Friday, 23 March 2018

T 1719/13 - Live with your untidiness


In this opposition appeal, both the proprietor and the opponent appealed the decision of the Opposition Division to maintain the patent in amended form. Besides the main request of maintaining the patent as granted, the proprietor filed a 2nd auxiliary request corresponding to the request held allowable by the OD, although did not specifically mention in the grounds of appeal that these requests were the same. The proprietor's 1st auxiliary request was identical to his 2nd, except for the addition of a new dependent claim 5, which was added to establish identical dependency as in the underlying PCT application.
The Board did not admit the1st auxiliary request into the proceedings, since the amendment was not occasioned by the impugned decision or by a new objection raised by the opponent. Rather, the request was viewed by the Board as an attempt to tidy up the allowable claim set and thus not admissible under Art. 12(4) RPBA.
The Board further observed that for admissibility under Art. 12(4), compliance with Rule 80 EPC is not the decisive factor.
The opponent attempted to argue that the proprietor's 2nd auxiliary request was inadmissible because it was not readily apparent from the proprietor's written submissions that the request corresponded to the request allowed by the OD, in contravention of Art. 12(2) RPBA. The Board held that there is no requirement under this article to indicate in the grounds of appeal that a claim request has already been submitted in the first-instance proceedings.
The 2nd auxiliary request was found admissible and was allowed.

Summary of Facts and Submissions
I. The present appeals of the proprietor (appellant 1) and of the opponent (appellant 2) lie from the opposition division's interlocutory decision finding that European patent No. 1 807 165 in amended form and the invention to which it relates meet the requirements of the EPC.
II. The opposition division held that the ground for opposition pursuant to Article 100(c) EPC prejudiced the maintenance of the patent as granted. The patent in amended form according to auxiliary request I underlying the impugned decision was found to comply with the requirements of the EPC. In particular, the requirements of Articles 123(2) and (3), 83, 54 and 56 EPC were held to be met. The claims of this request correspond to the claims as granted, with claims 7, 8 and 13 to 15 deleted.
IV. With its notice of appeal, appellant 1 filed eight auxiliary requests.
V. Claim 1 of the main request (patent as granted) and of auxiliary requests I and II reads as follows:
"1. A method for forming a filter element having a coiled web (106) of fluted filter media (108), the method comprising, feeding the web (106) of fluted filter media (108) at a controlled linear speed, characterized in that the web of fluted filter media (108) is fed at said controlled speed onto a mandrel (112) rotated by a winding motor (118) providing a controlled driving torque to the mandrel (112), and that thereby a controlled tension on the web (106) of fluted filter media (108) is maintained as the web (106) is wound onto the mandrel (112)."
VI. The claims dependent on claim 1 of auxiliary request I at issue correspond to the claims dependent on claim 1 of auxiliary request I found allowable by the opposition division (cf. II above), except for the addition of claim 5 (corresponding to claim 6 as originally filed).
VII. Independent apparatus claim 7 of auxiliary request II corresponds to its granted counterpart and reads as follows:
VIII. The arguments of appellant 1 which are relevant to the present decision may be summarised as follows:
Appellant 1's appeal was admissible.
Article 100(c) EPC did not prejudice the maintenance of the patent as granted, in particular because the language in claim 7 was clear, such that it was irrelevant whether the cutter was fixed at a fixed location along the feed path or not.
In auxiliary request I, new claim 5 was added, which was literally based on claim 2 but referred to claim 3 in order to establish identical dependency as in the underlying PCT application.
Auxiliary request II corresponded to the request held allowable by the opposition division. Auxiliary request II complied with the requirements of Articles 123, 83, 54 and 56 EPC.
IX. The arguments of appellant 2 which are relevant to the present decision may be summarised as follows:
Appellant 1's appeal was inadmissible because appellant 1 in its statement of grounds of appeal provided arguments only with respect to the requirement of Article 123(2) EPC.
All requests infringed the requirements of Articles 123(2) and 83 EPC. In particular, the dependencies in claims 7 and 8 as granted led to added subject-matter, as did the replacement of "thereby" with "and that thereby". In the independent claims, the expressions "a controlled linear speed", "a controlled driving torque" and "a controlled tension" were unclear and led to insufficiency of disclosure. Auxiliary requests I and II should not be admitted. The set of claims found allowable by the opposition division and corresponding to present auxiliary request II infringed Article 123(3) EPC and was directed to subject-matter which was not patentable, because the subject-matter of claims 1 and 7 lacked novelty over A3, A7 or A8 or at least was obvious in view thereof. The subject-matter of independent claims 1 and 7 of auxiliary request II was obvious in particular in view of the combination of A3 and A9.
