Tuesday, 21 February 2012

T 109/08 – (Dis)Sancta Simplicitas

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke his patent for lack of novelty. The OD did not admit the late-filed ground for opposition pursuant to A 100(b) into the proceedings since it could not see “any prima facie relevance in the late filed submissions concerning the ground of opposition under A 100(b)”.

The Board did not approve:

Scope of the examination of the appeal

[3.1] The [opponent] took issue with the OD’s conclusion not to admit the late-filed ground of opposition (A 100(b) – lack of sufficiency of disclosure) into the proceedings. It requested that the relevance of this ground be considered by the board and admitted into the appeal proceedings.

[3.2] Under A 107, first sentence, a party can only appeal if it is adversely affected by the decision of the first instance. A party is adversely affected if a decision does not accede to its requests (established jurisprudence; see T 961/00 [1]). In the present case the patent was revoked in accordance with the [opponent’s] request. Therefore, the [opponent] was not in a position to file an appeal with the sole object of securing the admission of a fresh ground of opposition into the proceedings even though its request to admit the new ground of opposition pursuant to A 100(c) had been rejected by the OD. According to A 107, second sentence, the [opponent] is however party to the appeal proceedings as of right. In accordance with the principle of equal and fair treatment of all parties, the [opponent] must be able to challenge, in reply to the admissible appeal by the proprietor, the way the OD exercised its discretion when not admitting the late-filed ground of opposition, so as not to be put at an unfair disadvantage given the [patent proprietor’s] legitimate attempt to reverse the decision revoking the patent. The board has therefore the power and duty to decide whether the OD’s conduct of the proceedings amounted to a violation of A 114(2) or A 113(1).

Fresh ground of opposition - review of exercise of discretionary power

[4.1] If the way in which a department of first instance has exercised its discretion on a procedural matter is challenged in an appeal, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if the board concludes that it has applied the wrong principles, or not taken account of the right principles, or has acted in an unreasonable way (G 7/93 [2.6]). The board therefore is in the first place charged with reviewing the OD’s exercise of its discretion under A 114(2). A failure to exercise sound, reasonable and legal discretion does not however need to amount to bad faith, intentional wrong doing, or unsound conduct of the proceedings to justify an appeal board reviewing the exercise of discretionary power by a department of first instance.

[4.2] The OD did not admit lack of sufficiency of disclosure as a late-filed ground for opposition since it considered that it was not prima facie relevant, i.e. would not prejudice the maintenance of the patent, for the reasons given in point I of “Reasons for the decision”.

[4.3] An inspection of the file shows that the opponent raised an objection of lack of sufficiency of disclosure with its letter dated 16 August 2007 as a reaction to the preliminary view expressed by the OD in its communication sent as an annex to the summons to oral proceedings (OPs) under the heading “Novelty”. In particular, the OD stated the following in said communication:
“In principle, the opponent did not demonstrate that the amounts presented in the various documents in wt.% correspond to the amounts presented in the contested patent in vol.%. In order to calculate the amounts in vol.% it seems to be necessary to determine the density of the composite, the polymer matrix and the filler materials”. (emphasis added)
By saying this the OD overlooked the fact that the patent in suit does not contain any definition in relation to the density of the composite (bulk density, apparent density). Moreover, claim 1 as granted does not contain any definition in relation to the chemical nature or physical form of the resin base and does not specify either the chemical nature and constitution of the filler materials. The claim merely contains some definitions in relation to particle sizes (in a non-limitative way by means of the definition of ranges preceded by the term “comprises”) which had also been contested, and the “product-by-process”-like term “ground”, i.e. obtainable by grinding. In fact, the resin base may include, according to the description, commercially available monomers of very different chemical natures. These might, or might not be, polymerized or cured in the dental composite, with the corresponding volume shrinkage (and differences in the density after shrinkage). The filler materials for their part are to be chosen from a broad palette of materials with a broad variety of tamped volumes resulting in different densities of the composite, contrary to the simplistic understanding stated in the OD’s decision […] that “in dentistry similar materials having a similar density are used”.

[4.4] In its response dated 16 August 2007 to the OD’s communication, the opponent justified its failure to file earlier the grounds pursuant to A 100(b) as follows: during examination proceedings the relative contents of the filler in the dental composite introduced in the amended and eventually granted claim 1, expressed as % by volume, had been treated by the applicant and the examining division as if they were amounts. Therefore, on the basis of this understanding of the claimed subject-matter it had initially based its opposition on a lack of novelty since the dental composite claimed contained comparable amounts of filler in terms of bulk as those in the prior-art documents which were expressed as % by weight.

