T 2294/08 – A Lack Of Adaptation

In this case both parties filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

The Board found the main request and auxiliary requests 1 to 4 – all directed at an array of rigid water-soluble washing containers made of a water-soluble polymer – to lack inventive step. Its decision to reject the remaining auxiliary requests was based on a ground that is not so common:

[2.1] [The patent proprietor’s] fifth to seventh auxiliary requests that the patent be maintained in amended form are based on the corresponding sets of amended claims filed with its statement of grounds of appeal. No correspondingly adapted description has been filed during the appeal proceedings. The only description in the file concerning any of [the patent proprietor’s] auxiliary requests is the one directed to the present second auxiliary request, said last being the version upheld by the OD as the then first auxiliary request.

[2.2] Claim 1 of the fifth auxiliary request differs from claim 1 of the second auxiliary request inter alia by the following features:

• each container is made from a water-soluble receptacle part and is sealed by a water-soluble closure part;
• the receptacle part has side walls which terminate at their upper end in an outward flange, to which the closure part is sealingly secured;
• the polymer active in detergency being present in the wash in sufficient quantity to produce the required effect.

Claim 1 of the sixth auxiliary request differs from claim 1 of the fifth auxiliary request inter alia by the following additional features:

• each container comprises a tablet formulated for delayed and/or sustained release of a material;
• each receptacle part defines two or more compartments and at least one compartment is made entirely or in part of said water-soluble polymer which when dissolved in water is active in detergency.

Claim 1 of the seventh auxiliary request differs from claim 1 of the second auxiliary request in that it is directed to a method of ware washing by using the array of claim 1 of the fifth auxiliary request.

[2.3] As the array of all claims 1 of these auxiliary requests has been extensively modified over the array of claim 1 of the second auxiliary request, the above-mentioned description being adapted solely to the set of claims according to the second auxiliary request is obviously not compatible with these claims. Said description is thus not suitable to support the claims of the fifth to seventh auxiliary requests as required by A 84, second sentence. Already for this reason alone the patent cannot be maintained according to the appellants II’s fifth to seventh auxiliary requests.

[2.4] In the statement of grounds of appeal [the patent proprietor] stated:

“We will of course deal with the matter of amending the description in the usual way at the end Oral Proceedings (sic), dependent on the outcome”.

[2.5] Since [the patent proprietor] decided not to be represented at the oral proceedings (OPs), there was no such corresponding amendment of the description to the claims of these requests.

[3] The Board, in agreement with decision T 917/95 [5.2(ii)] considers that a patent proprietor who files new claims but no description adapted to these claims before OPs, and who is not represented at the OPs, cannot rely on the Board to postpone its final decision at the end of the OPs, in order to offer the patent proprietor the possibility to adapt the description to the claims. Article 15(3) RPBA states clearly that the Board is not obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written submissions. The latter do not contain anything that can be considered as a description appropriately adapted to these amended claims.

The patent was revoked.

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The file wrapper can be found here.