T 2350/09 13-12-2012

I. The proprietor lodged an appeal against the decision of the Opposition Division dispatched on 18 November 2009 revoking the European patent No. 1 277 485. The Opposition Division held that the ground for opposition under Article 100(c) EPC prejudiced the maintenance of the granted patent since the subject-matter of its claims 1, 7 and 8 extended beyond the content of the parent application as filed WO-A-97/07837 (D1).

II. A notice of appeal was filed by the proprietor on 9 December 2009. The fee for appeal was paid on 18 December 2009. A statement setting out the grounds of appeal was received on 26 March 2010.

III. In a communication under Article 15(1) RPBA dated 5 September 2012, annexed to the summons to oral proceedings, the Board expressed its provisional and non-binding opinion. In particular, the Board indicated that it was inclined to only rule on the grounds under Article 100(c) EPC (in combination with Article 76(1) EPC) on which the impugned decision was based, and to remit the case under Article 111 EPC to the Opposition Division for it to reach a first-instance decision on further grounds of opposition.

IV. Oral proceedings took place on 13 December 2012.

The appellant requested that the decision under appeal be set aside and that the patent be maintained on the basis of one of the second to fourth auxiliary requests filed on 26 March 2010 (with a letter wrongly dated 26 March 2009), or the fifth and sixth auxiliary requests filed on 13 November 2012, or the "First Auxiliary Request" consisting of claim 1 filed during the oral proceedings of 13 December 2012 together with claims 2 to 11 of the patent as granted, in that order. The appellant expressly confirmed that the main request and the first auxiliary request which had been filed with the statement of grounds of appeal were withdrawn, and that the current "First Auxiliary Request" filed during the oral proceedings was a request subsidiary to the non-allowance of the sixth auxiliary request.

The respondent requested that the appeal be dismissed.

V.1 Claim 1 of the second auxiliary request reads as follows:

"1. A system (1) for infusion of a plurality of different solutions to a peritoneal cavity of a patient according to a pre-determined ratio, the system comprising:

means for storing each of the plurality of different solutions in a plurality of separate containers (l0a, l0b, 10(n-l), 10n);

input means (52) for inputting an amount of each of the plurality of different solutions required for delivery to the peritoneal cavity of the patient;

supply valves (16a to 16c, 20a to 20c); and

pumping means for pumping each of the plurality of different solutions directly to the peritoneal cavity of the patient including first and second pumps (12, 14) each being connected to each of the plurality of containers via the supply valves in such a manner that either pump may be used to pump solution from each of said containers,

the input means and pumping means being capable of receiving and pumping variable mixing ratios of the plurality of different solutions."

V.2 Claim 1 of the third auxiliary request reads as follows:

"1. A system (1) for infusion of a plurality of different solutions to a peritoneal cavity of a patient according to a pre-determined ratio, the system comprising:

means for storing each of the plurality of different solutions in a plurality of separate containers (l0a, l0b, 10(n-l), 10n);

input means (52) for inputting an amount of each of the plurality of different solutions required for delivery to the peritoneal cavity of the patient to achieve a desired dwell volume;

supply valves (16a to 16c, 20a to 20c);

pumping means for pumping each of the plurality of different solutions directly to the peritoneal cavity of the patient including first and second pumps (12, 14) each being connected to each of the plurality of containers via the supply valves in such a manner that either pump may be used to pump solution from each of said containers, and

control means (50) for determining whether the total volume of each different solution pumped by the pumping means is sufficient to achieve the pre-determined mixing ratio and the desired dwell volume."

V.3 Claim 1 of the fourth auxiliary request reads as follows:

"A system (1) for infusion of a plurality of solutions to a peritoneal cavity of a patient, the system comprising:

means for storing each of the plurality of solutions in a plurality of separate containers (l0a, l0b, 10(n-l), 10n);

input means (52) for inputting an amount of each of the plurality of solutions required for delivery to the peritoneal cavity of the patient;

supply valves (16a to 16c, 20a to 20c); and

pumping means for pumping each of the plurality of solutions directly to the peritoneal cavity of the patient including first and second pumps (12, 14) each being connected to each of the plurality of containers via the supply valves in such a manner that either pump may be used to pump solution from each of said containers."

V.4 Claim 1 of the fifth auxiliary request reads as follows:

"A system (1) for infusion of a plurality of different solutions to a peritoneal cavity of a patient according to a pre-determined ratio, the system comprising:

means for storing each of the plurality of different solutions in a plurality of separate containers (l0a, l0b, 10(n-l), 10n);

input means (52) for inputting an amount of each of the plurality of different solutions required for delivery to the peritoneal cavity of the patient to achieve a desired dwell volume;

supply valves (16a to 16c, 20a to 20c);

pumping means for pumping each of the plurality of different solutions directly to the peritoneal cavity of the patient including first and second pumps (12, 14) each being connected to each of the plurality of containers via the supply valves in such a manner that either pump may be used to pump solution from each of said containers, and

control means (50) for determining whether the total volume of each different solution pumped by the pumping means is sufficient to achieve the pre-determined mixing ratio and the desired dwell volume. [sic]

the input means and pumping means being capable of receiving and pumping variable mixing ratios of the plurality of different solutions."

