T 2313/12 - No video conference at the Board

Key points

• The Board refuses a request for video conference oral proceedings in this examination appeal. That is as such not very surprising. However, the Board adds that " Furthermore, the applicant has not provided any reason why the board should, exceptionally, organise the oral proceedings by video-conference", citing T 2068/14. 
• In that decision, the Board had held that "the onus is on the appellant to persuade the board that conventional oral proceedings are not appropriate to properly present the appellant's case and that the board should exercise its discretion to, exceptionally, explore the possibility of holding oral proceedings by video conference." 
• It seems that oral proceedings in examination appeals could therefore be allowable in exceptional cases. 

EPO T 2313/12 - link

Reasons for the Decision

1. The appeal is admissible.

Request for a video-conference

2. With the letter dated 27 December 2017, the appellant requested that any oral proceedings be held by video-conference.

The board refused this request for the following reasons:

The holding of oral proceedings by video-conference is only provided for in the case of ex parte proceedings before an examining division, see "Updated information from the European Patent Office dated 1 May 2012 concerning interviews and oral proceedings to be held as a video-conference" (OJ EPO 2012, 354) and the Guidelines for Examination, November 2017 edition, E-III, 11.1.1.

The holding of oral proceedings by video-conference is not currently possible for the appeal procedure because there are no corresponding provisions for the boards of appeal, and the Rules of Procedure of the Boards of Appeal of the European Patent Office (RPBA, OJ EPO 2007, 536) are silent on this subject (see also T 1266/07 and T 663/10). Furthermore, Article 116(3) EPC provides that oral proceedings before the examining division are not public, whereas under Article 116(4) EPC oral proceedings before the boards of appeal are public. However, there is currently no general framework for making video-conferencing compatible with the requirement that oral proceedings before the boards of appeal must be public (see T 1266/07, Reasons 1.2, and the Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, III.C.4.6).

Furthermore, the applicant has not provided any reason why the board should, exceptionally, organise the oral proceedings by video-conference (see T 2068/14, Reasons 1.2).

T 2306/13 - Cancelling dependent claims

Key points

• In this opposition appeal, the patentee files auxiliary requests before the oral proceedings based on original dependent claims of the PCT application which were deleted upon entry into the EP regional phase. The Board does not admit the requests, primarily because the added features are non-technical and do not restore inventive step. 
• The Board also comments on the fact that the original claims were deleted upon EP entyr. " Die Kammer muss daher davon ausgehen, dass die Anmelderin den entsprechenden Gegenstand nicht verfolgen wollte. Dies stimmt damit überein, dass die ursprünglichen Ansprüche 19, 20 und 21 mit dem Eintritt in die regionale Phase von der Anmelderin gestrichen worden waren.
• Es wäre mit der gebotenen Verfahrensökonomie nicht vereinbar, wenn in einem letztinstanzlichen Beschwerdeverfahren Gegenstände behandelt würden, die während des gesamten erstinstanzlichen Prüfungsverfahrens nicht beansprucht wurden und darüber hinaus auf den ersten Blick keine Aussicht auf Erfolg haben." 

EPO T 2306/13 - link

5. Hilfsanträge 2 und 3

5.1 Zulassung

Die Anspruchssätze beider Hilfsanträge 2 und 3 sind auf Verfahren zum Bereitstellen eines einer Sensorfeldbelegung zugeordneten Ausgangssignals gerichtet. Dabei entspricht Anspruch 1 des Hilfsantrags 2 den ursprünglichen Ansprüchen 15, 18, 19 und 20. Anspruch 1 des Hilfsantrags 3 enthält zusätzlich noch die Merkmale des ursprünglichen Anspruchs 21.

Beide Hilfsanträge 2 und 3 wurden nicht mit der Beschwerdebegründung, sondern erst nach der Ladung zur mündlichen Verhandlung vor der Kammer eingereicht.

Nach Artikel 13(1) VOBK steht es im Ermessen der Kammer, Änderungen des Vorbringens einer Beschwerdeführerin nach Einreichung der Beschwerdebegründung zuzulassen.

