Tuesday, 3 June 2014

T 607/10 - Change of plans



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This is an appeal by the patent proprietor against a decision of the Opposition Division. 

The opponent, respondent in this appeal, only substantiated an objection under inventive step against claim 1 of the main request based on document E19 as the closest prior art which is combined with document E26. For the 1st, 2nd and 3th request document E26 was selected as closest prior art which was combined with E19 (and for the 2nd and 3th request, alternatively, with E4)
In a communication the Board expressed doubts whether E19 was a particularly appropriate choice as closest prior art. 
In his submissions to the oral proceedings, probably inspired by the communication of the Board, the opponent changed his line of attack by modifying his arguments: for the main request E26 was selected as closest prior art and, according to the opponent, document E19 provides the features of claim 1 that are not present in E26. 
The proprietor informed the Board that "he will not attend the oral proceedings".

Citations from the decision:


Catchword: In deciding whether a new argument has the effect of amending a party's case within the meaning of Article 13(1) RPBA it must be established on a case-by-case basis whether the new argument is a departure from, or just a development of, the original arguments filed with the grounds of appeal or the reply thereto (see point 4.1.3 of the Reasons).


Reasons for the Decision

(...)

4. Inventive Step: Main Request

4.1 Admissibility of a new line of argument

4.1.1 In the reply to the statement of grounds of appeal, the opponent argued that the subject-matter of claim 1 of the main request did not involve an inventive step having regard to document E19 (seen as the closest prior art) in combination with document E26. At oral proceedings before the Board the opponent stated that document E19 was not to be regarded as the closest prior art, and presented a different argument based on document E26 (seen as the closest prior art) in combination with document E19.

4.1.2 Article 12(2) RPBA requires that the reply to the statement of grounds of appeal shall contain a party's complete case, and should specify expressly all the facts, arguments and evidence relied on. Article 13(1) RPBA provides that any amendment to a party's case after it has filed such a reply may be admitted and considered at the Board's discretion.
In decision T 1621/09 a detailed analysis of the implications of Articles 12 and 13 RPBA was set out, in which inter alia the following conclusion was reached:
- "new arguments, even when based on facts and evidence already in the proceedings, can have the effect of altering a party's case: the facts and evidence relied on can be assembled in different ways using different arguments. On the other hand, there will clearly be many situations where a new argument does not change a party's case. For example, it may be just be a different way of looking at the same point." (T 1621/09, point 9 of the Reasons.)

4.1.3 The present Board considers that in deciding whether a new argument has the effect of amending a party's case within the meaning of Article 13(1) RPBA it must be established on a case-by-case basis whether the new argument is a departure from, or just a development of, the original arguments filed with the grounds of appeal or the reply thereto. (See also T 1621/09, point 9 of the Reasons.)

4.1.4 In the present case, the new argument cannot be seen as merely a further development or elaboration of the opponent's previous position. The new analysis is based on a different choice of closest prior art (document E26 instead of E19), and this in turn means that, compared to the previous argument, it is necessary to consider a different set of distinguishing features, a different objective problem to be solved and different reasons (based now on document E19) why the skilled person would find it obvious to arrive at the distinguishing features having regard to the prior art.
This new argument must therefore be seen as constituting an amendment to the opponent's case within the meaning of Article 13(1) RPBA, which may be admitted and considered only at the discretion of the Board.

4.1.5 A further complicating factor is that the proprietor was not present at the oral proceedings when the question of amendment arose, although duly summoned.
An analogous problem arose in T 1621/09 (see point 40 of the Reasons) which prompted the board in that case to analyse the relationship between Articles 13 and 15(3) RPBA, and in particular the issue of "the amendment to a party's case at oral proceedings in the absence of the party prejudiced." (See point 40 et seq. of the Reasons.)
The conclusion drawn, which is endorsed by the present Board, was the following:
- "The Board therefore concludes that it remains a matter for the Board's discretion to allow an amendment to a party's case in the absence of the prejudiced party. The absence of the prejudiced party is a factor to be taken into account but does not prevent the board from allowing the amendment and proceeding to reach a decision on the basis of the case as now amended." (See point 44 of the Reasons.)

