Wednesday, 12 June 2013

T 1033/10 – Plenty Of Lost Occasions

This is a revocation appeal. The claims on file were directed at a holding and sealing material for a catalytic converter.

Board 3.2.06 found the main request and several late filed auxiliary requests not to be prima facie allowable  - because the limitation of the claimed subject-matter to a mat material and the expression “function of a binder” raised clarity problems – and refused to introduce them into the proceedings. It then examined a series of auxiliary requests filed during the oral proceedings (OPs) and referred to as auxiliary requests “14.40 h”:

[5.1] The subject-matter of claim 1 of the “First auxiliary request 14.40 h” differs from claim 1 of the first auxiliary request in that the wording “having the function of a binder” is deleted and is replaced by the feature that the organic component “acts as a binder for the holding and sealing mat material so as to suppress scattering of fibers from the holding and sealing mat material”. The same amendment is made in claim 1 of the “Third and Fifth auxiliary requests 14.40 h” respectively.

[5.2] Thus, these are the first requests including a claim 1 which take into account the objections to clarity (and disclosure) with regard to the previously defined feature of the organic component “having the function of a binder”.

[5.3] When applying the […] principles according to Article 13(1) RPBA, the discretion to admit such a request has to 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.

[5.4] The complexity of the amendment is not found to be an issue which by itself would have led the Board not to admit the request in the present case.

[5.5] In the Board’s judgement, the state of the proceedings and the need for procedural economy taken together however imply a requirement on a party to present appropriate requests as soon as possible if such requests are to be admitted and considered.

[5.6] In the present case, there had been plenty of occasions for the [patent proprietor] to amend the claims in reply to the clarity objections.

[5.6.1] First, it should be observed that during the OPs before the department of first instance, an objection to lack of clarity was discussed concerning the wording of claim 1 in relation to the terminology “to suppress scattering of fibres from the holding and sealing mat material” which was linked to the suppression of volume of the mat […], and where the term “suppression” was not a clear term since it was not quantified with respect to either scattering of fibers or volume of mat material […]. Moreover, the further objection was discussed that the binding function of the organic component lacked clarity since it was not defined how to identify a material as a binder […]. Additionally […], the patent proprietor was of the view that holding individual fibres together would not be the same as binding, since binding also had to have the function of suppressing the volume, which view indicates an awareness of the [patent proprietor] concerning the link between these features.

[5.6.2] In its letter of 14 January 2011 in reply to the statement of grounds of appeal, the [opponent] set out that the originally filed application did not “provide a basis for a function as a binder per se but rather as a binder so as to suppress scattering of fibers and further by suppressing the volume to some extent”. This paragraph […] when read in isolation could perhaps be considered as referring to A 123(2) alone. However, the function of the binder was also challenged with regard to A 84 […], in particular with regard to the nature of the organic component and as to how this organic component had to differ from the organic component provided in D1 as a sizing agent […]. Thus the fact that an objection to lack of clarity was being made was also evident.

[5.6.3] In the communication sent as an annex to the summons to OPs before the Board, item 1.2.3 addressed the lack of clarity concerning the feature of the organic component “having the function of a binder” in the following manner:
“Further, it may be a matter of discussion as to whether the claim is clear in view of the added feature. The added feature appears namely to be unspecific in regard to what the function of “binding” implies (and possibly even “what” is bound). It may further be added that such an organic component as already in the claim inherently has a variety of properties which cannot seemingly be separated one from the other (such as sizing, binding, altering handle-ability etc). Hence, a lack of clarity seems to be present (A 84).”
The basis for the disclosure of such feature was addressed in item 1.2.2.

[5.6.4] At the start of the OPs before the Board of Appeal, the Chairman of the Board referred again to a lack of clarity with regard to the feature “organic component having the function of a binder” and pointed to the corresponding paragraphs in the communication of the Board, adding that the Board had not altered its opinion despite the [patent proprietor’s] submissions of 19 February 2013.

[5.6.5] In spite of all these opportunities to address this issue, the [patent proprietor] chose only to argue with regard to the objection of lack of clarity and did not file an auxiliary request aimed at overcoming the objections raised in this respect.

[5.7] Since the [opponent] had already raised objections against clarity of the terminology concerned, which were then confirmed and specifically pointed out in the Boards communication containing its provisional opinion, with the [patent proprietor’s] written response to the Board’s opinion on 19 February 2013 an auxiliary request addressing this issue could have been filed, if it were the [patent proprietor’s] intention to overcome the objection by way of a request. Admittedly there may be cases where filing a request in response to the Boards opinion may also be found to be an inappropriate amendment to a party’s case, but that issue does not need to be considered here as this did not occur.

[5.8] Although the [patent proprietor] argued that it had understood the objection as regards lack of clarity only as a result of the debate during OPs, this does not justify filing a request at that stage of proceedings to deal with the objection, which is precisely what the [patent proprietor] did by filing the “First, Third and Fifth auxiliary requests 14.40 h”.

[5.9] Whilst it may be credible that an objection (made by a party and/or by the Board) might not be fully understood in a particular case, it is then, at the very least, incumbent on the party having difficulties with understanding an objection to indicate this at the earliest possible stage and make appropriate effort to have the objection clarified. A lack of understanding alone cannot justify postponing an amendment to a party’s case until a later stage in the proceedings.

[5.10] In the present case, an indication of a lack of understanding of the objection cannot be gleaned from the [patent proprietor’s] written response, nor was any difficulty in understanding the objection raised by the [patent proprietor] at the start of OPs.

[5.11] Several previous opportunities to file a request amended to overcome the objection to lack of clarity had been waived by the [patent proprietor]. Requests were instead only submitted which included (in claim 1) the unchanged feature responsible for the clarity objection.

[5.12] Accordingly, the filing of the First, Third and Fifth auxiliary requests 14.40h at this late stage in the proceedings is contrary to the need for procedural economy. Accordingly, the Board exercised its discretion under Article 13(1) RPBA not to admit these requests.

[5.13] Since the requests were already not admitted for the aforegoing reason, it is not necessary for the purposes of this decision to consider the further objections of the [opponent] made against these requests. […]

The appeal is dismissed.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.