T 726/10 – For Information Only

In this case the Board found that the Examining Division (ED) should have granted interlocutory revision.

The appellant had filed a new claim together with its statement of grounds of appeal (amendments with respect to claim 1 as refused – for lack of novelty – are highlighted):

An in-line humidifier A system 10 for humidifying a gas for infusion into a patient eye comprising:

·      a gas source 12;

·      an in-line humidifier 20 comprising a housing 22 having an inlet and outlet connection 26a, 26b in communication with an interior of the housing 22 through which is flowed a gas in one direction extending between the inlet connection 26a to the outlet connection 26b;, and a humidifier section 24 disposed within the housing 22, the humidifier section 24 including a material that can releasably retain liquid therein;

·      a gas inflow instrument 4; and

·      tubing 16 extending (a) between the gas source 12 and inlet connection 26a and (b) between the outlet connection 26b and gas inflow instrument 4,

wherein the humidifier section 24 is disposed within the housing 22 so the gas entering through the inlet connection 26a flows through the humidifying section 24 in one direction,

wherein the gas source 12, tubing 16, in-line humidifier, and gas inflow instrument 4 are configured and arranged such that gas only flows in one direction from the gas source 12, through the tubing 16, into the in-line humidifier 20 via inlet connection 26a, through the humidifier section 24, out of the in-line humidifier 20 via the outlet connection 26b, through the tubing 16 and out of the gas inflow instrument 4 into the eye,

whereby the flowing gas can be humidified by the material, and so the humidified gas exits the housing 22 via the outlet connection 26b and is delivered to the eye, where the flowing gas is selectively humidified as it flows through the in-line humidifier 20 by at least some of the liquid releasably retained within the material, and

wherein the gas is supplied to the eye via the gas inflow instrument 4 at a pressure between 0 and 100 mm Hg.

[2] According to A 109(1) “[i]f the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision”.

[3] According to the established case law of the boards of appeal, an appeal is to be considered well founded if the objections on which the refusal of the application was based are overcome by the main request of the appeal. Other possible irregularities do not preclude rectification of the decision, since an applicant should have the right of examination in two instances (for example T 139/87, T 47/90, T 794/95).

[4] Claim 1 of the request which formed the basis for the impugned decision has been amended such that present claim 1 is now directed to a system for humidifying gas for infusion into a patient eye comprising a gas source, as defined in former claim 5. Moreover, present claim 1 comprises further additional features. In particular, a gas inflow instrument is now also defined as allowing the gas to be supplied to the eye via the gas inflow instrument at a pressure between 0 and 100 mm Hg.

[5] As the appellant correctly remarks, claim 5 was not objected to in the impugned decision.

[6] The decision under appeal explains that document D1 discloses an in-line humidifier for humidifying a gas. More particularly, however, document D1 concerns a system for connection to the respiratory tract of a patient comprising a filtering device in the form of a so-called heat and moisture exchanger connected to a tracheal tube on one side and to a mechanical breathing device, such as a respirator, on the other side. According to D1,

“heat and moisture exchangers operate in such a way that the moisture of the air exhaled by the patient is accumulated and stored in an air-permeable material and thereafter partly evaporates during inhalation and is returned to the patient in the air inhaled”.

The aim of the invention of document D1 is, in particular,

“to provide [such] a filtering device which [...] takes up a small volume while still having good bacteria-filtering and heat/moisture exchanging qualities”.

From the disclosure of document D1 it cannot be derived how the system of document D1 could be suitable for humidifying gas for infusion into a patient eye. This aspect is not addressed in the impugned decision either. The quantity of air circulating in the heat and moisture exchanger of document D1 (several litres every respiration, corresponding to the patient’s lung capacity) does not seem to be comparable to the quantity suitable for infusion into an eye. Additionally, from a reading of document D1 the Board cannot establish the disclosure of a gas inflow instrument out of which gas flows into the eye at a pressure between 0 and 100 mm Hg.

[7] Hence, at least due to the amendments mentioned above, the novelty objection over document D1, on which the impugned decision is based, does not apply to the subject-matter of claim 1.

[8] In an obiter dictum in the impugned decision and in the preceding written procedure, the ED held that the term “selectively”, which is still present in claim 1 as now on file, lacked clarity. Moreover, it was held that claims 6 to 8, the features of which are now present in claims 1, 5 and 6, did not fulfil the requirements of R 43.

However, the impugned decision is not based on grounds of which objections of non-compliance with A 84 and R 43 form part.

[9] As already found in decision T 1640/06, objections that do not form part of the grounds for a refusal of an application, in particular objections in obiter dicta, can be meant as voluntary information to an applicant on the preliminary opinion of the ED. This could assist the applicant if it came to subsequently considering said objections in detail. For this reason, it is in particular not necessary that the applicant is given an opportunity to present comments according to A 113(1) on said objections, nor that said objections are considered in oral proceedings according to A 116, in order for the ED to arrive at a final decision. Accordingly, the Board is of the opinion that the question whether or not the claims filed with the statement setting out the grounds of appeal take into account the remarks made in the obiter dictum is irrelevant for deciding whether interlocutory revision should be granted or not.

[10] Hence, the ED should have considered the appeal to be admissible and well founded in view of the reasons forming the basis of the impugned decision and should have rectified said decision in accordance with A 109(1).

[11] In accordance with A 111(1), it is left to the Board to decide whether to exercise the competence of the department which was responsible for the decision appealed or to remit the case to that department for further prosecution. In this evaluation, the right of a party to two instances has to be considered. In view thereof, the Board decides to remit the case to the department of first instance for further prosecution.

[12] The ED should examine whether the present request fulfils all the requirements of the EPC. In particular, since the amendments involve a substantial shift of the subject-matter of the independent claim, other documents dealing with the administration of air under pressure into the interior of a patient’s eye might have to be analysed in more detail.

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NB: This decision has also been discussed and commented on Le blog du droit européen des brevets (here).