T 0050/13 - Undefined Main Request

Key points

• The appeal is inadmissible because the Appellant formulated as its "Main request", that the decision under appeal be set aside and the case be remitted to the Opposition Division. The Appellant did not file a separate paper copy of the claim(s) to be considered as its main claim request together with its statement of grounds. The text of claim 1 as given in the statement of grounds was different from claim 1 as decided upon by the OD. 
• "Taking into account all the above aspects, the Board concludes that it is not possible to understand, with certainty, whether the Appellant's main claim request consists of the set of claims of [decided upon by the OD], as maintained by the Appellant in writing and during oral proceedings, or of the independent claim 1 [as given in the statement of grounds]. ... The Board thus concludes that as far as it relates to the Main Request (whatever it may be) of the Appellant, the statement of grounds does not make the appeal compliant with the requirements of Rule 99(2) EPC, since the statement neither permits to unambiguously establish the extent of the appeal (which claims are to be considered), nor, as a consequence, the reasons for which the grounds for revocation are supposed to be overcome by the claim(s) according such Main Request."

EPO T 0050/13 - link 

Summary of Facts and Submissions

I. The present appeal is from the decision of the Opposition Division to revoke the European patent no. 1 240 941, granted on a divisional European application.

II. The opposition had been filed on the grounds of inter alia Article 100(c) EPC. According to the opponent the claimed subject-matter exetended beyond the scope of both the divisional application as filed and the parent application.

III. The Opposition Division found in its decision that claims 1 to 6 according to the sole then pending request, filed by letter of 30 November 2010 (hereinafter referred to as claims of 30 November 2010), were not allowable under Articles 76(1) and 123(2) and Article 100(c) EPC.

Claim 1 of 30 November 2010 is the unamended claim 1 of the patent in suit as granted and reads as follows (emphasis added by the Board): [...]

T 2467/09 - No search

Key points

• The ED refused the application (relating essentially to web shop technology) as lacking inventive step based on the technology being notoriously known. No prior art search was carried out. The Board finds that the decision lacks a logical chain of reasoning and involves a substantial procedural violation. 
• The Board also states that, about no search having been carried out, that "if an applicant contests an assertion that something was known at the effective filing date, the examining division must normally back up that assertion with evidence and can only exceptionally confine itself to giving cogent reasons. The argument that certain knowledge is notorious is only a sufficiently cogent reason if it satisfies any reasonable addressee, i.e. if, at the time the argument is to be assessed by the applicant and, in case of an appeal, by a board of appeal, it cannot be reasonably disputed that that knowledge formed part of the common general knowledge of the skilled person at the effective filing date. Such knowledge will almost necessarily be limited to generic features, defined in such a way that technical details are not significant (cf. decisions T 1411/08 of 6 June 2011, reasons 4.2, and T 359/11 of 13 May 2015, reasons 3.11)."
  
  
  EPO  T 2467/09 - link

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

2. Before considering the appellant's substantive requests, the Board will comment on the decision of the Examining Division.

3. The Examining Division refused the application for lack of inventive step without making reference to documentary evidence. In fact, no prior art search was carried out in either the international phase or the European phase.

T 0107/14 - Comprising or consisting - Metal alloys

EPO T 107/14

For the decision, click here

Key points

• The present case concerns possible added matter by changing "comprising" into " consisting of" . The Opponent had proposed referring questions to the Enlarged Board.
• However, the claim is directed to an alloy and the application as filed mentioned that the balance was Ni. 
• The Board:  "claim 1 as originally filed stipulates also that Ni represents "the balance" of the composition. This wording clearly and unambiguously discloses that the rest of the composition consists of Ni, not allowing for the presence of further elements. In other words, claim 1 as originally filed did not relate to an open composition (of the type whose clarity is discussed in D14) but was already directed to a closed composition, i.e. an alloy which consists of the given elements." 
• More generally: "Whether a particular amendment extends beyond the content of the application as originally filed is neither a point of law nor a matter to be decided only on the basis of the amendment in isolation. Rather, it must be judged on the basis of the information clearly and unambiguously disclosed in the whole application as originally filed, i.e. on the merits of the specific case." . Hence, no questions are referred. 
• D14 is the article of Spiekermann (Mitt. 1993 - XP002152326) which describes still applicable EPO practice for claims directed to alloys. 

