Tuesday, 15 November 2011

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.

Should you wish to download the whole decision (in French), just click here.

The file wrapper can be found here.