T 2126/08 – Less Likely

In this examination appeal case Board 3.3.04 had to deal with a request for correction.

Claim 1 of the application as filed read:

1. An isolated variant hepatitis B surface antigen comprising an amino acid sequence wherein mutations from hepatitis B wild type ayw2 strain appear as follows: at position 103 isoleucine is present instead of methionine, at position 118 lysine is present instead of threonine, at position 120 glutamine is present instead of proline, at position 170 serine is present instead of leucine, and at position 213 serine is present instead of leucine. (my emphasis)

In the request refused by the Examining Division (ED), “170” had been amended to read “175”.

The ED found this claim to violate A 123(2), and the Board confirmed its analysis:

[1] The statement of the grounds of appeal is identical to the submissions of 17 March 2005 before the ED. Accordingly, the statement of grounds includes a section entitled “Correction of obvious errors (R 139)”. The board therefore considers that the amendment to claim 1 under consideration entails a request for correction of an obvious error in the present appeal procedure also.

[2] R 139 (former R 88 EPC 1973) provides in its second sentence that a correction of errors in documents filed with the EPO which concerns the description, claims or drawings can only be allowed if the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as correction. In its opinion G 3/89 [5], the Enlarged Board of Appeal (EBA) considered that, for a correction under R 88, second sentence EPC 1973, that concerns the disclosure of a European application or a European patent to be allowed, the respective parts of the disclosure for which a correction is requested must, either on the date of filing or following an amendment under A 123 EPC 1973 (unchanged as to substance in EPC 2000), contain such an obvious error that a skilled person would be in no doubt that the information concerned could not be meant to read as such. Furthermore, the skilled person must be in a position objectively and unambiguously to recognise the incorrect information using common general knowledge. If, on the other hand, it is doubtful whether that information is incorrectly defined, then a correction is ruled out (points [2] and [3] of the reasons).

[3] The opinion G 3/89 of the EBA, supra, held furthermore that any correction under R 88 EPC 1973 (corresponding to R 139) is of a strict declaratory nature and thus has not to infringe the prohibition of extension of subject-matter under A 123(2) (see Headnote 2). Accordingly the decision of the ED in the present case also had the effect of refusing the correction under R 139 as referred to in the statement of the grounds for appeal.

[4] The amendment/correction under consideration is the change of the wording “at position 170 serine is present instead of leucine” in claim 1 to the wording “at position 175 serine is present instead of leucine” (and a corresponding change on page 8, in line 17, of the application as filed; emphasis added by the board).

[5] In its decision, the ED acknowledged that it was evident to a skilled person that an error existed. However, the amendment/correction as now contained in claim 1 was not the only possible correction as a person skilled in the art would have to decide between the correction of “170 L (TTA) –> S (TCA)” to “175 L (TTA) –> S (TCA)” or to “170 F (TTC) –> S (TCA)”, i.e. between a correction of the position of the mutation or the correction of the amino acid at position 170 and of the corresponding codon. It found that it was therefore not immediately evident what the correction should be and refused the correction pursuant to A 139.

[6] As can be taken from opinion G 3/89 of the EBA, supra, the conditions an error has to fulfil to benefit from a correction are that it must be obvious that an error has occurred and it must be immediately evident what the correction should be.

[7] The board considers that it may have been obvious to the person skilled in the art that an error occurred when consulting the sequence of ayw2 which was known from GenBank Accession No. X02496 and wherein the amino acid residue 170 is phenylalanine (F), encoded by the codon TTC. The first condition may therefore be fulfilled.

[8] However, the board considers that the second condition is not fulfilled because, as demonstrated by the ED in its decision (see point [5], above), more than one possible correction becomes immediately evident to the skilled person when considering the error.

[9] The appellant has submitted in essence two lines of argument in favour of the position that the proposed amendment/correction was the only correction which was immediately evident.

[9.1] A first line of argument was that the second possible correction/amendment referred to in point [5], above, wherein both the amino acid residue and the codon encoding had to be altered, was far less likely to occur in nature as a single mutation underlying the correction/amendment under consideration as it required the substitution of two consecutive bases rather than the substitution of a single base. The other four amino acid changes between LBN and the known ayw2 subtype referred to in claim 1 were also the result of a single base substitution. This second possible correction would therefore not result from a mind willing to understand as it was not “technically sensible” (see decision T 190/99).

