T 1903/13 - Diverging auxiliary requests
In this appeal in opposition, the Board considered it to be within the board's discretion not to admit auxiliary requests which define subject-matter "diverging" from subject-matter of higher ranking requests, including those requests which, in essence, were filed during first-instance proceedings and re-filed with the respondent's reply, but were not examined by the first-instance department.
Summary of Facts and Submissions
I. The opponent appealed against the interlocutory decision of the opposition division maintaining European patent No. 1211500 in amended form.
Opposition had been filed against the patent as a whole and based on the grounds of Article 100(a) EPC, together with Articles 54(1) and 56 EPC, Article 100(b) EPC and Article 100(c), together with Article 123(2) EPC.
The opposition division had found that the patent as amended according to a second auxiliary request then on file and the invention to which it related met the requirements of the EPC.
II. Oral proceedings before the board were held on 27 April 2017.
The opponent-appellant requested that the decision of the opposition division be set aside and that the patent be revoked.
The patent proprietor-respondent requested that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of
- the claims of the Main Request, i.e. claims 1 to 11 according to then Auxiliary Request II as filed in the oral proceedings before the Opposition Division and found to meet the requirements of the EPC, with the description pages including new pages 5, 11, 12 and 14 as filed with a letter of 24 February 2017;
- claims 1 to 11 of Auxiliary Request I,
- claims 1 to 10 of Auxiliary Request II,
- claims 1 to 8 of Auxiliary Request III,
- claims 1 to 8 of Auxiliary Request IV,
all claims of the auxiliary requests as filed with a letter of 19 March 2014.
In response to the patentee filing Auxiliary Requests I to IV, the opponent further requested that none of Auxiliary Requests I to IV be admitted into the proceedings.
III. Independent claim 1 according to the main request reads as follows:
"A rolling bearing apparatus with sensor comprising:
a sensor unit (35) retaining a plurality of types of sensors in a single holder (33), said sensors detecting the status of a rolling bearing,
wherein the plurality of types of sensors are at least two types of sensors of a rotation speed sensor (27a), a temperature sensor (29a) and a vibration sensor (40),
characterized by
the rolling bearing apparatus further comprising one of a surge absorber protecting a sensor circuit of the sensor unit (35) from a surge voltage for eliminating a noise, or a Zener diode protecting a sensor circuit of the sensor unit (35) from a surge voltage for eliminating a noise,
and by the rolling bearing apparatus further comprising a reference voltage generation circuit (52) located within said sensor holder (33) for supplying a reference voltage to at least one of said temperature sensor and said vibration sensor."
Independent claim 1 according to the first auxiliary request differs from claim 1 of the main request in that it comprises the following additional feature:
"wherein a constant voltage regulator, a DC-DC converter, a reference voltage IC, or a constant voltage diode is used as the reference voltage generation circuit (52)".
Independent claim 1 according to the second auxiliary request differs from claim 1 of the main request in that it comprises the following additional feature:
"wherein outputs from at least one of said temperature sensor (29a), and said vibration sensor (40) are in the form of current".
Independent claim 1 according to the third auxiliary request differs from claim 1 of the second auxiliary request in that it comprises the following additional feature:
"the rolling bearing apparatus further comprising:
inner (5) and outer rings (4) rotating relative to each other such that one of said inner (5) and outer rings (4) is a rotating ring and the other is a stationary ring;
a plurality of rolling elements (6) rotatably disposed between a raceway (7) formed on an inner surface of said outer ring (4), and a raceway (8) formed on an outer surface of said inner ring (5); and
an encoder (19) supported on said rotating ring or a portion rotating together with said rotating ring, and rotating together with said rotating ring,
wherein said sensor unit (35) is disposed close to said encoder (19) in such a manner as to oppose said encoder (19), at said stationary ring or a portion supporting said stationary ring,
the rolling bearing apparatus further comprising:
a nut (14) disposed on an end of a shaft so as to position said inner ring in an axial direction of said shaft,
a housing being the portion supporting said stationary ring; and
a cover (22a) attached to said housing,
wherein said encoder (19) is disposed between said inner ring and said nut (14) in the axial direction or on an outer surface of said nut (14), and
wherein said sensor unit (35) is attached to one of said housing and said cover (22a)".
