Friday, 29 August 2014

T 0287/11 - A question of law?


This appeal decision relates, among other things, to extension of protection conferred and, in that context, a request to refer the some portions of the case to the Enlarged Board of Appeal. The appeal has been filed by the proprietor against a decision of the Opposition Division. According to the Opposition Division all claims of the requests contravened the requirements of Article 123(3) EPC. The granted claim 1 comprised the feature "a water-soluble polyalkylene glycol  in an amount of 5% to 90% by weight", while the claims of the requests in opposition were not limited to this feature. The main request of the appeal was equal to auxiliary request of the opposition proceedings. The Appellant cited some case law decisions which are, according to his opinion, in favor of his request to set the decision of the Opposition Division aside. During oral proceedings before the Board of Appeal the Appelant requested, should the main request be considered not allowable, to refer a question to the Enlarged Board of Appeal to ensure a uniform application of law since such a decision would be in contradiction to the cited case law.

Citations from the decision:


Summary of Facts and Submissions
[ ... ]

VI. The Appellant argued [before the Board of Appeal] that the amendments made to the independent claims of all requests did not lead to an extension of the protection conferred by the patent as granted. Taking claim 1 as being exemplary for all the independent claims of each of these requests, claim 1 always specified inter alia that the composition comprised from 5% to 90% by weight of a water-soluble polyalkylene glycol of the same definition as that given in granted claim 1, such that it did not encompass compositions having a content of more than 90% by weight of such water-soluble polyalkylene glycols. The Appellant cited decisions T 999/10 and T 009/10 in support of its arguments for the main request, and T 172/07 (none of these decisions being published in OJ EPO) in support of its arguments for auxiliary request 1, in this respect. During the oral proceedings before the Board, it also requested that should the main request be considered not allowable, the following question be referred to the Enlarged Board of Appeal in order to ensure uniform application of the law, since such a decision would be in contradiction to those of decisions T 999/10 and T 009/10:
"Where a granted claim relating to a composition comprising certain components specifies an amount range for a class of specific components and that claim is later amended in opposition such that the composition is limited with an additional feature versus granted claim stating that the composition must comprise specific species from that class, does that result in a contravention of A.123(3) EPC in view of the amount range for the component class automatically applying to only those specific species now listed and not applying to those specific species now listed AND the component class?"
The Appellant argued that the subject-matter of the main request and auxiliary request 1 was clear, the skilled person understanding the definitions of R and A as mixtures of methyl and hydrogen in the context of polymer chemistry to mean that these two variables were merely independent of one another. It argued that document (6) (see point VII below) was late-filed and that in any case, the wording requiring that the polyalkylene glycol was water-soluble had been in the claims as granted. As such, any alleged lack of clarity did not arise out of the amendments made, with the consequence that the Board had no power to examine lack of clarity at this stage of the proceedings.


[...]

Reasons for the Decision

[...]

Main request

2. Amendments (Article 123(3) EPC)

2.1 Article 123(3) EPC requires that the claims of a patent as granted may not be amended during opposition/appeal proceedings in such a way as to extend the protection conferred by the patent as a whole. In order to decide whether or not an amendment satisfies this requirement, it is necessary to compare the protection conferred by the claims as granted, with that of the claims after amendment.

2.2 Thus the question to be answered is whether the claims of the main request cover any compositions or methods which were not covered by the claims as granted. The following analysis is for claim 1 of the main request compared to claim 1 as granted, similar considerations applying to independent claims 4 to 6, 15 and 16 of the main request vis-à-vis the respective claims 4, 6, 7, 16 and 17 as granted.

2.3 Claim 1 of the patent as granted is directed to an aerosol hair styling composition comprising inter alia (a) from 5% to 90% by weight of a water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4.

2.3.1 The use of the term "comprising" in connection with a numerical range defining the amount of a component implicitly means that the protection conferred by the claim does not extend to compositions containing that component in amounts outside the defined range (see T 2017/07, Headnote, ibid.).

2.3.2 In the present case, this means that the protection conferred by claim 1 as granted, as far as component (a) is concerned, is restricted to aerosol hair styling compositions containing not less than 5% and not more than 90% by weight of any water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4, which finding has not been contested by the Appellant.

2.4 Claim 1 of the main request differs from claim 1 as granted by virtue of the insertion after the definition of the component (c) of the feature:
"wherein the water-soluble polyalkylene glycol conforms to the


 




wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35".

2.4.1 In view of the wording "wherein the water-soluble polyalkylene glycol conforms to the formula" (emphasis added), the component (a) is to be regarded as restricted to those specific water-soluble polyalkylene glycols of the formula recited, such that the amount of 5% to 90% by weight of water-soluble polyalkylene glycol applies to this more restricted definition only, and no longer to the broader definition.


2.5 Thus, claim 1 of the main request no longer requires, as does claim 1 as granted, that the composition contains at most 90% by weight of polyalkylene glycols of the broader definition given in granted claim 1, since the definition of the composition in claim 1 is "open" due to the characterization by the term "comprising", i.e. the composition can contain in addition to the compounds specified in the claim any other compounds. Therefore, the composition of claim 1 of the main request may comprise in addition to water-soluble polyalkylene glycols of the specific formula now defined, any other water-soluble polyalkylene glycol as defined in granted claim 1 in an undefined amount, whereas claim 1 as granted restricted the amount of these compounds to no more than 90% by weight.
 

2.6 The protection conferred by claim 1 according to the main request is thus extended in comparison with the protection conferred by claim 1 as granted. The Appellant did not argue that the protection conferred by claim 1 of the main request was covered by any of the other independent claims as granted, nor does the Board hold that this is the case.

2.7 For similar reasons, independent claims 4 to 6, 15 and 16 of the main request extend the protection conferred by the respective claims 4, 6, 7, 16 and 17 as granted.


2.8 The Appellant argued on the basis of the conclusions reached in decision T 999/10 that since claim 1 of the main request was drafted in "cascade form", i.e. the claim contained both a broader and a narrower definition of a particular group of compounds (see T 999/10, points 3.4 and 3.5 of the Reasons), the weight limitation of 5% to 90% applied to both definitions of the component (a) given therein, with the consequence that the total amount of water-soluble polyalkylene glycol could not fall outside the amount of 5% to 90% by weight. The Appellant also submitted that in the case underlying decision T 009/10 (see point 2.1 of the Reasons), a claim which had been amended similarly vis-à-vis the granted version was considered not to contravene Article 123(3) EPC.
 

2.8.1 However, in view of the wording "wherein the water-soluble polyalkylene glycol conforms to the formula", the Board considers that the water-soluble polyalkylene glycol of component (a) is defined as being of that specific formula, and not, as suggested by the Appellant as comprising a water-soluble polyalkylene glycol of this formula. Thus, the Board holds that the first, broader definition of component (a) in claim 1 is restricted by the second narrower definition of the specific formula, such that the amount of 5% to 90% weight applies to the narrower definition only. In view of this interpretation of the claim, the Board sees no need to turn to the description in order to interpret the claim, as was the case in decision T 009/10.
 

2.8.2 Concerning decision T 999/10 cited by the Appellant, claim 1 of the main request thereof relates to an adhesive comprising inter alia 45 to 85% by weight of one or more styrene block copolymers, wherein the styrene block copolymer is a copolymer of the type styrene/isoprene/styrene (SIS), claim 1 as granted relating to an adhesive comprising inter alia 45 to 85% by weight of one or more styrene block copolymers, said copolymer not being further defined (see T 999/10, points I and IX of the Facts and Submissions). Said decision states (see point 3.4 of the Reasons) that in view of the sequential ("cascade") formulation of the claim, there was no doubt as to the "intention" of the patent proprietor that no other block copolymers other than the specific SIS-type may be present in the adhesive. The decision goes on to state (see point 3.5 of the Reasons) that even if the claim were to be interpreted as not excluding the presence of other block copolymers, the sequential formulation chosen by the patent proprietor meant that the condition limiting the amount of block copolymer defined in the broader manner as in granted claim 1, should also be fulfilled in the amended claim.
However, the scope of protection should not be interpreted in the light of the intention of the drafter of a claim, since this is a subjective criterion, but rather on the basis of the meaning generally accepted by the person skilled in the art to the technical features defined in said claim, such that this Board is not convinced by argumentation based on any alleged intention of a drafter of a claim.
 

2.9 Thus, the Board concludes that the scope of protection conferred by claim 1, and by the same token that of independent claims 4 to 6, 15 and 16, has been broadened vis-à-vis that of the claims as granted, such that the main request does not satisfy the requirements of Article 123(3) EPC.
 

3. Request for referral of a question to the Enlarged Board of Appeal
 

3.1 Under Article 112(1)(a) EPC, a board of appeal may, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer a question to the Enlarged Board of Appeal if it considers that a decision is required in order to ensure uniform application of the law, or if an important point of law arises.
 