[9.2] A second line of argument was that there were only three leucine (L) residues encoded by a TTA codon between positions 32 and 226 of the amino acid sequence of the prior art isolate ayw2, i.e. at positions 175, 213 and 216. Since the five amino acid mutations in the new LBN strain were listed in a numerical order (see page 8, lines 14-20 of the aplication as filed), the correct residue number for the leucine (L) encoded by TTA between residue 120 and residue 213 could therefore clearly only be 175. That the reference to Leucine (L) was intentional by the drafter of the application was clear to a skilled person seeing that claim 1 as originally filed also referred, as did the passage on page 8 of the application as filed, to Leucine.

[9.3] The board cannot accept either of these lines of argument.

Indeed, it is first noted that the appellant has not denied that the second possible correction/amendment referred to by the ED would not be considered by the skilled person, but has rather argued that it would be based on a mutation which would be “less likely to occur in nature”. Furthermore and secondly, the appellant has not argued that when reading the application as filed, the skilled person would have received the technical information that the five amino acid differences were due to point mutations. The board therefore concludes that, because a double mutation would not be precluded for a skilled person addressing the error, the same skilled person would take both possible corrections/amendments into consideration without thereby frustrating the principles established in decision T 190/99 that when considering a claim the skilled person should rule out interpretations which are illogical or which do not make technical sense and a patent should be construed by a mind willing to understand, not a mind desirous of misunderstanding.

[10] In view of the above considerations, the board considers that the correction of the error in claim 1 as originally filed was not immediately evident to a person skilled in the art. Thus, the correction proposed by the appellant, and set out in the claims, does not meet the requirements of R 139.

[11] The decision of the ED is therefore correct in the point under appeal. […]

The appeal is dismissed.

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T 1659/09 – Not Selected

In this examination appeal Claim 1 of the main request before the Board read:

An electroluminescent device comprising:

• a first charge-carrier injecting layer for injecting positive charge carriers and a second charge-carrier injecting layer for injecting negative charge carriers, at least one of the charge-carrier injecting layers being patterned so as to comprise spaced-apart charge-injecting regions;
• an organic light-emitting layer located between the first and second charge-carrier injecting layers; and
• an unpatterned conductive polymer layer located between the organic light-emitting layer and the patterned charge-carrier injecting layer, the resistance of the conductive polymer layer being sufficiently low to allow charge carriers to flow through it from the charge-injecting regions to generate light in the organic light-emitting layer and the sheet resistance of the conductive polymer layer being greater than 10⁶ Ohms/square so as to resist lateral spreading of charge carriers beyond the charge-injecting regions.

Claim 1 of the first auxiliary request had an additional disclaimer:

…excluding electroluminescent devices wherein the unpatterned conductive polymer layer comprises polyaniline emeraldine salt.

The Board found these requests unallowable:

Main request

Novelty, inventive step

[2.1] Since document D3 is pre-published prior art in accordance with A 54(2) EPC 1973, as opposed to document D2 which is considered as comprised in the state of the art in accordance with A 54(3) EPC and Article 54(4) EPC 1973, it is considered expedient to consider document D3 first.

Novelty

[2.2] Document D3 relates to an organic electroluminescence device, which can be easily fabricated and used as a large area light emitting device for various displays. The device comprises a light emitting layer and a charge transport layer disposed between a pair of electrodes, the charge transport layer comprising a conducting polymer […].

In particular, document D3 discloses, in the terms of claim 1, an electroluminescent device comprising:

a first charge-carrier injecting layer for injecting positive charge carriers and a second charge-carrier injecting layer for injecting negative charge carriers (2, 4);

an organic light-emitting layer (3) located between the first and second charge-carrier injecting layers; and

an unpatterned conductive polymer layer (5) located between the organic light-emitting layer and charge-carrier injecting layer (2).

Moreover, according to D3, when the light emitted is to be taken out from the conducting polymer side of the EL device, the electrical conductivity of the conductive polymer is preferably 0.1 S/cm or less […].

The thickness of the conductive polymer layer is for instance 100 Å. In fact, as can be seen from the specific examples in table 1, the best results are obtained with a conductive polymer layer of polyaniline with a thickness of 100 Å (example 11) […].

The sheet resistance of a conductive polymer layer having a thickness t of 100 Å and an electrical conductivity σ of 0.1 S/cm or less, using

Rs = 1/ σ t

is 10⁷ Ohm/square or more.

Accordingly, the conductive polymer layer according to example 11 has a “sheet resistance [...] being greater than 10⁶ Ohms/square” as per claim 1.

