T 2473/10 02-07-2015

1. The appeal is admissible.

2. The duly summoned appellant did not attend the oral proceedings. However, under Rule 71(2) EPC 1973, the proceedings continued without the appellant. In accordance with Article 15(3) of the Rules of Procedure of the Boards of Appeal (RPBA, OJ EPO 2007, 536) the board relied for its decision only on the appellant's written submissions. The board was in a position to decide at the conclusion of the oral proceedings, since the case was ready for decision (Article 15(5) and (6) RPBA), and the voluntary absence of the appellant was not a reason for delaying a decision (Article 15(3) RPBA).

3. Admission of the request filed with the statement of grounds of appeal (Article 12(4) RPBA)

3.1 According to Article 12(4) RPBA, everything presented by the parties under Article 12(1) RPBA has to be taken into account by the board if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. However, Article 12(4) RPBA also empowers the boards of appeal to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings. Thus the boards of appeal, as a review body, retain discretion not to admit sets of claims of requests which had not been submitted during the first-instance proceedings (see Case Law of the Boards of Appeal of the EPO, 7th edition 2013, IV.E.4.3.3 b)). The board is aware that amended claims of requests filed together with the statement of grounds of appeal have in many cases been admitted into appeal proceedings if they constituted a legitimate reaction to the reasoning underlying the appealed decision. Indeed, such amended claims filed with the statement of grounds of appeal may achieve the goal of "a more defined and controlled initial phase of proceedings" (see decision T 1007/05), in particular if they serve to avoid later amendments. But this does not mean that the board is obliged to admit such requests solely because they were filed with the statement of grounds of appeal.

3.2 In its reply dated 2 June 2015 (see point VII above), the appellant maintained that the request filed with the grounds of appeal was admissible under Article 12(4) RPBA. In support of this view, it argued that: (i) the amendments filed had been a legitimate reaction to the reasons given in the examining division's decision; (ii) the amendments had not directed the claims in an entirely new direction in comparison to those on which the examining division's decision was based, but merely made clear the nature of the immobilisation of the binding reagents on the composite electrode surface; (iii) the proposed amendments clearly and unambiguously had addressed the added subject-matter and inventive step objections which ultimately had given rise to the refusal and were thus prima facie allowable; and (iv) since the present appeal proceedings were ex parte proceedings, no other party to the proceedings had been inconvenienced or taken by surprise by the amendments.

The appellant stated further that the examining division's decision had been based on an incorrect construction of the claims, as well as the content of the disclosure of document D6. D6 had first been cited in the summons to oral proceedings in first-instance proceedings with regard to inventive step. The claims had consequently been amended to refer to the feature that "said one or more electrodes comprise exposed conductive particles at the surface of said composite, said exposed conductive particles being substantially free of matrix". Nevertheless, in the subsequent telephone conversation of 15 September 2010 with the primary examiner it had been indicated that the combination of documents D6 and D3 was still considered prejudicial to inventive step.

The appellant disagreed in particular with the examiner considering that the combination of documents D6 and D3 would still lead the skilled person to use a composite electrode comprising exposed conductive particles at the surface, with reference being made to the magnetic bead of Figure 2 of D6, which had been alleged to correspond to a conductive particle in contact with the electrode surface. Neither in the minutes of the telephone consultation nor in the subsequent decision refusing the application, was the objection fully substantiated. The examiner had not explained how substituting the carbon composite of D3 for the graphite ink in D6 would necessarily give rise to a multiwell plate falling within the scope of the amended claims.

3.3 However, the appellant did not explain why the present request could not already have been filed after the telephone conversation on 15 September 2010, during which the examiner explained the objections, at least as an auxiliary request. From the appellant's explanations the board cannot see how, if at all, the reasoning of the decision differed from the minutes of the telephone conversation and the previous communications such that the motivation for filing amended claims arose only from the reasoning of the refusal decision.

3.4 The board has therefore to establish whether it was a legitimate response to the decision under appeal to file the amended claims according to the present request. In other words, it has to establish what in the contested decision could reasonably be construed as justification for filing the present request only with the statement of grounds of appeal and not already in the first-instance proceedings.

Taking into account the course of the proceedings before the examining division (see point III above) and the reasons of the appealed decision (see point IV above), the board cannot see any justification why the appellant could not already have presented the request in the first-instance proceedings. The examining division did not provide another line of reasoning in its decision that could not already be derived from the preceding communications and the telephone conversation. Furthermore, the appellant could not be surprised that the examiner in the telephone conversation considered the claims not to be allowable since, in particular, the objection under Article 123(2) EPC regarding the omission of the feature of said conductive particles being carbon fibrils in claims 1 and 17 had been raised before. The board, taking into account the circumstances of the case, therefore comes to the conclusion that the appellant could have been expected to file the present request during the first-instance proceedings. It therefore has the discretion not to admit the request filed with the grounds of appeal in accordance with Article 12(4) RPBA.

3.5 In exercising this discretion, the board has considered the following aspects, also taking into account the criteria that have been developed by the boards of appeal for requests not submitted in examination proceedings (cf. Case Law of the Boards of Appeal, 7th edition 2013, IV.E.4.3.3 b)).