X. Requests
Appellant 1 requests that the decision under appeal be set aside and the patent maintained as granted (main request), or in the alternative, on the basis of auxiliary request I as filed with the notice of appeal, or that the appeal of appellant 2 be dismissed and the patent be maintained on the basis of auxiliary request II as found allowable by the opposition division, or on the basis of one of auxiliary requests III to VIII as filed with the notice of appeal.
Appellant 2 requests that the decision under appeal be set aside and that the patent be revoked.
Reasons for the Decision
1. Admissibility of appellant 1's appeal
1.1 According to appellant 2, appellant 1's appeal should be rejected as inadmissible because appellant 1 in its statement of grounds of appeal provided arguments only with respect to the requirement of Article 123(2) EPC but did not submit any arguments with respect to the grounds for opposition under Articles 100(a) and 100(b) EPC.
1.2 The board observes that in the present case the claims of the patent as granted (main request before the opposition division and also present main request) were held to contain added subject-matter, i.e. that the ground for opposition according to Article 100(c) EPC prejudiced the maintenance of the patent as granted (see section 2.1.6 of the reasons of the impugned decision). The impugned decision does not state that any further ground for opposition prejudiced the maintenance of the patent as granted. Auxiliary request I underlying the impugned decision was then held to comply with the requirements of the EPC (see section 6.5).
1.3 Hence to comply with the requirement of Rule 99(2) EPC it is sufficient for appellant 1 to set out in its grounds for appeal why the ground for opposition pursuant to Article 100(c) EPC did not prejudice the maintenance of the patent as granted, i.e. why in its view the patent as granted did not contain added subject-matter.
As appellant 1's grounds of appeal include an explicit statement of why it did not agree with the findings of the opposition division with respect to the claims as granted (cf. page 2, third paragraph: "This is not justified for the following reasons") and provide supporting arguments, appellant 1's appeal is sufficiently substantiated to meet the requirement of Rule 99(2) EPC.
1.4 Appellant 1's appeal is therefore admissible.
2. Main request (patent as granted) - Article 100(c) EPC
2.1 Appellant 2 objects inter alia to claims 7 and 8 because their dependencies would create added subject-matter.
2.2 It is common ground that claims 7 and 8 correspond to originally filed claims 10 and 12 which refer to claim 9 as originally filed, the latter being deleted from the claims as granted, i.e. form the claim of the main request.
Claims 7 and 8 of the main request therefore contain subject-matter going beyond the content of the application as filed.
2.3 Thus, the main request is not allowable because the ground for opposition pursuant to Article 100(c) EPC prejudices the maintenance of the patent as granted.
3. Auxiliary request I - admissibility
3.1 This request corresponds to auxiliary request I found allowable by the opposition division, except for the addition of dependent claim 5 (corresponding to claim 6 as originally filed).
3.2 It is undisputed that a request including present dependent claim 5 could have been filed in the proceedings before the opposition division. The admittance of this request into the proceedings was thus at the board's discretion (Article 12(4) RPBA).
3.3 In its grounds of appeal, appellant 1 argued only that this amendment had been carried out in order to "establish the identical dependency of the claims as existing in the PCT application". And at the oral proceedings it refrained from commenting on the admissibility of this request under Article 12(4) RPBA.
3.4 The board finds that there is no convincing reason to admit this request into the proceedings. The independent claims of this request are identical to those of the request held allowable by the opposition division, and therefore the inclusion of an additional dependent claim cannot be considered either a legitimate reaction to the impugned decision or a legitimate attempt to defend the patent in view of objections newly raised by the opponent (appellant 2) in its grounds of appeal. Rather, this request amounts to an attempt to tidy up the claim set found allowable by the opposition division.
3.5 It is consistent case law that the opposition proceedings may not be used to tidy up the patent by adding one or more dependent claims; such an addition is normally inadmissible under Rule 80 EPC (see for instance T 993/07, reasons 1.4 et seq.).
By the same token, the board considers the addition of one or more dependent claims in appeal proceedings to a claim request held allowable by the opposition division to be an attempt to tidy up the allowable claim request and thus not admissible under Article 12(4) RPBA.
3.6 For the sake of completeness, the board observes that this finding is independent of the admissibility of the amendments in question under Rule 80 EPC. In fact, as in the present case, it could be argued that the addition of dependent claim 5 along with making claim 3 dependent on claim 1 only and making claim 4 dependent on claim 3 only (instead of being dependent on "any preceding claim" as in their granted version) was occasioned by the ground for opposition set out in Article 100(c) EPC, because the dependency of claim 3 on claim 2 as granted and of claim 4 on claim 3 as granted was objected to by the opponent in its opposition brief (see item IX.1 thereof), and the features of the now added dependent claim 5 are those of granted claim 2. Put differently, with respect to the granted set of claims the inclusion of claim 5 could be considered not merely an addition of a dependent claim but the result of the redrafting of claims 3 and 4 occasioned by the ground for opposition set forth in Article 100(c) EPC. But, as stated above, for admissibility under Article 12(4) RPBA, compliance with Rule 80 EPC is not decisive.