The appellant argued that D3 provided no direct and unambiguous disclosure of a conductive polymer layer having a sheet resistance of greater than 10⁶ Ohms/square. It was clear that there was no explicit disclosure of this sheet resistance in D3. Following the EPO Guidelines for Examination Part G, Chapter VI, section 6, “an objection of lack of novelty of this kind should be raised by the examiner only where there can be no reasonable doubt as to the practical effect of the prior teaching”. However, there was reasonable doubt as to the practical effect of the disclosure of D3. In order to provide a novelty-destroying disclosure the skilled person would have needed to have combined one particular value of the layer thickness with a particular value for electrical conductivity of the layer from separate passages of the disclosure and in a further step combine these parameters using the above equation to arrive at a value for the sheet resistance.

For an implicit disclosure to be novelty destroying the skilled person had to inevitably arrive at a result falling within the terms of the claim. Even if the skilled person had considered combining the disclosed range of conductivity with a value for layer thickness in order to arrive at a value for sheet resistance the skilled person would not have inevitably arrived at a value of greater than 10⁶ Ohms/square. For example, instead of taking the value of 100 Å as proposed by the Board the skilled person could equally have taken a value of 1 μm, leading to a sheet resistance of 10⁵ Ohms/square for a conductivity of 0.1 S/cm, or 10 μm, leading to a sheet resistance of 10⁴ Ohms/square, outside of the claimed range. Reference was also made to decisions T 793/93 and T 204/00 as cited in the Case Law, 6^th edition, 2010, page 560.

The board, however, cannot agree with the above arguments. According to document D3, the electrical conductivity of the conductive polymer layer is 0.1 S/cm or less […].

In particular, it is disclosed in D3 that

“it is known that the conducting polymer of the general formula (2) has an increased electrical conductivity when doped with impurities such as sulfuric acid, iodine, iron (II) chloride, etc. It is also known that, in the state in which the electrical conductivity is increased as described above, absorbance in a visible wavelength region is also increased and optical transmittance is greatly reduced to lose transparency. Therefore, the doping is not preferably carried out when a light emitted is to be taken out from the conducting polymer side of the EL device. Since the absorption spectrum correlates with the electrical conductivity, the electrical conductivity is preferably 0.1 S/cm or less”.

Conductivity values outside the range of 0.1 S/cm or less are in fact not disclosed in D3 and only this range is claimed in D3.

As to the thickness of the conductive polymer layer, document D3 discloses, with respect to the embodiment of figure 2 of relevance in the present case,

“for example, 50 angstroms to 10 micrometers and preferably 100 angstroms to 1 micrometer to increase a current density so as to increase a light emitting efficiency” […].

Moreover, as pointed out above, a number of specific examples are provided […] in which example 11 with a layer thickness of 100 Å is indicated to provide the best results in terms of the uniformity of the emitted light.

Accordingly, a conductive polymer layer having a thickness of 100 Å and a conductivity of 0.1 S/cm or less is an embodiment of document D3.

It is noted that, contrary to what the appellant’s arguments would appear to suggest, in D3 no selection from two or more lists of a certain length has to be made in order to arrive at the specific combination of thickness and conductivity, leading to the sheet resistance value claimed (i.e. a selection according to the “two-lists principle”). In fact, for a thickness of e.g. 100 Å as discussed above, the entire range of disclosed conductivities of 0.1 S/cm or less results in a sheet resistance falling within the claimed range. Accordingly, for the conductivity there is no selection from a list. Even for the thickness of the layer, it is doubtful whether a selection from a list in the sense of the above two-lists principle is present, as in D3 the specific thickness of 100 Å is highlighted as producing a device with the best light-emitting properties (table 1, caption).

Neither can it be held that in a further step the skilled person would have to “combine” these parameters using an equation to arrive at a value for the sheet resistance. What is required in the present case in order to arrive at the claimed value for the sheet resistance, is the mere conversion, using a standard equation, of the physical quantities (electrical conductivity and thickness) used in D3 to define the physical properties of the conductive polymer layer into the physical quantity (sheet resistance) used in claim 1 of the present application.

Furthermore, it is noted that both the “practical effect of the prior teaching”, as mentioned in the Guidelines for Examination in the EPO, and in the decisions T 793/93 and T 204/00 referred to by the appellant, relate to the case where it cannot be determined with certainty that the outcome of a prior art teaching, for instance a manufacturing process, leads to e.g. a particular parameter value falling within the terms of the claim, as not all conditions are specified. This has, however, no bearing on the present case, as no uncertainty exists as to what might or might not be the result of carrying out the prior art teaching. In fact, the thicknesses and conductivities of the conductive polymer layer are unambiguously specified in D3, and with that the resulting sheet resistance of the layer.

