T 45/10 – Gotta Be Right

The patent proprietor appealed against the decision of the opposition division (OD) revoking the patent under consideration ; claims 1 of the main request and the second auxiliary request on file was found to lack inventive step.

During the oral proceedings (OPs) before the Board, the patent proprietor filed a main and five auxiliary requests.

Claim 1 of the main request before the Board was very similar to the second auxiliary request on which the OD had decided (additions underlined):

1. A honeycomb structural body (30) made of a columnar porous ceramic block (35) of silicon carbide in which a large number of through holes (31a, 31b) are placed in parallel with one another in the length direction of the said through holes with a wall portion (33) interposed therebetween,

wherein

said large number of through holes comprises: a large-capacity through hole group and a small-capacity through hole group, the total sum of the areas of the through holes constituting the said large-capacity through hole group on a cross-section perpendicular to the length direction of the said through holes being greater than the total sum of the areas of the through holes constituting the said small-capacity through hole group on the said cross-section,

each of said through holes in the large-capacity through hole group is sealed at an end on an exhaust gas outlet side of said honeycomb structural body and has an open end on an exhaust gas inlet side, each of said through holes in the small-capacity through hole group is sealed at an end on an exhaust gas inlet side of said honeycomb structural body and has an open end on an exhaust gas outlet side, and

a surface roughness (greatest height) Ry, measured based upon JIS B0601, of the wall face of said through holes is set in a range from 10 to 100 μm,

wherein

a density of the through holes on a cross-section perpendicular to the length direction is set in a range from 15.5 to 62 pcs/cm2, and

wherein

the large number of through holes are constituted by two kinds of through holes, that is, large-capacity through holes each of which has a relatively greater area on a cross-section perpendicular to the length direction of the said through holes and small-capacity through holes each of which has a relatively smaller area on said cross-section perpendicular to the length direction of the said through holes, and

wherein

the shape of a cross section of a through hole perpendicular to the length direction of each of the through holes is an octagonal shape for each of the large-capacity through holes and a quadrangle shape for each of the small-capacity through holes.

The Board found the none of the requests to be admissible and revoked the patent.

Here is what it had to say on the main request:

Procedural aspects

[2.1] In the statement setting out the grounds of appeal, the requests made during the first instance proceedings were no longer pursued. All requests filed in the written phase of the appeal proceedings, whether with the grounds of appeal or following receipt of the communication of the Board (annexed to the summons to OPs), comprised an amended claim 1 containing additional features with regard to the manufacturing process of the honeycomb body and with respect to the functioning of the honeycomb body when in use.

[2.2] Contrary thereto, the subject-matter of claim 1 of the main request as filed during OPs and now under consideration is substantially identical to the subject-matter of claim 1 of the second auxiliary request before the OD (the only amendments being the limitation to silicon carbide as material for the ceramic block and the specification of the method for determination of the surface roughness Ry). The amendments made in all requests filed in the written phase of the appeal proceedings thus included additional features which were then the subject of objections in the appeal proceedings. These additional features were then in effect deleted as the result of the new request filed during OPs. In this way, claim 1 has been broadened significantly with respect to claim 1 of the various requests filed during the written phase of the appeal proceedings. Thus, the framework of the appeal would be altered completely if the new main request were to be admitted.

[2.3] Article 12(1)(a) RPBA states inter alia that appeal proceedings are to be based on the notice of appeal and statement of grounds of appeal filed pursuant to A 108. So far as concerns an appellant, Article 12(2) RPBA requires that the statement of grounds of appeal should contain its complete case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, or amended, and should specify expressly all the facts, arguments and evidence relied on.

[2.4] According to Article 13(1) RPBA, it lies within the discretion of the Board to admit any amendment to a party’s case after it has filed its grounds of appeal or reply and states that “the discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.”

Application of these procedural principles to the main request

[3.1] Comparing the subject-matter of claim 1 with the subject-matter of claim 1 as granted, the subject-matter of dependent claims 2, 3 and 5 has been added. Such subject-matter corresponds essentially to the subject-matter of claim 1 of the second auxiliary request before the OD, which was found to lack an inventive step.

[3.2] Beyond these amendments, claim 1 has been further limited to specify the material of the columnar porous ceramic block as being silicon carbide, and the surface roughness has been defined as being “measured based upon JIS B0601”.

[3.3] Such specification of the material of the porous ceramic block and the insertion of the determination method do not prima facie alter the reasons which were given by the OD concerning lack of inventive step of the then second auxiliary request. It is also noted that A1, used by the OD as a starting document for the problem/solution approach, already cites in its paragraph [0016] silicon carbide as a suitable ceramic material. Hence, this amendment is prima facie not appropriate for overcoming the objection of lack of inventive step. The insertion of the determination method for the surface roughness has no influence on the reasons for the refusal of the patent either. The OD already implicitly assumed such a determination method in its reasoning. Accordingly, the reasons given by the OD for its finding of lack of inventive step still apply prima facie and have not been commented on otherwise during the written appeal proceedings.

[3.4] When taking into account the proposed amendments/deletions of features in claim 1, it is clear that they raise issues which neither the Board nor the other parties could be expected to deal with since the appeal had not been based at all upon such subject-matter. In order to be admitted, any late-filed request should, for procedural economy reasons at least, be prima facie allowable, which is not the case here in view of the subject-matter having been held non-inventive by the OD. 

[3.5] Neither in the statement of the grounds of appeal nor in any subsequent submission did the appellant explain why the decision of the OD on inventive step of the second auxiliary request should be overturned. The appellant’s argument that sections 3 to 5 in the grounds of appeal equally applied to the requests before the OD is not convincing.

Section 3 refers in particular to the functional feature relating to the release of ashes, which feature was not present in the first instance requests.

Section 4 specifically comments on the improvements added via the manufacturing process of extrusion moulding, which feature was also not present in the requests before the OD.

Section 5 adds further statements concerning the mechanism to remove ashes and hence only provides arguments for the functioning of the honeycomb body when in use.

Thus, all arguments previously filed in the appeal proceedings concern the impact of additional features.

Although not decisive, it may also be added that D25 highlights the function of removing ashes as a crucial feature of the invention and compares the exfoliation of ashes when applying silicon carbide sheets in comparison to cordierite sheets. However, this test is not related to a honeycomb structural body having the claimed features and is also not related to the use in an exhaust gas purifying device. Therefore, the test results of D25 lack relevance for the claimed subject-matter.

[3.6] Furthermore, the communication of the Board had already highlighted clarity objections to the amended features. Hence, in view of the maintenance of similar features in all subsequent written submissions, it could not have been expected that a request deleting these features would have to be considered at the OPs for the first time.

[3.7] If the request were admitted, the Board as well as the parties would be faced for the first time with new arguments as to why this claimed subject-matter would be inventive and why the OD’s decision was incorrect. Accordingly, the deletion of these features has the effect of changing the appellant’s case from that set out in the grounds of appeal and in a direction which, objectively, could not be expected. Such a request and supporting arguments could have been submitted earlier and their submission is thus not consistent with the requirements set out in Articles 12 and 13 RPBA.

[3.8] Hence, the Board exercised its discretion under Article 13(1) RPBA not to admit the main request.

Note that the Board presumes the inventive step assessment carried out by the OD to be correct: a claim equivalent to a claim found to lack inventive step by the OD is considered to be prima facie unallowable.

To download the whole decision, click here.

The file wrapper can be found here.