Thursday, 17 July 2014

T 872/09 - Choosing too late




Catchwords
1. Novelty
The claimed sensor is defined by reference to characteristics of its response when used in a measurement set-up. Since none of the determining aspects of the measurement set-up is defined in claim 1, the technical features of the claimed sensor which are responsible for providing the measurement referred to in the claim remain obscure.
Legal certainty requires that a claimed subject-matter cannot be regarded as novel over the prior art on the basis of an ambiguous feature. Hence, defining a functional feature of the claimed sensor under undefined operating conditions is not appropriate to provide any distinction of the claimed sensor over the prior art sensors (see points 1.2 and 1.3 of the Reasons)
2. Admittance of auxiliary requests
None of the patentee's auxiliary requests were admitted into the proceedings because the patentee, during the first-instance opposition proceedings, deliberately chose not to defend any single auxiliary request, even though it was aware of the fact that its main request had not been found allowable by the opposition division (see points 2 and 3 of the Reasons).

Reasons for the Decision

1. Main request
1.1 According to the appealed decision, the sensor of D1 anticipates all the features of claim 1. The patentee did not contest this finding except for the following feature F of claim 1: "wherein the sensor provides a measurement that correlates with the amount of analyte in a period of 10 seconds or less".
1.2 Construction of claim 1
Claim 1 is directed to a sensor as such, characterized amongst other features, by feature F.
Firstly, feature F is not worded as a structural feature but as a functional feature of the claimed sensor: "... the sensor provides a measurement ...". However, a sensor in itself provides a signal as such but cannot provide a measurement. It is the whole measurement set-up, using inter alia the sensor's output signal, which provides the measurement that correlates with the amount of analyte in a period of 10 seconds or less.
Furthermore, the functional feature F refers to a numerical parameter: "... a period of 10 seconds or less". However, whether a measurement correlates with the amount of analyte within the claimed range or not, depends not only on the sensor but on the whole measurement set-up involved in the measurement.
Still further, the functional feature F does not simply include language to the effect that a measurement of the amount of analyte is provided within a certain period of time but that the measurement correlates with the amount of analyte. The term "correlate" generally means that the relationship between the measurement provided and the amount of analyte to be measured is not as expected on the basis of randomness alone. However, the degree of correlation largely depends not only on the sensor but on the whole measurement set-up involved in the measurement.
The measurement set-up providing a measurement that correlates with the amount of an analyte within a predetermined period of time includes the following aspects:
  • the type and the concentration of the analyte to be measured by the claimed sensor,
  • the constitution of the liquid sample containing the analyte, e.g. the nature and the concentration of the perturbating interferants contained in the liquid sample,
  • the constitution of the reagent layer for producing an electrochemical reaction with the analyte to be measured, e.g. the type of enzyme, the mediator,
  • the material, size and geometry of the working electrode and the reference electrode,
  • the voltage profile applied to the sensor as described, for instance, in paragraph [0032],
  • the exact starting time of the measurement.

Each of the above aspects of the measurement set-up influences the final measurement result to a large extent.
Since none of these aspects of the measurement set-up is defined in claim 1, the relevant technical circumstances, under which the measurement referred to in the claim is provided within 10 seconds or less, remain undefined. It follows that the technical features of the claimed sensor which are responsible for providing that measurement remain obscure, too.
1.3 Legal certainty requires that a claimed subject-matter cannot be regarded as novel over the prior art on the basis of an ambiguous feature (see T 1049/99, reasons 4.4). Hence, defining a functional feature of the claimed electrochemical sensor under undefined operating conditions is not appropriate to provide any distinction of the claimed subject-matter over the prior-art electrochemical sensors, all the more so if these conditions influence the obtained result to a large extent, as in the case at hand.
In view of the fact that feature F does not delimit the claimed sensor from the sensor of D1, it follows that the sensor of D1 anticipates the subject-matter of claim 1 (Article 54(1) and (2) EPC 1973).
[…]

2. First auxiliary request

The board holds that the first auxiliary request is not admissible under Article 12(4) of the Rules of Procedure of the Boards of Appeal ("RPBA", OJ EPO 2007,537).