Bei der Ausübung dieses Ermessens ist insbesondere die Verfahrensökonomie zu berücksichtigen. Nach der Rechtsprechung der Beschwerdekammern ist dabei in Bezug auf die Zulassung geänderter Anträge ein wichtiges zu berücksichtigendes Kriterium ihre eindeutige Gewährbarkeit (siehe Rechtsprechung der Beschwerdekammern, 8. Auflage 2016, IV.E.4.4.1 und IV.E.4.4.2).

Im vorliegenden Fall handelt es sich bei den Merkmalen der Ansprüche 1 der Hilfsanträge 2 und 3, die inhaltlich über die Merkmale des Anspruchs 1 des Hilfsantrags 1 hinausgehen, lediglich um nicht-technische Spielregeln, die in Form von Programmierschritten definiert sind. Diese sind daher bereits auf den ersten Blick nicht geeignet, den hinsichtlich Anspruch 1 des Hilfsantrags 1 in Bezug auf Artikel 56 EPÜ gemachten Einwand auszuräumen.

T 2028/11 - Missing evidence

Key points

• The examining division based its decision of lack of inventive step on D1 in combination with the teaching of "Windows XP". As evidence of what was known from Windows XP, the examining division relied on D5 and a number of screen shots handed to the applicant during oral proceedings. The screen shots were said to show [...].
• In the grounds of appeal, the appellant contested the relevance of the screen shots, which had been generated after the priority date. Regrettably, however, the Board cannot assess the relevance of the screen shots because they are not present in the file and the Board has not been able to obtain a copy of them. Since the missing screen shots are an essential part of the reasoning on lack of inventive step, the Board has doubts whether the decision is sufficiently reasoned. Nevertheless, the Board can decide on inventive step based on D1 alone [...]

EPO T 2028/11 - link

Reasons for the Decision

1. Background

1.1 The invention concerns the display of events, such as missed calls, received text messages, or calendar events, on a mobile phone. The events are represented by icons positioned on a timeline. Figures 4A, 4B, 5, 6, and 7A to 7D show examples of timelines. In figure 7A, the timeline has the shape of a snowman.

1.2 Mobile phones have small displays. As a consequence, the timeline might not fit within the display area. The invention mitigates this problem by displaying a single icon for events that occur simultaneously. The user may get summary information about the event by placing the cursor over the icon, and, by clicking on the icon, the user gets more detailed information. In the application, 'clicking' means a selection using the key pad of the mobile phone (see paragraphs [0035] and [0036] of the published application).

2. D5 and the missing screen shots

2.1 The examining division based its decision of lack of inventive step on D1 in combination with the teaching of "Windows XP". As evidence of what was known from Windows XP, the examining division relied on D5 and a number of screen shots handed to the applicant during oral proceedings. The screen shots were said to show the two-step procedure of displaying summary information when the user placed the cursor over the icon and more detailed information when the user clicked on the icon.

In the grounds of appeal, the appellant contested the relevance of the screen shots, which had been generated after the priority date. Regrettably, however, the Board cannot assess the relevance of the screen shots because they are not present in the file and the Board has not been able to obtain a copy of them. Since the missing screen shots are an essential part of the reasoning on lack of inventive step, the Board has doubts whether the decision is sufficiently reasoned. Nevertheless, the Board can decide on inventive step based on D1 alone especially since the issues raised by the Board had already been raised by the examining division in the communication of 15 October 2008.