3.2 In the present case, the Appellant requested that if the Board did not allow its main request for reasons of contravening Article 123(3) EPC, such a decision would be contradictory to decisions T 999/10 and T 009/10, such that a question (see point VI above for exact formulation) regarding whether particular amendments to granted claims relating to compositions comprising a class of components and specifying an amount range thereof contravened Article 123(3) EPC should be referred to the Enlarged Board of Appeal in order to ensure uniform application of the law.
 

3.3 The Board holds, however, that the question formulated by the Appellant concerns the interpretation of technical features of a claim of the specific patent in suit, this not being a question of law but primarily a technical issue (cf. T 181/82, point 14 of the Reasons, OJ EPO 1984, 401), because it requires the skilled person to interpret technical information, namely whether amendments to a chemical definition have an impact on the broadness of the claim.
 

3.4 Hence, the Appellant's request to refer a question to the Enlarged Board of Appeal is rejected.

Auxiliary request 1

[...]

5. Amendments (Article 123(3) EPC)

5.1 Compared with claim 1 as granted, the definition of component (a) in claim 1 according to auxiliary request 1 is supplemented by the following feature:
"wherein the water-soluble polyalkylene glycol conforms to the formula





wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35",
and after the definition of component (c), the following feature has been added:
"wherein the total amount of water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4 is in the range of 5% to 90% by weight".

5.2 The amended claim thus requires that a water-soluble polyalkylene glycol of the specific formula is present within the amounts given, but also that the total amount of water-soluble polyalkylene glycols of the broader definition indicated in the claim is in the range of 5% to 90% by weight. Said wording renders it unambiguous that no more and no less than the amount of a water-soluble polyalkylene glycol as defined in granted claim 1 may be present in the aerosol hair styling composition, and thus overcomes the problem of extension of protection inherent in the main request.

5.3 Thus, the Board concludes that the scope of protection conferred by claim 1, and by the same token that of independent claims 4 to 6, 15 and 16, has not been broadened vis-à-vis that of the claims as granted.

5.4 Thus, the requirement of Article 123(3) EPC is satisfied, the Respondent also having no objections under Article 123(3) EPC to the claims of this request

[...]


This decision has European Case Law Identifier: ECLI:EP:BA:2014:T028711.20140401. The whole decision can be found here. The file wrapper can be found here.
Photo obtained from FreeDigitalPhotos.net.

Tuesday, 26 August 2014

T 1400/11 - Not fighting back in first round: immediate knock-out in second round



This is an appeal against a decision of the Opposition Division to revoke European patent No. EP 1 777 048 as lacking inventive step. Because the proprietor failed to participate in any way in the opposition proceedings in first instance, none of the proprietor's requests filed with the statement setting out the grounds of appeal, were held admissible. The appeal was dismissed. 
The case shows again that the Boards of Appeal are strict in applying their Rules of Procedure, in particular Article 12(4) RPBA, according to which the Board has the discretionary power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings. 

Reasons for the Decision
1. The present case is marked by special circumstances that affect the legal nature of the appeal proceedings and raise the issue of whether the appellant, in submitting its case for the first time in its appeal, is complying with the purpose of the appeal according to Article 106 EPC.

2. Appeal proceedings are wholly separate and independent from proceedings before the administrative departments of the EPO, here the opposition division (see G 8/93, OJ EPO 1994, 887, point 1 of the Reasons). Their function is to give a judicial decision upon the correctness of a separate earlier decision taken by a department in order to relieve the appellant from the adverse effect of the decision under appeal (see G 9/92 and G 4/93, OJ EPO 1994, 875, points 5 and 9 of the Reasons; G 1/99, OJ EPO 2001, 381, point 6.1 of the Reasons). In decisions G 7/91 and G 8/91 (OJ EPO 1993, 356, 346, point 7 of the Reasons), G 9/91 and G 10/91 (OJ EPO 1993, 408, 420, point 18 of the Reasons) and G 1/99 (supra, point 6.6 of the Reasons), the Enlarged Board held that the appeal procedure is to be considered as a judicial procedure proper to an administrative court.
It follows from the characteristics set out by the Enlarged Board that the general principles of court procedure, such as the entitlement of parties to direct the course of the proceedings themselves ("principle of party disposition"), also apply to appeals, that a review of the decision taken by the administrative department can, in principle, only be based on the reasons already submitted before that department, and that the proceedings are determined by the petition initiating them (ne ultra petita) (see Case Law of the Boards of Appeal, 7th edition 2013, Chapter IV.E.1).
To guarantee their judicial function, proceedings before the boards of appeal are governed by rules of procedure (RPBA).

2.1 Article 12(4) RPBA requires the Board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent that it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. However, according to Article 12(4) RPBA, the Board has the discretionary power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings. This discretionary power serves the purpose of ensuring fair and reliable conduct of judicial proceedings (see T 23/10, not published, point 2.4 of the Reasons).

2.2 It follows from the above that a party to appeal proceedings has no absolute right to have a request which could have been filed in the proceedings before the administrative department but was only filed with the statement setting out the grounds of appeal, considered in the appeal proceedings (see e.g. R 10/09, point 3.2 of the Reasons; R 11/11, point 9 of the Reasons; T 144/09, point 1.14 of the Reasons; T 936/09, point 2 of the Reasons, all decisions not published).
Consequently, a patent proprietor who files such a request cannot defend its patent on the basis of that request in appeal proceedings if the Board, exercising its discretion under Article 12(4) RPBA, holds it inadmissible.
According to established jurisprudence, discretion has to be exercised equitably, i.e. all relevant factors which arise in the particular circumstances of the case have to be considered (see G 7/93, OJ EPO 1994, 775, point 2.5 of the Reasons; R 11/11, point 9 of the Reasons; T 931/06, not published, point 3.5 of the Reasons; T 23/10, point 2.3 of the Reasons).

3. In the opposition proceedings, the appellant, although having received several EPO communications, see points IV to VI above, did not react at all to the opposition filed against its patent. The appellant did not file any submissions, such as requests, arguments or amended claims, in the course of the opposition proceedings, despite being given several opportunities to do so, see points IV to VI above. Undeniably, throughout the opposition proceedings, the appellant declined to take the opportunity to defend in writing its patent as granted or in amended form. Nor did the appellant file a request for oral proceedings, with the result that the opposition division was not obliged to hold oral proceedings in case of a revocation of the patent.

3.1 In the Board's view, by its conduct the appellant thus made a "considered and deliberate choice" to remain completely passive and not to play any active role by reacting to the opposition in writing or orally, despite being given the opportunity to do so by the opposition division.
The Board considers the appellant's conduct in the opposition proceedings particularly significant since a patent proprietor usually files at least a request for maintenance of its patent in unamended or amended form, together with arguments as to why the grounds for opposition raised do not prejudice the maintenance of the patent as granted if it wants to maintain its patent in that form, or why its patent in a limited form meets the requirements of the EPC.

3.2 The Board fully concurs with the principle established in T 936/09 (see also Case Law of the Boards of Appeal, Chapter IV.E.4.3.2 b)) that a patent proprietor is not free to present or complete its case at any time it so wishes during the opposition or opposition appeal proceedings, depending, for example, on its procedural strategy or its financial situation:
"It is not the purpose of the appeal to conduct the case anew and, therefore, the issues to be dealt with in appeal proceedings are determined by the dispute underlying the opposition proceedings (see e.g. T 356/08, point 2.1.1 of the Reasons). Thus the appeal proceedings are not just an alternative way of dealing with and deciding upon an opposition. Parties to first-instance proceedings are therefore not at liberty to shift their case to the second instance as they please, thereby compelling the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance (see also T 1067/08, point 7.2 of the Reasons). The filing of new submissions (requests, facts or evidence) by a party are not precluded in appeal proceedings, but their admission is restricted, depending inter alia on the procedural stage at which the submissions are made (see e.g. T 356/08, point 2.1.1 of the Reasons, T 1685/07, point 6.4 of the Reasons; Brigitte Günzel, "The treatment of late submissions in proceedings before the boards of appeal of the European Patent Office", Special edition OJ EPO 2/2007, 30)."

3.3 There is no legal obligation under the EPC for a patent proprietor to take an active part in opposition proceedings, for example by filing at least a request, arguments or amended claims. However, if it chooses not to complete its submissions at the stage of the opposition proceedings, but rather to present or complete its case only in the appeal proceedings, then it will need to face the prospect of being held to account for such conduct by the Board when, for example, exercising its discretion under Article 12(4) RPBA.

