kst2640/corpus10 huggingface dataset:
2. With its letter of 1 February 2013, the respondent stated 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 which had been appointed (see point X, above). The board interprets this as a conditional withdrawal of its previous request for oral proceedings. See, eg, T 3/90 (OJ 1992, 737, headnote) and J 4/10 of 15 March 2012 (not published in OJ EPO, point 3). Given that the appellant subsequently confirmed that it did not seek to broaden the claims of its main request (see point XI, above) the condition can be taken as satisfied and the respondents request for oral proceedings as withdrawn.
3. Similarly, the appellant made 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 (see point XI, above). For the reasons given below, the board considers that the appellants main request meets the requirements of Article 100(b) EPC and the board also intends to remit the case back to the opposition division for consideration of Articles 100(a) and 100(c) EPC. The event forming the basis for the appellants conditional request for oral proceedings therefore does not arise.
4. In the circumstances the oral proceedings previously appointed for 25 April 2013 were cancelled.
5. Substantial procedural violation - wet tensile strength
5.1 The opposed patent is directed to fibrous nonwoven web materials to be used as premoistened wipes. These web materials are characterised by inter alia a basis weight in the range of about 30 to about 90 gsm and a wet tensile strength (for 55 gsm basis weight) in the machine direction of at least about 160 gms/25 mm (claim 1). Due to this wet tensile strength, the web materials serviceability and resistance to sheet material breakage during manufacturing operations, as well as its handling on automated equipment, is improved and the finished material is able to resist tearing or puncturing during dispensing and use (page 2, lines 17-18 and page 3, lines 30-33 of the opposed patent).
5.2 The opposition division revoked the patent for lack of sufficiency of disclosure as the skilled person was considered not to know how to determine the parameter wet tensile strength (for 55 gsm basis weight) in claim 1 and thus was not able to tell whether he was working within the forbidden area of the claims or not.
5.3 In the statement of grounds of appeal (point 4.11 of the letter dated 4 November 2011), the proprietor (appellant) complained that a substantial procedural violation had been committed by the opposition division as its decision neither acknowledged nor gave any reasons as to the following argument (in the following: wet tensile strength argument):
...the skilled person did know 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 must fall within the scope of claim 1.
5.4 In the following, it will be examined whether the appellants complaint is justified. In this respect, it has first to be decided whether it is credible that the wet tensile strength argument was indeed made by the appellant during the first instance opposition proceedings.
5.4.1 The appellant had complained in its letter of 15 August 2011, ie after issuance of the opposition divisions decision and prior to the present appeal, that despite the above wet tensile strength argument having been made during the oral proceedings, it had been omitted from the opposition divisions decision and the minutes. The appellant requested accordingly that the minutes be corrected.
5.4.2 The opposition division refused this request as follows:
The Proprietors request for correction of the minutes of the oral proceedings which took place on the 24th May 2011 is rejected. The opposition division considers that the requirements of Rule 124(1) EPC of those containing the essentials of the oral proceedings and the relevant statements made by the parties are fulfilled.
This statement is not responsive to the appellants complaint and in particular does not dispute in any way that the wet tensile strength argument was made during the oral proceedings.
5.4.3 For its part, the respondent has not, at any time during the opposition or appeal proceedings, disputed that the wet tensile strength argument was made during the oral proceedings before the opposition division.
5.4.4 Finally, apart from having been made during the oral proceedings, the wet tensile strength argument in fact was also made during the written opposition proceedings, namely in the appellants letter of 21 April 2011 (point 5.11). More particularly, in this letter, the appellant argued as follows:
In any case, to establish whether or not a nonwoven web material falls within the scope of claim 1 the skilled person only has to take the fibrous composition of its web and prepare a similar web material with a basis weight of 55 gsm and then measure its wet tensile strength. This process involves no inventive skill and does not represent an undue burden on the skilled person.
5.4.5 In view of the above, it is credible to the board that the appellants wet tensile strength argument was advanced twice during the opposition proceedings, namely in the written proceedings (letter of 21 April 2011) and then again during the oral proceedings.
5.5 In view of the above, it has to be examined whether the opposition divisions decision is indeed silent about the appellants wet tensile strength argument.
The only argument of the appellant addressed in the opposition divisions decision is the argument that a linear relationship between the basis weight and the wet tensile strength exists such that with the value for eg a 30 gsm basis weight, the value for a 55 gsm basis weight can be obtained by linear extrapolation (for a more detailed summary of the opposition divisions decision, see point III above).
