Thursday, 24 December 2009

T 1160/07 – Convergence, Moderately

In a recent post I have presented decision T 565/07 (and T 240/04) where auxiliary requests were refused because they were not converging. The present decision shows that not all the Boards apply so strict a standard.

[…] With letter dated 15 May 2009 the [patent proprietor] has (re)filed the auxiliary requests as indicated above.

The [opponent] objected to the admission of these requests mainly for the reason that the independent claims in subsequent requests were not progressively limiting the subject-matter in a convergent manner but instead defined subject-matters which went in different directions, resulting in a non-converging debate. [3.1]

Firstly, the Board notes that the requests numbered 1, 2, 2.1, 3 and 3.1 have already been filed in the opposition proceedings with letter dated 2 April 2007 and have been refiled in reply to the appeal with letter of 3 March 2008, thus are not new to the [opponent]. [3.2]

The Board assumes the [opponent’s] reference to the necessity of having a converging debate when auxiliary requests are filed relates to the present Board’s decision T 47/03 applying such a principle, as previously elaborated in T 1126/97.

The present case has the above-mentioned auxiliary requests 1, 2, 2.1, 3 and 3.1 relating principally to the further embodiments of the shaving razor handle.

Auxiliary request 4 relates to the further embodiment of the shaving razor handle with certain parts of the inner core being thinner than the outer portion, as well as of the first mold cavity having a gate.

Auxiliary requests 6 and 7 relate to the further embodiment of the shaving razor handle’s inner core having a through hole and injecting the outer portion via the through hole.

Auxiliary request 8 combines the embodiments of auxiliary requests 4 and 6. [3.3]

In view of the above, the [opponent] could have a point with respect to auxiliary requests 4, 6, 7 and 8. However, the present case differs from the above cited cases in that these requests were filed with letter of 15 May 2009, i.e. more than two months before the oral proceedings (OPs) (T 49/03 [sic] concerned requests filed just one month before the OPs; in T 1126/97 the requests were filed at the OPs). They further concern features which could easily be understood and dealt with without adjournment of the OPs (Article 13(3) RPBA). [3.4]

Therefore, if you intend to rely on auxiliary requests that do not converge, be sure to file them as early as possible, and well before the OPs.

To read the whole decision, click here