3.4 This applies in particular if all the reasons for revocation of the opposed patent were known to the patent proprietor before it received the impugned decision.
In the present case the notice of opposition clearly indicated the grounds for opposition, together with the supporting evidence and submissions, and the appellant could and should have expected that the ground for opposition raised in the notice of opposition would most probably be dealt with in the decision of the opposition division. Due to the appellant's complete failure to participate in the opposition proceedings these facts had never been contested by the appellant and, therefore, could be regarded as uncontested.
There is nothing in the decision under appeal which goes beyond the content of the notice of opposition.

3.5 Thus, all the reasons for revocation of the opposed patent were known to the appellant before it received the impugned decision, and it could have reacted to them by at least requesting during the opposition proceedings the rejection of the opposition, i.e. maintenance of the patent as granted. Moreover, the appellant was given several opportunities to argue against the grounds for opposition or to react to them, see points IV and VI above. Consequently, at that stage the appellant could well have filed a request and/or arguments as it did with its statement setting out the grounds of appeal.

3.6 The reason given by the appellant for not reacting to the opposition was that it was persuaded that the grounds for opposition were unfounded and that the opposition division would reject the opposition without it needing to file any requests or arguments.
The Board notes that such motives cannot justify the appellant's complete failure to defend its patent that had been substantively opposed by the respondent. Even if the appellant thought that the objections submitted with the respondent's opposition would not compromise maintenance of the patent as granted and that it could refrain from submitting any arguments and evidence and from filing any request to counterbalance the opposition, this does not mean that it could not have done so or that it could await passively the final decision of the opposition division.
In view of the foregoing, the Board concludes that the appellant could well have defended the patent in suit in the opposition proceedings in response to the objections raised in the notice of opposition. Hence the Board considers that the provisions of Article 12(4) RPBA are pertinent for the present case.
Allowing the appellant to shift the defence of its patent entirely from the opposition proceedings to the appeal proceedings would be at odds with the judicial nature of appeal proceedings.

3.7 The Board is well aware that the appellant's main request is directed to setting aside the decision under appeal and to maintaining the patent as granted, and that not admitting its request and supporting submissions would create a situation where the appellant effectively cannot argue with the grounds for opposition on which the decision under appeal is based.
The appellant is right that in this respect the present case differs from the factual situation in case T 936/09.

3.8 However, the aforementioned consequence is direct result of the appellant's considered and deliberate choice not to respond at all to the objections submitted with the opposition during the opposition proceedings, and to defend its patent for the first time in appeal proceedings.
As argued by the respondent, the appellant effectively circumvented the opposition proceedings by defending its patent exclusively in the appeal proceedings. In this way, the appellant has tried to shift its case entirely to the second instance, thereby compelling the Board either to give a first ruling on the appellant's case or to remit the matter to the opposition division. Such a shifting of the appellant's case would also put the respondent at an unjustified disadvantage because if the appellant's main request were admitted and decided upon by the Board, at least the part of the appellant's case relating to the admissibility of documents E1, E3, E5 and E6 would have been dealt with only by the Board and the respondent would be factually deprived of an examination of that issue before two instances.

3.9 Furthermore, the Board cannot follow the appellant's argument that since the impugned decision examined the issue of inventive step in respect of the subject-matter of claim 1 of the patent as granted, and the appellant's main request is directed to maintenance of the patent as granted, the Board examining that request would not be dealing with a fresh case but would be acting as second instance for the same issue, namely whether the subject-matter of claim 1 of the patent as granted involves an inventive step, for the following reasons.

3.10 The respondent submitted with its opposition inter alia documents E1, E3, E5 and E6 supporting its prior-use based attack asserting that the subject-matter of claim 1 of the patent as granted lacked inventive step.
This evidence and the corresponding arguments were not contested by the appellant during the opposition proceedings. The opposition division, on the basis of said uncontested evidence, saw no reason not to follow the respondent's equally uncontested arguments and found that the subject-matter of claim 1 of the patent as granted did not involve an inventive step.
The appellant's action in contesting the admissibility of said evidence for the first time in its statement setting out the grounds of appeal means that the Board would have to start the examination of the present case anew, i.e. from a situation where the admissibility of the evidence leading to the impugned decision has been contested for the first time by the appellant.
Since the opposition division was prevented by the appellant's behaviour during the opposition proceedings from evaluating the admissibility of prior use evidence E1, E3, E5 and E6 in the light of the appellant's arguments, which were presented for the first time in its statement setting out the grounds of appeal, if the Board were now to evaluate the admissibility of that uncontested prior use evidence it would be examining the appellant's admissibility objections for the first time, rather than evaluating the decision under appeal about them, as the opposition division was not confronted with any such objections at any time.

3.11 For the above reasons, the Board, exercising its power under Article 12(4) RPBA, decided to hold inadmissible the appellant's main request and its supporting submissions.

4. The issue of whether the appellant's three auxiliary requests could be held admissible in the appeal proceedings is to be examined against the background of the conclusions set out above.

4.1 As stated by the appellant, claims 1 of its first to third auxiliary requests filed for the first time with its statement setting out the grounds of appeal are mainly based on combinations of the independent claim 1 with different dependent claims of the patent as granted.

4.2 Accordingly, claims 1 of said auxiliary requests are directed to subject-matter which has not been taken into consideration in the opposition division's decision, which was based only on claim 1 of the patent as granted.

4.3 This indisputably generates a fresh case for the Board to deal with.

4.4 The Board's reasoning above leading to excluding the appellant's main request from the appeal proceedings applies mutatis mutandis also to the auxiliary requests.
Hence, the Board, exercising its power under Article 12(4) RPBA, decided to hold inadmissible the appellant's three auxiliary requests.

5. Since there is no admissible request of the appellant on which the appeal proceedings could be based, the appeal must be dismissed.

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

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T140011.20140703. The whole decision can be found here. The file wrapper can be found here. Photo titled "fighting~Round one Rloha V.S Rmani - the winner is......" by Chung Shao Tung, unchanged, obtained via Flickr under CC BY-SA 2.0 license.


Friday, 22 August 2014

D 2/14 - From ´Fail´ to ´Pass´



The following concerns an appeal against a decision of the Examination Board which, in view of the appellant, was based on the Examination Board holding a factually erroneous view of the answer to statement 10.4 of the pre-examination of 2014 which resulted in the appellant obtaining an overall score of 68 and thereby being awarded a 'fail'.

Statement 10.4 read "Before the publication of EP-T, it is not possible to amend the description of EP-Tin order to delete embodiment X1."

The Examiners Report indicates that the statement should be considered "True", because: 
"Even if the applicant filed amended application documents with the EPO before the termination of the technical preparations for publication, only amended claims would be included in the publication but not an amended description, Rule 68(4) EPC."

The appellant argues in his appeal that the answer provided in the Examiners Report did not match the statement 10.4, and that the statement should rather be considered "False". (for further substantive discussion on statement 10.4, see, e.g., here).

According to Art. 24(3) of the Regulation on the European qualifying examination for professional representatives (REE), if the Examination Board or the Secretariat considers the appeal to be admissible and well-founded, it shall rectify its decision and order reimbursement of the fee for appeal. However, if the appeal is not allowed within two months from notification of the decision, it shall be remitted to the Disciplinary Board of Appeal of the EPO.

In the present decision, the appeal was not allowed and thus remitted to the Disciplinary Board.

Short English summary of the 'Entscheidungsgründe'
The Disciplinary Board agrees with the appellant in considering the answer to statement 10.4 provided in the Examiners Report to mismatch the statement, with this mismatch unduly working in the disadvantage of the appellant. The Disciplinary Board thus considers the appeal to be allowable. However, the Disciplinary Board considers that Art. 24(4) REE second sentence does not give the Board the power to, beyond setting aside a decision, also change a candidate´s marking.

It is then considered by the Disciplinary Board whether there are are 'special reasons' in accordance with Art. 12 of Additional Rules of Procedure of the Disciplinary Board of Appeal which would allow the Disciplinary Board to change the candidate's markings, rather than remitting the case to the Examination Board.

Art. 12 of said Additional Rules of Procedure reads as follows:

"If fundamental deficiencies are apparent in proceedings before the Disciplinary Body whose decision is under appeal or before the Examination Board, the Disciplinary Board of Appeal
shall remit a case to that Body or Board, unless special reasons present themselves for doing otherwise."

The Disciplinary Board indeed considers such special reasons to be present (see points 10-12), thereby, instead of remitting the case to the Examination Board, ordering a setting aside of the decision, the awarding 71 points to the appellant and the awarding a 'pass', and the reimbursement of the appeal fee.

See also similar decisions D 4/14, D 5/14 and D 6/14.