T 0626/14 - Thickness feature insufficient disclosed

Key points

• The Board finds the feature of a thickness of 1.0 - 2.0 mm to be insufficiently disclosed, because no measurement method is given. The claimed article is a fibrous absorbent body, hence the same kind of article as in T 2096/12 wherein a feature of " less than 3 mm"  was deemed insufficient disclosed.
• The BoardL: " When wishing to establish the thickness of such fibrous composites, it is generally accepted in the art that a pressure is applied to the composite in order to be able to eliminate variability in measurement caused by the ill-defined 'surface' of the composite. Being easily compressible, the pressure used in any test method for measuring thickness of such fibrous composites is also of utmost importance, because the thickness varies inversely with the pressure applied." 
• " In the patent in suit, an indication of what this pressure should be, in order to enable a reliable and repeatable thickness measurement to be made, is lacking such that the skilled person would not know when a product according to the invention has been arrived at, the defined parameter lacking a sufficiently defined technical meaning within the technical field concerned. " 
• " Since the Board cites T464/05 above, it is perhaps important at this juncture to mention briefly that two recent decisions (T1811/13 and T647/15, []) have sought to question the way in which Article 83 EPC objections were reasoned in decisions such as T464/05 []. Yet, T1811/13 and T647/15 themselves concentrate only on an individual aspect in e.g. T464/05, namely 'the area covered by the claim' without addressing the actual findings in that decision regarding the issue of Article 83 EPC. 
• As a comment, clearly Board 3.2.06 is not going to change its mind about A83 and the thickness of fibrous absorbent articles (i.e. hygiene products). 

EPO T 0626/14 -  link

VIII. Claim 1 of the main request reads as follows:

"An absorbent body (52, AB) of a body fluid absorbing article, wherein the body comprises an air laid absorbent fiber having a dispersed and thin layer of mixed absorbent fiber and super absorbent polymer,
the air laid absorbent fiber being obtained by multiple stages comprising multiple dispersing chutes (62) and pressing rolls (64) spaced out in a transfer direction which: [...] thin the air laid absorbent fiber, by pressurization, by using said pressing rolls (64) to provide for thinning of the dispersed layer,
wherein: [...]  the absorbent body has a density of not less than 150 kg/m**(3) and a thickness of 1.0 to 2.0 mm by performing the thinning by the pressurization after the accumulating and the forming, and wherein the absorbent body comprises a plurality of holes (53) having a depth of not less than 30% with respect to a thickness from a front surface side of the absorbent body."

T 0384/15 - Intervention and straw man opponent

Key points

• The opponent was a straw man, intervention was later filed by two legal entities (within the same company). The patentee protested that the opponent (straw man) was already acting for the same company as now intervening. The Board decides that the interventions are admissible.
• " The board agrees with the proprietor that an intervener must be a different party to the opponent in order to be a "third party" within the meaning of Article 105(1) EPC. However, the board considers that there is no question that the interveners are "third parties", i.e. different legal entities, with respect to the opponent Santarelli SA whether or not one of Bose GmbH and Bose Limited is the principal instructing Santarelli SA." 
• "In the board's view, the same situation exists in the present case [as in T 305/08, in which case the opponent-appellant OI was alleged to be the patent department (although had an entirely different name) acting for interveners OII and OIII] . The respondent has produced evidence suggesting a relationship between the appellant and the interveners, but no proof, as admitted by the respondent, that Santarelli SA was acting directly on behalf of either Bose GmbH or Bose Limited. Further, the representatives for the appellant and the interveners expressly denied that this was the case."

EPO T 0384/15 - link

Reasons for the Decision

1. Admissibility of the opposition and the interventions (cf. respondent's requests 1.1 and 1.3)

1.1 The respondent argued that there was credible evidence that the opponent Santarelli SA was acting on behalf of one or more divisions of Bose Corporation, but had concealed this relationship. Further, all divisions of Bose, including the assumed infringers and interveners Bose GmbH and Bose Limited, were legally inextricably linked to the Bose Corporation. A requirement for an admissible intervention is that it be filed by a third party. By having chosen to protect its anonymity by filing the opposition in the name of a straw man, the true opponent has availed itself of the possibility of also intervening in the opposition proceedings because it is impossible, at least at first glance, for the EPO or any other party to ascertain whether the interveners are third parties or not. This constituted an abuse of process allowing circumvention of the law as laid out in Article 105(1) EPC. This anonymity also allowed Bose to pick and choose who they might subsequently wish to present as the true opponent, depending on circumstances, which also resulted in an abuse of process. As a consequence, the opposition filed in the name of Santarelli SA must be deemed inadmissible ex tunc. In turn, this meant that there were no pending opposition proceedings when the notices of intervention were filed by Bose GmbH and Bose Limited respectively. It followed that the interventions were also inadmissible.

