T 2193/17 - Steam ironing device with non-adjustable temperature

 Key points

• From the present Board decision, I learned how my own steam ironing device works. Well, perhaps not quite, but that may be because the decision in this opposition case only deals with Art.100(c) / Article 123(2). 
• First, the background, in the patent application: “It is a well known fact that an ironing temperature, i.e. the temperature to which an item that is being ironed is heated during the ironing process, is to be chosen in dependence of the type of fabric of the item in order to obtain optimal ironing results. For example, in case the item is made of cotton, the ironing temperature may be relatively high, e.g. around 175°C, whereas when the item to be ironed is made of polyamide or elastane, the ironing temperature should be much lower, e.g. about 95°C, so as to avoid scorching of the item.”
• To cite a news article of 1 November 2011, in machine translation: “The peculiarity of the [new] PerfectCare steam generator is that it is no longer fitted with a thermostat and so you can switch from a delicate fabric to a thick cotton without having to adjust anything. ... Optimal Temp technology is an innovation from Philips. It allows you to iron any type of fabric without having to worry about the temperature. ...  A lot was said about this machine when it was released, in particular that it was "intelligent", able to recognize the type of fabric she was ironing and adapt accordingly. When I spoke about it with one of his competitors, he told me that he had completely dissected the plant to understand how it works and that if it was able to work on any type of tissue it is because it was set to a single temperature that all fabrics can withstand.”
• The patent application “The ironing device according to the present invention is based on research that, quite surprisingly and contrary to popular belief, has revealed that satisfactory ironing results for diverse fabric types may be achieved at universal temperature and steam settings. To this end, the ironing device according to the present invention combines a relatively low, manually non-adjustable soleplate temperature with a relatively high minimum steam rate”.
• Claim 1 as granted specifies essentially that the steam ironing device has a soleplate with non-adjustable temperature and a steam generator with a controller to control steam settings to "a non-user-adjustable [steam] temperature in the range of 100-150°C at a time-averaged steam rate of at least 50 grams/minute".
• The Board, on the gist of the Article 123(2) issue: “contrary to the opinion of the [patentee], it is evident that the sentence [in the application as filed stating that] '... the steam settings, e.g. the steam rate and steam temperature, may also be non-user adjustable' [] is simply not a direct and unambiguous disclosure of just the steam temperature being non-user-adjustable.” (emphasis added) (with extensive further analysis in the complete decision of the Board).
• The Board: “A skilled person reading the application would indeed notice that user-adjustability of steam temperature is never disclosed. However, this does not result in their necessarily regarding the steam temperature as therefore being non-user-adjustable. The non-user-adjustability is not a direct and unambiguous consequence of the lack of a disclosure of user-adjustability. Rather, neither is disclosed, even if the scope of the disclosure covers both possibilities. Consequently, the requisite direct and unambiguous disclosure of non-user-adjustable steam temperature is not disclosed in the application as filed.”
• It seems that three German "Abzweigung" utility models were filed during the opposition proceedings. 
• The utility models were filed during the opposition appeal stage, and after an ex parte injunction had been issued against an (alleged) infringer in Germany and a few months before the intervention by said (alleged) infringer; the intervention was subsequently withdrawn.
• The intervention, made during the opposition appeal, was withdrawn. Nevertheless, the former intervener is indicated on the first page of the decision as Party as of right. I'm not sure if this is correct.

T 2193/17 - link after jump (not the decision text); as well as paragraphs from the PCT application explaining the invention:

J 0007/20 - Rule 142(1)(c) and heavy snow

 Key points

• This is a sad case. The petitioner for review was not able to attend the oral proceedings before the Board because all flights were cancelled due to a snowstorm. "Oral proceedings [before the Enlarged Board] were scheduled to start at 10:30 hours on [Monday] 4 February 2019. The representative did not appear. In the course of the day, beginning at 10:22 hours, employees of his association informed the Enlarged Board, by telefax and telephone, that he [i.e. the representative] would not attend due to cancelled flights; there was however no request for postponement of the hearing. 
  The Chair opened the oral proceedings at 12:30 hours and closed them at 12:48 hours, after having announced the unanimous rejection of the petition as clearly inadmissible (for want of a Rule 106 EPC objection)." [see here; R7/18]
  