This argument is not related to the appellants wet tensile strength argument. More particularly, while the argument dealt with by the opposition division implies that the wet tensile strength at a basis weight of 55 gsm can be obtained mathematically by a linear extrapolation, the appellants wet tensile strength argument in fact meant that a sample with a basis weight of 55 gsm must actually be prepared in order to obtain this wet tensile strength.
Hence, despite the wet tensile strength argument having been raised in the written and oral opposition proceedings, the opposition division did not address it at all in its decision.
5.6 It remains to be decided whether this constituted a substantial procedural violation.
5.6.1 According to Rule 111(2) EPC, decisions of the European Patent Office which are open to appeal shall be reasoned.
Although the opposition division is not required to address each and every argument of a party (R 19/10 of 16 March 2011; point 6.2 and R 17/11 of 19 March 2012; point 4, neither of which published in OJ EPO), the important question is whether the party concerned can objectively understand whether the decision was justified or not.
In this respect, the decision should contain at least some motivation on crucial points of dispute, in order to give the party concerned a fair idea of why its submissions were not considered convincing and to enable it to base its grounds of appeal on relevant issues (T 70/02 of 15 March 2002; point 7; not published in OJ EPO). The points to be addressed are in particular arguments which may militate against or cast doubt on the decision in question (T 246/08 of 14 August 2008; point 2.2; not published in OJ EPO).
5.6.2 As will be seen, the present decision of the board acknowledges sufficiency of disclosure on the basis of the appellants wet tensile strength argument (see point 5 below). This argument is thus clearly crucial to the point decided upon by the opposition division.
5.6.3 The fact that no reasons were given in the decision of the opposition division why the appellants wet tensile strength argument was not an answer to the objection under Article 83 EPC therefore amounts to a substantial procedural violation.
5.6.4 The respondent argued in this respect that the appellant was given ample opportunity to make submissions as regards sufficiency of disclosure in writing before the oral proceedings and that the appellant made additional submissions on this point during the oral proceedings itself. The decision was therefore not based on a ground or evidence on which the appellant had not had an opportunity to present its comments, and there was therefore no violation of Article 113(1) EPC.
However, as stated in T 763/04 of 22 June 2007,
Article 113(1) EPC is not a formal provision, but rather one of substance. Hence it is not sufficient to observe Article 113(1) merely formally by granting the Applicant the procedural possibility for presenting comments, as this was the case here. This procedural step falls short of its legislative purpose and remains a pure formality, if there is no trace in the file that such comments were indeed read and discussed on the merits, beyond a mere acknowledgement of their existence. In summary, Article 113(1) requires not merely that a party be given an opportunity to voice comments, but more importantly it requires that the deciding instance demonstrably hears and considers these comments. (point 4.4; not published in OJ EPO).
Consequently, the fact that the appellant in the present case was given the opportunity to (and in fact did) put forward the wet tensile strength argument is not sufficient for the requirements of Article 113(1) EPC to be met. What is additionally important is that the opposition division demonstrably heard and considered this argument and, as has been set out above (point 5.5), this condition has not been met in the present case.
5.7 Thus a substantial procedural violation has occurred as regards the omission of the wet tensile strength argument from the opposition divisions decision. Therefore, there is no need to elaborate on the appellants further objection that this argument had also been omitted from the minutes of the oral proceedings before the opposition division.
6. Substantial procedural violation - Added matter
6.1 The appellant argued that a further substantial procedural violation had occurred since the parties had not been given the opportunity to present arguments in respect of added subject-matter (Articles 100(c) and 123(2) EPC) during the oral proceedings.
However, Article 113(1) EPC in this respect merely requires that a decision has to be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. Since in the present case, the opposition division did not base its decision on added subject-matter, there was no need to offer the parties an opportunity to address this issue. The requirements of Article 113(1) EPC were thus not violated in this respect.
6.2 The appellant additionally argued that it was highly inefficient and illogical to make a decision on sufficiency of disclosure without first making a decision on whether the requests were allowable under Article 123(2) EPC (point 4.19 of the appellants letter of 4 November 2011).
The board is however not aware of any provision in the EPC (and none has been cited by the appellant) that stipulates that the various patentability requirements or grounds of opposition have to be dealt with in a particular order in opposition proceedings. Therefore the order chosen by the opposition division, even if it were to be considered as inefficient or illogical, cannot amount to a substantial procedural violation.
7. Direct remittal
7.1 As set out in point 2 above, a substantial procedural violation was committed by the opposition division. Therefore, the appellants request to set aside the decision of the opposition division and to immediately remit the case to the opposition division (request (1), point XV above) has to be considered. This request implies that the case should be remitted to the opposition division without considering the ground under Article 100(b) EPC (see point 5.1 of the appellants letter of 4 November 2011).