Moreover, the appellant’s argument that other thickness disclosed in D3, in combination with a conductivity of 0.1 S/cm, would provide sheet resistances falling outside the claimed range is of no relevance, as for lack of novelty it is not a prerequisite that all embodiments of the prior art fall within the claimed subject-matter.

In document D3, however, neither of the first and second charge-carrier injecting layers (2, 4) is “patterned so as to comprise spaced-apart charge-injecting regions” as defined in claim 1.

Accordingly, the subject-matter of claim 1 of the main request is new over document D3 (A 54(1) EPC 1973).

Inventive step

[2.3] As discussed above, the subject-matter of claim 1 differs from document D3 in that at least one of the charge-carrier injecting layers is patterned so as to comprise spaced-apart charge-injecting regions.

The effect of hereof is that the electroluminescent device can produce a patterned image.

In view of the above, the objective problem to be solved relative to D3 is to make the organic electroluminescent device of D3 suitable for displaying a patterned image.

However, as also acknowledged by the appellant, patterning is common in organic electroluminescent devices. Moreover, it would be obvious to a person skilled in the art working in the field at issue of electroluminescent devices, to pattern at least one of the charge-carrier injecting layers so that it comprises spaced-apart charge-injecting regions providing the desired patterned image.

The appellant argued that document D3 did not provide a patterned charge-carrier injecting layer and was not concerned with resisting lateral spreading of charge carriers beyond charge-carrier injecting regions and blurring of the display image. Thus, the skilled person would not have been motivated to consider the sheet resistance of the polymer layer, and would therefore not be taught to combine the parameters of conductivity and layer thickness in the manner suggested by the board. In fact, document D3 was concerned with the uniformity of the display [...]. Accordingly, it was not a suitable starting point for an assessment of inventive step.

It is however noted that also with a patterned charge-carrier injecting layer, applying the teaching of document D3 regarding the conductive polymer layer, i.e. providing a layer of 100 Å with a conductivity of 0.1 S/cm or less, results in a conductive polymer layer with a sheet resistance within the claimed range and which, consequentially, adequately resists lateral spreading of charge carriers beyond charge-carrier injecting regions and prevents blurring of the display image. Moreover, it is noted that the uniformity of the light emission of the organic electroluminescence display device, the light emitting efficiency and luminance addressed in D3 are equally important properties for a display device providing a patterned image. Since in D3 the conductive polymer layer, in particular its conductivity and thickness, is selected so as to optimise these properties, it would be obvious to the skilled person to use the same conductive polymer layer for a display device providing a patterned image.

The subject-matter of claim 1 according to the main request, thus, lacks an inventive step in the sense of A 56 EPC 1973.

Accordingly, the appellant’s main request is not allowable.

First auxiliary request

[3] Claim 1 according to the first auxiliary request includes with respect to claim 1 of the main request the following addition:

“excluding electroluminescent devices wherein the unpatterned conductive polymer layer comprises polyaniline emeraldine salt”.

The above addition to claim 1 is an undisclosed disclaimer intended to confer novelty over D2, which is considered as comprised in the state of the art under A 54(3) EPC and A 54(4) EPC 1973.

However, according to G 1/03 [order 2.3]

“a disclaimer which is or becomes relevant for the assessment of inventive step [...] adds subject-matter contrary to A 123(2)”.

Since in the present case the subject-matter of claim 1, disregarding the disclaimer, lacks an inventive step for the reasons given above for the main request, the disclaimer becomes relevant for the assessment of inventive step of the subject-matter of claim 1 according to the first auxiliary request and thus, in accordance with G 1/03 above, adds subject-matter contrary to A 123(2).

Accordingly, the appellant’s first auxiliary request is not allowable.

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T 535/10 – Do Not Cross Tracks

Claim 1 of the patent as granted read:

A mirror (1) comprising a first transparent glass plate (4) at least partly provided on the rear side with a reflecting coating (2) as well as at least one integrated electrical means (6), wherein

• the first glass plate (4) comprises transparent and/or half-reflecting portions (8),
• the first glass plate (4) is bonded to a second glass plate (10) with the aid of a transparent adhesive layer (12) in the form of a laminated glass pane, and
• electrical means (6) are mounted on an electrically conducting coating (14) of the second glass plate (10) in portions opposite the transparent and/or half-reflecting portions (8) of the first glass plate (4).

In what follows the Board examines whether this claim involves an inventive step:

*** Translation of the German original ***

[5.1] D1 […] discloses a mirror comprising a first transparent glass plate (2) provided on the rear side with a reflecting coating as well as integrated electrical means (7-10), wherein the first glass pate (2) is bonded to a second glass plate (1) with the aid of a transparent adhesive layer (5,6) in the form of a laminated glass pane and the electrical means (7-12) are mounted on an electrically conducting coating of the second glass plate (1).