3.7 For the above reasons, the board did not admit auxiliary request I into the proceedings.
4. Auxiliary request II - admissibility
4.1 It is uncontested that this request corresponds to the request held allowable by the opposition division. It therefore amounts to requesting the dismissal of appellant 2's appeal.
4.2 Appellant 2 objects to its admission because appellant 1 had not stated in its written submissions that this request corresponded to the one held allowable by the opposition division, nor was this readily apparent from appellant 1's written submissions. Therefore, Article 12(2) RPBA was not complied with. Moreover, this request did not overcome the objections raised by appellant 2.
4.3 The board notes that this request was filed with the notice of appeal. Therefore, the only legal basis for rejecting it as inadmissible would be Article 12(4) RPBA; but it was held by the opposition division to comply with the requirements of the EPC. It was the subject of the impugned interlocutory decision and evidently was not rejected as inadmissible by the opposition division. The proprietor did not fail to present it in the first-instance proceedings, having in fact filed it in the proceedings before the opposition division (cf. Article 12(4), first half-sentence, RPBA). The request also relates to the case under appeal and meets the requirements of Article 12(2) RPBA (cf. Article 12(4), second half-sentence, RPBA).
4.4 The requirements of Article 12(2) RPBA do not include the necessity to indicate in the grounds of appeal or in the reply thereto whether claim requests submitted in appeal proceedings have already been submitted in the first-instance proceedings. The board therefore fails to see why auxiliary request II could be held inadmissible solely on the basis of this provision.
Moreover, the board also holds that Article 12(2) RPBA is complied with because, by re-filing the request held allowable by the opposition division, appellant clearly and concisely requests (as an auxiliary request) in its notice of appeal that the impugned decision be upheld, i.e. that the appeal of appellant 2 be dismissed. That the opposing party, i.e. appellant 2, is allegedly unable to determine whether present auxiliary request II corresponds to the request held allowable by the opposition division is of no relevance because, on an objective basis, a comparison of the two claim requests reveals that they are identical. This is also confirmed by the fact that the board had no difficulty in identifying auxiliary request II as corresponding to the request held allowable by the opposition division (cf. the board's communication pursuant to Article 15(1) RPBA, point 6.1).
4.5 The question of whether this request fails to comply with the substantive requirements of the EPC, as submitted by appellant 2, is immaterial for the issue of its admittance.
4.6 For the above reasons, the board saw no reason not to admit auxiliary request II.
5. Auxiliary request II - amendments - Article 123(2) EPC
5.1 According to appellant 2, the amendment of the expression "to thereby maintain" in claim 1 to "and that thereby ... is maintained" infringed the requirement of Article 123(2) EPC because claim 1 now lacked a link between the mandrel and the functional description originally disclosed in claim 1 as filed.
The board fails to see the alleged lack of link between mandrel and functional description. The expression "and that thereby ... is maintained" clearly entails adapting the (structural) features preceding the expression to result in the functional features following the expression. The board therefore fails to see why the aforementioned two expressions should not be considered equivalent or synonymous.
5.3 For the above reasons, the requirement of Article 123(2) EPC is met.
6. Auxiliary request II - amendments - Article 123(3) EPC
6.1 Appellant 2 also submits that for the reasons set out in point 5.2 above, the requirement of Article 123(3) EPC was infringed because the claims now also extended to embodiments in which "inadequate" control is achieved.
6.2 Again, the board fails to see why the deletion in question should lead to an extension of protection. Neither present independent claims 1 and 7 nor granted independent claims 1 and 9 require "adequate control of the tension in the media during winding". So, even in the hypothetical case that present claims 1 and 9 were construed, as submitted by appellant 2, as also covering embodiments where only "inadequate" control of the tension in the media during winding is achieved, such embodiments are also covered by the claims as granted.
6.3 For the above reasons, Article 123(3) EPC is complied with.
[Appellant 2's objections re sufficiency, novelty and inventive step were also were reviewed by the Board, which upheld the opinion of the Opposition Division that the claims in amended form meet the requirements of Articles 83, 54 and 56.]
8. Conclusion
Since the main request is not allowable and auxiliary request I is not admitted, and since auxiliary request II, which corresponds to the request held allowable in the impugned decision, is allowable, both appeals are to be dismissed.
Order
For these reasons it is decided that:
Both appeals are dismissed.
This decision T 1719/13 (pdf) has European Case Law Identifier:ECLI:EP:BA:2017:T171913.20171114. The file wrapper can be found here. Photo "Dirt" by OpenClipart-Vectors  was obtained via Pixabay under CC0 license (no changes made).


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