• " Later that day [04.02.2019], the representative informed the Enlarged Board by telephone that he had tried to contact Mr. [C] by telephone the whole day, and had also sent him an email, unaware of Mr. [C]'s recent retirement from the duty as the Enlarged Board's registrar [note: on 31.01.2019]. The representative's office then forwarded to the Enlarged Board the email, originally sent at 7:53 hours, which indicated his non-attendance at oral proceedings due to cancelled flights, and his wish to have the hearing rescheduled." 
• A more detailed review of the facts can be found here. There is certainly a practice point to be learnt from the case. 
• Now turning to the present appeal: " After the Enlarged Board had dispatched its decision rejecting the petition for review in writing, the proprietor directed itself to the Legal Division and "request[ed] interruption of the proceedings" with effect from the day prior to the hearing before the Enlarged Board" 
• The Legal Division refused the request. The requester appeals.
• The Legal Board: "If this appeal were successful, the decision of the Enlarged Board would have no legal effect, as it would have been handed down while the proceedings were interrupted (cf. T 1389/18). " 
• As a comment, T1389/18 decided so for a decision of an opposition division, but indeed the same principle applies to a decision of the Enlarged Board on petitions for review, as held in the present case, and by implication also to decisions of the Boards of Appeal.
• The requester, formerly petitioner for review, is the patentee. The Legal Board, on the status of the opponents in the present appeal: "thus, the appeal proceedings may adversely affect the legal position of the opponents. They are therefore considered parties to these proceedings (cf. J 12/19, reasons 2.2.3 and 2.3).' 
• The question is whether the undisputed facts qualify as legal incapacity of the representative in the sense of Rule 142(1)(c) EPC. 
• " Under the established case law of the Boards of Appeal, legal incapacity of the representative relates to the mental state and rationality of the representative. The mental state from which such incapacity can be derived has to be such that the representative is so totally or nearly totally unable to take rational decisions that all its professional duties, and not just an isolated case, are affected. To assess the representative's mental state, a reliable medical opinion is indispensable "
• The Legal Board confirms that the list of events in Rule 142(1)(c) is exhaustive.
• "the Legal Board agrees with opponent 1 that absurd cases could follow in case unfortunate, unforeseen events would generally constitute legal incapacity and trigger the radical mechanism of Rule 142(1)(c) EPC. The example of a representative temporarily caught in a traffic jam is not unthinkable." 
• "the Legal Board can but firmly note that the mental state of a representative and the total or near total inability to take rational decisions are something completely different to the external, practical and one-off kind of events - inter alia heavy snow, cancelled flights and failed communication - adduced by the proprietor as hindering the representative in the current case. These events do not constitute "legal incapacity of the representative"."  
• Finally, "there is no lack of procedural provisions in the EPC which would prompt application of Article 125 EPC, as suggested by the proprietor." 

T 2608/17 - Abbreviated list does not work

 Key points

•  The application as filed contains the sentence: “In embodiments, the edge 40 may be a distance, d, between 0, 0.05, 0.1, 0.15, 0.2 and 0.3, 0.35, 0.4mm below the shaving plane A, while still reducing the amount of discomfort that may be caused to a user of the razor cartridge through skin bulge following the last blade 64.”
• Does this provide basis for the claimed range of " between 0.2mm and 0.4mm below the shaving plane A"? 
• " The respondent [patentee] argued that paragraph [0013] of the application as published, clearly disclosed fifteen equally preferred ranges, presented in a concise, abbreviated form. According to the respondent, the skilled person would directly and unambiguously derive the ranges from all the possible combinations of lower and upper limits given in the second sentence of paragraph [0013], in particular in view of the use of the phrase "between...and...". The skilled person would not understand the sentence as disclosing no particular combinations at all, as this would render the sentence meaningless" 
  