Summary of Facts and Submissions

I. By its decision posted on 9 December 2013 the opposition division rejected the opposition against European patent No. 1835041.

II. The appellant (opponent) lodged an appeal against that decision in the prescribed form and within the prescribed time limit.

III. Oral proceedings before the Board of Appeal were held on 22 September 2015.

IV. The appellant requested that the decision under appeal be set aside and that the patent be revoked. As an auxiliary request it requested that the following questions be referred to the Enlarged Board of Appeal:

1. Is the term "consisting of" considered directly and unambiguously derivable from the solely used term "comprising", such that no new subject-matter is introduced by an amendment of the term "comprising" to the term "consisting of"?

T 1886/10 - Clarity and Art 123(2)

T 1886/10
For the decision, click here. 04.11.2015

Key points

• If  claim 1 is combined with unclear dependent claim 4 in an opposition procedure, this can not be objected on the ground of that lack of clarity (G 3/14). Neither does this combination extent beyond the content of the application as filed.
• Board: "As already said above, claim 1 of the main request incorporates claims 1, 2, 4 and 10 as filed and, despite any apparent clarity problem, complies with Article 123(2) EPC. Thus, no objection as regards added matter can arise in this context."

Reasons for the Decision

1. Amendments

T 0249/12 - Combining ranges

Key points

• The Board decides that a disclosed range of 1 - 50 wt.% can be combined with the preferred range of 10-20 wt.% to provide basis for a claimed range of 10-50 wt.%.

EPO T 249/12 - link (29.01.2016)

Reasons for the Decision

3. Art. 123(2) EPC

3.1 Claim 1 corresponds to claim 1 of the application as filed, in which the expression "a.2) a second polyamide (PA-2) ..." was amended to "a.2) 10-50 mass %, relative to the total mass of the thermoplastic polyamide composition, of a second polyamide (PA-2) ...".

3.1.1 In that respect, the passage on page 9, lines 7-10 of the application as filed, which was relied upon by the appellant, reads as follows:

"In a further preferred embodiment of the invention the second polyamide is present in an amount of 1-50 mass %, preferably 2.5-40 mass %, more preferably 5-30 mass %, and still more preferably 10-20 mass %, relative to the total mass of the thermoplastic polyamide composition."

3.1.2 It was not disputed that said passage refers to polyamide (PA-2) according to feature a.2 of operative claim 1. As derivable from the passage of the application as filed cited above, the range of 10-50 mass % now being specified in operative claim 1 amounts to defining a range by using the upper limit of the less preferred broader range (50 mass %) and the lower limit of the most preferred narrower range (10 mass%). It is concurred with the findings of T 2/81 that the end-points of the new range now defined being both specifically mentioned in the application as filed, the range defined using the lower limit(s) and the upper limit(s) of those ranges would have been "unequivocally and immediately apparent to the skilled person" (T 2/81; section 3 of the reasons) i.e. the range now being specified in claim 1 is directly and unambiguously disclosed in the application as filed.

3.1.3 It was neither shown nor argued by the respondent that the range of 10-50 mass % now being defined for polyamide (PA-2) in operative claim 1 is in any way special as compared to the range defined in claim 1 as originally filed, which was implicitly limited by the fact that the thermoplastic polyamide composition (a)

- consists of a blend of at least two polyamides comprising (PA-1) and (PA-2);

- comprises at least 50 mass %, relative to the total mass of the thermoplastic polyamide composition, of (PA-1).

Therefore, there is no evidence on file that the subject-matter now being defined is related to a different invention as compared to the application as filed. The amendment made therefore merely amounts to defining a sub-range by deleting a part of the initial broader range i.e. it is a limitation of the range originally disclosed.

Under those circumstances, although the amendment made amounts to combining the upper limit and the lower limit disclosed in two different ranges originally disclosed in a list of four possible ranges (see section 3.1.1 above), there is no justification for deviating from the general conclusion drawn in T 2/81, which dealt according to the respondent with the combination of only two ranges. That conclusion is in line with accepted case law of the Boards of Appeal see e.g. T 522/96 (section 2.1 of the reasons).