Independent claim 1 according to the fourth auxiliary request differs from claim 1 of the second auxiliary request in that it comprises the following additional feature:
"wherein further each of signal lines extending from said sensors (27a,29a,40) is twisted with a ground line, and said twisted signal lines are shielded individually".
IV. The following documents relied on in the first-instance opposition proceedings will be referred to in the present decision:
D2: WO 98/11356
D6: US 5,158,374
Reasons for the Decision
1. Main request
1.1 The opponent raised objections against claim 1 of the main request under Article 100(c) and (b) EPC. After a debate during oral proceedings, the board decided not to sustain the opponent's objections. The board sees no need to explain its stance on these objections in the present decision. This is because the subject-matter of claim 1 of the main request lacks an inventive step, and the detailed reasons for this finding are stated at point 1.31.3 below.
1.2 Construction of the claim wording
1.2.1 During oral proceedings, contrary to its written statement in its letter of 20 March 2017, page 8, second paragraph, the opponent argued that the expression of claim 1 "reference voltage generation circuit" merely meant a "circuit providing any voltage which can be known" without comprising any other special technical properties. The board agrees with the opponent on this interpretation. Indeed, claim 1 does not comprise any technical feature characterizing the "reference voltage generation circuit" other than by the fact that it is located within the sensor holder and by the fact that it supplies a "reference voltage" to a sensor. However, a "reference voltage", in its broadest meaning, has no special technical meaning other than that its value can be known and that it can be used as a general reference. For instance, it is left open by the wording of the claim whether the "reference voltage" is a constant voltage or a non-constant voltage.
The patentee referred to paragraphs [0063] and [0064] of the patent for explaining that the "reference voltage generation circuit" of claim 1 provided a "voltage having an invariable, accurate value" and that "the circuit sends a constant reference voltage to the temperature sensor", "thereby enabling accurate measurement of a temperature" (see page 11 of the patent, lines 18, 32 and 27, respectively). While the board acknowledges that the description discloses concrete attributes of the "reference voltage generation circuit", these limiting features cannot be used to limit the scope of claim 1 with respect to the prior art disclosure because they are not mentioned in the claim (see Case Law of Boards of Appeal, eighth edition, sections II.A.6.3.2. and II.A.6.3.4.).
1.2.2 The term "sensor" in the expression of claim 1 "... for supplying a reference voltage to at least one of said temperature sensor and said vibration sensor" covers, in its broadest meaning, not only the basic sensor component but also any additional electrical components for operating the basic sensor component and for delivering a usable output signal. Indeed, except from its location in the sensor holder and its functionality to sense rotation speed, temperature or vibration, claim 1 does not comprise any other characterizing features of the "sensor".
1.3 Inventive step
The claimed subject-matter lacks an inventive step in view of the disclosure of D2 and D6 (Article 56 EPC 1973).
[...]
2. First auxiliary request
2.1 Admissibility
The opponent objected to the admissibility of the first auxiliary request into the appeal proceedings for the reason that it was filed for the first time during appeal proceedings and comprised features taken from the description which might require a new study of the prior art. For the opponent, the first auxiliary request should have been filed during first instance opposition proceedings.
The board cannot follow this reasoning. The first auxiliary request was filed by the patentee together with its reply to the opponent's appeal, i.e. at the earliest possible point in time of the appeal proceedings. The board sees no reason why the patentee should have filed this request earlier, since claim 1 of the present main request, which has a broader scope than claim 1 of the present first auxiliary request, was found compliant with the requirements of the EPC by the opposition division. In addition, claim 1 of the first auxiliary request represents an unsurprising and reasonable attempt to clarify and restrict the scope of the invention as defined in claim 1 of the main request.
Therefore, the board decides to admit the first auxiliary request into the appeal proceedings.
2.2 Inventive step
The claimed subject-matter, however, lacks an inventive step in view of the disclosure of D2 and D6 (Article 56 EPC 1973).
[...]
3. Second to fourth auxiliary requests
3.1 The second to fourth auxiliary requests were in essence already filed but not examined during first-instance opposition proceedings and re-filed during appeal proceedings by the patentee with the reply to the opponent's statement of grounds of appeal.
Except for the deletion of an alternative feature in claim 1, i.e. an electromagnetic interference filter, the second to fourth auxiliary requests are identical to the respective auxiliary requests already filed during first-instance opposition proceedings. However, the opposition division had to decide neither on the admissibility nor on the patentability of the subject-matter of these three auxiliary requests because it maintained the patent on the basis of a higher ranking request.
