In what follows, the Board discusses the question of whether the ground of insufficiency of disclosure was already in the proceedings.
*** Translation of the German original ***
[2.1] In the present case the objection of the opponent regarding insufficient diclosure was discussed by both parties several times during the proceedings before the OD (see the minutes of the oral proceedings […]).
[2.2] In its decision G 10/91 [16] the Enlarged Board of appeal has acknowledged that an OD may, in application of A 114(1), examine a belated ground for opposition that is not covered by the notice of opposition. However, this examination requires that, in a first step, the OD, of its own motion [or] upon request by the opponent or a third party, admits and thus introduces the ground for opposition into the opposition proceedings, in conformity with the criteria for relevance given in G 10/91 [16]. If this has happened, the OD will, in a second step, carry out the examination and thus “of course decide whether such ground of opposition prejudices the maintenance of the opposed patent”, see G 1/95 [5.2].
[2.3] The minutes of the [oral] proceedings and the impugned decision do not contain any explicit statement in respect of whether the late filed ground for opposition of insufficient disclosure was admitted and thus introduced into the proceedings or not. In such a situation the introduction of this ground for opposition can result from the fact that the reasons for the decision contain substantiated statements regarding that matter.
[2.4] In point 3.3 of its decision the OD refers, in an unambiguous and sufficient way, to the legal and factual framework of the ground for opposition according to which the skilled person can “can carry out” (thereby implicitly mentioning [the German version of] A 100(b)) a waterstop device according to claim 1 having the claimed features (claims 1 and 4 as granted) without exercising any inventive activity and that in this context “the proportions … can be adapted … by the skilled person … by trial and error” (i.e. the submission of facts and evidence for justifying the enablement).
It is irrelevant in this context whether, as argued by the [patent proprietor], the treatment of enablement was carried out under the heading “Inventive step”, because an appealable decision is defined by the substance of its content and not by its form.
[2.5] Thus the Board comes to the conclusion that the ground for opposition under A 100 (b) already was in the proceedings. Therefore, the examination of this ground for opposition by the Board does not constitute a “fresh” ground within the meaning of the opinion G 10/91 of the Enlarged Board of appeal, cf. G 1/95 [5.3]).
[2.6] Moreover, in the present case it implicitly follows from the examination of the belated ground for opposition in point 3.3 of the decision on the opposition that [the OD] apparently had been found to be prima facie sufficiently relevant and, therefore, had been – rightly –admitted and introduced into the proceedings beforehand, in compliance with the criteria for relevance [defined] in G 10/91 [16].
The fact that the margin of discretion of the OD for admitting and introducing belated grounds for opposition apparently was applied in a correct way in the present case was not discussed, let alone challenged, by the [patent proprietor] during the appeal proceedings. It only had discussed whether the ground for opposition of insufficient disclosure indeed was part of the decision of the OD and, therefore, of the proceedings.
Also, the statements of the parties on insufficiency of disclosure, as recorded in the minutes of the [oral] proceedings before the OD held on March 20, 2009, do not contain any hint that the introduction of this ground for opposition – in contrast to the introduction of new documents, see point 3.8 of the minutes – was disputed by the [patent proprietor] but had nevertheless – perhaps wrongly – taken place when the decision on the opposition was made. Point 5.7 of the minutes only contains a neutral statement of the [patent proprietor] according to which “insufficiency of disclosure was to be considered as a late filed ground for opposition”. During the [oral] proceedings before the Board the [patent proprietor] had another opportunity of commenting this issue.
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