The mirror according to claim 1 differs from the one known from D1 in that

• the first glass plate comprises transparent and/or half-reflecting portions,
• the adhesive layer bonding the two glass plates is transparent,
• the electrical means are mounted in portions opposite the transparent and/or half-reflecting portions of the first glass plate

The [patent proprietor] has submitted that in D1 the coating was at the same time the electrical means and that, consequently, there was no electrical means within the meaning of claim 1 on the coating. However, the electrical means comprises not only the coating itself but also collectors that are distinct from the coating, such that even on the coating there are collectors and electrical means, respectively.

[5.2] Starting from D1 as closest prior art the problem underlying the invention can be considered to be the design of a mirror suitable for use in a damp room (Feuchtraumnutzung) that can possess various integrated electric functions […].

[5.3] The [opponent] has referred to D11, D12, or D13 for solving this problem.

D11 […] discloses a rear-view mirror wherein a monitor (6) in the form of an LCD display is arranged behind a reflector (Spiegelscheibe) (4) that is half-silvered in this zone.

D12 […] discloses a a rear-view mirror wherein a camera (14), in particular a CCD-camera, that is arranged behind a reflector (4) that is half-silvered in this zone […].

D13 […] discloses an interior rear-view mirror for a vehicle comprising half-silvered zones in which symbols can be made apparent by illumination by means of illuminating means (Leuchtmittel) […]. The illuminating means can be LEDs (72-78) that are mounted in a housing that is glued onto the back of the mirror opposite the half-silvered zones […].

[5.4] First of all the Board notes that the skilled person has no reason to combine these teachings, which all concern rear-view mirrors for vehicles, with the teaching of D1 concerning mirrors that are mainly used in damp rooms […].

Moreover, as is well-known, the electrical devices that are disclosed in D11 to D13 have a depth such that they cannot be integrated between two glass plates; therefore, a skilled person would not consider the incorporation of the electrical means known from these documents between the two glass plates of a mirror according to D1.

[5.5] The [opponent] has expressed the opinion that the skilled person knew from D16 […] that electrical means, and in particular illuminating means that implement LEDs, may have such small overall size (Baugröße) that they may very well be incorporated between two glass plates. However, the overall size of LEDs is not comparable to that of an LCD display or a CCD-camera. Thus a combination of D1 and D11 or D12 can be ruled out, even taking account of D16, because of the required overall size.

[5.6] Moreover, D13 does not disclose a second glass plate that is bonded to a first glass plate in the form of a laminated glass pane and that comprises an electrically conductive coating on which the electrical means are mounted.

Even if the skilled person understood from D16 that LED illuminating means may be made much more flat than what is shown in D13, this does not alter the fact that D13 teaches to provide the illuminating means behind the mirror plate and only opposite the symbols that are to be illuminated. However, if the skilled person proceeded according to D16 when providing an LED module between the two glass plates of D1, then he would provide the LEDs together with the conductive layer on the front glass rail (vordere Glasbahn) 2, as disclosed in D16 […]. The teaching of D13 would not lead him to mount the electrical means directly on the second rear glass plate of D1, which already comprises an electrically heatable layer. Even if the skilled person tried to combine D1 and D13, the resulting combination would not lead in an obvious way to the claimed subject-matter, even taking account of D16.

[5.7] The [opponent] also explained that a combination of D13 with D16 would make the claimed subject-matter obvious.

First of all, it has to be noted that the claimed subject-matter is a mirror for use in a damp room. D13 does not disclose such a mirror. Thus the Board is of the opinion that D13 is not a suitable starting point for the claimed invention.

It is true that D16 […] discloses that the first glass substrate, which carries the LEDs, may be protected by a second substrate, which might also be made of glass. The document does not disclose how the second substrate is deposited onto the first. Neither document suggests connecting the substrates by means of a transparent adhesive layer in the form of a laminated glass pane.

Moreover, [the Board] does not understand why the skilled person wishing to replace the illuminating means known from D13 by an LED module as known from D16, would provide a carrier substrate for the LEDs that would be greater than the housing for the illuminating means shown in D13.

In this context, the [opponent] has explained that the skilled person would proceed in this way in order to make the mirror suitable for use in a damp room. However, this argument cannot be endorsed. There is no reason to make an interior rear-view mirror suitable for use in a damp room. This would lead to rebuilding said mirror for a completely different use. Such a way of proceeding cannot be obvious.