• "The Board, however, follows the arguments of the appellants [opponents] that the formulation of the sentence is ambiguous and no unequivocal correlation between any particular values is given, so that the combination of the values 0.2 mm and 0.4 mm to create a range is an arbitrary combination which was not directly and unambiguously disclosed." 
• " Even if the argument of the respondent [patentee] were to be followed, that the phrase "between...and.." indicates that a disclosure of various ranges was intended, the application as originally filed contains no pointer to any specific "pairs" of numbers to create particular ranges. This does not mean that the skilled person finds the sentence of paragraph [0013] completely meaningless, as argued by the respondent, but rather that the sentence does not unambiguously disclose any particular ranges." 
• The Board: " Even if it were to be considered that the skilled person generally reads with "a mind willing to understand", this cannot override the requirements of the 'gold standard' (G2 /10) that the claimed subject-matter be directly and unambiguously derivable from the application documents as originally filed. This is, however, not the case as discussed " 

T 2608/17 - link after jump

T 2378/18 - Decision according to the state of the file

 Key points

•  The applicant requests a decision according to the state of the file, the applicant gets a decision according to the state of the file. Even though that sometimes seems the view of the EPO, the Board sees a substantial procedural violation in this case- correct in my view.
• " In response to the summons to oral proceedings, by letter dated 23 March 2018 the applicant filed amended claims 1 to 4 according to a new main request and new auxiliary requests 1 and 2, which replaced the requests then on file. "  
• " On 16 April 2018, the first examiner and the applicant's representative held a consultation by telephone." 
• " By letter dated 19 April 2018, the applicant withdrew its request for oral proceedings and requested a "Written Decision on the basis of the prosecution history as it currently stands"." 
• " By a further communication dated 23 April 2018, a copy of the result of the telephone consultation with the date "16.04.2018" was sent to the applicant. The examiner had expressed the opinion that the subject-matter of claim 1 of the main request and of auxiliary requests 1 and 2, filed by letter dated 23 March 2018, did not meet the requirements of Article 123(2) EPC and that the subject-matter of claim 1 of the main request did not involve an inventive step under Article 56 EPC in view of document D7."
• The refusal decision consisted of Form 2061 merely referring to the "result of the phone consultation" of 23.04.2018.
• The Board: " communications referred to in a decision "according to the state of the file" on EPO Form 2061 must contain a fully reasoned exposition of the examining division's objections to the current application text and refutation of any rebuttal by the applicant (see for instance T 583/04" 
• " the use of standard Form 2061 is only appropriate where the examining division has fully expressed and reasoned its objections to the current requests in one or more preceding communications, taking into account all the arguments put forward by the applicant and doing so in a manner which does not leave it to the board and the appellant to speculate as to which of the reasons given in preceding communications might be essential to the decision to refuse the application" 
•  " the examining division issued the communication of 23 April 2018 with the copy of the result of the telephone consultation without inviting the applicant to file its observations, and on 26 April 2018, i.e. only three days later, it issued the contested decision according to the state of the file. It follows that the decision under appeal in the case in hand is based on grounds on which the applicant had no opportunity to comment. The applicant's right to be heard enshrined in Article 113(1) EPC has therefore been infringed. " 
• The decision under appeal is set aside, the case is remitted, and the appeal fee is reimbursed.
• As a comment, the Examining Division could have held the oral proceedings. Even if the applicant would have stayed away, the Examining Division could likely have refused the application after consideration of the amended claims ( G4/92 has no bearing on ex parte proceedings).

T 2378/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182378eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. Even though the appellant has not challenged the examining division's decision on the grounds of a substantial procedural violation, the board is entitled to examine whether or not any such violation occurred during the examination proceedings (see for instance decision T 405/12, point 3 of the Reasons).