Entscheidungsgründe

Antrag auf Aufhebung der angefochtenen Entscheidung

1. Gemäß Artikel 24(1) VEP und nach ständiger Rechtsprechung der Beschwerdekammer (im Anschluss an D 1/92, ABl. EPA 1993, 357) sind Entscheidungen der Prüfungskommission grundsätzlich nur dahin zu überprüfen, ob nicht die VEP oder die bei ihrer Durchführung anzuwendenden Bestimmungen oder höherrangiges Recht verletzt sind. Es ist nicht die Aufgabe der Beschwerdekammer, das Prüfungsverfahren sachlich zu überprüfen. Den Prüfungsausschüssen und der Prüfungskommission steht nämlich im Grundsatz ein Beurteilungsspielraum zu, der nur sehr begrenzt der gerichtlichen Überprüfung zugänglich ist. Nur wenn der Beschwerdeführer geltend machen kann, dass die angegriffene Entscheidung auf schweren und eindeutigen Fehlern beruht, kann dies von der Kammer berücksichtigt werden. Der behauptete Fehler muss so offensichtlich sein, dass er ohne Wiedereröffnung des gesamten Bewertungsverfahrens und ohne wertende Neubetrachtung der Prüfungsarbeit festgestellt werden kann. Das ist etwa dann der Fall, wenn Prüfer bei ihrer Beurteilung von einer technisch oder rechtlich falschen Beurteilungsgrundlage ausgehen, so dass die angefochtene Entscheidung auf dieser beruht.

2. Laut dem Prüferbericht zur Vorprüfung 2014, der den Prüfern des Prüfungsausschusses IV als Beurteilungsgrundlage diente, liegt der Aussage 10.4 die Problemstellung zugrunde, ob eine Änderung der Beschreibung einer europäischen Patentanmeldung, die vor Veröffentlichung der Anmeldung eingereicht wird, in der Veröffentlichung berücksichtigt wird oder nicht (siehe Punkt V oben). In der Aussage 10.4, die von den Bewerbern mit "wahr" oder "falsch" zu bewerten war, fehlt indes eine Bezugnahme auf den Inhalt der Veröffentlichung. Die einleitenden Worte "Bis zur Veröffentlichung von EP-T ..." beziehen sich eindeutig auf die Veröffentlichung als maßgebenden Zeitpunkt, nicht auf den Inhalt der Veröffentlichung. Die Zweckangabe "... dass die Ausführungsform X1 gestrichen wird" lässt offen, in welcher Form die Streichung bewirkt werden soll. Dieser Nebensatz ist weder grammatikalisch auf die Veröffentlichung (geschweige denn deren Inhalt) zurückbezogen, noch lässt der Kontext des Aufgabenstammes (einleitender Teil) zweifelsfrei darauf schließen, dass die Streichung der Ausführungsform X1 in der Veröffentlichung der Anmeldung Eingang finden soll. Der Beschwerdeführer moniert zu Recht, dass in der Aufgabe jeglicher Hinweis fehlt, dass beabsichtigt ist, die Veröffentlichung der Ausführungsform X1 zu verhindern. Die Aussage 10.4 hätte anders formuliert werden müssen, um diese Zielsetzung zum Ausdruck zu bringen. Es konnte von den Bewerbern nicht erwartet werden, diese Zielsetzung als Annahme zu treffen, da die Regel 22(3) ABVEP den Bewerbern vorschreibt, sich auf die in der Prüfungsaufgabe genannten Tatsachen zu beschränken. Folglich liegt der Aussage 10.4 nach objektiven Maßstäben nicht die Fragestellung zugrunde, die die Beurteilungsgrundlage der Prüfer bildete.

2.1 Das Verständnis, von dem der Beschwerdeführer bei der Bearbeitung der Aussage 10.4 der Aufgabe 10 ausgegangen ist, ist aus objektiver Sicht gerechtfertigt. Die ein­leitenden Worte "Bis zur Veröffentlichung von EP-T ..." implizieren einen zeitlichen Aspekt, der für das Ver­ständnis der zugrundeliegenden Problemstellung maßgebend ist. Die Problemstellung ist demnach, ob der Anmelder bis zum Zeitpunkt der Veröffentlichung der Anmeldung EP-T die Beschreibung in der Weise ändern darf, dass er die Ausführungsform X1 streicht. Wiewohl die Möglichkeit zur Vornahme von Änderungen an der Beschreibung in zeitlicher Hinsicht vom Erhalt des Recherchenberichts und nicht von der Veröffentlichung der Anmeldung abhängt, ist diese Problemstellung im Kontext der Aussage 10.4 nicht abwegig, sondern im Lichte von Regel 10(5) ABVEP i.V.m. Regel 22(3) ABVEP als Prüfungsaufgabe vertretbar. In der Gesamtschau der einschlägigen Vorschriften (Regeln 137(2), 70a(1) und (2), 70(1) und (2), 68(1) sowie 65 EPÜ) musste keine Annahme getroffen werden, die über die vorgegebenen Tatsachen hinausgingen. Als Folge dieses Verständnisses war die Aussage 10.4 gerade anders zu bewerten, als der Prüferbericht zur Vorprüfung 2014 vorgab. Die Diskrepanz zwischen der Aufgabenstellung und der Beurteilungsgrundlage wirkte sich somit zu Ungunsten des Beschwerdeführers aus.

3. Im Ergebnis sind die Prüfer des Prüfungsausschusses IV bei ihrer Beurteilung der Aussage 10.4 der Vorprüfung 2014 von einer falschen Beurteilungsgrundlage ausgegangen, da dem Prüferbericht zur Vorprüfung 2014 in Bezug auf die Aussage 10.4 eine andere Problemstellung zugrunde lag, als sie nach objektivem Verständnis der zu bewertenden Aussage 10.4 entnommen werden konnte. Die angefochtene Entscheidung beruht nach dem Gesagten auf einem schweren und eindeutigen Fehler, der ohne wertende Neubetrachtung der Prüfungsarbeit feststellbar ist, da er allein auf die inhaltliche Bedeutung der konkreten Formulierung der Prüfungsaufgabe 10 und der Aussage 10.4 nach objektiven Verständnis abstellt. Die vom Beschwerdeführer gerügte Bewertung ist deshalb rechtsfehlerhaft erfolgt und der Beschwerde muss stattgegeben werden. Gemäß Artikel 24(4) VEP ist die angefochtene Entscheidung folglich aufzuheben und die Beschwerdegebühr zu erstatten.

4. Nach dem Wortlaut von Artikel 24(3) VEP muss das Organ, dessen Entscheidung angefochten wird (vorliegend die Prüfungskommission) der Beschwerde abhelfen, wenn es die Voraussetzungen hierfür als gegeben erachtet. Dies bedeutet auch, dass es der Prüfungskommission aufgegeben ist, das Vorliegen oder Nichtvorliegen dieser Voraussetzungen gründlich zu prüfen, bevor sie sich für oder gegen die Abhilfe entscheidet und in letzterem Fall die Beschwerde an die Beschwerdekammer weiterleitet (D 38/05 vom 17. Januar 2007, Punkt 3 der Entscheidungsgründe; D 4/06 vom 29. November 2006, Punkt 3 der Entscheidungsgründe). Auf dem Weg der Abhilfe kann in klaren und eindeutigen Fällen eine fehlerhafte Entscheidung rasch und auf einfachem Weg beseitigt und der bei einem Verfahren vor der Beschwerdekammer unumgängliche Zeitbedarf und Kostenaufwand erspart werden. Dies liegt im allseitigen Interesse, insbesondere aber im Interesse des Beschwerdeführers selbst (D 38/05 vom 17. Januar 2007, Punkt 2 der Entscheidungsgründe; D 4/06 vom 29. November 2006, Punkt 2 der Entscheidungsgründe). In Anbetracht der offensichtlichen Diskrepanz zwischen Aufgabenstellung und Beurteilungsgrundlage wäre seitens der Prüfungskommission Abhilfe (Artikel 24(3) VEP) geboten gewesen. Dies umso mehr, als das Bestehen der Vorprüfung der Europäischen Eignungsprüfung 2014 eine Bedingung für die Anmeldung zur Europäischen Eignungsprüfung ist (Artikel 11(7), letzter Satz, VEP).

Antrag auf Abänderung der angefochtenen Entscheidung

5. Der Beschwerdeführer beantragt, die Bewertung der Aussage 10.4 der Vorprüfung der Europäischen Eignungsprüfung 2014 richtig zu stellen, und die Prüfungsarbeit auf der Basis der richtig gestellten Punktezahl mit der Note "bestanden" zu bewerten.

6. Gemäß Artikel 24(4), zweiter Satz, VEP hat die Beschwerdekammer die angefochtene Entscheidung aufzuheben, falls die Beschwerde zulässig und begründet ist. Die Sache wird dann an die Prüfungskommission zurückverwiesen mit der Anordnung, eine neuerliche Bewertung der in Frage stehenden Prüfung vorzunehmen. Artikel 24(4), zweiter Satz, VEP gibt der Beschwerdekammer aber nicht die Befugnis, über die Feststellung einer Rechtsverletzung hinaus eine abweichende Bewertung einer Prüfung anzuordnen.