[4.5] The board has investigated the correctness of the opponent’s allegation mentioned in point 4.4 above. As a matter of fact, the definition of the composite in claim 1 as granted as a dental composite comprising a resin base and about 11% by volume to about 80% by volume filler relates to a definition which was introduced during examination proceedings and which derived from the arithmetical addition of two independent ranges for load volumes of the particular filler materials defined in originally filed claims 1 and 7 (between about 10% by volume and about 70% of a ground structural filler, and between about 1% and about 10% by volume of microfiller). This amendment was introduced by the applicant and accepted by the examining division, as if it involved the mere addition of amounts. However, it appertains to the common technical knowledge that when adding load volumes of two filler materials of different particle sizes the filler component with smaller particle size fills the interstices between the bigger particles of the other filler component (as is acknowledged in lines 19-20 on page 14 of the application as filed). Thus, the total volume of filler in the composite taken as the result of the arithmetical addition of the load volumes of the different filler materials contradicts the common technical understanding and the original disclosure.

[4.6] The opponent further stressed in its letter dated 16 August 2007 that there were essential differences between a bulk volume and a tamped volume and that the patent in suit did not contain any reference to a method of measuring the volume of the filler contained in the dental composite expressed in claim 1.

Moreover, the opponent stated in said letter that the specific examples A, B and C in the patent in suit expressed the amounts of filler components in % by weight in the composite, and that the only place where % by volume could be found was in the tables as “load volume %”.

[4.7] It is manifest that Table 3 expresses for the composites of examples A, B and C the “load weight %” for the filler as the total amount (which results from arithmetical addition of the amounts expressed as % by weight of the three different filler materials employed), and further states a “load volume %” for the filler in toto (emphasis added) but does not give any value for any content of the separate filler materials as % by volume of the composite.

[4.8] In view of the analysis made in points [4.2] to [4.7] above it is apparent that the OD exercised its discretion in an unreasonable way, since the OD’s reasoning for considering the ground of opposition pursuant to A 100(b) to be prima facie not relevant disregards all the essential technical aspects mentioned above, which are manifestly relevant for an objective evaluation of the novelty of the subject-matter claimed.

The OD’s approach reduced the relevance of A 100(b) to a mere reproduction of the specific examples. Such an approach is not correct in the present case since there is a gap, created by an apparent lack of explicit technical information in the patent in suit, between the particular reproduction of the individual examples and the extrapolation of this specific teaching when trying to reproduce the generic dental composite defined in claim 1 as granted. It is not immediately evident how this gap can be filled from the content of the description and the general knowledge of the skilled person.

[4.9] Therefore, the arguments put forward by the opponent with its letter of 16 August 2007 justified the late filing of the grounds pursuant to A 100(b) and raised reasonable doubts as to the sufficiency of disclosure of the subject-matter claimed in the granted claims. Therefore, the late-filed ground for opposition should have been admitted into the proceedings.

[4.10] Furthermore, as the OD did not admit the ground of lack of sufficiency of disclosure into the proceedings, it endorsed the conversion (brought by the opponent as a subsidiary argument) of % by wt. values into % by vol. values based on an artificial conversion factor calculated from the relationship between the load weight% and the load volume% for the filler appearing in Table 3 of the patent in suit, and concluded by analogy that there was a lack of novelty vis-à-vis document D5 (EP-A-0 677 286).

[4.11] The [patent proprietor] (patentee) has contested the technical correctness of these calculations in its grounds of appeal.

The [opponent] replied that this argumentation made it clear that the ground of opposition pursuant to A 100(b) should be admitted into the proceedings. Moreover, the opponent submitted further documents and technical information about the density of particular materials used as constituents for the fillers of the prior art.

[4.12] From the analysis made in points 4.3 to 4.9 above it is apparent that the OD did not take into proper consideration all the facts and arguments bearing on the issue of the late-filed ground of opposition. Rather, it based its assessment of the admissibility of the late-filed ground of opposition and consequently also its finding of lack of relevance on manifestly wrong technical assumptions and on an erroneous approach to applying A 100(b). This amounts to an unsound exercise of discretion (A 114(2)) which in the board’s opinion justifies the reversal of the decision in suit.

[5] Having regard to the fact that the full and correct assessment of sufficiency of disclosure of the claimed subject-matter has not yet taken place because the OD declined to admit this ground of opposition, the dispute in relation to novelty of the claimed “invention” has been artificially overburdened in the present appeal by a manifest lack of explicit information in the patent in suit concerning some of the technical features in the claims as granted.

A 111(1)

[6.1] As regards the [opponent’s] request that the case should not be remitted to the department of first instance since the board may exercise any power within the competence of the department which was responsible for the decision appealed, the following has been considered (A 111(1)). As expressed in the board’s communication sent as an annex to the summons to OPs, the issue of substantive examination of the grounds for opposition pursuant to A 100(b) – yet to be undertaken – is not a minor one in the present case. The board is convinced that a hypothetic assessment of the other opposition grounds is devoid of meaning before sorting out that matter.

[6.2] Moreover, the board considers that the present situation, in which the appealed decision is based on manifestly wrong technical assumptions which lead to the revocation of the patent for lack of novelty, justifies that the substantive examination of the grounds for opposition under A 100(b) being dealt with at two instances.

[6.3] Consequently, the board sets aside the decision under appeal and remits the case to the OD for further prosecution and in particular for a substantive examination of the grounds pursuant to A 100(b) (A 111(2)).

To download the whole decision, click here.

The file wrapper can be found here.

NB: A French summary can be found on Le blog du droit européen des brevets.