The joint opponents filed an appeal against the decision of the Opposition Division (OD) to reject the opposition.
The opposition had been based on the ground of lack of inventive step.
I found the decision noteworthy because it contains interesting statements concerning an allegedly implicit ground for opposition and on claim interpretation.
Ground for opposition under A 100(c) EPC 1973
[3.1] The ground for opposition under A 100(c) EPC 1973 was raised by the joint appellants with a letter of 25 June 2008 […] after the expiry of the time limit laid down in A 99(1). It thus constitutes a fresh ground and was not admitted into the procedure by the OD […].
[3.2] The joint appellants held that a ground for opposition could also be implicit (decision T 455/94). In the present case, paragraph B1 of the notice of opposition concerned the definition of the invention according to claim 1 of the granted patent, whereas paragraph B1.1 dealt with the issue of lack of clarity of claim 1. The observation in paragraph B1 that paragraph [0006] of the granted patent was incorrect because claim 1 did not comprise an essential feature of the invention, namely “an array made up of a plurality of grouped stacks of sheets having cut out fluidic elements thereon”, should therefore be understood as implicitly relating to the ground for opposition of A 100(c) EPC 1973. It was held that it could be inferred from this observation that the general “array” of claim 1 included non-stacked arrangements of fluidic elements which were not originally disclosed.
In the Board’s view, this argument is not convincing because the observation in paragraph B1 mentioned above does not necessarily imply an objection under A 100(c) EPC 1973. Rather, it may be understood as an objection concerning an inconsistency between claim 1 and the description of the granted patent under A 84 EPC 1973 which, however, is not a ground for opposition.
[3.3] The joint appellants also submitted that the OD did not duly exercise its discretionary power to decide whether to admit the ground for opposition under A 100(c) EPC 1973 into the procedure, because it did not sufficiently deal with the arguments produced by the joint appellants (decision T 736/95). It could indeed be inferred from the minutes of the oral proceedings (OPs) of 27 June 2008 before the OD (paragraph 2.3) that this issue was only briefly dealt with, despite the fact that the interpretation of the term “array” was a recurrent theme throughout the whole opposition proceedings.
The Enlarged Board of Appeal (EBA) held in decision G 10/91 [headnote 1] that
“An OD or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in A 100 EPC [1973], going beyond the grounds covered by the statement under R 55(c) EPC [1973]” (underlining added).
With particular regard to the opposition proceedings the EBA stated that
“In principle, the OD shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with A 99(1) [EPC 1973] in conjunction with R 55(c) EPC [1973]. Exceptionally, the OD may in application of A 114(1) EPC [1973] consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent” ([headnote 2]; underlining added).
In the present case, the OD, in the exercise of its discretionary power acknowledged in G 10/91, held that the ground under A 100(c) EPC 1973 was not prima facie relevant and therefore disregarded it […]. The Board does not have any criticism against the OD’s approach. The fact that in the OPs before the OD this issue was only briefly dealt with corresponds to a prima facie assessment and cannot, as such, be considered as a procedural deficiency.
With regard to the appeal proceedings the EBA unequivocally held that
“Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee” ([headnote 3]; underlining added).
In the present case, the respondent explicitly withheld its approval […].
[3.4] For these reasons, the ground for opposition under A 100(c) EPC 1973 is not admitted into the procedure.
As mentioned above, the Board also made an interesting statement on claim interpretation when discussing the objection of lack of inventive step against the main request:
Ground for opposition under A 100(a) EPC 1973 in connection with A 56 EPC 1973 …
[5.1] As a step preliminary to the assessment of whether the subject-matter of claim 1 of the granted patent is inventive, the question of how said claimed subject-matter should be understood was considered. The discussion specifically concerned the feature (a) which relates to “an array of fluidic elements, at least some of the fluidic elements comprising fluidic amplifiers, the array having a face plate and a back plate” (reference numerals omitted).
[5.1.1] An interpretation of the claimed subject-matter may be made by taking into account the whole context of the disclosure of the patent (decision T 467/02 [2.3]). The claimed expression “array of fluidic elements” is defined in column 6 (lines 1-4) of the granted patent by stating that “an array of fluidic elements will include several stacks, each of which has at least one, and preferably several, fluidic elements”. Moreover, with regard to the claimed “fluidic elements” it is noted that the description of the granted patent only discloses embodiments in which the fluidic elements are cut out of a sheet.
[5.1.2] On the other hand, an ambiguous text may be construed against the interest of the person responsible for drafting it, i.e. the respondent in the present case, and in favour of the person on whom it is legally imposed, i.e. the joint appellants as members of the public in the present case (decision T 151/05 [3.2.2]). This would plead for a wide interpretation as advocated by the joint appellants. Thereby, although a claim must not be interpreted in a way which is illogical or does not make any sense, the description cannot be used to give a different meaning to a claim feature which in itself imparts a clear credible technical teaching to the skilled reader (decision T 1018/02).
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