7.2 Article 11 RPBA requires remittal to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.
7.3 In the present case, the board is in a position to decide on sufficiency of disclosure (Article 100(b) EPC) as this issue has been discussed in detail by both parties and all arguments relevant to the present decision have been put forward by the parties in the present appeal proceedings. The board has also been able to reach a clear conclusion on the issue. To remit the case for the issue to be decided on again by the opposition division would not be a procedurally efficient way of dealing with the case, given the possibility of the opposition division again deciding the issue against the appellant and thus of a further appeal.
Therefore, the appellants request (1) is refused.
8. Sufficiency of disclosure of the main request
8.1 Claim 1 specifies the wet tensile strength to be for a 55 gsm basis weight while at the same time the claim covers web materials with a basis weight different from 55 gsm, namely in the range of about 30 to about 90 gsm. In the opposition divisions and the respondents view, the opposed patent is insufficiently disclosed as it does not contain any indication as to how a wet tensile strength for a 55 gsm basis weight is to be determined when a particular web material has a different basis weight. The skilled person is therefore not able to tell whether this particular web material has a wet tensile strength as claimed.
8.2 The opposed patent describes in detail how the wet tensile strength is to be measured. It is in particular set out on page 6, lines 50-56 that a 50 mm wide and 127 mm long sample is first soaked in room-temperature water, then blotted on a cotton blotter to remove excess water, and subsequently placed in the jaws of a tensile testing instrument that applies a constant rate of extension of 0.0021 m/s until the test sample breaks. A load cell is used to measure the force imposed on the sample at breakage and the force required to break the test sample is divided by 2 and reported in grams per 25 mm.
The board acknowledges that neither this detailed description nor the remaining parts of the opposed patent contain any information as to how the wet tensile strength at 55 gsm basis weight has to be measured if a web material actually has a different basis weight.
8.2.1 However, as explained by the appellant (see the above-discussed wet tensile strength argument), all that the skilled person has to do is to prepare a web material having a basis weight of 55 gsm using a given sheet composition and machine setting, and then measure its wet tensile strength. If the wet tensile strength of this particular web material satisfies the criteria in claim 1, then a similar web, ie one having any basis weight within the claimed range and being prepared by using the same sheet composition and machine settings, must fall within the scope of claim 1.
This approach for determining the wet tensile strength is in the boards view a plausible and straightforward approach the skilled person would adopt when trying to define the relevant feature. The experiment required in this approach does not represent an undue burden on the skilled person. It does therefore not matter for sufficiency of disclosure that this approach is not disclosed in the opposed patent, as argued by the respondent.
8.3 Furthermore, there is no evidence on file that this approach would not work.
8.4 Finally, the opposition divisions argument (point 6 of its decision) according to which the reference to a 55 gsm basis weight in claim 1 can also be read as meaning that the wet tensile strength requirement in this claim applies only to sheets of a basis weight of 55 gsm is not convincing. More specifically, claim 1 explicitly states that the web material has a basis weight in the range of 30 to 90 gsm. It would thus be nonsensical to assume that the further requirement that this web material has a certain wet tensile strength applies for one single basis weight only, namely 55 gsm.
8.5 The skilled person can thus determine whether a web material that he wants to prepare will have a wet tensile strength as required by claim 1 and hence is able to carry out the invention underlying the opposed patent. Sufficiency of disclosure therefore has to be acknowledged.
9. Reimbursement of the appeal fee
9.1 The appellant requested the reimbursement of the appeal fee (request (2), point XV above).
9.2 Rule 103(1)(a) EPC stipulates that the appeal fee shall be reimbursed where the board deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.
In the present case, both conditions of Rule 103(1)(a) EPC are met. Firstly, the board considers the invention underlying the main request to be sufficiently disclosed (point 8 above), which means that the appellants appeal against the opposition divisions decision to revoke the patent is allowable. Secondly, a substantial procedural violation occurred (see point 5 above). Thirdly, reimbursement is equitable in these circumstances.
9.3 Consequently, the appeal fee is to be reimbursed.
10. Remittal for further prosecution
The appellant further requested that, in the event that the main request is considered to meet the requirements of Article 83 EPC, the case be remitted to the opposition division for consideration of Articles 100(a) and (c) EPC (request (5), point XV above).
In a similar way, the respondent requested that, in the event the appeal is allowed, the case be remitted to the opposition division for consideration of the remaining grounds of opposition (see point XVI above).