3.2 The opponent requested that the second to fourth auxiliary requests not be admitted into the proceedings because they were directed to subject-matter which did not converge with the subject-matter of the main request and first auxiliary request.
3.3 The board decides to sustain the opponent's request for the following reasons:
3.3.1 The main purpose of the opposition appeal proceedings is to give the parties an opportunity to have the decision of the opposition division reviewed. However, if the patentee, as in the present case, desires to have claim requests reviewed different from those underlying the decision of the opposition division, it is settled case law that the board has a discretion to admit or not these new requests into the appeal proceedings based on whether these new requests fulfil certain criteria (e.g. T 840/93, point 3.1; T 1685/07 point 6.4). Pursuant to Article 123(1) EPC, "The European patent may be amended in proceedings before the European Patent Office ...". From this wording it ensues that a board of appeal has discretion to admit or not new requests into opposition appeal proceedings. In other words, there is no absolute right for the patentee to file amendments. How the board should exercise its discretion to admit parties' submissions is defined inter alia in Article 12(4) RPBA.
3.3.2 Article 12(4) RPBA reads as follows: "Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2)".
3.3.3 According to the first part of the sentence of Article 12(4) RPBA, everything filed with the statement of grounds of appeal or the reply is part of the proceedings, except for facts, evidence and requests which could have been presented or were not admitted in the first-instance proceedings. In the present case, despite the fact that the second to fourth auxiliary requests were in essence filed during first-instance proceedings and re-filed with the respondent's reply, the consequence seemingly implied by the first part of the sentence of Article 12(4) RPBA that any requests filed with the statement of grounds of appeal shall be taken into account by the boards, does not apply because these requests were not examined by the opposition division. Otherwise, Article 12(4) RPBA would make it compulsory for the boards of appeal to deal with requests that the opposition division would, in proper exercise of its discretion, not have admitted. Article 12(4) RPBA cannot be construed as restricting the exercise of the discretion under Article 123(1) EPC in such circumstances. No automatic admissibility of auxiliary requests filed during first-instance opposition proceedings and presented under Article 12(1) RPBA can therefore be deduced from Article 12(4) RPBA.
3.3.4 In the context of admittance or not of the present auxiliary requests, the board also notes the pertinent established case law of the boards of appeal. According to this case law the admissibility of amendments depends, among other things, on whether the amended claims converge with or diverge from the subject-matter previously claimed, i.e. whether they develop and increasingly limit the subject-matter of the claims in the same direction and/or in the direction of a single inventive idea, or whether they entail different lines of development because, for instance, they each incorporate different features (see "Case Law of the Boards of Appeal", 8th edition 2016, section IV.E.4.4.4). Indeed, in case T 1685/07, point 6.5, the board concluded that "convergence" or "divergence" was a relevant criterion for the restrictive handling of the admissibility of auxiliary requests.
The present board shares this view and considers that amendments in auxiliary requests should represent a convergent development.
3.3.5 Apart from that, the board notes that the second part of the sentence of Article 12(4) RPBA according to which everything shall be taken into account if and to the extent it relates to the case under appeal, has to be understood in the light of the forementioned "convergence principle" as established in the case law: subject-matter of lower ranking requests which does not converge with the subject-matter of higher ranking requests by comprising features which restrict its scope within the line of development defined by the amendments of the higher ranking requests, i.e. which does not follow the same inventive concept as that of the higher ranking requests, may be considered as not relating to the case under appeal within the meaning of Article 12(4) RPBA and, hence, need not be taken into account in the appeal proceedings.
3.3.6 Present claim 1 of the second to fourth auxiliary requests is considered by the board as diverging from claim 1 of the main request and the first auxiliary request.
Claim 1 of the main request and of the first auxiliary request has been amended with respect to claim 1 of the patent as granted by adding the features of a "reference voltage generation circuit" and of a "constant voltage regulator, a DC-DC converter, a reference voltage IC, or a constant voltage diode used as the reference voltage generation circuit", respectively. In other words, the amendments related to a voltage supply to the sensors.
Claim 1 of the second to fourth auxiliary requests has been amended with respect to claim 1 of the first auxiliary request by deleting the feature which has been added previously to claim 1 of the first auxiliary request and by replacing it by a sensor output in form of current. Claim 1 of the third and fourth auxiliary request have been further amended by adding features relating to mechanical aspects (third auxiliary request) or to twisted signal lines (fourth auxiliary request).
