T 2198/08 – One Too Many

In the present case the Opposition Division (OD) had revoked the opposed patent for lack of novelty over some A 54(3) prior art.

The request on file before the OD contained 16 claims: claims 1 to 7 were directed at a process for dyeing a textile fabric with indigo and claims 8 to 16 to a system for exploiting this dyeing process.

Before the Board of appeal, the patent proprietor filed three requests.

The main request consisted of eight claims. Claims 1 to 7 were identical to the claims on which the OD had based its decision and another dependent claim 8 was added. The features of newly added claim 8 were taken from system claim 9 of the set of claims before the OD.

Auxiliary request I had a claim 1 corresponding to a combination of claims 1 and 8 of the main request.

Auxiliary request II corresponded to claims 1 to 7 of the set claims on which the OD had based its decision.

The Board found the main request to be inadmissible:

*** Translation of the French original ***

[3] The main request comprises a new dependent claim 8. It has been established by the case law of the Boards of appeal (6th edition, 2010, VI.D.4.1.3a) that the addition of a dependent claim cannot possibly be a response to an objection that the claimed subject-matter (the process of claim 1) is not patentable because it neither limits nor amends the subject-matter claimed in the relevant independent claim (claim 1). As a consequence, the addition of claim 9 is not allowed and the main request is inadmissible (R 80).

Auxiliary request I was then found to be allowable and new and the case was remitted to the OD for further prosecution.

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The file wrapper can be found here.