3.5.1 In the present case, the appellant had been given several opportunities to file amended claims in the first-instance proceedings (see point III above). It was only with the statement of grounds of appeal that the appellant filed an amended set of claims of a sole request which no longer contained the feature which had been objected to by the examining division under Article 123(2) EPC (see also points III and IV above).

3.5.2 The present independent claim 1 comprises for the first time the feature that "said binding reagents are immobilized by non-specific adsorption directly to the electrode surface or by covalent attachment to chemical functional groups on the surface of the electrode", replacing the feature that the electrodes comprise exposed conductive particles at the surface of the composite, the conductive particles being free of matrix, in independent claim 1 of the sole request subject to the contested decision. These features define different aspects. The replaced feature defines the structure of the matrix itself, whereas the newly introduced feature defines how the binding reagents are immobilised. Thus the board does not accept the appellant's argument that the amended features merely clarify the nature of the immobilisation of the binding reagents on the composite electrode surface. The subject-matter of independent claim 1 of the present request is therefore limited in another direction than the subject-matter of independent claim 1 of the request underlying the appealed decision. Hence, the subject-matter of claim 1 filed with the grounds of appeal was previously not considered by the examining division in its decision.

3.5.3 The filing of claim 1 of the present request was not a direct consequence of the reasoning of the contested decision. Quite the contrary, the appellant could not have been expected to select this particular claimed combination of features.

3.5.4 The board has also serious doubts that the subject-matter of present claim 1 was searched in the regional or international phase, for the following reasons:

The combination of the features of claim 1 as filed with the grounds of appeal was not part of the claims filed on entry into the regional phase before the EPO. The appellant in its letter dated 2 June 2015 referred to claims 1 and 41 of those claims (i.e. the set of claims filed on 16 April 1999). Claim 41 reads: "A multi-well plate for conducting ECL binding assays comprising a conductive composite electrode, said composite electrode comprising conductive particles dispersed in a matrix, and further comprising a mask with holes supported on said electrode, said holes acting to form segregated wells having a well bottom defined by the composite electrode and well walls defined by the mask", and claim 1 defines: "An electrode for an electrochemiluminescence binding assay comprising binding reagents immobilized on a composite, said composite comprising a plurality of conductive particles dispersed within a matrix, said binding reagents forming a binding domain". Neither of these claims specify how binding reagents are immobilised on the surface of the electrode. In addition, both claims are independent claims and do not suggest combining their features. The other claims likewise do not define the combination of features of present claim 1.

3.5.5 It is also not apparent to the board where in the 236 pages of the original international application the subject-matter of present claim 1, i.e. the combination of the claimed features, is disclosed.

Under point 3.2 of the grounds of appeal the appellant indicated page 114, lines 25-28 in combination with lines 10-11, as a basis in the application as filed for the feature that "said binding reagents are immobilized by non-specific adsorption directly to the electrode surface or by covalent attachment to chemical functional groups on the surface of the electrode".

In its letter dated 2 June 2015, the appellant also referred to section 5.15 of the original specification as a basis for the amended independent claim 1.

Lines 10-11 of page 114 of the original international application as published read: "The electrode may comprise a composite of different materials", and lines 25-28 of the same page read: "Binding reagents may be immobilized by non-specific adsorption directly to the electrode surface or by covalent attachment to a chemical functional groups on the surface of the electrode".

These text passages do not disclose that the composite comprises a plurality of conductive particles dispersed within a matrix and a disposable multiwell plate.

A disposable multiwell plate for use in ECL essays is only disclosed on page 131, lines 7-20, i.e. two sections later: "The invention includes a disposable multiwell plate for use in ECL assays (hereon referred to as an "ECL Plate"). In one embodiment, an ECL Plate is manufactured by shaping (e.g., pressing, molding, or forming) a conductive composite into the form of a multiwell microtiter plate. In another embodiment, a mask is formed that comprises an array of holes through a sheet of a material. Such a mask is then sealed against an electrode (the electrode is preferably a conducting composite or a fibril mat; the preparation of fibril mats is described in detail in Section 5.7, Section 5.18 and the references therein). The holes through the mask will then define wells with walls comprising the mask and bottom comprising the electrode". A composite comprising just a plurality of conductive particles dispersed within a matrix is not apparent in this relationship.

Therefore, the board cannot immediately recognise from the indications of the appellant where in the 236 pages of the original application documents the subject-matter of present claim 1 is disclosed.

3.5.6 By presenting its sole and amended request only in appeal proceedings the appellant made it impossible for the board to review the contested decision. Admitting these claims as filed with the grounds of appeal into the appeal proceedings would therefore result either in the remittal of the case to the department of first instance for further prosecution or in the assessment of newly submitted facts for the first time by the board. Neither of these options appear to be appropriate and acceptable under the above-noted circumstances.

4. For the above reasons, the board, exercising its discretion under Article 12(4) RPBA, did not admit the sole request filed with the statement of grounds of appeal into the appeal proceedings.

5. Consequently, there are no appellant's requests in the appeal proceedings. Thus there is no version approved by the appellant in the sense of Article 113(2) EPC 1973 on which a patent could be granted. The appeal is therefore to be dismissed.