kst2640/corpus10 huggingface dataset:
Summary of Facts and Submissions
I. This case concerns an appeal filed by the opponent against the interlocutory decision of the opposition division which held that, account being taken of the amendments made by the patent proprietor during the opposition proceedings, the patent and the invention to which it relates met the requirements of the EPC, especially those regarding Articles 123(2), 52(1), 54(1) and (2) and 56 EPC.
II. In the statement of grounds of appeal, the opponent (henceforth, appellant) requested that the decision under appeal be set aside and that the patent be revoked in its entirety. The appellant argued on the basis of Articles 123(2) and (3) (amendments), 84 (clarity) and 52(1) EPC (novelty and inventive step).
III. In support of its case for revocation based on the grounds of lack of novelty and inventive step, the appellant filed new documents D19 to D30 with the statement of grounds of appeal.
IV. In a reply to the statement of grounds of appeal, the patent proprietor (henceforth, respondent) requested that the appeal either be held inadmissible or be dismissed, i.e. that the patent be maintained in amended form in the version held allowable by the opposition division on the basis of the claims filed with the letter dated 24 May 2012. The respondent requested further that documents D19 to D30 be not admitted.
V. Both parties conditionally requested oral proceedings.
VI. The board sent a communication in which it gave the following preliminary opinion:
(i) the appeal was admissible; and
(ii) in view of the particular circumstances applying in this case (as will be discussed below in the reasons for the decision), the board considered that remittal of the case for further prosecution would be appropriate and equitable, thereby leaving it to the opposition division to give a first decision in respect of the objections pursuant to Articles 123(3) and 84 EPC, to decide whether or not to admit one or more of documents D19 to D30 newly filed by the appellant (subject to the board itself not holding D19 to D30 inadmissible), and, where appropriate, to decide on novelty and inventive step.
The board requested the parties to clarify the circumstances in which the conditional requests for oral proceedings should apply in view of the boards preliminary opinion.
VII. In a letter dated 8 March 2018, the appellant stated that oral proceedings were not requested in the case that the board of appeal were to hold the appeal admissible and to remit the case to the opposition division. The appellant stated, inter alia, that remittal was appropriate in view of substantial procedural violations, referring to the boards provisional opinion.
VIII. In a letter dated 19 March 2018, the respondent withdrew the request for oral proceedings and stated that It is now expected that the case will be remitted to the first instance before the Opposition Division..
IX. In view of the boards decision, there is no need to reproduce the wording of any claim.
Reasons for the Decision
1. Admissibility of the appeal
1.1 The respondent argues that the appeal is inadmissible due to a lack of an adequate substantiation. In this respect, the respondent argues firstly that there is no analysis in detail vis-à-vis the main reasons given in the contested decision and secondly that the appellant puts on the table a completely fresh case, based on new documents.
1.2 However, the board points out that in accordance with case law, an appeal is not inadmissible merely because it is based on a fresh case, in particular when it concerns the same ground for opposition (here, novelty and inventive step; cf. Case Law of the Boards of Appeal, 7th edition (this being the edition cited by the respondent), page 964, section 2.6.5, or 8th edition, page 1103, section 2.6.5). That however does not preclude the appellants fresh case based on new prior art from being held inadmissible having regard to Article 12(4) RPBA (as will be discussed below); however, that is not a matter concerned with the admissibility of the appeal as such but with the examination of the appeal. In any case, the board considers the appeal to be admissible since it is also based on other grounds (infringement of Articles 123(3) and 84 EPC) for which a substantiation is provided. In particular, it is stated in the decision that compliance with, inter alia, Article 123(3) EPC was discussed in detail (see point VI of the Summary of facts and submissions). At least the objection pursuant to Article 123(3) EPC is therefore apparently not based on a fresh case and this ground alone thus suffices to render the appeal as a whole admissible.
2. Scope of the appeal
2.1 It follows from Articles 12(2) and 12(4) RPBA that the board need only take into account those parts of the appeal for which a proper substantiation within the meaning of Article 12(2) RPBA is contained in the statement of grounds of appeal. In accordance with case law, a simple reference to submissions in the first instance proceedings does not normally suffice (cf. Case Law of the Boards of Appeal, 8th Edition, page 1102, paragraph 2.6.4 a)).
2.2 In the statement of grounds of appeal, the appellant gives no explicit reasons dealing with those parts of the decision concerned with compliance with Article 123(2) EPC (added subject-matter) and Article 52(1) EPC (novelty/inventive step) in the light of the disclosures of documents D1 to D18. With respect to novelty and inventive step, D2 to D18 are not mentioned at all, and, as regards D1 (either alone or in combination with D20), the appellant relies on a general reference to arguments set out in the notice of opposition (cf. page 20, lines 5-13 and page 24, point 11). In respect of Article 123(2) EPC, the appellant also only makes a general reference to arguments set out in the notice of opposition regarding features M5 and M6 (cf. page 8, point 4). As pointed out above, such general references do not suffice to substantiate the objections within the meaning of Article 12(2) RPBA. Consequently, objections based on the disclosures of D1 to D18 as well as on Article 123(2) EPC are not relevant to the proceedings and do not require any further comment.