Although the skilled person is completely free in the choice of a starting point, he is later bound by this choice. If a skilled person choses a specific interior rear-view mirror for a car as starting point, he can pursue its development, but the normal outcome of this development will in the end still be a rear-view mirror for a car and not a mirror suitable for use in a damp room (see T 570/91 [4.4]). A conscious choice, i.e. a choice made in full awareness of the advantages and drawbacks of the different species (Gattungen), not only determines the subject-matter serving as starting point but also the framework of the development, i.e. a development within this species. In the course of the development a change from the consciously chosen species to another, which was known before but which had not been chosen, is unlikely and, as a rule, not obvious (T 817/94).

The [opponent] has also explained that the claimed subject-matter was obvious over a combination of D16 with D13.

However, as already explained above, a document belonging to another species (here: an LED module) normally cannot be considered as a realistic starting point for creating a mirror (T 870/96).

[5.8] Moreover, [the opponent] based an attack on a combination of D5 and D8.

D5 […] discloses a mirror comprising a transparent glass plate (12) partly provided on the rear side with a reflecting coating (14) as well as at least one integrated electrical means (30), wherein the glass plate (12) comprises transparent portions  and the electrical means (switch and lamp) are mounted on an electrically conducting coating (30) on the back of the first glass plate in the transparent portions.

These means are fixed onto the glass plate with through-holes (22, 24) and protrude from the glass plate.

D8 […] discloses a surface display (Flächendisplay) for illuminating background surfaces. This document does not disclose that the transparent conductor plate (Leiterplatte) (12) should be a mirror, nor that it is a glass plate. The housing (10) is filled with sealing compound (Vergussmasse) made of transparent materials. It is the conductor plate (12) that carries the electrical means. There is no second glass plate.

Neither document shows two glass plates that are bonded in the form of a laminated glass pane or that the electrical means are mounted on an electrically conducting coating of the second glass plate in portions opposite the transparent and/or half-reflecting portions of the first glass plate.

Thus the combination of both documents cannot have these features either and cannot, therefore, lead to the claimed subject-matter in an obvious way.

[5.9] As none of the attacks submitted [by the opponent] lead to the subject-matter of claim 1 in an obvious way, [the Board found] the opponent’s assertion that the subject-matter of claim 1 did not involve an inventive step unpersuasive.

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T 724/08 – Hard To Find – So What?

In this case the Board inter alia discussed the admissibility of documents filed together with the statements of ground of appeal.

*** Translation of the German original ***

[3.1] The main purpose of inter partes appeal proceedings is to offer the losing party the opportunity to contest the decision of the Opposition Division (OD) that adversely affects it and to have the correctness of this decision reviewed in proceedings that are completely separate from and independent of the first instance proceedings (see e.g. T 34/90, G 9/91 and G 10/91 [18]). As the nature of appeal proceedings is that of proceedings before an administrative court (G 7/91 and G 8/91) the decision of the Board of appeal shall in principle be based on the disputed matter (Streitstoff) of the first instance. As far as new submissions of a party in appeal proceedings are concerned, this principle means that the admission of such submissions is not ruled out but depends on the fulfilment of certain requirements (see e.g. T 356/08 [2.1.1]; T 1685/07 [6.4]; Brigitte Günzel “The treatment of late submissions in proceedings before the boards of appeal of the EPO”, OJ EPO, Special edition 2/2007, 30). An opponent whose opposition has not been successful in the first instance may file new prior art documents during the appeal proceedings, but it has no entitlement to these submissions being admitted into the appeal proceedings. Rather, the admission of new submissions depends on whether certain requirements have been fulfilled and is within the discretion of the Board.

[3.2] These principles are expressed in Articles 12(4) and 13 RPBA. As the [opponent] has filed documents D10/10a and D11/11a together with its statement of grounds of appeal, Article 12(4) is the relevant provision in the present case.

[3.3] Pursuant to Article 12(4) RPBA, without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under Article 12(1) RPBA shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. Accordingly, in application of Article 12(4) RPBA, the Board is entitled, in the present case, not to admit into the proceedings documents D10/10a and D11/11a, which the [opponent] has cited for the first time in the statement of grounds of appeal, if this evidence could have been filed in the course of the first instance proceedings.

