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T 1254/11 Enlarging and reducing the opposition division

In this decision the board of appeal dealt with enlarging and reducing the opposition division and changing the chairman. It reviews the case law, discusses who and in which composition should take the decision and whether or not such decisions should be public. In this case, the board concludes that the opposition division made substantial procedural violations but was lawfully enlarged and, at a later stage, lawfully reduced again. The board therefore decides not the remit the case back to the opposition division. The board also decides not to refer the case to the Enlarged Board of Appeal but instead more or less answers the raised issues.

1. An opposition division enlarged to four members pursuant to Article 19(2) EPC 1973 can in principle be reduced again to three members. It is for the four-person panel to decide on the reduction. In this respect the board concurs with T 990/06. In deciding on the reduction, the opposition division consisting of four members must properly exercise its discretion. (See point 1.4)

2. The board assumes arguendo that the fact that no decision to enlarge nor a decision to reduce the opposition division was added to the publicly available file and the fact that the appointment of the new chairman could only be traced from the internal register of the EPO both constitute fundamental deficiencies of the proceedings before the opposition division.

However, different from the situation in T 990/06, it is possible to determine from the file that the division was lawfully enlarged and, at a later stage, lawfully reduced again. (See points 1.6 and 1.7)
The board considers that these circumstances constitute special reasons for not remitting the case within the meaning of Article 11 RPBA. The aforementioned fundamental deficiencies assumed arguendo are of a formal nature. They would, in the board's view, not justify substantially delaying the proceedings. (See point 1.9)

T 1990/10 - Combining ranges

Can you puzzle the claimed range from multiple disclosed ranges?

The claims in this Opposition appeal contained ranges that were taken by combining ranges in the description. 

Claims 1 and 4 of the main request contained the ranges 'below 35°'C and 'about 26°C to 32°C'. Although these ranges are not explicitly disclosed, numerous other ranges are disclosed which might be combined to obtain the claimed ranges.  

For example, can you get 'below 35°'C from the disclosed ranges "below 37°C"  and "30°C to 35°C"? The board thinks not. In part because the qualifiers 'below' and 'about' are not disclosed correctly for the combined ranges.

The proprietor appellant (Appellant I) did not attend oral proceedings or respond in substance to the preliminary opinion. In response, the board canceled the oral proceedings.

T 2191/13 - Recognition doesn't confer novelty

In this opposition appeal, the proprietor argues that the prior art does not disclose a particular claim feature, namely a selection of a component of a glue-system being made in dependence on knowledge of the substrate and processing condition under which the glue-system is to be used.

The Board considers this difference as follows:

Ein rein auf gedanklicher Ebene bestehender, nämlich sich ausschließlich auf das Vorhandensein einer Erkenntnis gründender Unterschied zum Stand der Technik kann, ohne dass dieser einen Niederschlag in den technischen Merkmalen des Anspruchsgegenstandes findet, die Neuheit nicht begründen (Punkte 12.3 und 12.4 der Entscheidungsgründe)

Headnote (translated and paraphrased)
A difference with respect to the state of the art which exists solely in an abstract recognition, without there being a manifestation of the abstract recognition in the technical measures of the claimed object, does not confer novelty (points 12.3 and 12.4 of the Reasons)

Of further interest is point 12.4 in which the Board hypothesises that if such a difference were to confer novelty, this would imply that in order to demonstrate infringement, it would have to be proven that such knowledge (on the substrate and processing conditions) would have been in the mind of an infringer when performing the selection, which according to the Board demonstrates the invalidity of this hypothesis.

T 399/13 - No why, so inadmissible

When filing the appeal against the decision from the Opposition Division, the appellant filed three new sets of amended claims and arguments as to their allowability, but did not give a reasoning why the appealed decision was wrong. Without this necessary link between the contested decision and the statement of grounds, the appeal was held inadmissible by the Board.

T 108/12 A divisional application in the inescapable trap

The application of this appeal procedure is a divisional application. The Opponent argued during the Opposition procedure and during the Appeal Procedure that the divisional application extends beyond the disclosure of the mother application. This case shows once again that one has to be careful in changing something in the divisional application. The details of this case are a little bit mathermatical and the reasoning of the Board is strongly based on what would the skilled person in the field of security/encryption consider to be the teaching of the original application. One point of discussion is: Does the mother application provide enough support for  f(α)=f'(α) (as claimed in the divisional application), if the mother application teaches f(α)=f'(α)=α? Another point of discussion was: Does the mother application provide enough support for "a specific signature is kept private" (as claimed in the divisional application) while the mother application discloses that, in certain embodiments, the signature is not transmitted.
Ok, there were problems with support of the divisional application in the mother application, but the proprietor finally ends up in the inescapable trap. It is somehow sad to end up in the inescapable trap.