T 1064/15 - Diameter feature and A83

Key points

• In this opposition appeal, Claim 1 is directed to a barbed suture comprising a plurality of barbs projecting from an elongated body having a first end and a second end and a diameter (SD1...SD4) of a circular or non-circular cross section in the range of from about 0.001 mm to about 1 mm. The elongated body diameter must have a certain ratio with a needle diameter.
• The Board considers the claim to be insufficiently disclosed, because the parameter ' diameter' is not defined for non-circular cross-section. 
• The Patentee submits that claim 1 is at least sufficiently disclosed for the embodiment with a circular cross-section.
• The Board: "it would be insufficient and disproportionate if the sole disclosed possibility of carrying out the invention with circular cross-section elongated bodies were enough to satisfy the requirements of sufficiency of disclosure. Such an approach cannot have been intended by the legislator, because in the Board's view this would go against the general principle that the protection obtained with the patent has to be commensurate with the disclosed teaching. As explained above, when it comes to non-circular cross-sections, this is not the case for the patent in suit." 
• As a comment, the Board's remark about " the patent has to be commensurate with the disclosed teaching" is also part of the requirement of "support"  of Article 84, but this decision considers it also under Article 83. 

Reasons for the Decision

1. The appeal is admissible.

2. The invention

The invention relates to a barbed suture-needle combination useful for connecting body tissue in various surgical contexts, and more particularly to optimisation of the wound closure strength (paragraph [0010]), for which purpose the ratio of the surgical needle diameter to the diameter of the elongated body of barbed suture has to fall within a predetermined range.

3. Main request - sufficiency of disclosure

3.1 In order for this ground for opposition to prejudice the maintenance of the patent in suit it must be established that the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The person skilled in the art must be able to carry out the invention on the basis of the patent as a whole (T 14/83) without undue burden, possibly using his common general knowledge.

T 0888/14 - Combining dependent claims

Key points

• In this opposition appeal, claim 1 of auxiliary request 1 (filed after the Summons) results from the combination of claim 1 as granted with dependent claim 2 as granted. The Board has to decide on admissibility. 
• " During the oral proceedings the board noted that none of the features incorporated in claim 1 of each of these requests and based on dependent claims as granted had been addressed during the appeal proceedings, and that the letter accompanying the requests contained no substantive submission on the technical significance of these features, in particular on the possible relevance of the same for the issue of inventive step. The board considered that in these circumstances the admissibility of each of the requests depended on the question of whether the corresponding amendments would prima facie overcome the objection of lack of inventive step of the subject-matter of claim 1 of the main request. " 
• The Board then decides that they amended claims are not prima facie allowable and does not admit the requests. Hence, even combining claim 1 with claim 2 is not safe. 

EPO T 0888/14 - link

3.1 Auxiliary requests 1 to 5 - Admissibility

Claim 1 of auxiliary requests 1 to 5 results from the combination of claim 1 as granted with dependent claim 2 as granted, with dependent claim 3 as granted, with dependent claim 4 as granted, with dependent claims 3 and 4 as granted, and with dependent claims 2 to 4 as granted, respectively.

During the oral proceedings the board noted that none of the features incorporated in claim 1 of each of these requests and based on dependent claims as granted had been addressed during the appeal proceedings, and that the letter accompanying the requests contained no substantive submission on the technical significance of these features, in particular on the possible relevance of the same for the issue of inventive step. The board considered that in these circumstances the admissibility of each of the requests depended on the question of whether the corresponding amendments would prima facie overcome the objection of lack of inventive step of the subject-matter of claim 1 of the main request. As noted by the board during the oral proceedings, one of the relevant criteria for admitting amendments after arrangement of oral proceedings under Article 13 RPBA is that it must be immediately apparent to the board, with little investigative effort on its part, that the amendments made successfully address the issue raised without giving rise to new ones (see "Case Law of the Boards of Appeal" EPO, 8th edition 2016, section IV.E.4.2.5, and decisions cited therein).