7. Die Beschwerdekammer hat die Frage geprüft, ob Artikel 12 der Ergänzenden Verfahrensordnung der Beschwerdekammer in Disziplinarangelegenheiten (Zusatzpublikation zum ABl. EPA 1/2014, 54) eine Grundlage dafür bilden kann, davon abzusehen, die Sache an die Prüfungskommission zurückzuverweisen und dieser anzuordnen, eine neuerliche Bewertung der Vorprüfung der Europäischen Eignungsprüfung 2014 vorzunehmen, weil besondere Gründe im Sinne dieser Bestimmung gegen die Zurückverweisung sprechen.

8. Besondere, gegen eine Zurückverweisung sprechende Gründe im Sinn von Artikel 12 der Ergänzenden Verfahrensordnung der Beschwerdekammer in Disziplinar­angelegenheiten wurden bislang in wenigen Ausnahmefällen angenommen (D 5/86, ABl. EPA 1989, 210, Punkt 9 der Entscheidungsgründe: Beschwerde gegen eine Disziplinarmaßnahme, Verfahrensdauer von 9 Jahren, mehrfache Anhörung eines Zeugen; D 11/91, ABl. EPA 1995, 721, Punkt 7.9 der Entscheidungsgründe: Beschwerde gegen eine Disziplinarmaßnahme, Verfahrensdauer von 7 Jahren; D 8/08 und D 9/08 vom 19. Dezember 2008, Punkt 8 der Entscheidungsgründe: Beschwerde gegen die Nichtzulassung zur Eignungsprüfung 2009, knappe Zeit bis zur Eignungsprüfung). Die Zurückhaltung ist angebracht, da die Beschwerdekammer im Falle eines Absehens von einer Rückverweisung im Rahmen der Zuständigkeit des Organs tätig wird, das die angefochtene Entscheidung erlassen hat. Diese Kompetenz besteht aufgrund von Artikel 24(4), erster Satz, VEP i.V.m. Artikel 22(3) VDV i.V.m. Artikel 111(1), 2. Satz, EPÜ. Bei Beschwerden gegen Entscheidungen der Prüfungskommission betreffend die Europäische Eignungsprüfung ist von der Möglichkeit gemäß Artikel 12 der Ergänzenden Verfahrensordnung der Beschwerdekammer in Disziplinarangelegenheiten, in der Sache zu entscheiden, nicht Gebrauch gemacht worden. Nach ständiger Rechtsprechung unterliegt nämlich die eigentliche Bewertung der Prüfungsleistung daraufhin, wie viele Punkte die jeweilige Antwort auf eine Prüfungsfrage verdient, nicht der Nachprüfung durch die Beschwerdekammer, ebenso wenig wie die Kriterien, aufgrund deren die Prüfungskommission die Wertigkeit der erwarteten Antworten auf die Prüfungsfragen bestimmt (vgl. D 7/05, ABl. EPA 2007, 378, Punkt 20 der Entscheidungsgründe). Dies ist gerechtfertigt, weil und soweit für die prüfungsspezifischen Wertungen ein Entscheidungsspielraum wesentlich ist und eine gerichtliche Kontrolle auf eindeutige ermessensmissbräuchliche Verfahrensverstöße bei der Bewertung der Prüfungsarbeiten beschränkt ist.

(...)

10. Der schwerwiegende Fehler bei der Aussage 10.4, den die Beschwerdekammer im Rahmen ihrer gerichtliche Kontrolle auf eindeutige ermessensmissbräuchliche Verfahrens­verstöße bei der Bewertung der Prüfungsarbeiten fest­gestellt hat, führt bei dieser Sachlage unmittelbar zu einer Korrektur der Wertung der Prüfungsarbeit des Beschwerdeführers, die auf der Grundlage des der Beschwerdekammer vorliegenden Antwortblatts des Beschwerdeführers ohne Eingriff in einen Ermessensspielraum des zuständigen Prüfungsausschusses bzw. der zuständigen Prüfungskommission nachvollzogen werden kann.

11. Hinzu kommt, dass die Bewertung der Vorprüfung der Europäischen Eignungsprüfung 2014 mit der Note "bestanden" eine Bedingung für die Anmeldung zur Europäischen Eignungsprüfung ist (Artikel 11(7), letzter Satz, VEP). Die vollständigen Anmeldeunterlagen der Bewerber, die sich zur Hauptprüfung 2015 anmelden möchten, müssen bis spätestens 8. September 2014 beim Prüfungssekretariat eingegangen sein. Daher besteht Dringlichkeit. Eine Zurückverweisung an die Prüfungskommission würde die zur Verfügung stehende Zeit weiter verkürzen.

12. Schließlich ist nach Auffassung der Beschwerdekammer auch dem Umstand Rechnung zu tragen, dass die Prüfungskommission ungeachtet der wohl begründeten und objektiv nachvollziehbaren Rüge einer Diskrepanz bei der Bewertung der Aussage 10.4 der Vorprüfung 2014 die fehlerhafte Entscheidung nicht auf dem Weg der Abhilfe beseitigt und damit auch nicht den Zeitaufwand eines Verfahrens vor der Beschwerdekammer erspart hat.

13. Diese Umstände stellen nach Auffassung der Beschwerdekammer besondere Gründe dar, die rechtfertigen, dass die Beschwerdekammer anstelle des zuständigen Prüfungsausschusses bzw. der zuständigen Prüfungskommission eine individuelle Bewertung der einzelnen Arbeiten unter Vergabe von Einzelpunkten und darauf basierend eine Vergabe der Noten "bestanden" oder "nicht bestanden" vornimmt.

14. Vorliegend hat der Beschwerdeführer die drei Aussagen 10.1, 10.2 und 10.3 der Vorprüfung 2014 korrekt beantwortet. Die Neubewertung der Aussage 10.4 führt nunmehr dazu, dass der Beschwerdeführer für die Aufgabe 10 fünf statt drei Punkte erhält. Damit erhöht sich die Gesamtpunktzahl seiner Arbeit von 69 auf 71 Punkte. Nach Regel 6(2)a) ABVEP ist für die Vorprüfung 2014 des Beschwerdeführers die Noten "bestanden" zu vergeben.

(...)

ENTSCHEIDUNGSFORMEL

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Die Prüfungsarbeit des Beschwerdeführers im Rahmen der Vorprüfung zur Europäischen Eignungsprüfung 2014 wird mit 71 Punkten bewertet. Nach Regel 6(2)a) ABVEP wird die Note "bestanden" vergeben.

3. Die Beschwerdegebühr wird zurückerstattet.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:D000214.20140722. The whole decision can be found here.

Photo from freedigitalphotos.net.

Tuesday, 19 August 2014

T 2182/10 - Translation of prior art documents




Old Style Labeling Equipment


This opposition appeal concerns a labeling device. Two Japanese language documents  D13(O) and D14 were filed during the opposition proceedings.  Translations were filed during the appeal period, first a machine translation later followed by a certified translation. For document D13(O), machine translation D13(O)' was filed about a month before oral proceedings;  a certified translation D13(O) " was filed three working days before the oral proceedings. 

The machine translation is quite reasonable,  but nevertheless provide some puzzling sections. For example, Claim 1 according to the main requests comprises 'a continuous paper tensioning device'. This feature is found in the guide rollers 7 of D13(O).  The machine translation of the section of  D13(O) that relates to guide rollers 7 reads as follows:


Fig. 6 shows the outline composition of this conventional kind of Label Printer, and 1
A printer body, The continuous paper for label printing in 2, the paper feed motor
with which 3 consists of stepping motors, The platen to which the step drives of 4 are
carried out by the paper feed motor 3, and the printing beef fat 5 and 6 which 5 is
provided in the opposed position of a platan and prints label data to the continuous
paper 1 are formed in the latter part of the printhead 5, and the cutter mechanism
which cuts the printed paper 2, and 7 The guide idler of the paper 2, It is a keyboard
with which the sensor for positioning of a label is allocated 8 and a numeric key, an
issue key, a feed key, etc. are allocated 2 .

If the issue key of the keyboard 9 is operated where issue number of sheets is set up
while carrying out a deer and inputting label data, the paper feed motor 3 operates and
the platen 4 rotates counterclockwise, and it will be conveyed while the continuous
paper 2 is guided to the guide idler 7 by this.