3.2 The respondent considered that the criteria for the assessment of Art. 123(2) EPC had developed since T 2/81 and that the "gold standard" criteria now to be considered was whether or not the amendment made was "directly and unambiguously derivable" from the application as filed, which was allegedly not the case here.

However, it is derivable from section 3 of T 2/81 that the conclusion according to which the amendment made was allowable was arrived at by considering that:

(a) the new range was "unequivocally and immediately apparent to the person skilled in the art"; and

(b) the restriction made would not merit novelty as "selection" so that it does not represent any new subject-matter within the meaning of Art. 123(2) EPC.

In the Board's view, above criterion (a) is equivalent to the "gold standard" mentioned by the respondent i.e. it has to be assessed whether the subject-matter now being defined is directly and unambiguously derivable from the application as filed. That that requirement is satisfied in the present case is shown in above section 3.1.2.

Also, above criterion (b) is here satisfied (see section 3.1.3).

For those reasons, the respondent's arguments did not convince.

3.3 Under those circumstances, the subject-matter now being defined in operative claim 1 does not extend beyond the content of the application as filed and satisfies the requirements of Art. 123(2) EPC.

T 0915/10 - Soybean

Key points

• A claim directed to a soybean plant obtainable by crossing a plant obtained from a specific deposited soybean seed and another plant, is not excepted from patentability. 
• Inventive step of the embodiment wherein the soybean plant is heterozygous, is based on an analogy with chemical intermediates:  " In view of the fact that the heterozygous plants carry the haplotype responsible for improved yield potential, they at least make a structural and functional contribution to the subsequent (inventive) homozygous plants, i.e. to the solution of the objective technical problem (cf. decision T 65/82, OJ EPO 1983, 327, concerning chemical intermediates, see Headnotes). The reasons for recognition of inventive step for the homozygous plants therefore apply mutatis mutandis to heterozygous plants."

EPO T 0915/10 - [C] - link

VIII. The claims of the final main request read:

"1. A soybean plant, a seed, progeny plant of any generation or part thereof, the genome thereof containing SEQ ID NO:9, wherein the plant is obtainable by crossing a plant obtained from soybean seed deposited under ATCC accession number PTA-6708 and another plant.

2. The soybean plant part of claim 1, which is defined as a cell, pollen, ovule, flower, shoot, root, or leaf.

3. A method of producing a soybean plant tolerant to glyphosate herbicide as defined in claim 1, which method comprises introducing SEQ ID NO:9 into the genome of said plant by transformation of plant cells with heterologous DNA.

4. A DNA molecule comprising SEQ ID NO:9."

T 0795/12 - Closest prior art because not inventive

Key points

• " 7. In the present case, in deciding which of documents D56 or D81 should represent the closest prior art for assessment of inventive step of the claimed subject-matter, the board recognises that both documents are good candidates. However, the board has satisfied itself that the claimed subject-matter was not inventive when starting from the disclosure of document D81 (see point 18. , below). This document may therefore be taken to represent the closest prior art." 

EPO T 0795/12 - link

Reasons for the Decision

1. The appeal of the patent proprietors is admissible.

2. During the oral proceedings before the board, the parties were heard on the requirements of Article 54 EPC of the subject-matter of claim 1 of the main request and the board expressed its opinion on this matter. However, in view of its conclusions on inventive step (Article 56 EPC) in respect of this subject-matter, there is no need to to provide detailed written reasons for this opinion.

Claim construction

3. The board considers that the skilled person would understand that the medicament to be prepared according to the claimed use (see Section VI.) may comprise rituximab (RTX) alone or may comprise both RTX and methotrexate (MTX) and that the claim is for uses involving the deliberate treatment of rheumatoid arthritis (RA) with both of RTX and MTX. Since the claim includes no indication of timing or sequence of the administration of either active component, the RTX containing medicament to be manufactured according to the claimed use may be administered with MTX separately or together, at the same time or at a different time. The RTX and MTX may be administered in either order.

Inventive step - Article 56 EPC

The closest prior art

4. There was a difference in opinion between the parties as to which document represented the closest prior art for the claimed invention. The appellants chose document D56, whereas the respondents selected document D81, as did the opposition division in the decision under appeal.