Tuesday, 12 August 2014

T 0958/11 - 'leaving respondent in the dark'



This appeal decision relates to admissibility of certain arguments regarding a reworked prior art experiment in the context of novelty and relates to sufficiency of disclosure. This is an appeal that lies from the decision of the Opposition Division. In this appeal case one of the opponents is the appellant, the patent proprietor the respondent.
 
The novelty of the product as granted was contested on the basis of two experiments in which a prior art process was reproduced. There was no discussion about the first experiment. Already in response to the ground of appeal
the respondent expressed severe doubts regarding the proper reworking of the second prior art example, in particular as regards the concentration of the starting materials before mixing. Not earlier than at the oral proceedings, the appellant contested these findings. The respondent expressed its surprise regarding the appellant's statements and requested an adjournment of the oral proceedings to carry out counter experiments in case the board would conclude to a lack of novelty on the basis of the second experiment. In this decision the board clearly expressed its annoyance about the behavior of the appellant. The board finds a solution in Art. 13 RPBA to end the discussion about the second experiment.


In this blog posting, the sufficiency of disclosure discussion is ignored but it is interesting for readers who look for case law in which claims are refused because of a lack of sufficiency of disclosure.



Citations from the decision:

[...] 

Reasons for the Decision

1. Main request - Novelty

1.1 The novelty of the product according to claim 1 as granted was contested on the basis of two experiments in which the process disclosed in example 2 of D1 was reproduced.

1.2 Regarding the first experiment, the board agrees with the findings of the opposition division that this reworking is manifestly not acceptable, as it does not correspond to the strict reproduction of said example, the mixing having been carried out in an agitated reactor while in D1 it occurred in a reactor having a Y form.

1.3 Concerning the second experiment, the respondent expressed severe doubts regarding the proper reworking of example 2 of D1, in particular as regards the concentration of the starting materials before mixing.
The appellant contested these findings and stated that the concentrations of the starting materials cerium nitrate and zirconyl nitrate were conventionally expressed in g/l of CeO2 and ZrO2. The concentrated starting materials were then diluted with water so as to exactly obtain the same concentrations before mixing as in example 2 of D1.
The respondent expressed its surprise regarding the appellant's statements and requested an adjournment of the oral proceedings to carry out counter experiments in case the board would conclude to a lack of novelty on the basis of the second experiment.
The board observes that the information provided at the oral proceedings by the appellant is of such an importance that it would have required an adjournment of the oral proceedings, because - as argued by the respondent - the concentration is one of the key features of the invention (see in particular claim 15 as granted which requires a low concentration of the starting materials).
Since the respondent's doubts had already been raised with its response to the grounds of appeal, i.e. almost three years ago, the board objects to the appellant's silence during the written procedure on this important feature. The oral explanations of the appellant revealed that it was perfectly aware of the obscure presentation of the relevant part of its test. Instead of redressing this defect, the appellant chose to leave the respondent in dark until the oral proceedings.
The appellant's behaviour not to comment during the written procedure on this relevant issue could - if done with the intention to surprise the respondent during oral proceedings - amounts to an abuse of procedure.
At least its explanations during the oral proceedings as to the concentrations of the starting materials and as to the calculation method used constitute an amendment to a party's case, the admittance of which lies within the board's discretion (Article 13(1) RPBA).
Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues that the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA). This is the case here. Having uncovered the concentration of the starting materials and the calculation method, the appellant questioned the relevance of the respondent's doubts as to the proper reworking of example 2 of D1. To show that these doubts prevail it would have now been up to the respondent to perform comparative tests. Whereas these could have been easily performed during the last almost three years, had only the appellant reacted directly to the respondent's response to the grounds of appeal, it is obvious that this is not possible on the day of the oral proceedings.
The Board therefore exercises its discretion not to admit the latest amendment of the appellant's case into the proceedings.
In the absence of a clear and unambiguous reproduction of example 2 of D1, and thus, of a direct and unambiguous disclosure of the claimed subject-matter, the board therefore decides to reject the evidence submitted for lack of novelty.

1.4 The objection of lack of novelty was solely based on the reworked example 2 of D1. None of the documents cited during the opposition proceedings disclose the subject-matter of the four independent claims of the main request at issue. Therefore, the board is satisfied that these claims, and those which depend thereon, meet the requirements of Article 54(1) and (2) EPC.

[...]

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T095811.20140702. The whole decision can be found here. The file wrapper can be found here.
Photo by Vinoth Chandar obtained from Flickr.

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