This is the corresponding part in the certified translation


In FIG. 6, which shows schematically the configuration of a conventional label printer of this type, the reference numbers denote the following:
1... printer body
2... continuous form for label printing
3... paper feed motor consisting of a stepping motor
4... platen driven stepwise by the paper feed motor 3
5... print head provided opposite the platen and serving to print label data on the continuous form 1

6... cutter mechanism provided subsequent to the print head 5 and serving to cut the form 2 on which printing has been completed
7 . . . guide rollers for the form 2
8... sensor for positioning of labels
9... keyboard on which are arranged numeric keys, an “issue” key, a “feed” key, etc.

Once label data has been input and the number of labels to issue has been set, then, if the “issue” key on the keyboard 9 is operated, the paper feed motor 3 operates and the platen 4 is rotated anticlockwise, with the result that the continuous form 2 is transported while being guided by the guide rollers 7.

 Even though the machine and certified translations were provided  relatively shortly before Oral proceedings, the Board admits the translations into the proceedings. It does not allow the first auxiliary requests filed at the oral proceedings, as it does not prima facie overcome D13(O).

Sections relating to document D14 have been omitted.



Reasons for the Decision

(...)
2. Late filed documents

Documents D13(O) and D14 were filed during the opposition proceedings after the nine months opposition period. They were therefore regarded as late filed so that the Opposition Division applied the criteria of prima facie relevance for deciding on their admission in the proceedings, which was contested by the respondent.

The translations D13(O)', D13(O)" and D14" were filed by the appellant during the appeal proceedings so that they were subject to the discretionary power of the Board for their admission in the proceedings. D14' was introduced by the Board with the annex. The respondent contested their admission.

D7A was introduced by the Board to be used instead of D7. As a matter of fact, D7A is a prior art document according to Article 54(2) EPC and, hence, can be used for assessing inventive step of the claimed subject-matter, contrary to D7. The admission of D7A in the proceedings was not contested by the parties.

2.1 Admission of document D13(O)

The appellant contested the Opposition Division's decision to not admit D13(O) in the proceedings. The Opposition Division held that prima facie some of the features of claim 1 were not present or suggested in the document (impugned decision, points 11 and 11.1).

As put forward by the Board in the annex, point 6.1.1, it appears that the Opposition Division considered only novelty for assessing the prima facie relevance (see also point 5 of the minutes of the oral proceedings before the Opposition Division). However, inventive step is also one of the conditions in order to assess the prima facie relevance of a document. Since this had not been done, the Board informed the parties in the annex that the prima facie relevance of document D13(O) would have to be re-considered for the Board to decide when exercising its discretionary power to admit it or not in the proceedings. The Board also further emphasized that, contrary to the written respondent's allegation, it could not find any hint in the impugned decision that the Opposition Division considered the disclosure of D13(O) as not going beyond that of D1-D12.

During the oral proceedings before the Board, the respondent, referring to Rule 3(3) EPC, put forward that a document filed in a language other than an official language of the EPO should be disregarded if a translation was not filed in due time. Since a translation of D13(O), especially the certified translation, was filed very late, i.e. only three working days before the oral proceedings, D13(O) should be disregarded and, hence, not admitted in the proceedings.

The Board could not share the respondent's view for the reason put forward by the appellant that a translation was not required for assessing that D13(O), in view of the English abstract and the figures, discloses the same solution as in the contested patent of reversing the feeding of the paper to be printed for exactly the same purpose of avoiding processing waste (D13(O), "Purpose" and last three lines of the abstract, figures 5 and 6; contested patent, [0034]). This disclosure of D13(O) was indeed relevant when assessing inventive step of the claimed subject-matter as can be derived from the following. Furthermore, regarding the filing of a translation, the Board merely invited the appellant to do so if in its possession without setting a time limit so that the conditions given in the last two sentences of Rule 3(3) EPC did not apply.

Therefore, the Board, applying its discretionary power, decided to admit D13(O) in the proceedings due to its prima facie relevance.

2.2 Translation documents D13(O)' and D13(O)"

In the annex to the summons to oral proceedings, the Board invited the appellant to provide, if in its possession, a proper translation of D13(O) in one of the official languages of the EPO.
In reaction, the appellant filed a machine translation in English (=D13(O)') with its letter dated 17 April 2014, i.e. around one month before the oral proceedings, and a certified translation in English (=D13(O)") with its letter dated 16 May 2014, i.e. three working days before the oral proceedings.
During the oral proceedings, the respondent contested their admission in the proceedings. It argued that a machine translation D13(O)' was not enough to properly and fully understand an original document and that the certified translation D13(O)" should have been filed earlier than three working days, i.e. de facto only two working days, before the oral proceedings. Because of this extremely short time available, it was not in a situation to consider and discuss the new document D13(O)" with its client and to react appropriately. Furthermore, no passage of the translations had been cited by the appellant so that it was left with studying the complete new documents D13(O)' and D13(O)" at a very late stage in the proceedings. The respondent further added that the certified translation D13(O)" should have been filed in due time, in particular in view of the fact that six years elapsed from the beginning of the opposition proceedings (Rule 3(3) EPC).

The Board could not share the respondent's view for the reasons put forward by the appellant during the oral proceedings. A translation of a prior art document in an official language of the EPO can be submitted at a stage later than the filing of the original document, as foreseen by Rule 3(3) EPC. Furthermore, the machine translation D13(O)' was already available to the respondent more than one month before the oral proceedings so that it had sufficient time to discuss its complete content with its client and to react accordingly. The quality of the machine translated document was at such a high level that a skilled reader could readily understand its technical content without difficulty. This holds all the more true when considering also the figures, in particular figure 5, of D13. The possible linguistic errors in D13(O)' were no obstacle to the understanding of its disclosure. Finally, in view of the discussions during the oral proceedings, the later filed certified translation D13(O)" did not add any technical information with respect to D13(O)'.

Further, the Board could not accept the respondent's approach to simply ignore D13(O)' filed one month before the oral proceedings, since, as derivable from the invitation to file a translation in the annex, it was aware that it could not be excluded that the Board would admit a translation of D13(O) in the proceedings.

For the above reasons, the Board decided to admit the translation documents D13(O)' and D13(O)" in the proceedings.

(...)

3.4 During the oral proceedings, the respondent further argued that the case should be remitted in view of the admission of the certified translation D13(O)", which was filed only two working days before the oral proceedings.

The Board did not share the respondent's view for the reasons given by the appellant. As already pointed out under point 2.2 above when discussing the admission of D13(O)' and D13(O)" in the proceedings, a machine translation of D13(O) was already available to the respondent more than one month before the proceedings in which all the necessary technical information was clearly and readily available to a skilled reader. D13(O)" did not include any additional technical information. The argument of only two working days leading to a lack of time for the respondent to revert and discuss the matter with the client could therefore not be followed. The appellant further cited T 557/94 (not published in OJ EPO, point 1.3 of the reasons) to support the fact that, even in case where documents are filed late in appeal, the Board can still decide to not remit the case to the department of the first instance.

In view of the above, the Board decided that the invoked reasons could not justify to remit the case to the department of first instance.

4. Main request (patent as granted)

(...)

4.2 Inventive step (Article 56 EPC)The appellant raised inventive step objections starting from either D14 or D13(O) as closest prior art.

(...)
4.2.2 Starting from D13(O)

In the following, it is essentially referred to D13(O) (abstract and figures) and D13(O)' since, as already indicated above when discussing admissibility of the documents, D13(O)" does not add any technical information to what could be derived from D13(O)'.

(a) Closest prior art D13(O)
D13(O) relates to labelling and printing machines on continuous paper, i.e. a neighbouring technical field to that of claim 1 of printing machines on adhesive tape, and intends as indicated in the following to solve the same problem of the contested patent (cf. paragraphs [0005] and [0034]), of avoiding processing waste. Therefore, the Board considers that D13(O) is, like D14, an appropriate starting point for assessing inventive step, contrary to the respondent's view.

As recalled by the Board in the annex, point 9.1, inventive step must be given irrespective of which of the available documents is selected as closest prior art, as long as it belongs to the relevant technical field. The respondent had therefore to expect that inventive step would be discussed at the oral proceedings in view of other documents than D14, at that time considered as being the best starting point, should it be concluded that the objection based on D14, preliminarily held valid by the Board, would not hold. This is all the more true since many other objections of lack of inventive step had been raised by the appellant. In particular, D13(O) had also been regarded as a possible starting point for inventive step in the statement of grounds of appeal, point 5.3.8, and the Board further explicitly informed the parties that the non-admission of D13(O) in the proceedings by the Opposition Division would have to be re-considered in view of its possible relevance for inventive step (annex, point, 6.1.1). Consequently, the respondent could not be surprised that inventive step was also discussed at the oral proceedings on the basis of D13(O).