T 1649/10 - Closest prior art switching

The Opposition division denied patentability of the Main Request based on a document D10 as the closest prior art and then the teaching of D4 that suggested the use of the missing feature (a scatterer). The patent was maintained in amended form based on an auxiliary request. The opponent (appellant I) and the proprietor (appellant II) appealed. The Board Appeal decided that the appeal of appellant II was inadmissible because in the statements of grounds it was argued that there was inventive step when taking D4 as the closest prior art in view of D10. The Board decided that such simple 'turning around' of the closest prior art is not allowed. Importantly, appellant II did not provide arguments why D4 should be considered as the closest prior art in the statements of grounds, which would have made the appeal admissible. The end result was that appellant II was 'out of the game' and could not put forward any new arguments and new auxiliary requests. Even worse: the patent was revoked, while before the appeal procedure there was at least an auxiliary request that was held allowable. The lesson is: Even if you think that the earlier selected closest prior art is in your eyes not the closest prior art, at least argue WHY you think that is, not simply start from the closest prior art that you prefer.  

Summary of Facts and Submissions
I. The appeals lie from the interlocutory decision of the opposition division to maintain European patent No. 1 378 265 in an amended form. The decision was dispatched on 16 June 2010.
II. The opposition, which led to the decision appealed in the present case, was filed against the patent as a whole and based on the ground that the claimed subject-matter was not patentable (Article 100 (a) EPC 1973) because it was not new (Articles 52(1) and 54 EPC 1973) and did not involve an inventive step (Articles 52(1) and 56 EPC 1973).
III. In the "Reasons" for its decision to maintain the patent in amended form, the opposition division held that the subject-matter of claim 1 of the patent as granted did not involve an inventive step in the sense of Article 56 EPC 1973. In the analysis developed by the opposition division according to the problem/solution approach, the opposition division relied on the teaching of document D10 [...] as closet [sic] prior art. Since the sole difference between the claimed subject-matter and document D10 resided, in the opposition division's view, in the presence of a scatterer, the problem solved by the invention was to enlarge the irradiation beam and consequently to increase the speed of treatment. According to the opposition division, the skilled person would have found a solution to the problem of enlargement of the charged particle beam in document D4 [...].
The opposition division decided to maintain the patent as amended according to the first auxiliary request then pending. The objective problem of reducing the loss of particles at the edges of the treatment region, defined with regard to document D10 as closest prior art, was not addressed in D4.

T 823/11 Excessive length of proceedings

The Board of Appeal considered the examination proceedings excessively long (11 years between supplementary search report and oral proceedings). This was seen as a substantial procedural violation. The same holds for the lack of reasoning in the communications and decision of the examining division. The Board sets out the case law on both issues.
The Board does not remit the case but takes over and orders the auxiliary request (which was not admitted by the examining division) to be granted.

T 336/14 - Providing instructions with a device

No instructions were provided with this blood orange

This opposition appeal concerns a blood treatment machine which is distinguished from the prior art by displaying "operating instructions for readying the machine for use" and at least two "pictographs which represent configurations of the machine correlated to the operating instructions".

These features are on the one hand presentation of information but on the other hand are related to technical interaction with a machine. Unfortunately for the proprietor these technical aspects do not save his claim. 

I find the discussion also interesting because the claim is close to claim 3 of EQE Paper C of 2008 (pdf). Already then candidates who wanted to become an attorney had to argue that providing novel instructions together with a device does not render the claim inventive. Nevertheless, so many years later the discussion of this problem by the board shows that this question is not as straightforward as might at first glance seem.

T 265/11 - Late correction of translation not allowed

Japanese homework

The main request of the proprietor had been rejected by the opposition division because of added subject matter. One month before the oral proceedings in the appeal procedure the proprietor filed an improved translation of the original Japanese claims as filed. The EPC provides that throughout the proceedings before the European Patent Office, a translation may be brought into conformity with the application as filed (Art. 14(2) EPC) so this seems allowed. Nevertheless, the board is displeased with this tactic and ignores the new translation

T 2411/13 - applicants response overlooked

In the decision to refuse, the Examining Division stated that the applicant had already been informed about failing the EPC requirements in an earlier communication. The Examining Division also stated that no comments had been filed in response to that earlier communication. The latter statement was however not correct: the applicant has filed a letter with arguments. The Board decided it an infringement of the right to be heard, resulting in an insufficiently reasoned decision, and a substantial procedural violation.