4.1.6 In the present case, the Board, in the exercise of its discretion, decided to admit the new arguments put forward by the opponent. The reasons for this are as follows:
a) In its communication under Article 15(1) RPBA (which also forms part of the appeal proceedings according to Article 12(1)(c) RPBA), the Board expressed doubts whether a convincing argument could be based on documents E19 plus E26, and indeed whether document E19 was a particularly appropriate choice as closest prior art. It was also noted that the opponent's argument based on the combination of documents E26 (seen as closest prior art) and E19 against claim 1 of the first auxiliary request would logically appear to apply to claim 1 of the main request also (as this claim included all features of claim 1 of the main request plus one extra feature). The new arguments of the opponent can therefore be seen as having been raised in response to the communication of the Board.
b) In the same communication, the Board indicated that the issues mentioned in the previous paragraph might be discussed at oral proceedings, and hence the proprietor could have foreseen that the argument which the opponent is now relying on might well become a subject for discussion. In fact, the proprietor did submit further comments on the combination of documents E26 (seen as closest prior art) and E19 in the subsequent letter dated 10 March 2014, albeit in the context of the first auxiliary request.
c) Moreover, even before the Board sent the communication under Article 15(1) RPBA, the proprietor had already commented extensively in the statement of grounds of appeal (see page 8, second paragraph) on the combination of documents E26 and E19 in relation to claim 1 of the first auxiliary request (which, as mentioned, comprises all features of claim 1 of the main request), and so the position of the proprietor in relation to this argument is part of the basis of the appeal proceedings.
d) The new argument is not incompatible with, or contradictory to, the opponent's previous case, nor does it raise any complex issues.

4.2 The combination of documents E26 plus E19

4.2.1 At oral proceedings before the Board the opponent stated that document E19 was not the closest prior art, and argued that claim 1 of the main request was not inventive based on document E26 (taken as the closest prior art) in combination with document E19. The Board also believes that document E26 is the most appropriate choice as closest prior art.

4.2.2 In the written appeal procedure there was some disagreement between the parties concerning which of the claimed features were disclosed in document E26. Although the parties' submissions were made in the context of the discussion of claim 1 of the first auxiliary request, the Board takes the view that they also apply to claim 1 of the main request for the reasons stated above (see point 4.1.6a).
The proprietor argued that only the features of the preamble were disclosed, whereas the opponent argued that features (e) and (g) could also be considered to be disclosed in document E26. In the oral proceedings, however, the opponent appeared content to argue on the basis that document E26 discloses only the features of the preamble of claim 1 of the main request, and the Board also considers this to be the correct assessment (see figure 1 and accompanying text).

4.2.3 Both parties also take the view that the features of the characterizing part contribute to achieving the object set out in paragraph [0003] of the contested patent, i.e. to provide a surge arrester with better short-circuit performance by being able to withstand an electrical/thermal breakdown of the varistor stack without mechanically falling apart. The Board can also accept that this represents a reasonable summary of the objective problem.

4.2.4 Document E19 may be seen as addressing essentially the same problem (see column 1, lines 34-46; column 2, lines 56-64), and proposes a solution whereby the stack of varistor elements (zinc oxide pellets 1) is radially surrounded by a bursting preventive bandage ("tapes" - see column 2, lines 31-33; figures 1,2) with openings ("gap zones 16" - see column 2, lines 31-37; figures 1,2), the bandage consisting of a bursting-preventive spiral (figures 1,2) of insulating material (resin-impregnated glass fibres - see column 1, line 64 to column 2, line 3) arranged in the form of a helical line around the varistor stack (figures 1,2) thereby forming said openings (16) for pressure relief in case of internal short circuit in the surge arrester (column 2, lines 56-64).
A skilled person would therefore find in document E19 a solution to the objective problem involving the provision of features corresponding to those of the second alternative of the characterizing part of claim 1 of the main request (features e, f2 and g).

4.2.5 The Board is not persuaded by the argument of the proprietor that a skilled person would not combine these two documents as they relate to two different constructions: the varistor elements in document E19 being positioned spaced apart with the axial contact pressure being generated by the springs 7, and the arrester elements in document E26 being positioned against each other with the axial contact pressure being generated by a compression member.
Whatever relevance this point may have had for the argument starting from document E19, within the context of the present argument starting from document E26 it is unconvincing. As noted above, document E19 discloses a solution to the problem of withstanding a breakdown of the varistor stack without mechanically falling apart. There is no suggestion in document E19 that the proposed solution (i.e. the use of fibres 4 and gap zones 16) is only effective within the context of the particular configuration of varistor elements disclosed in the document, nor can any reason be seen why a skilled reader would arrive at that conclusion. The Board's view is that a skilled person would not hesitate to apply the solution suggested in document E19 to other types of varistor stacks, such as those of document E26, to solve the same problem.
The argument that the teachings of these two documents could not be combined as the "fibre winding 4 from E19 would in this case interfere with the position of the compression member 8 in E26" is also unconvincing. The Board does not believe that a skilled person would find any particular difficulty in combining these two simple mechanical features in a single device.

4.2.6 For the above reasons, the Board judges that claim 1 of the main request does not involve an inventive step within the meaning of Article 56 EPC 1973.

(...)

Order

For these reasons it is decided that:
The appeal is dismissed.




This decision has European Case Law Identifier: ECLI:EP:BA:2014:T060710.20140410. The whole decision can be found here. The file wrapper can be found here.

 

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