Furthermore, the appellant explicitly complained that the parties had not yet had sufficient opportunity to discuss the issue of added subject-matter before the opposition division (point b) on page 6 of its letter of 4 November 2011).
In view of the parties requests and in order to give the parties the opportunity to discuss the further requirements of the EPC at two levels, the case will be remitted to the opposition division for further prosecution.
1. The decision under appeal is set aside.
2. The case is remitted to the opposition division for further prosecution on the basis of the main request filed by the appellant with its letter of 4 November 2011.
3. The appeal fee is reimbursed.
I. The respondent is proprietor of European patent No. 0 421 495.
II. The patent was opposed by the appellants on the ground of lack of inventive step. The following state of the art was inter alia cited in the notice of opposition:
D1 EP-A-0 154 076
D2 EP-A-0 155 158
D3 JP-A-62-129 960
D4 US-A-3 930 929
D5 US-A-3 367 823
In the opposition letter it was submitted that the subject-matter of independent claims 1 or 7 did not involve an inventive step having regard to the state of the art according to the following combinations of documents, respectively:
(i) D1, D4 and D5,
(ii) D2, D3 and D4, and
(iii) D3, D4 and D5
III. The opposition division rejected the opposition in a decision dated 14 December 1995.
In this decision under appeal it was held that the subject-matter of independent claims 1 and 7 was inventive having regard to the combination of documents (i) (D1, D4 and D5).
IV. On 9 February 1996, the appellants (opponents) lodged an appeal against this decision and paid the appeal fee on the same day.
The statement of grounds of appeal was filed on 15. April 1996.
V. The appellants requested that the decision under appeal be set aside and
(1) the case be referred back to the opposition division for consideration of the opposition to be resumed, with attention being paid to the two citations D2 and D3 and the two lines of argumentation based respectively on the combinations of documents (ii) and (iii) above which were overlooked in the decision under appeal (first request).
(2) In the event that the case is not remitted to the opposition division, the patent in suit be revoked in its entirety on the ground of lack of inventive step (second request).
As to their first request, the appellants held that they were deprived of a complete examination of the documents and arguments presented in support of the ground of lack of inventive step. There had been thus a procedural irregularity justifying the remittal of the case to the opposition division.
VI. The respondent requested that the appeal be dismissed and the European patent be maintained as granted.
It contended that there was no disclosure or suggestion in the cited documents D1 to D5 of the characterising features of independent claims 1 and 7, so that the reasoning of the opposition division as to the combination of documents (i) applies automatically mutatis mutandis to the other combinations of documents (ii) and (iii). It was therefore not necessary for the opposition division to consider the lines of argument based on these two combinations, and there was no necessity for remitting the case to the first instance.
2. It is established jurisprudence of the Boards of Appeal (see J 07/82, OJ 1982, 391 and T 0094/84, OJ 1986, 337) that the right to be heard in accordance with Article 113(1) also guarantees the right to have the relevant grounds fully taken into account in the written decision, that is in the case of a decision rejecting the opposition, the ground(s) for opposition as well as facts, evidence (inter alia prior art documents), and arguments presented in support of these grounds for opposition.
A failure to do so was considered a substantial violation of the right to be heard (Article 113(1) EPC).
3. In the decision under appeal the opposition division confined its considerations to the documents D1, D4 and D5 and the line of arguments based on the combination of these documents. It came to the conclusion that the claimed subject-matter involved an inventive step.
This decision had completely ignored the documents D2 and D3 as well as the two other lines of arguments based on the combinations of documents D2, D3 and D4 respectively D3, D4 and D5 which were brought forward by the appellants in support of lack of inventive step.
Hence, in the Boards judgment the failure to consider these documents and arguments relevant to the ground (of lack) of inventive step on which the decision under appeal is based, constitutes a violation of the right to be heard and thus a substantial procedural violation as well as a fundamental deficiency in the first instance proceedings.
Moreover, the decision under appeal also is not in conformity with Rule 68(2) EPC, since it does not give any reason why the subject-matter of the independent claims were considered to involve an inventive step also in respect of the two additional lines of argumentation developed by the opponents (see T 0522/90, point 9.1 and T 0084/83, point 5).
4. Article 10 RPBA (Rules of Procedure of the Boards of Appeal) provides that a Board shall remit the case to the first instance, if a fundamental deficiency is apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.
Since remittal of the case to the opposition division has been requested by the appellants and since the Board sees no special reason to do otherwise, the case is to be remitted to the opposition division in application of Article 10 RPBA in order to consider the combinations of documents D2, D3 and D4 and respectively D3, D4 and D5 on the issue of inventive step.