First-instance opposition proceedings
2.1 At the end of the first-instance oral proceedings, the patent was revoked for lack of novelty of the claimed subject-matter with respect to D1. In advance of those oral proceedings the patentee had filed a first auxiliary request whose claim 1 defined subject-matter which undisputedly overcame the novelty objection at stake. This first auxiliary request then on file was identical to the first auxiliary request being the subject of the present decision. However, after the patent according to its main request had been revoked during the oral proceedings, the patentee deliberately decided to either withdraw that auxiliary request, or at least not to pursue it any further during the first-instance proceedings. As a consequence, the decision of the opposition division dealt only with the issue of novelty of a single independent claim, i.e. claim 1 of the patent as granted, with respect to a single prior art document D1. In particular, the opposition division was not in a position to decide on any of the other numerous novelty and inventive step objections raised by the opponent in its notice of opposition. These objections had a wide scope since the subject-matter of claim 1, as well as that of various dependent claims, according to the opponent's submissions, was anticipated or at least rendered obvious by various prior art documents other than D1.
2.2 Due to the patentee's course of action, the opposition division was effectively prevented from taking a reasoned and sufficiently comprehensive decision on the patentability of the claimed subject-matter over the cited prior art. This issue was largely left unresolved given that the examination of the grounds for opposition was limited to the mere novelty assessment of claim 1 as granted with respect to D1. This is contrary to the purpose of Article 12(4) RPBA, namely of encouraging parties to complete their relevant submissions during the first instance opposition proceedings (see T 23/10, reasons 2.4 and 2.7).
Moreover, the board is convinced that the patentee could easily have defended the first auxiliary request in the first instance proceedings. Indeed, this auxiliary request was not only filed in preparation of those oral proceedings, but also did its claim 1 incorporate a straightforward amendment, which would have undisputedly overcome the objection of lack of novelty at stake, as it merely combined claim 2 as granted with claim 1 as granted.
2.3 If the board decided to admit the first auxiliary request into the proceedings, it would either have to assess the compliance of a set of claims with the requirements of the EPC for the first time during opposition proceedings or to remit the case to the opposition division. None of these two options is satisfactory, be it due to the parties' general interest in having their case heard by two instances or their general interest in the proceedings being conducted in an efficient and foreseeable manner.
2.4 The patentee, in deliberately choosing during the first-instance opposition proceedings not to defend the patentability of the first auxiliary request then on file, deprived itself of the possibility of having the request admitted into the appeal proceedings (see T 144/09, reasons 1.9 and 1.14; T23/10, reasons 2.8).
2.5 Therefore, the board decides to exercise its discretion under Article 12(4) RPBA in not admitting the first auxiliary request into the proceedings.
2.6 The patentee presented the following arguments in favour of admissibility:
2.6.1 The patentee did not withdraw the auxiliary request 1 at the first instance oral proceedings. As explained in the patentee's letter dated 3 March 2014, the patentee's representative, at the first instance oral proceedings, "stated that he would not argue for the novelty of auxiliary request 1, but instead reserve the right to reintroduce this auxiliary request in appeal proceedings" and, as a response to a question by the chairman of the opposition division, the patentee's representative "explicitly stated that it was not to be withdrawn".
 […]
Whether or not the patentee explicitly withdrew auxiliary request 1, however, is of no fundamental importance to the present situation. The undisputed statement by the patentee's representative in the oral proceedings before the opposition division that "he would not argue for the novelty of auxiliary request 1, but instead reserve the right to reintroduce this auxiliary request in appeal proceedings" means in any case that it did not defend that request in those oral proceedings. This approach amounted to the acceptance that the patent be revoked by the opposition division without trying to defend it at that stage.
It appears that the patentee did not argue in favour of the novelty of auxiliary request 1 before the opposition division in the firm belief that the novelty debate would automatically be taken up in the appeal proceedings in case the main request would not be allowed. However, no legal basis for such an assumption exists. On the contrary, admissibility of new requests depends on the board's discretion aiming at fair proceedings for both parties, especially in the present case where the facts and submissions had not changed from the beginning of the opposition proceedings. Neither were new objections raised nor were new prior art documents introduced into the proceedings by the opponent.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T087209.20140408. 
The whole decision can be found here
The file wrapper can be found here.

Photo by John R. Southern obtained from Flickr.

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