(b) Disclosure of D13(O)
D13(O) discloses in the wording of claim 1 a labelling machine for printing labels, comprising:

- a tape reel of continuous paper (2) from which the labels are formed;
- a reel unwinding system comprising at least an unwinding roll (see figure 6) and a continuous paper tensioning device (7);
- a printing group (4, 5), comprising a printing system wherein the contact between the print head (5) and the continuous paper to be printed (2) is carried out by a driving roll (4), which cyclically inverts the rotation direction by the action of a paper feed motor (3);
- a cutting system (6) comprising:
- a cutting blade (6) which moves perpendicularly to the direction of the continuous paper to be cut, from which the labels are obtained;
- a counter-blade (see figure 5);
the cutting system (6) being adjacent to the printing group (4, 5) (D13(O), abstract and figures 5-6).

The translations D13(O)' and D13(O)" merely confirm the above recited disclosure of D13(O), i.e. the technical information available from the English abstract and figures 5-6. During the oral proceedings, at the very start of the discussion on inventive step in view of D13(O), the respondent, asked by the Board, stated that it understood the technical content provided in the late filed translation D13(O)" so that it did not need time to study the document. It also added that it would request an interruption of the oral proceedings, in case it would consider necessary to be allocated more time to further study D13(O)", which it did not do.

(c) Distinguishing features

D13(O) does not disclose the following non-optional features of claim 1:

(i) - the cutting blade has the cutting edge inclined of an angle comprised between 2° and 45°, preferably between 2° and 30° with respect to the tape to be cut;
(ii) - the blade and counter-blade cutting surfaces are covered with solid anti-adhesives;
(iii) - the machine comprises an applying pad;
and
(iv) the machine is for printing and applying labels on containers;
(v) an adhesive tape reel with a tape adhesivized on the internal side of the reel; and
(vi) the driving roll is of anti-adherent material.

As argued during the oral proceedings, the respondent considers that D13(O) concerns the printing of forms having always the same format on continuous paper, while claim 1 on the contrary relates to printing "labels" of different formats and texts on adhesive tape to be applied on containers.
The Board, however, following the appellant's view, considers that these arguments do not disqualify D13(O) as an appropriate starting point for inventive step for the reasons given under point (a) above and, further, that the term "label" as such cannot be seen as leading to a distinguishing feature over D13(O) since it has a broad meaning and, hence, also encompasses the type of "label" disclosed by D13(O) (cf. abstract). The respondent's argument that the claimed machine aims at printing different label formats and/or texts cannot be regarded as concerning a distinguishing feature over D13(O), since, as referred to by the Board during the oral proceedings, a corresponding feature is not included in claim 1 of the main request.

The respondent is further of the opinion that, in addition to the above features, D13(O) does not disclose that the cutting system is adjacent to the printing group.

The Board cannot share the respondent's view for the reasons put forward by the appellant during the oral proceedings that "adjacent" does not mean "directly adjacent" in the sense that the cutting system and the printing group would be in contact or located within a specific distance from each other. The term "adjacent" has indeed a broad meaning and, hence, also encompasses the constructional design shown in figure 5 of D13(O), in which the cutting mechanism (6) is "adjacent" to the printing group (4, 5). This feature could therefore not be regarded as a distinguishing feature of the subject-matter of claim 1 over the machine known from D13(O).

(d) Technical effects of the distinguishing features

The technical effects of features (i), (ii) and (iii) are already discussed under point 4.2.1.(d) above. The technical effect of features (i) and (ii) is to avoid any build-up of adhesive residues both on the blade and on the counter-blade. The technical effect of feature (iii) is to apply the label onto the product.

As discussed during the oral proceedings the technical effect of features (iv), (v) and (vi) is regarded as to render the machine suitable for printing and applying labels of adhesive tape on containers.

(e) Problems to be solved

The first partial problem derived from the effect of features (i) and (ii) on one side and the second partial problem derived from the effect of feature (iii) on the other side are already given under point 4.2.1.(e) above.

With respect to features (iv), (v) and (iv), as put forward by the appellant during oral proceedings, the third partial problem to be solved is regarded as to render the machine of D14(O) suitable for using adhesive tape to be applied on containers.

(f) Obviousness

With respect to features (i) and (ii), the skilled person, when combining D7A with D13(O) will, contrary to the discussion under point 4.2.1.(f) above, keep this time the inverting mechanism of D13(O) since the latter is not linked to the cutting mechanism but rather intends to reversely feed the paper in order to bring the leading edge of the paper (2) back to the printing position for avoiding waste (D13(O), abstract, "without cutting in the halfway"; confirmed by D13(O)', page 1, line 28 to page 2, line 15 and D13(O)", page 2, line 24 to page 3, line 25). The skilled person will find no technical difficulty to apply the solution known from D7A to the cutting mechanism of D13(O) so that features (i) and (ii) do not support an inventive step.

The respondent's argument that the skilled person would rather look in D5 for a solution to the problem derived from the cutting mechanism since, inter alia, D5 relates to a linerless label like D14, cannot be followed since this does not prevent the skilled person from contemplating the combination of D7A with D13(O).

For the same reasons as given under point 4.2.1.(f) above, feature (iii) cannot support an inventive step.

If, as discussed during the oral proceedings, the skilled person is, depending on circumstances, faced with the problem of adapting the machine of D13(O) for the use of adhesive tape corresponding to feature (v), he will use and apply his common general knowledge to prevent the tape from sticking to the contacting parts of the machine. By doing so he will implement the necessary constructional measures and come up with solutions according to features (iv) and (vi) in an obvious manner. As put forward by the appellant, when adapting the machine of D13(O), the skilled person will also immediately consider of inverting the reel shown in figure 6 of D13(O) in order to obtain the printing face of the tape in front of the printing head (5) within the framework of his common general knowledge. Therefore, features (iv), (v) and (vi) cannot support an inventive step.

In addition, as discussed during the oral proceedings, the machine of D13(O) is suitable for printing a single page/label. It is indeed computer-controlled and the number "N" of pages/labels to be printed can be set to "1", which is in fact the value by default. Printed single pages/labels are unambiguously applicable to containers (see D13(O)', page 2, line 46 to page 3, line 10 or D13(O)", page 4, last paragraph).

As a result of the above, the skilled person starting from D13(O) and using the teaching of D7A together with his common general knowledge will arrive at the claimed subject-matter in an obvious manner (Article 56 EPC).

5. First auxiliary request - Admissibility in the proceedings

5.1 The respondent filed the first auxiliary request at the very beginning of the oral proceedings.
As a result of the late filing, the admission of the first auxiliary request in the proceedings is subject to the discretionary power of the Board as set out in Article 13(1) RPBA.

5.2 Amendments (Articles 123(2) and (3) EPC)
Claim 1 of the first auxiliary request corresponds to independent process claim 16 of the patent as granted; dependent claims 2-9 of the first auxiliary request are based on dependent claims 17-24 of the patent as granted.

The requirements of Articles 123(2) and (3) EPC are therefore fulfilled. This was not contested by the appellant.

5.3 General arguments

5.3.1 The respondent argued that, since claim 1 of the first auxiliary request corresponds to claim 16 of the patent as granted, i.e. has been in the proceedings from the very beginning, and has never been discussed exhaustively, neither in opposition nor in appeal proceedings (see points 8.2 and 9.2 of the annex), the first auxiliary request should be admitted and the case be remitted to the department of first instance for further prosecution on the basis of this request in order to preserve the respondent's right of two instances.

It also added that first auxiliary request should be admitted in reaction to the admission of the late filed translations of D13(O) and D14 in the proceedings.

5.3.2 The Board, however, cannot find in the Rules of Procedure of the Boards of Appeal or the EPC, as apparently suggested by the respondent, a mechanism of automatism that would force the Board at the oral proceedings to admit any late filed request once a late filed document would have been admitted in the proceedings. In fact, for each late filed submission, be it a document or a request, the Board has to exercise its discretionary power based on applying criteria independently in order to ensure objective decisions. There is indeed no absolute right of admissibility of requests (R 1/13, not published in OJ EPO).

In fact, for the reasons already given under point 2 above, the late filed translations of D14 and D13(O), a fortiori the documents D14 and D13(O) themselves, could not be regarded as being new facts and/or evidence coming as a surprise to the respondent at the oral proceedings before the Board which would justify to admit late filed auxiliary request(s).

As already put forward under point 3.3 above and again argued by the appellant during the proceedings, there is no absolute right for a party to have an issue decided by two instances.
In the present case, in relation to the requirement of procedural economy, the Board examined, as indicated to the parties during the oral proceedings, whether the new late filed request would be prima facie allowable in that it overcomes objection(s) regarded as validly raised against the main request and does not raise any new issues.

Consequently, during the oral proceedings, the discussion on admissibility of the late filed auxiliary request(s) focused on whether the objection of lack of inventive step starting from D13(O) raised against claim 1 of the main request appeared prima facie overcome or not.