These amendments of claim 1 of the second to fourth auxiliary requests, instead of forming a consistent development of the claimed subject-matter in the direction defined by the consecutive amendments carried out in the higher ranking requests, represent new lines of development diverging from the inventive concept of the main request and the first auxiliary request, i.e. the electrical power supply of the sensors.
3.3.7 Therefore, the board, in exercising its discretion under Article 123(1) EPC, holds the second to fourth auxiliary requests inadmissible for not being convergent with the line of development defined by the main request and the first auxiliary request.
3.4 Counter-arguments by the patentee
The patentee argued that the second to fourth auxiliary requests had been filed in a slightly different form already during the first-instance proceedings, that the filing of the auxiliary requests did not constitute an abuse of procedure and that there was at least a partial convergence with the main request and the first auxiliary request in the sense that claim 1 of all requests defined features for eliminating noise. The patentee also argued that the admissibility of the auxiliary requests should have been decided at the beginning of the oral proceedings which would have allowed the patentee to modify the order of the auxiliary requests.
The board is not convinced by the patentee's counter-arguments for the following reasons:
- As explained above, the board has a discretion not to admit diverging auxiliary requests, including those requests which were filed during first-instance proceedings and re-filed with the respondent's reply but were not examined by the first-instance department.
- The question whether an abuse of procedure occurred in filing the second to fourth auxiliary requests was neither raised by the opponent nor by the board and had no influence on the decision taken by the board in the present case.
- The feature of a Zener diode for eliminating noise was already present in claim 1 as granted. The subsequent amendments of claim 1 of the main request and the first auxiliary request, however, do not contain features related to the elimination of noise (see also point 1.3 above). Therefore, even if it were assumed that the amended features of claim 1 of the second to fourth auxiliary requests, which do not explicitly refer to the elimination of noise, effectively define means for eliminating noise, the aspect of elimination of noise does not represent a consistent development of the amendments of the claims.
- It is the patentee's task and responsibility to present the requests in the order according to which the requests are to be examined by the opposition division and the board.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
I. The opponent appealed against the interlocutory decision of the opposition division maintaining European patent No. 1211500 in amended form.
Opposition had been filed against the patent as a whole and based on the grounds of Article 100(a) EPC, together with Articles 54(1) and 56 EPC, Article 100(b) EPC and Article 100(c), together with Article 123(2) EPC.
The opposition division had found that the patent as amended according to a second auxiliary request then on file and the invention to which it related met the requirements of the EPC.
II. Oral proceedings before the board were held on 27 April 2017.
The opponent-appellant requested that the decision of the opposition division be set aside and that the patent be revoked.
The patent proprietor-respondent requested that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of
- the claims of the Main Request, i.e. claims 1 to 11 according to then Auxiliary Request II as filed in the oral proceedings before the Opposition Division and found to meet the requirements of the EPC, with the description pages including new pages 5, 11, 12 and 14 as filed with a letter of 24 February 2017;
- claims 1 to 11 of Auxiliary Request I,
- claims 1 to 10 of Auxiliary Request II,
- claims 1 to 8 of Auxiliary Request III,
- claims 1 to 8 of Auxiliary Request IV,
all claims of the auxiliary requests as filed with a letter of 19 March 2014.
In response to the patentee filing Auxiliary Requests I to IV, the opponent further requested that none of Auxiliary Requests I to IV be admitted into the proceedings.
III. Independent claim 1 according to the main request reads as follows:
"A rolling bearing apparatus with sensor comprising:
a sensor unit (35) retaining a plurality of types of sensors in a single holder (33), said sensors detecting the status of a rolling bearing,
wherein the plurality of types of sensors are at least two types of sensors of a rotation speed sensor (27a), a temperature sensor (29a) and a vibration sensor (40),
characterized by
the rolling bearing apparatus further comprising one of a surge absorber protecting a sensor circuit of the sensor unit (35) from a surge voltage for eliminating a noise, or a Zener diode protecting a sensor circuit of the sensor unit (35) from a surge voltage for eliminating a noise,
and by the rolling bearing apparatus further comprising a reference voltage generation circuit (52) located within said sensor holder (33) for supplying a reference voltage to at least one of said temperature sensor and said vibration sensor."
