[2] The request as amended during the oral proceedings (OPs) is admitted into the proceedings. The single independent claim of this request consists in the combination of claim 1 as granted combined with the features of dependent claim 17 as granted. Claim 17 as granted refers to subject-matter that had not been attacked in the opposition.
[2.1] Article 13 of the Rules of Proceedings of the Boards of appeal (RPBA) leaves it to the discretion of the Board not to consider any amendment to a party’s case after it has filed its grounds of appeal in particular if the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy speak against it. According to the Board the new subject-matter submitted is not too complex, nor do the current state of the proceedings and the need for procedural economy speak in favour of dismissing the request. The Board is of the opinion that this request is an adequate reaction to the preliminary opinion of the Board as exposed in the summons, wherein the patentability and the admissibility of all requests pending at that time was questioned.
[2.2] The Board cannot endorse argument of the [opponent] according to which the request filed during the OPs also violated Article 12(4) RPBA. Article 12 explicitly and exclusively refers to the notice of appeal and any reply. In the notice of appeal at first the patent was defended as granted. The [patent proprietor] then again submitted the request which it had withdrawn during OPs before the Opposition Division (OD), in the form of auxiliary request III filed together with the notice of appeal. Later on, the [patent proprietor] has withdrawn this request during the appeal proceedings, for reasons the Board can understand, and has filed a new request which is not identical with auxiliary request III filed together with the notice of appeal and not even a subset of this request. This request has been submitted first during the OPs. Therefore, the Board only has to decide, in the exercise of its discretion under Article 13 RPBA, if the request is admitted, having taken into consideration the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.
[3] According to decisions G 9/91 and G 10/91 [10] the examination of an opposition is limited to the extent to which the patent is opposed in the notice of opposition. If the opponent limits the opposition to particular subject-matter (einzelne Gegenstände), the residual subject-matter is not subject to any “opposition” within the meaning of A 101 and A 102 EPC 1973 nor are there “proceedings” within the meaning of A 114 and 115 EPC 1973 in existence concerning such subject-matter. However, according to the Enlarged Board, there is one limitation of this principle: “even if the opposition is explicitly directed only to the subject-matter of an independent claim of a European patent, subject-matters covered by claims which depend on such an independent claim may also be examined as to patentability, if the independent claim falls in opposition or appeal proceedings, provided their validity is prima facie in doubt on the basis of already available information” (point 11 of the reasons).
[3.1] In the present case the opposition is not directed against the subject-matter of the single independent claim only, but also against the subject-matter of several of the claims dependent from this claim. According to the notice of opposition, the opposition is directed against the patent as granted within the scope of independent claim 1 and claims 2 to 9, 11, 12, 25, 26, 28, 31, 33 and 34 that depend from this claim. The [opponent] explained during the oral proceedings that the opposition was in fact not directed against claim 17 as granted.
The features of claim 17 define a wedge mechanism (Keilgetriebe) that is provided in order to produce the movement of the pivotal element. Claim 13, which has not been opposed either, also claims a wedge mechanism for restraining certain parts. Claim 18 provides that the same wedge mechanism serves for displacing the pivotal element and for restraining. Claims 19 and 20 describe a motorised drive driving the wedge mechanism. None of the claims against which the opposition was directed deals with such a mechanism or its drive. Therefore, the Board is of the opinion that the opponent has limited the opposition to particular subject-matter (einzelne Gegenstände) cited in the notice of opposition, whereas other claims, among which the claims defining the wedge mechanism and its drive, have not been referred to and, therefore, are not subject to any “opposition” within the meaning of A 101 and A 102 EPC 1973 nor are there “proceedings” within the meaning of A 114 and 115 EPC 1973 in existence concerning such subject-matter.
[3.2] Considering the fact that the opponent has not attacked the single independent claim only but also some of the dependent claims, the exception provided in G 9/91 and G 10/91 [11] cannot be applied in the present case. Therefore, the principle exposed by the Enlarged Board in these decisions (point 10 of the reasons) concerning the legal and factual framework, within which the substantive examination of the opposition shall be conducted, is to be applied. Thus the Board is not free to perform a substantive examination of present claim 1 which is a combination of claims 1 and 17 as granted. […]
[4] The patent is to be maintained as amended.
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