In this case the Board dealt with questions related to reformatio in peius.
Only the opponent had filed an appeal after the Opposition Division (OD) had maintained the patent in amended form.
Claim 1 of the main request before the Board read (the differences with respect to claim 1 as maintained are highlighted):
An ablating system for ablating body tissue, comprising:multiple emitters (30, 201, 202, 203) of ablating energy;two or more temperature sensing elements (80, 208, 209, 210) at each energy emitter for measuring temperature at the energy emitter;a power controller (230) coupling a source of ablating energy to each energy emitter to convey ablating energy to the energy emitters;a processing element (215) which is adapted to periodically read the temperatures measured by each of the temperature sensing elements
forof each energy emitter and to select for eachat least one said energy emitter the hottest one of the measured temperatures, and to compare the hottest one of the temperatures for the or each said energy emitter to a desired temperature, and which is adapted to generate a signal individually for each energy emitter based upon the comparison wherein the desired temperature is established for all emitters; anda temperature controller (215) coupled to the power controller; the temperature controller which is adapted to individually control the conveyance of energy to each energy emitter based upon the signal for that energy emitter to maintain the hottest temperature at all energy emitters essentially at the desired temperature during tissue ablation.
The opponent argued that this amendment broadened the scope of the claim, which was contrary to the principle prohibiting reformatio in peius.
The Board agreed:
 Claim 1 as upheld by the OD […] is restricted to the selection of the hottest one of the measured temperatures for each energy emitter of the ablation system for comparison to a desired temperature […]. By contrast, claim 1 of the main and the first auxiliary requests is of broader scope since the selection of the hottest one of the measured temperatures is carried out for at least one of the energy emitters. Consequently, the subject-matter of claim 1 of the main and first auxiliary requests, by covering the possibility of selecting the hottest one of the measured temperatures for any selection of the energy emitters, is broader than that of claim 1 upheld by the OD. This results in an improvement of the proprietor’s position putting the sole [opponent] in a worse situation than if he had not appealed, contrary to the principle of prohibition of reformatio in peius.
The opponent is the sole [opponent] against the interlocutory decision of the OD concerning maintenance of the patent in amended form according to the [patent proprietor’s] main request filed in opposition proceedings. The proprietor is not adversely affected and has implicitly indicated that he will not contest the maintenance of the patent in the version accepted by the OD (G 1/99 [9.1]). As ruled in G 9/92 and G 4/93 [headnote 2; 15-16], under these circumstances the patent proprietor is primarily restricted during the appeal proceedings to defending his patent in the form in which it was maintained by the OD. In particular, the patent proprietor is not permitted to improve his position to the detriment of the opponent and sole appellant. Amendments proposed by the patent proprietor as a party as of right under A 107, second sentence, may be rejected as inadmissible by a board of appeal if they are neither appropriate nor necessary.
Contrary to the [patent proprietor’s] view, G 1/99 does not supersede G 9/92 and G 4/93, but is complementary thereto in that it gives directions for allowing an exception to the principle of prohibition of reformatio in peius as defined in these decisions.
However, the exception to this principle developed in G 1/99 does not apply in the circumstances of the present case for the following reasons.
G 1/99 only deals with the deletion of a limiting feature added during the opposition procedure. The exception to the principle of prohibition of reformatio in peius applies to this situation only (see point [2.3] of the reasons).
In fact, in order to allow such a deletion which puts the opponent and sole appellant in a worse situation than if he had not appealed, the following conditions must be fulfilled:
A limiting feature introduced during the opposition procedure has to be deleted. The necessity for its deletion must be caused by the appeal. This means that the deletion is necessary and appropriate because it is related to a ground of opposition and caused by new facts, evidence or arguments put forward by the [opponent], or because of a different evaluation of the situation by the board of appeal. Without the deletion, the patent would have to be revoked. It is not possible to overcome the objection by introducing new features which limit the scope of the patent as maintained.
Only if these preconditions are fulfilled, an objection may be overcome by introducing new features which extend the scope of the patent as maintained, but within the limits of A 123(3) according to the second option of G 1/99.
The amendment requested with the main and first auxiliary request, viz. replacement of the word “each” by “at least one” in feature (D4) of claim 1, is not a deletion of a limiting feature but a substitution of this feature. It does not overcome an objection raised with the appeal and it is not caused by a different evaluation by the Board. The objections against the claim in the version maintained by the OD can be overcome by amendments which do not extend the scope of protection […]. The inadmissible amendment held allowable by the OD in its interlocutory decision relates to [another feature], and this deficiency does not have the consequence that the patent would have to be revoked. Accordingly, the present amendment does not fulfil the preconditions defined in G 1/99 for justifying the exception.
The [patent proprietor’s] argument that the filing of fresh prior art (documents E7 and E8) by the sole [opponent] at the appeal stage should permit the [patent proprietor] to retract amendments made by him before the OD is not accepted by the Board.
It is true that G 1/99  states that the non-appealing proprietor deserves protection for reasons of equity when new facts have been introduced in appeal proceedings, and that the patent can exceptionally be amended in a way that offends the principle of prohibition of reformatio in peius. However, this is possible only if a limitation proves impossible (point  of the reasons).
In the present case, the [opponent’s] objection based on the above-mentioned new documents, which was raised against the version maintained by the OD, does not require any limiting amendment of the claims. To deal with new prior art documents, the [patent proprietor] either has to distinguish from it by argument or by making further restrictions to the claims upheld by the OD.
The [patent proprietor] may not in principle request another version of the patent during appeal proceedings, unless this version is a restriction of the maintained version (see G 1/99 [9.1]). [… T]he [patent proprietor’s] arguments regarding the new prior art have already convinced the Board, without the need for introduction of any further distinguishing amendments of the claims.
From the above it follows that the main and the first auxiliary requests are contrary to the principle of prohibition of reformatio in peius and do not fulfil the conditions for an exception.
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