Independent claim 1 according to the first auxiliary request differs from claim 1 of the main request in that it comprises the following additional feature:
"wherein a constant voltage regulator, a DC-DC converter, a reference voltage IC, or a constant voltage diode is used as the reference voltage generation circuit (52)".
Independent claim 1 according to the second auxiliary request differs from claim 1 of the main request in that it comprises the following additional feature:
"wherein outputs from at least one of said temperature sensor (29a), and said vibration sensor (40) are in the form of current".
Independent claim 1 according to the third auxiliary request differs from claim 1 of the second auxiliary request in that it comprises the following additional feature:
"the rolling bearing apparatus further comprising:
inner (5) and outer rings (4) rotating relative to each other such that one of said inner (5) and outer rings (4) is a rotating ring and the other is a stationary ring;
a plurality of rolling elements (6) rotatably disposed between a raceway (7) formed on an inner surface of said outer ring (4), and a raceway (8) formed on an outer surface of said inner ring (5); and
an encoder (19) supported on said rotating ring or a portion rotating together with said rotating ring, and rotating together with said rotating ring,
wherein said sensor unit (35) is disposed close to said encoder (19) in such a manner as to oppose said encoder (19), at said stationary ring or a portion supporting said stationary ring,
the rolling bearing apparatus further comprising:
a nut (14) disposed on an end of a shaft so as to position said inner ring in an axial direction of said shaft,
a housing being the portion supporting said stationary ring; and
a cover (22a) attached to said housing,
wherein said encoder (19) is disposed between said inner ring and said nut (14) in the axial direction or on an outer surface of said nut (14), and
wherein said sensor unit (35) is attached to one of said housing and said cover (22a)".
Independent claim 1 according to the fourth auxiliary request differs from claim 1 of the second auxiliary request in that it comprises the following additional feature:
"wherein further each of signal lines extending from said sensors (27a,29a,40) is twisted with a ground line, and said twisted signal lines are shielded individually".
IV. The following documents relied on in the first-instance opposition proceedings will be referred to in the present decision:
D2: WO 98/11356
D6: US 5,158,374
Reasons for the Decision
1. Main request
1.1 The opponent raised objections against claim 1 of the main request under Article 100(c) and (b) EPC. After a debate during oral proceedings, the board decided not to sustain the opponent's objections. The board sees no need to explain its stance on these objections in the present decision. This is because the subject-matter of claim 1 of the main request lacks an inventive step, and the detailed reasons for this finding are stated at point 1.31.3 below.
1.2 Construction of the claim wording
1.2.1 During oral proceedings, contrary to its written statement in its letter of 20 March 2017, page 8, second paragraph, the opponent argued that the expression of claim 1 "reference voltage generation circuit" merely meant a "circuit providing any voltage which can be known" without comprising any other special technical properties. The board agrees with the opponent on this interpretation. Indeed, claim 1 does not comprise any technical feature characterizing the "reference voltage generation circuit" other than by the fact that it is located within the sensor holder and by the fact that it supplies a "reference voltage" to a sensor. However, a "reference voltage", in its broadest meaning, has no special technical meaning other than that its value can be known and that it can be used as a general reference. For instance, it is left open by the wording of the claim whether the "reference voltage" is a constant voltage or a non-constant voltage.
The patentee referred to paragraphs [0063] and [0064] of the patent for explaining that the "reference voltage generation circuit" of claim 1 provided a "voltage having an invariable, accurate value" and that "the circuit sends a constant reference voltage to the temperature sensor", "thereby enabling accurate measurement of a temperature" (see page 11 of the patent, lines 18, 32 and 27, respectively). While the board acknowledges that the description discloses concrete attributes of the "reference voltage generation circuit", these limiting features cannot be used to limit the scope of claim 1 with respect to the prior art disclosure because they are not mentioned in the claim (see Case Law of Boards of Appeal, eighth edition, sections II.A.6.3.2. and II.A.6.3.4.).
1.2.2 The term "sensor" in the expression of claim 1 "... for supplying a reference voltage to at least one of said temperature sensor and said vibration sensor" covers, in its broadest meaning, not only the basic sensor component but also any additional electrical components for operating the basic sensor component and for delivering a usable output signal. Indeed, except from its location in the sensor holder and its functionality to sense rotation speed, temperature or vibration, claim 1 does not comprise any other characterizing features of the "sensor".