2.3 It follows that the substantive issues relevant to the present appeal proceedings concern compliance with Articles 123(3) and 84 EPC, and novelty and inventive step with respect to documents D19 to D30.
3. Substantial procedural violations
3.1 The board notes that the decision was announced at the oral proceedings which took place on 26 June 2012. The minutes were however not issued until 24 July 2013, i.e more than one year later, and the impugned decision itself is dated 17 September 2013. The board notes that in another case, namely T 358/10, a lengthy time between the oral proceedings and the issuing of the minutes and the written decision was regarded as a substantial procedural violation (cf. point 5.1 of the reasons), albeit the times taken in case T 358/10 were somewhat longer (19 and 22 months respectively). In the present case, even if this delay by itself were not considered to be a substantial procedural violation, it plausibly contributed to other procedural violations, as explained below.
3.2 The board notes that in the present case there is a discrepancy between what is stated in the Summary of facts and submissions of the written decision, where it is stated in point VI that, inter alia, Article 123(3) EPC was discussed in detail and that the opposition division announced that the request on file satisfied the requirements of, inter alia, Article 123(3) EPC, and the minutes, which although very detailed, do not mention any discussion concerned with Article 123(3) EPC. Neither is there any discussion of this matter (i.e. extension of the scope of protection) in the Grounds for the decision, except that the title above point 3 reads Added subject-matter (Articles 100(c), 123(2), 123(3) EPC). Evidently, if the matter had been discussed, the opposition division should properly have given an indication thereof in the minutes and indicated in the decision whether and why Article 123(3) EPC was regarded as being complied with. The fact that it is not known what, if anything, was discussed on this matter at the oral proceedings is now all the more problematic as Article 123(3) EPC is one of the issues forming part of the appellants case. The board can only speculate as to whether the absence of any reasoning with respect to Article 123(3) EPC was due to the very long time taken in issuing the minutes and the written decision. In any event, the omission of any reasons in respect of Article 123(3) EPC is not only a violation of Rule 111(2) EPC (decision inadequately reasoned) but also of Article 113(1) EPC, since the right to be heard also guarantees that arguments put forward and relevant to the decision to be taken are actually taken into consideration, which cannot be verified with regard to the opponents arguments concerning Article 123(3) EPC (see T 1843/11, point 5.6 of the reasons and T 94/84 (OJ EPO 1986, 337) and the summary of relevant case law in T 2352/13, point 2.3 of the reasons). This is a substantial procedural violation within the meaning of Rule 103(1)(a) EPC.
4. Admissibility of D19 to D30
4.1 In accordance with Article 12(4) RPBA, the board has the power to hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings. In the case at hand, the question arises if the appellant should not have submitted the new documents D19 to D30 at the latest as a reaction to the communication of the opposition division dated 29 March 2012 and whether by not submitting them during the opposition proceedings, the opposition division was deprived of a chance to render a decision on their admission and their evaluation with respect to novelty and inventive step. The board is therefore empowered to not admit these documents which have been filed for the first time with the statement of grounds of appeal, and on which the appellants case in respect of novelty and/or inventive step relies. However, as the case is to be remitted (see below) due to fundamental deficiencies of a procedural nature, the board sees no reason to prejudge the issue of the admissibility of the documents D19 to D30, and therefore leaves this matter to the discretion of the opposition division.
5. Remittal
5.1 In accordance with Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. No such special reasons present themselves in the present case. On the contrary, if the board were to proceed to substantive examination of the outstanding issues (i.e. compliance with Articles 123(3) and 84 EPC and novelty and/or inventive step with respect to the disclosures of the documents D19 to D30, should any of these documents be admitted), it would be examining matters which have not been considered in the impugned decision. Thus, the proprietor would face the risk of the patent being revoked after only one instance of jurisdiction with respect to these matters. Furthermore, both parties are in agreement with remittal. The board therefore exercises its discretion under Article 111(1) EPC to remit the case to the opposition division.
6. Reimbursement of the appeal fee
According to Rule 103(1)(a) EPC, the reimbursement of the appeal fee shall be ordered where the board deems an appeal allowable, if such reimbursement is equitable by reason of a substantial procedural violation. It follows that the appeal fee is to be reimbursed.
For these reasons it is decided that:
1.  The decision under appeal is set aside.
2.  The case is remitted to the department of first     instance for further prosecution on the basis of the claims filed with the letter dated 24 May 2012.