V.5 Claim 1 of the sixth auxiliary request reads as follows:

"A system (1) for infusion of a plurality of different solutions to a peritoneal cavity of a patient according to a pre-determined ratio, the system comprising:

means for storing each of the plurality of different solutions in a plurality of separate containers (l0a, l0b, 10(n-l), 10n);

input means (52) for inputting an amount of each of the plurality of different solutions required for delivery to the peritoneal cavity of the patient to achieve a desired dwell volume;

supply valves (16a to 16c, 20a to 20c);

pumping means for pumping each of the plurality of different solutions directly to the peritoneal cavity of the patient including first and second pumps each comprising a pump chamber (12, 14) and each being connected to each of the plurality of containers

via the supply valves in such a manner that either pump chamber may be used to pump solution from each of said containers by the application of negative and positive pressures to the pump chamber; and

control means (50) for determining whether the total volume of each different solution pumped by the pumping means is sufficient to achieve the pre-determined mixing ratio and the desired dwell volume,

the input means and pumping means being capable of receiving and pumping variable mixing ratios of the plurality of different solutions."

V.6 Claim 1 of the "First Auxiliary Request" reads as follows:

"A system (1) for infusion of a plurality of solutions to a peritoneal cavity of a patient, the system comprising:

means for storing each of the plurality of solutions in a plurality of separate containers (l0a, l0b, 10(n-l), 10n);

input means (52) for inputting an amount of each of the plurality of solutions required for delivery to the peritoneal cavity of the patient; and

pumping means for pumping each of the plurality of solutions directly to the peritoneal cavity of the patient including first and second pumps (12, 14), a first set of supply valves (16a to 16c) operatively connected to the first pump and a second set of supply valves (20a to 20c) operatively connected to the second pump, each pump being connected to each of the plurality of containers via its supply valves in such a manner that either pump may be used to pump solution from each of said containers."

Claims 2 to 11 of the "First Auxiliary Request" are dependent claims.

VI. The arguments of the appellant are summarised as follows:

(i) The parent application as filed, D1, provided a basis for reciting the feature of "supply valves" for both pumps as in claim 1 of the second to sixth auxiliary requests. Such a basis was given by independent claim 17 in combination with page 6, lines 28-32, and page 8, lines 16-26 referring to the embodiment of Figure 1, and in the embodiment of Figure 2.

(ii) Claim 1 of the "First Auxiliary Request" filed during oral proceedings was admissible since it involved allowable amendments in response to the arguments of intermediate generalisation which had been fully presented and discussed for the first time during the oral proceedings.

(iii) Claim 1 of the "First Auxiliary Request" remedied the objected deficiency of intermediate generalisation by adding the features that each of the two pumps was connected to the individual containers through a different set of supply valves. It was clear that the number of valves had to be equal to the number of containers.

(iv) The features of dependent claims 7 and 8 of the "First Auxiliary Request" had been disclosed on page 3, lines 25-28 of D1. The fact that claim 1 did not include the mixing means was irrelevant since the application made it clear that each of the embodiments of Figures 1 and 2 allowed both the direct infusion of fluids into a patient and the infusion via a container for mixing solutions prior to delivery (page 6, lines 28 to 32; page 9, lines 17 to 20; and page 15, lines 2 to 6).

(v) In view of the age of the patent and in the interest of procedural efficiency it was requested that the Board decides on all of the objections raised in the opposition without remittal of the case.

VII. The arguments of the respondent are summarised as follows:

(i) Claim 1 of the second to sixth auxiliary requests did not define that each of the two pumps accesses the individual containers through a different set of supply valves as disclosed for each of the embodiments of Figures 1, 2 and 5. Hence, claim 1 encompassed an undisclosed embodiment in which each of the two pumps is connected to each of the containers through just one common set of supply valves. Claim 1 constituted therefore an unallowable intermediate generalisation, as was explained in "Case Law of the Boards of Appeal", 6th Edition 2010, Chapter III.A.2, in particular in decision T 284/94.

(ii) Claim 1 of the "First Auxiliary Request" was filed during the oral proceedings and should not be admitted in view of the lateness of its filing, in particular since the objections under Article 76(1) EPC had already been known to the appellant from the reply to its statement of grounds of appeal. Moreover, in view of the additional features introduced into the claim, the respondent would need to perform an additional search in order to properly address the questions of novelty and inventive step.

(iii) Claim 1 of the "First Auxiliary Request" was not allowable under Article 76(1) EPC since D1 did not disclose first and second "sets" of supply valves. Claim 1 constituted moreover an intermediate generalisation of the embodiments of Figures 1 and 2 of D1 since it did not specify that the number of supply valves in each set had to be equal to the number of containers. The claim would therefore encompass an undisclosed embodiment in which two containers were connected to one of the pumps through one and the same valve. Claim 1 also failed to specify that the two sets were different sets of supply valves.

(iv) Dependent claims 7 and 8 of the "First Auxiliary Request" were not allowable under Article 76(1) EPC. The features of these claims were disclosed on page 3, lines 25 to 28 of D1, but only in combination with the embodiment mentioned in the immediately preceding paragraph, ie in lines 15 to 24 of page 3, which comprised means for mixing fluids from two containers. Claim 1 defined however a different embodiment for direct infusion of solutions into the peritoneal cavity of the patient.

(v) In view of the fact that the present patent will expire in less than four years, the Board was asked to give a final decision not only on added subject-matter, but on all further outstanding matters, including novelty and inventive step, instead of remitting the case to the Opposition Division.