1.3 Inventive step
The claimed subject-matter lacks an inventive step in view of the disclosure of D2 and D6 (Article 56 EPC 1973).
[...]
2. First auxiliary request
2.1 Admissibility
The opponent objected to the admissibility of the first auxiliary request into the appeal proceedings for the reason that it was filed for the first time during appeal proceedings and comprised features taken from the description which might require a new study of the prior art. For the opponent, the first auxiliary request should have been filed during first instance opposition proceedings.
The board cannot follow this reasoning. The first auxiliary request was filed by the patentee together with its reply to the opponent's appeal, i.e. at the earliest possible point in time of the appeal proceedings. The board sees no reason why the patentee should have filed this request earlier, since claim 1 of the present main request, which has a broader scope than claim 1 of the present first auxiliary request, was found compliant with the requirements of the EPC by the opposition division. In addition, claim 1 of the first auxiliary request represents an unsurprising and reasonable attempt to clarify and restrict the scope of the invention as defined in claim 1 of the main request.
Therefore, the board decides to admit the first auxiliary request into the appeal proceedings.
2.2 Inventive step
The claimed subject-matter, however, lacks an inventive step in view of the disclosure of D2 and D6 (Article 56 EPC 1973).
[...]
3. Second to fourth auxiliary requests
3.1 The second to fourth auxiliary requests were in essence already filed but not examined during first-instance opposition proceedings and re-filed during appeal proceedings by the patentee with the reply to the opponent's statement of grounds of appeal.
Except for the deletion of an alternative feature in claim 1, i.e. an electromagnetic interference filter, the second to fourth auxiliary requests are identical to the respective auxiliary requests already filed during first-instance opposition proceedings. However, the opposition division had to decide neither on the admissibility nor on the patentability of the subject-matter of these three auxiliary requests because it maintained the patent on the basis of a higher ranking request.
3.2 The opponent requested that the second to fourth auxiliary requests not be admitted into the proceedings because they were directed to subject-matter which did not converge with the subject-matter of the main request and first auxiliary request.
3.3 The board decides to sustain the opponent's request for the following reasons:
3.3.1 The main purpose of the opposition appeal proceedings is to give the parties an opportunity to have the decision of the opposition division reviewed. However, if the patentee, as in the present case, desires to have claim requests reviewed different from those underlying the decision of the opposition division, it is settled case law that the board has a discretion to admit or not these new requests into the appeal proceedings based on whether these new requests fulfil certain criteria (e.g. T 840/93, point 3.1; T 1685/07 point 6.4). Pursuant to Article 123(1) EPC, "The European patent may be amended in proceedings before the European Patent Office ...". From this wording it ensues that a board of appeal has discretion to admit or not new requests into opposition appeal proceedings. In other words, there is no absolute right for the patentee to file amendments. How the board should exercise its discretion to admit parties' submissions is defined inter alia in Article 12(4) RPBA.
3.3.2 Article 12(4) RPBA reads as follows: "Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2)".
3.3.3 According to the first part of the sentence of Article 12(4) RPBA, everything filed with the statement of grounds of appeal or the reply is part of the proceedings, except for facts, evidence and requests which could have been presented or were not admitted in the first-instance proceedings. In the present case, despite the fact that the second to fourth auxiliary requests were in essence filed during first-instance proceedings and re-filed with the respondent's reply, the consequence seemingly implied by the first part of the sentence of Article 12(4) RPBA that any requests filed with the statement of grounds of appeal shall be taken into account by the boards, does not apply because these requests were not examined by the opposition division. Otherwise, Article 12(4) RPBA would make it compulsory for the boards of appeal to deal with requests that the opposition division would, in proper exercise of its discretion, not have admitted. Article 12(4) RPBA cannot be construed as restricting the exercise of the discretion under Article 123(1) EPC in such circumstances. No automatic admissibility of auxiliary requests filed during first-instance opposition proceedings and presented under Article 12(1) RPBA can therefore be deduced from Article 12(4) RPBA.
3.3.4 In the context of admittance or not of the present auxiliary requests, the board also notes the pertinent established case law of the boards of appeal. According to this case law the admissibility of amendments depends, among other things, on whether the amended claims converge with or diverge from the subject-matter previously claimed, i.e. whether they develop and increasingly limit the subject-matter of the claims in the same direction and/or in the direction of a single inventive idea, or whether they entail different lines of development because, for instance, they each incorporate different features (see "Case Law of the Boards of Appeal", 8th edition 2016, section IV.E.4.4.4). Indeed, in case T 1685/07, point 6.5, the board concluded that "convergence" or "divergence" was a relevant criterion for the restrictive handling of the admissibility of auxiliary requests.