5.4 Prima facie overcoming inventive step objection(s)

5.4.1 The respondent argued that the following feature of claim 1:

"the tape (5) enters the cutting system (2) moving in a direction perpendicular to the cutting blade (2a); the blade (2a) cuts the tape maintaining a preferably constant inclination; the contact point between the blade (2a) and counterblade (2b) during the cut moves transversally in a continuous way through the tape section (5)"

would enable prima facie to overcome the objection of lack of inventive step.

It considered that none of the documents D13(O) and D7A discloses a constant inclination of the blade as claimed. The contested patent, as shown in figure 2, more particularly the top view, clearly shows that the cutting blade (2a) is inclined with respect to the moving direction of the tape or to the counterblade (2b), the latter being in a plane perpendicular to the moving direction of the tape. This inclination of the cutting blade (2a) with respect to the moving direction of the tape has the technical effect to obtain a tape cut perpendicularly, while moving. It has the advantage of obtaining a perpendicular cut, i.e. a rectangular label, without having to stop the machine or to implement an additional cutting station.

5.4.2 The Board could not share the respondent's view for the following reasons put forward by the appellant during the oral proceedings.

The respondent's interpretation that the feature of claim 1 "preferably constant inclination" has the meaning that the blade is necessarily inclined but "preferably" at a constant angle over all its length cannot be followed. Indeed, due to the word "preferably" used, this feature can also be seen as optional, i.e. claim 1 also encompassing blades with no inclination. Such a feature, which can be considered as optional, cannot support inventive step.

Furthermore, the inclination shown in figure 2 of the contested patent, i.e. perpendicularly to the moving direction of the tape, is not included in claim 1. It is in fact not specified in claim 1 how or about what the blade is to be inclined. D7A, figure 1, also discloses an inclined mobile blade (2a) about an axis perpendicular to the plane of the sheet so that this feature is also known from D7A. When implementing the solution of the cutting mechanism of D7A into the machine of D13(O), the skilled person will certainly envisage to incline the cutting blade accordingly, arriving at the claimed subject-matter in an obvious manner.

Finally, contrary to the respondent's view, although explicit from claim 1 that the tape is moving when entering the cutting mechanism, the claim is silent on whether the tape actually moves or not during the actual cutting process. Therefore, the alleged technical effects and/or advantages put forward by the respondent of obtaining a rectangular label without having to stop the machine or to implement an additional cutting station are not to be considered since not based on features defined in claim 1.

Consequently, as indicated during the oral proceedings, claim 1 of the first auxiliary request does not appear prima facie to overcome the objection of lack of inventive step raised against claim 1 of the main request. The Board thus decided to not admit the first auxiliary request in the proceedings (Article 13(1) RPBA).

As a result, the respondent's request to remit the case to the department of the first instance on the basis of this request cannot be granted either.

6. Objection under Rule 106 EPC

6.1 At the oral proceedings, after the Board informed the parties about the conclusion of its deliberation to not admit the first auxiliary request in the proceedings, the respondent raised an objection under Rule 106 EPC on the grounds that the proceedings was not fair since, on one hand D13(O) and D14 were admitted in the proceedings, with their late filed certified translations, two days before the oral proceedings for D13(0), while on the other hand the first auxiliary request restricted to the process claims of the patent as granted, i.e. claims already in the proceedings from the very beginning, was not admitted in the proceedings. Furthermore, its right to be heard was violated since it had not enough time for contacting and discussing the late filed certified translation of D13(O) with its client as two working days were certainly not sufficient.

6.2 However, the respondent did not add any further arguments with respect to those already discussed, on one hand, for the admission of the late filed documents D13(O), D14 and their translations D13(O)', D13(O)", D14' and D14" and, on the other hand, the admissibility of the first auxiliary request.

The respondent's unsubstantiated objection did not point to any procedural deficiency to be remedied. In view of this objection, the Board did not see a reason to change its findings on the substantive issues which had already been discussed.

As put forward above, the Board applied the appropriate criteria independently for exercising its discretionary power in deciding on the admission of, on one hand, the late filed documents and, on the other hand, of the first auxiliary request. A fair treatment does not require that a party losing on one issue should win on the next one in order to obtain a balanced situation. In order to safeguard fairness, each issue subject to the Board's discretionary power has to be and has presently been decided by applying the appropriate criteria for each issue independently. This is exactly how the Board proceeded. Consequently, it could not find any lack of fairness to be remedied.

Concerning the alleged violation of the right to be heard, as already referred to above, the late filed certified translation of D13(0) (=D13(O)") did not add any technical information that the respondent could not have found and understood in the machine translation D13(O)' for it to revert and discuss with its client within one month before the oral proceedings. In the annex to the summons for oral proceedings, the Board explicitly mentioned D13(O) as potentially relevant for inventive step with even an invitation for filing a translation, so that the respondent could not simply ignore D13(O)' in its preparation for the oral proceedings. For the Board, the objection based on only two days having been available for the preparation for the oral proceedings could therefore not hold.

The respondent was made aware of the grounds which were intended to substantiate both issues - admission of late filed documents and their translations; inadmissibility of the first auxiliary request - and had obviously opportunities, at least during the oral proceedings, to take position on both issues. Its comments made in using these opportunities were carefully considered by the Board.

Consequently, the respondent's right to be heard according to Article 113(1) EPC was safeguarded (see Case Law of the Boards of Appeal, 7th Edition 2013, III.B.1.1, 1.2, 2.1.1 b)).

As a result, the Board dismissed the objection.

7. Second auxiliary request - Admissibility in the proceedings

7.1 Like the first auxiliary request, the respondent filed the second auxiliary request at the very beginning of the oral proceedings.

As a result of the late filing, the admission of the second auxiliary request in the proceedings is subject to the discretionary power of the Board as set out in Article 13(1) RPBA.

7.2 Amendments (Articles 123(2) and (3) EPC)
Claim 1 of the second auxiliary request corresponds to the combination of independent process claim 16 and dependent claim 22 of the patent as granted; dependent claims 2-8 of the second auxiliary request are based on dependent claims 17-21, 23-24 of the patent as granted.
The replacement in claim 1 of "container" by "package" is disclosed for instance in the description of the application as originally filed, column 1, lines 3-7, or in original claim 22.
The requirements of Articles 123(2) and (3) EPC are therefore fulfilled. This was not contested by the appellant.

7.3 Prima facie allowability

7.3.1 For the same reasons as for the first auxiliary request, as a matter of procedural economy concern, the Board examined whether the new late filed request would enable prima facie to overcome the objection regarded as validly raised against the main request.

7.3.2 The respondent argued that the following feature of claim 1:
"the sizes and the label text of the packaging line packages can be varied from one package to another even more times or in a continuous way, without interrupting the production cycle."
would enable prima facie to overcome the objection of lack of inventive step.
It argued that none of the documents D13(O) and D7A discloses this feature. In particular, the machine of D13(O) explicitly continuously produces the same label, which is contrary to claim 1 (D13(O)', page 1, lines 4-6 or D13(O)", page 1, lines 24-25).

7.3.3 This was not contested by the appellant which put forward that the respondent had more than one month after having received the machine translation D13(O)' to react and file its auxiliary request. Consequently, such a late filed request should not be admitted in the proceedings.

7.3.4 The Board, however, shares the respondent's view that the appellant could not be surprised by a combination of features from claims of the patent as granted, especially when the features taken from the dependent claim (claim 22 in present case) relate to the core of the discussion in opposition and appeal proceedings (see impugned decision, points 22 and 23.3; statement of grounds of appeal, point 5.2 iii)). Since, on one hand, the combination of D13(O) and D7A does not appear prima facie to lead the skilled person in an obvious manner to the subject-matter of claim 1 of the second auxiliary request and, on the other hand, the new set of claims does not appear to introduce new issue(s) which would have not been discussed so far in the proceedings, the Board does not see any reason to not admit the second auxiliary request in the proceedings.

7.3.5 The decision under appeal dealt exclusively with the machine claims of the patent as granted, which are no longer comprised in the second auxiliary request of the respondent. Therefore, taking into account that the set of process claims according to the second auxiliary request appears prima facie to overcome the lack of inventive step objections raised in the course of the appeal proceedings, the Board considers it appropriate to exercise its discretion under Article 111(1) EPC to remit the case to the Opposition Division for further prosecution on its basis.

Since "prima facie" merely sets a first hurdle by definition, the Opposition Division will have to consider in the course of the further prosecution, inter alia, whether the claims of the second auxiliary request actually comply with the requirements of Article 56 EPC.

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance for further prosecution on the basis of the second auxiliary request (claims 1 to 8) filed during the oral proceedings on 21 May 2014.

 

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T218210.20140521. The whole decision can be found here. The file wrapper can be found here. Photo by Kanko obtained via Flickr.


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