3.  The appeal fee is reimbursed.
--- NEXT DECISION ---
I. This decision concerns the appeal by the proprietor of European patent No. 1 320 458 against the decision of the opposition division to revoke it.
II. An opposition was filed requesting revocation of the patent in its entirety on the grounds that the claimed subject-matter was not inventive (Article 100(a) EPC), that the patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC) and that the patent contained subject-matter which extended beyond the content of the application as filed (Article 100(c) EPC).
III. The opposition divisions decision, announced orally on 24 May 2011 and issued in writing on 27 June 2011, was based on a main request and auxiliary requests I and II, all requests filed during the oral proceedings before the opposition division.
The opposition divisions position can be summarized as follows:
All requests lacked sufficiency of disclosure. Claim 1 of each request was directed to a fibrous non-woven web material and contained the requirement that the web material had a wet tensile strength (for a 55 gsm basis weight) in the machine direction of at least about 160 gsm/25 mm while at the same time the claim covered web materials with a basis weight different from 55 gsm, namely of about 30 to about 90 gsm. There was however no indication in the patent as to how the wet tensile strength for a 55 gsm basis weight was to be determined when the product had a different basis weight, but still within the claimed range of 30 to 90 gsm. In particular, the test procedure referred to in paragraph [0050] onwards in the patent made no mention of the basis weight of the test sample, nor did it discuss how any tensile strength measured was to be converted into a tensile strength for a 55 gsm basis weight product. In this respect, the proprietors argument that a linear relationship between the basis weight and the wet tensile strength existed was held not to be convincing. In particular, the proprietor was not able to substantiate its view on the basis of the patent itself or the cited prior art. In fact, if anything, it appeared plausible that there was no linear relationship (the opposition division in this respect referred to the well-known inherent difference in pore sizes of wet light-weight vs. thicker nonwovens). Irrespective of this, the requirements referred to in claim 1 could also be read as meaning that the wet tensile strength range applied only to sheets of a basis weight of 55 gsm but not to any other basis weights covered by claim 1. Consequently, the skilled person did not know what was to be understood by the wording wet tensile strength (for a 55 gsm basis weight) in the machine direction of at least about 160 gsm/25 mm in claim 1. The skilled person therefore did not know when he was working within the forbidden area of the claims.
IV. By its letter of 15 August 2011, the proprietor objected to the omission, from both the decision and the minutes, of one of its arguments made in respect of sufficiency of disclosure as regards the wet tensile strength (for a 55 gsm basis weight) in the machine direction of at least about 160 gsm/25 mm. The proprietor also requested the correction of the minutes to record its argument.
V. By its communication of 24 August 2011, the opposition division rejected the proprietors request for correction of the minutes (for details, see point 5.4.2 below).
VI. On 19 August 2011, the proprietor (hereinafter: the appellant) filed a notice of appeal against the above decision and paid the prescribed fee on the same day. A statement setting out the grounds of appeal was filed on 4 November 2011 together with a main request and auxiliary requests 1 to 3 as well as:
D11: Graphical representation of the wet tensile strength data of examples 5a-5f and 6a-6f of the opposed patent; and
D12: WO/0187367 A2.
VII. A response to the statement of grounds of appeal was filed by the opponent (hereinafter: the respondent) with its letter of 16 March 2012.
VIII. With its letter of 4 April 2012, the appellant filed further comments.
IX. By its communication dated 8 October 2012, the board summoned the parties to oral proceedings scheduled for 25 April 2013. In the subsequent communication of 9 October 2012, the board informed the parties that in its preliminary opinion, a substantial procedural violation had been committed by the opposition division in that one of the appellants arguments relating to sufficiency of disclosure had not been dealt with in the written reasons for the decision. The board further noted, however, that in view of the arguments presented by the parties, it should be possible to decide on the issue of sufficiency of disclosure in the appeal proceedings and that it was therefore not intended to remit the case by reason of any such procedural violation. The board finally stated that in the event that it decided to acknowledge sufficiency of disclosure, it intended to remit the case to the opposition division for examination of the further grounds of opposition.
X. With its letter of 1 February 2013, the respondent announced that unless the appellant sought to broaden the claims of the main request prior to the oral proceedings, it did not intend to be represented at the oral proceedings.
XI. By its letter of 11 February 2013, the appellant confirmed that the claims of the main request and auxiliary requests 1 to 3 remained unchanged from those filed with the grounds of appeal dated 4 November 2011. Furthermore the previous request for oral proceedings made in its letter of 4 November 2011 was replaced by a conditional request for oral proceedings, namely that oral proceedings were only requested in the event that the board considered that one or more of the main and auxiliary requests did not meet the requirements of Article 83 EPC, and therefore did not intend to remit the case back to the opposition division for consideration of Articles 100(a) and 100(c) EPC.