The present board shares this view and considers that amendments in auxiliary requests should represent a convergent development.
3.3.5 Apart from that, the board notes that the second part of the sentence of Article 12(4) RPBA according to which everything shall be taken into account if and to the extent it relates to the case under appeal, has to be understood in the light of the forementioned "convergence principle" as established in the case law: subject-matter of lower ranking requests which does not converge with the subject-matter of higher ranking requests by comprising features which restrict its scope within the line of development defined by the amendments of the higher ranking requests, i.e. which does not follow the same inventive concept as that of the higher ranking requests, may be considered as not relating to the case under appeal within the meaning of Article 12(4) RPBA and, hence, need not be taken into account in the appeal proceedings.
3.3.6 Present claim 1 of the second to fourth auxiliary requests is considered by the board as diverging from claim 1 of the main request and the first auxiliary request.
Claim 1 of the main request and of the first auxiliary request has been amended with respect to claim 1 of the patent as granted by adding the features of a "reference voltage generation circuit" and of a "constant voltage regulator, a DC-DC converter, a reference voltage IC, or a constant voltage diode used as the reference voltage generation circuit", respectively. In other words, the amendments related to a voltage supply to the sensors.
Claim 1 of the second to fourth auxiliary requests has been amended with respect to claim 1 of the first auxiliary request by deleting the feature which has been added previously to claim 1 of the first auxiliary request and by replacing it by a sensor output in form of current. Claim 1 of the third and fourth auxiliary request have been further amended by adding features relating to mechanical aspects (third auxiliary request) or to twisted signal lines (fourth auxiliary request).
These amendments of claim 1 of the second to fourth auxiliary requests, instead of forming a consistent development of the claimed subject-matter in the direction defined by the consecutive amendments carried out in the higher ranking requests, represent new lines of development diverging from the inventive concept of the main request and the first auxiliary request, i.e. the electrical power supply of the sensors.
3.3.7 Therefore, the board, in exercising its discretion under Article 123(1) EPC, holds the second to fourth auxiliary requests inadmissible for not being convergent with the line of development defined by the main request and the first auxiliary request.
3.4 Counter-arguments by the patentee
The patentee argued that the second to fourth auxiliary requests had been filed in a slightly different form already during the first-instance proceedings, that the filing of the auxiliary requests did not constitute an abuse of procedure and that there was at least a partial convergence with the main request and the first auxiliary request in the sense that claim 1 of all requests defined features for eliminating noise. The patentee also argued that the admissibility of the auxiliary requests should have been decided at the beginning of the oral proceedings which would have allowed the patentee to modify the order of the auxiliary requests.
The board is not convinced by the patentee's counter-arguments for the following reasons:
- As explained above, the board has a discretion not to admit diverging auxiliary requests, including those requests which were filed during first-instance proceedings and re-filed with the respondent's reply but were not examined by the first-instance department.
- The question whether an abuse of procedure occurred in filing the second to fourth auxiliary requests was neither raised by the opponent nor by the board and had no influence on the decision taken by the board in the present case.
- The feature of a Zener diode for eliminating noise was already present in claim 1 as granted. The subsequent amendments of claim 1 of the main request and the first auxiliary request, however, do not contain features related to the elimination of noise (see also point 1.3 above). Therefore, even if it were assumed that the amended features of claim 1 of the second to fourth auxiliary requests, which do not explicitly refer to the elimination of noise, effectively define means for eliminating noise, the aspect of elimination of noise does not represent a consistent development of the amendments of the claims.
- It is the patentee's task and responsibility to present the requests in the order according to which the requests are to be examined by the opposition division and the board.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
This decision T 1903/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T190313.20170427. The file wrapper can be found here. Photo "Divergent" by Bart Everson obtained via Flickr under CC BY 2.0 license (no changes made).
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Sorry, but I find this is outrageous. The BoAs cut down the right of an appellant more and more. It appears they want to be a "supreme or consitutrional court" rather than a first instance court that has to deal with technical questions. I hope the German constitutional court has these restrictions on proper judical review in mind when it decides the pending complaints.
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