[3.4] In its statement of grounds of appeal the [opponent] has for the first time based its objection of lack of inventive step of the claims of the patent as maintained by the OD inter alia on documents D10/10a and D11/11a. The claims of the patent as maintained correspond to the second auxiliary request filed during the OPs before the OD. The amendment with respect to the impugned patent as granted consists in the combination of claims 1 and 3 as granted to claim 1 as amended and the corresponding renumbering of the claims as granted. Thus the Board is of the opinion that the patent as maintained in amended form by the OD does not contain any amendments that raise new aspects with respect to the impugned patent as granted. It is, therefore, not clear to the Board to which extent the submission of documents D10/10a and D11/11a could be a reaction of the [opponent] to this second auxiliary request. Rather, the [opponent] has made the objection of lack of novelty already when filing its opposition, and, therefore, these documents could have been filed in the course of the first instance proceedings or even – as argued by the [patent proprietor] – within the time limit for filing an opposition.

It is not relevant in this context whether the [opponent] has indeed received these Japanese patents and the corresponding “Patent Abstracts of Japan”, respectively, at a later time or whether these documents were indeed hard to find, because this cannot [change the situation] to the detriment of procedural economy and the principle of fairness with respect to the other party. Just as a patent proprietor is required to file amended claims during the first instance opposition proceedings, an opponent has to submit objections to claims as granted during the first instance. If it does submit such objections only when filing the statement of grounds of appeal, as in the present case, then it takes the risk of the Board making use of its discretion pursuant to Article 12(4) RPBA not to admit these submissions into the appeal proceedings.

When exercising this discretion, the Board can make the admission of a submission of a prior art document into the appeal proceedings dependent on whether this prior art document is prima facie relevant. However, the Board does not have to do so; otherwise an opponent could always file a (highly) relevant prior art document together with the statement of grounds of appeal without further ado and rely on its admission into the appeal proceedings, because of its relevance.

In the present case the Board left aside the question of the relevance of documents D10/10a and D11/11a, which had been discussed by the parties, because, for reasons of procedural economy and also [of fairness] with respect to [the patent proprietor], it did not consider it to be justified to admit these documents - which have been found accidentally and which had not been specifically (gezielt) searched at an earlier stage of the proceedings - into the appeal proceedings, regardless of their relevance.

[3.5] For the above reasons documents D10/10a and D11/11a have not been admitted into the proceedings, in application of Article 12(4) RPBA.

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T 2373/11 – All Too Literal

This is an appeal of an applicant whose application had been refused by the Examining Division (ED).

The applicant explained that he had been deprived of oral proceedings (OPs).

*** Translation of the German original ***

Violation of the right to OPs

[2.1] According to the established case law of the Boards of appeal, in examination proceedings the ED has to grant a request for OPs pursuant to A 116 on behalf of an applicant before it can issue a decision that adversely affects the latter, such as a decision to refuse [its application]. In view of the wording of A 116 the ED has no margin of discretion at all. This obligation that is derived from the fundamental procedural principle of the right to be heard has also found an expression in A 112a(2)(d) in connection with R 104(a), in the context of substantial procedural violations.

[2.2] In its response dated August 20, 2009, the [applicant] had filed a request for a “hearing” (“Anhörung”) in case the ED intended to refuse the present application […]. According to the impugned decision the ED was, however, of the opinion that a request for a hearing could not be considered to be a request for OPs pursuant to A 116 and that [the applicant] was not legally entitled to an oral hearing under the EPC […].

[2.3] In this context, however, the impugned decision does not indicate anywhere how the term “hearing” would have to be concretely interpreted, i.e. what the ED understood the request for a hearing to actually mean. In particular, it is not clear from the decision whether the request for a hearing was considered to be a request for an informal personal or telephone interview, which the ED, as a rule, is not obliged to grant (see the Guidelines of April 2010, C-VI, 6.2; C-VII 2.1 as of June 2012).

[2.4] According to the relevant case law, a request for a “hearing” can on the one hand be understood to be equivalent to a request for “OPs” within the meaning of A 116(1) (cf. T 417/00 [2.3]; T 1829/10 [2.4]) and, on the other hand, can be a request for OPs or an informal interview (cf. T 917/93 [3]). Therefore, the Board can accept that it was not unambiguously clear to the ED, when it was faced with a request for a “hearing” - considered literally and at first sight - that this was beyond doubt a request for OPs.

[2.5] It is true indeed that the applicant would have been well-advised to make its request in an unambiguous way (e.g. by expressly using the expression “OPs” and/or [a reference to] A 116). However, as the relevant procedural right is so fundamental, the ED would have had to ask the applicant for a clarification if there was the slightest doubt that what had been requested was indeed OPs or not (cf. T 19/87 [5]; T 668/89 [3]; T 417/00 [2.3] T 1829/10 [2.4]). In the present case this was not done.

[2.6] Rather, the communication of the ED dated July 13, 2010, made the applicant believe that summons to OPs were to be expected as the next procedural step, unless the claims were substantially amended in view of the objections that had been raised […]. 