T 0420/19 - Art.53(b) and (not) Rule 28(2)

 Key points

• In this opposition appeal, claim 6 is directed to “ A barley plant, or part thereof, wherein the barley plant carries a mutation in the gene encoding methionine-S-methyltransferase(MMT) that causes a total loss of MMT function".” The opponent is a public interest group.
• The opponent submitted that “the claimed barley plants fell under the exception to patentability defined in Article 53(b) EPC because they were the direct product of an essentially biological process.” The filing date is in 2009.
• The Board notes that in G 3/19, the EBA further decided that "the new interpretation of Article 53(b) EPC given in this opinion has no retroactive effect on European patents containing such claims which were granted before 1 July 2017, when Rule 28(2) EPC entered into force, or on pending European patent applications seeking protection for such claims which were filed before that date".
• The Board, after some further remarks on this legal issue, notes that: “Since the patent was granted before 1 July 2017 (see section III above), the subject-matter of claim 6 (and dependent claims 7 to 9 and 16) is not excepted from patentability in view of Article 53(b) EPC as interpreted by the decisions of the EBA G 2/12 and G 3/12.”
•  As a comment, the Board does not comment on Rule 28(2) as the legal basis for the revocation. The Administrative Council decided that Rule 28(2) EPC “shall apply to European patent applications filed on or after this date [01.07.2017], as well as to European patent applications and European patents pending at that time”, Article 3 of the Decision  of the Administrative Council 29.06.2017, OJ 2017 A56.
•  The Enlarged Board in G 3/19 has not said expressly that Rule 28(2) is invalid, neither that said Article 3 of the AC Decision is invalid. However, from the present decision, it seems clear that at least said Article 3 is vacated. The present decision does not discuss Rule 28(2) as such. 
•  See also here.
•    Further on sufficiency: “The opposition division considered that the only methods given in the patent to obtain the claimed mutants was mutagenesis and subsequent screening, thus relying on identification of a chance event. In view of the number of plants that would have to be screened to arrive at the claimed invention, it was undue burden to identify further mutants in addition to those deposited pursuant to Rule 31(1)(a) EPC, been identified by this method”
•  “The board considers that the mere fact that mutagenesis is a random process and that large numbers of mutant barley plants might have to be screened does not, in the present case, represent an undue burden the skilled person. The board therefore does not agree with the opposition division that the fact that mutagenesis, due to reliance on mutations at "random" locations in the genome, necessarily represents an undue burden for the skilled person. …  In the present case, the invention is reproducible without undue burden because there is evidence that the chance event can be identified frequently enough to guarantee success.”
• As to inventive step: “ In the absence of a readily available library of insertional mutants of barley it would have been necessary to use a screening procedure for detecting mutant barley grains lacking MMT activity. No such assay is disclosed in either document D1 or D2. The need to develop such an assay would have dissuaded the skilled person from arbitrarily choosing barley when attempting to solve the technical problem.”

T 0659/19 - Unambiguously deduced vs. at least hinted at

 Key points

•  The Board, on inventive step: “However, an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect cannot be unambiguously deduced by the skilled person from the original application in the light of the closest prior art or if it is not at least hinted at in that application” [referring to CLBA]
• As a comment, I would like to recall how different the two alternatives are:
•  " an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect cannot be unambiguously deduced by the skilled person from the original application in the light of the closest prior art" 
• vs. " an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect ... is not at least hinted at in [the application as filed]".
• 
  

T 0318/14 - The details of double patenting

 Key points

•  This is the follow up to G 4/19 about Double Patenting.
• The subject-matter of the claims is the same as that of a granted European patent.
• The Technical Board of Appeal, still in the appeal against a refusal decision: “ in its decision G 4/19 the Enlarged Board of Appeal did not address the requirements relating to the "same applicant" and the "same application"* since this issue was not considered to be covered by the referral, see G 4/19, points 7 and 16).” *: probably "same invention" was intended.
• The TBA: “Moreover, no request for limitation or revocation (Article 105a EPC) is pending in respect of [the already granted] European patent”
• This is quite interesting.
• “The patentee of European patent No. 2251021 was Nestec S.A. The same company filed European patent application No. 10718590.2 under consideration in the present appeal. Nestec S.A. merged with Société des Produits Nestlé S.A. with effect from 27 May 2019. As a result of the merger, Nestec S.A. ceased to exist and was removed from the companies register. By way of universal succession, Société des Produits Nestlé S.A. became the proprietor of European patent No. 2251021 and of the contested European patent application No. 10718590.2. Thus, the requirement of "same applicant" is fulfilled.”
• In the EPO register, the applicant is as of date shown as Nestle SA and the patentee as Nestec S.A.