appears to be appropriate to remit the case to the department of first instance (Article 111(1) EPC 1973, see also Case Law of the Boards of Appeal, 8th edition, IV.E.7.2.2).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

T 1848/12 - Should have presented earlier

Key points

• The Board notes, about Article 12(4) RPBA, that "could" have been presented earlier should be understood as "should have been presented" during the first instance proceedings.
• The Board also explains that Article 12(4) RPBA reflects that " appeal proceedings, which are largely determined by the factual and legal scope of the preceding proceedings, are not about bringing an entirely fresh case to the board. This means that an appellant is not at liberty to bring about the shifting of its case to the appeal proceedings as it pleases, and so compel the board either to give a first ruling on the critical issues or to remit the case to the opposition division."
• The Board raises an added subject-matter objection to an amendment in an Auxiliary Request that was not raised by the opponent, but noted by the OD. The patent proprietor protests, to no avail. The Board notes that " the board is required to review the impugned decision as a whole, i.e. including [the point about added subject-matter], and pursuant to Article 111(1) EPC may exercise the power of the opposition division. According to the established case law, the board has wide powers to consider all possible objections under the EPC against the first auxiliary request, since the amendments must be examined fully for compatibility with the EPC []." .

EPO T 1848/12 - link

1.2 Documents D17 to D28

1.2.1 Documents D17 to D28 were filed for the first time with appellant II's statement setting out the grounds of appeal.

1.2.2 The board considers that appeal proceedings, which are largely determined by the factual and legal scope of the preceding proceedings, are not about bringing an entirely fresh case to the board. This means that an appellant is not at liberty to bring about the shifting of its case to the appeal proceedings as it pleases, and so compel the board either to give a first ruling on the critical issues or to remit the case to the opposition division. Conceding such freedom to an appellant would run counter to orderly and efficient opposition-appeal proceedings. In effect, it would allow a kind of "forum shopping" which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be unacceptable for procedural economy generally (G 9/91, OJ EPO 1993, 408, Reasons 6; T 1705/07 of 10 June 2010, not published in OJ EPO, Reasons 8.4; T 1067/08 of 10 February 2011, not published in OJ EPO, Reasons 7.1 to 7.2).

T 0711/13 - Not rebutting in opposition

Key points

• " The respondent explicitly decided to not substantiate his opinion that claim 1 according to auxiliary request 7g did not meet the requirements of the EPC. in consequence, the board would have to investigate on its own the grounds for which the respondent argues that the subject-matter claimed in auxiliary request 7g did not meet the requirements of the EPC. The appeal procedure is a judicial procedure [], in contrast to the purely administrative character of the opposition procedure. Since the appeal procedure is less investigative, the board does not further investigate the unsubstantiated objections of the respondent." 
• The patent is maintained on the basis of the Auxiliary request 7g.

EPO T 0711/13 - link 

9. Auxiliary request 7g

9.1 Admissibility

[] The respondent [opponent] did not object to the admissibility of this request. In consequence, the board sees no reason to not admit this request into the proceedings.

9.2 Allowability

The respondent explicitly decided to not substantiate his opinion that claim 1 according to auxiliary request 7g did not meet the requirements of the EPC.

In consequence, the board would have to investigate on its own the grounds for which the respondent argues that the subject-matter claimed in auxiliary request 7g did not meet the requirements of the EPC.

The appeal procedure is a judicial procedure (G 7/91 published OJ 1993, 356, G 8/91 published OJ 1993, 346), in contrast to the purely administrative character of the opposition procedure. Since the appeal procedure is less investigative, the board does not further investigate the unsubstantiated objections of the respondent.

The question of whether a board of appeal can put a sole appellant in a worse position than it was in under the contested decision, or whether there should be prohibition of reformatio in peius was decided in Enlarged Board of Appeal decisions G 4/93 and G 9/92 published OJ 1994, 875). In point 7 of that decision, the Enlarged Board of Appeal considered the binding effect of the appellant's request and that "the EPC does not contain any provisions which stipu­la­te that a decision terminating appeal proceedings must not place an appellant in a worse position than it was in as a result of the contested decision". In consequence, the principle of reformatio in peius does not apply.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to maintain the patent as amended according to the following version:

- claims 1 to 8 filed as auxiliary request 7g with letter of 5 September 2016,

- description page 2 as filed during oral the proceedings and pages 3 to 14 of the patent specification,

- figures 1 to 22(b) of the patent specification.