Monday, 30 November 2009

T 565/07 – Converge !

The opposed patent concerns a domestic throughflow heater.

The patentee filed several sets of claims ten days before the oral proceedings.

Claim 1 of the main request reads:

1. Domestic technical electrical throughflow heater (1) fixedly installed in a wall, with technical subassemblies which are arranged in a housing, which is formed by a back wall (2) and a cover hood, and with a base support which is fastened to a wall and on which the cover hood is placed, characterised in that the base support is formed by the back wall (2) and the technical subassemblies of the domestic technical electrical throughflow heater fixedly installed in a wall are combined into a lain component (3) and this is connectible with and detachable from, in one piece, the base support fastened to the wall.

Claim 1 of the second auxiliary request adds the feature of dependent claim 8 as granted: “wherein a cable entry bush (5) is integrally formed with the base supply.”

Claim 1 of the third auxiliary further specifies the nature of this cable entry bush.

Claim 1 of the fourth auxiliary request supplements the main request by adding the feature of dependent claim 2 as granted: “wherein the main component (3) is connected with the base support in that it is placed in shape-locking manner on at least a projection (8) and detented with the base support by two snap hooks (9).

The Board admits the main request and the second auxiliary request but decides not to admit the third auxiliary request because it adds features taken from the description, which is considers surprising. The Board then deals with the fourth auxiliary request:

[…] Claim 1 of the fourth auxiliary request comprises, in addition to the features of claim 1 of the main request the feature of dependent claim 2 concerning the connection of the main component and the base support. As this connection has nothing to do with the cable entry bush, this auxiliary request heads into a completely different direction than the second and third auxiliary request. Even if in principle a patent proprietor has to be authorised within the framework of R 80 to limit the subject-matter of a patent by introducing features of a dependent claim in order to meet objections against the patentability of the independent claim that has been granted, the repeated application of this right in different directions, e.g. in the form of parallel our subsequently filed requests would lead to the result that the patent proprietor leaves it to the Board to decide in which of the different versions the patent should be maintained. This result is not reconcilable with A 113(2) according to which the Board has to stick to the “text submitted … by the proprietor”, which means that it is incumbent on the patent proprietor to decide on the version in which the patent is to be prosecuted, and to file one or several sets of claims that have to correspond to this decision and, as a consequence, to the chosen direction of limitation (see also T 382/96 [5.2] and T 446/00 [4.3]). This is all the more true if, as here, the new additional direction becomes known with the filing of the corresponding auxiliary request only ten days before the oral proceedings. [2.5]

This is a tough decision. I understand that the Board is reluctant to deal with sets of claims heading into different directions, but the justification based on A 113(2) is somewhat artificial.

The reference to T 382/96 and T 446/00 (which merely cites – and translates – T 382/96) is not very helpful.

I much prefer the reasoning of T 240/04 [16], which comes to a similar conclusion, but on different grounds: “The operation of the sensor arrangement claimed in the third auxiliary request is a separate theme which diverges from the technical object of the impugned decision both according to the problem and its solution. The fact that the operation was already claimed in dependent claim 9 does not alter the fact that such a divergence exists. The abstract common feature that all the requests are alternative solutions does not constitute a sufficient factual link (sachliche Klammer). Moreover, the third auxiliary request differs not only from the matter discussed before the first instance but also from the object of the second auxiliary request. As a consequence, the requests of the appellant do not aim at a (converging) specification (Präzisierung) of the solutions examined in first instance. One rather hops from invention to invention. As far as the appeal proceedings are concerned, the EBA has developed the principle according to which these proceedings above all serve the right of the parties to an examination of the decision of first instance in court-like (gerichtsförmig) proceedings. The likeness of inter partes appeal proceedings to proceedings before an administrative court has been underlined by G 9/91, G 8/91, G 7/91 and G 1/99. In particular, G 1/99 has found that the main aim of the inter partes appeal proceedings is to give the losing party the opportunity to contest a decision which is adversely affecting it and to provoke a court decision on the merits of the fist instance decision. Thus the factual and legal framework of the opposition proceedings, as defined in G 9/91, is in principle decisive for the ensuing appeal proceedings. It directly follows that the disputed matter (Streitstoff) on appeal can only be modified to a certain extent. This principle is expressed in Article 12(4) RPBA which mentions the discretion of the Board not to admit requests that could have been presented in first-instance proceedings. In this instance, the appellant could have presented the auxiliary request 3 before the first instance. This was even mandatory because the amended independent claim concerns a problem that is only remotely related to the original problem and adds a fact (Sachverhalt) that has not been discussed before. The appellant had to expect that the board would be unable to decide on the matter. To admit the new request in such a situation would be tantamount to giving the patentee the possibility to force the board to remit the case to the first instance. This would disadvantage the opponent and would be contrary to procedural economy. For these reasons, the board does not admit the auxiliary request.”

To read the whole decision (in German), click here.