XII. Claim 1 of the appellants main request reads as follows:
1. A fibrous nonwoven web material comprising at least about 50 percent by weight wood pulp fibers; at least about 5 percent by weight lyocell fibers; and at
least about 0.5 percent by weight of synthetic binder fibers; wherein the web material has a basis weight in the range of about 30 to about 90 grams per square meter, has a wet tensile strength (for a 55 gsm basis weight) in the machine direction of at least about 160 gms/25 mm and is capable of disintegrating under mild agitation in water as determined by having a flush
break up time to fibers of less than 300 seconds, wherein the flush break up test is as specified in the description.
XIII. The appellants arguments as submitted in the present written appeal proceedings can be summarized as follows:
(a) Substantial procedural violations
The following argument (in the following: wet tensile strength argument) had been submitted by the proprietor during the oral proceedings before the opposition division:
The skilled person knew whether he or she was working within the forbidden area of the claims because the skilled person simply had to prepare a sheet of basis weight 55 gsm for a given composition and measure the wet tensile strength. If the wet tensile strength of this particular sheet composition satisfied the criteria in claim 1, then a sheet having any basis weight within the claimed range for this specific sheet composition fell within the scope of claim 1.
It had been highlighted in the proprietors letter of 15 August 2011 that the opposition divisions decision neither acknowledged this argument nor provided any reasons as to why the argument was not convincing. The failure to provide adequate reasoning in a decision in accordance with Rule 111(2) EPC represented a substantial procedural violation.
A further substantial procedural violation had occurred because the above argument had also been omitted from the minutes of the oral proceedings before the opposition division.
An additional substantial procedural violation had occurred since the parties had not been given the opportunity to present arguments in respect of added subject-matter during the oral proceedings, contrary to Article 113 EPC. It was inefficient and illogical to make a decision on whether the invention was sufficiently disclosed without first making a decision on whether the requests were allowable under Article 123(2) EPC.
(b) Sufficiency of disclosure of the main request
Apart from the above wet tensile strength
argument, sufficiency of disclosure had to be acknowledged for the following further reasons:
- The question of whether the skilled person knew what was covered by the claims was also a question of definition of the claimed subject-matter, hence an objection arising under Article 84 EPC, rather than sufficiency of disclosure.
- As shown in the charts of D11, the wet tensile strength was proportional to the basis weight. By using such charts it was well within the skilled persons means to establish the wet tensile strength of web materials having a basis weight as covered by claim 1.
XIV. The respondents arguments as submitted in the written appeal proceedings can be summarized as follows:
No substantial procedural violation had occurred. The proprietor was given ample opportunity to make submissions as regards sufficiency of disclosure in writing before the oral proceedings and made additional submissions on this point during the oral proceedings itself. The decision was therefore not based on grounds or evidence on which the proprietor had not had an opportunity to present its comments, and there was therefore no violation of Article 113(1) EPC.
As regards the proprietors objection concerning the right to be heard on added subject-matter, it was true that this issue was not discussed in great detail during the oral proceedings. However, the opposition division did not make any decision on this point and so this lack of discussion could not have any adverse impact on either party.
The opposition division was right in not acknowledging sufficiency of disclosure. Even though claim 1 covered web materials with a basis weight in the range of about 30 to about 90 gsm, it specified that the wet tensile strength was for a 55 gsm basis weight. As the opposed patent did not contain any indication as to how a wet tensile strength for a 55 gsm basis weight was to be determined when the web material had a different basis weight, the skilled person could not tell whether the particular web material had a wet tensile strength as claimed.
As to the procedure referred to by the appellant by way of its wet tensile strength argument, this procedure was nowhere disclosed in the application as filed and the skilled person would not interpret the reference in claim 1 to a 55 gsm basis weight in the way submitted by the appellant.
XV. The appellant requested that
(1) the decision under appeal be set aside and the case be remitted to the opposition division for further prosecution since a substantial procedural violation had occurred (this request implied direct remittal without examination of sufficiency of disclosure by the board, see point 5.1. of the appellants letter of 4 November 2011);
(2) the appeal fee be refunded under Rule 103(1)(a) EPC;
(3) the decision under appeal be set aside on the basis of the main request filed with letter of 4 November 2011, should the board consider that request (1) could not be allowed;
(4) the decision under appeal be set aside on the basis of any of auxiliary requests 1 to 3 filed with letter of 4 November 2011, should the board consider that request (3) could not be allowed;
(5) the case be remitted to the opposition division for consideration of Articles 100(a) and (c) EPC in the event that the board considered that one or more of the main request and auxiliary requests 1 to 3 met the requirements of Article 83 EPC.
XVI. The respondent requested that the appeal be dismissed. The respondent further requested that in the event that the appeal was not dismissed, the case be remitted back to the opposition division for consideration of the remaining grounds of opposition.
1. The appeal is admissible.