NB: The communication contained the following statement: “As the objections of the ED have already been explained in detail and discussed during the international phase, the next proedural step will be the summons to OPs unless the claims are substantially amended in view of the objections that have been raised.”

Thus the applicant was right in assuming that its request for OPs had been understood as a request for OPs and that there was no further need for clarification as to the request for a hearing. Thus the applicant was surprised by the fact that there were no summons to OPs before the final decision on the case was issued, all the more as the amendments to the claims the applicant had filed in response to the above communication only comprised “linguistic adjustments” and did not correspond to substantial amendments […].

Under these circumstances the ED should have summoned OPs or at least clarified [the situation] before taking the decision to refuse [the application]. The refusal without prior summons to OPs or clarification constitutes a procedural violation.

[2.7] In view of the question whether the case was to be remitted and the appeal fee reimbursed, it is necessary, according to the established case law of the Boards of appeal, to distinguish between a “substantial procedural violation”, which objectively affects the whole proceedings (cf. J 7/83 [12]) and a subjective “error of judgment” (Fehleinschätzung) of the first instance (see, e.g. T 19/87 [5]). The Board is of the opinion that, in principle, an “error of judgment” occurs only when the first instance, despite its desire to assess a case subjectively “correctly” and despite all due care, reaches a decision on a request that is objectively “wrong”. However, this is not what has happened here.

As a matter of fact, the ED, when interpreting the request for a “hearing”, has limited itself to a literal interpretation instead of trying to understand this – apparently not completely unambiguous – request. Moreover, the subjective interpretation of the term “hearing” has not even be justified (see point [2.3] above). The ED only explained that there was no legal right to a hearing under the EPC. If this logic was to be followed, for instance, “auxiliary requests” of a party could be ignored because they are never mentioned expressis verbis in the EPC and, therefore, would have to be considered inadmissible. Thus the ED has not made a serious effort to assess the facts in a manner that is as objective as possible.

Moreover, the ED did not strive to clarify the factual situation in regard of all the doubts it might have had, e.g. by means of a telephone call (cf. point [2.5] above). Thus the Board is of the opinion that [the ED] has not exercised all due care and has accepted the case to remain pending for several years because of an all too literal interpretation instead of obtaining a final first instance decision on this case by means of OPs – which can, as a rule, be carried out within a day. Moreover, by conditionally announcing OPs, it has raised wrong expectations in the applicant and, consequently, has objectively mislead it, thereby violating the generally accepted prohibition of “venire contra factum proprium”.

[2.8] Therefore, the Board is of the opinion that [the ED] has objectively violated the inalienable right of the applicant to OPs, which is anchored in A 116(1). This amounts to an infringement of a procedural principle of the EPC and, therefore, to a procedural violation. As this procedural violation has deprived the applicant of the opportunity to overthrow the negative opinion of the ED by filing new arguments and/or requests during OPs terminating the examination proceedings, and therefore to have a decisive influence on the first instance decision, this has to be considered to be a substantial procedural violation.

[2.9] Thus the impugned decision has to be set aside, for the reasons given above.

The Board decided to remit the case to the ED. It then dealt with the request for reimbursement of the appeal fee:

[4] As the appeal has to be allowed and as the first instance has committed a substantial procedural violation (see points [2.8-9] above), the question of whether the appeal fee has to be reimbursed requires the assessment, in application of R 103(1)(a), whether such a reimbursement is equitable, i.e. if there is a causal link between the substantial procedural violation and the need to file an appeal.

In this context it has to be noted that during the examination proceedings the applicant has not behaved in a way that would raise suspicions as to whether it intended to delay the proceedings or to commit a procedural abuse. Rather, it has responded to the communications of the ED in due time by filing amended claims and counter-arguments […]. Moreover, during OPs the applicant would have had a very last opportunity of avoiding a refusal by filing further amendments or counter-arguments. As the ED has deprived it of this very last opportunity by not summoning it to OPs, it had to file an appeal against the decision to refuse [its application] in order to safeguard its right to OPs and to avoid a final refusal of the application, respectively.

Thus the Board is of the opinion that there is a causal link between the substantial procedural violation committed [by the ED] and the filing of the appeal and the payment of the appeal fee, respectively. Therefore, it is also equitable to reimburse the appeal fee pursuant to R 103(1)(a) in this case.

NB: The Board has provided a headnote:

In case an organ of the EPO has doubts whether a party has required OPs (e.g. when a “hearing” has been requested), it has to clarify the situation in order not to commit a substantial procedural violation (see points [2.4-7])

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