T 2259/11 02-06-2016

1. Admittance - Auxiliary requests

1.1 According to Article 12(4) RPBA, without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under Article 12(1) RPBA [statement of grounds/reply] shall be taken into account by the Board to the extent it relates to the case and meets the requirement in Article 12(2) RPBA [substantiation]. In other words, the principle is to admit what is presented with the statement of grounds and the exception is not to admit what could have been presented in the first instance proceedings.

1.2 An automatic refusal of the requests whenever they "could" have been filed before the opposition division would contravene (a) Article 12(4) RPBA itself which leaves discretion to the Boards, (b) Article 114 EPC which also provides a discretion in admitting late filed documents, Article 12(4) being an implementation of this Article and (c) to some extent the exercise of the right of appeal if the requests may be considered as part of the defence, in particular when the new requests may indeed remedy (or are an attempt to remedy) a weak point which became apparent before the department of first instance; these requests may be seen as part of the substantiation of the reasons to set aside the decision. On the other hand another of the purposes of Article 12(4) RPBA is to deter parties from (mis)using the procedure in order to e.g. delay the outcome of the case or shift the decision to a further instance (forum shopping).

1.3 Accordingly, in the current case, the Board has to reach a finding on whether the new requests were filed as a mere tactical calculation by the appellant to save time or for other tactical reasons, or whether they were a good faith attempt to repair a mere mistake in assessing its case made during the first instance proceedings, and whether this possible mistake justified the admissibility of the requests.

1.4 The appellant said that the failure to request oral proceedings had (1) been a clerical error, but it also argued (2) that it was so confident of the outcome of the decision, due to the case that had been made, that it did not file auxiliary requests. Additionally, it set out in the appeal proceedings that in its view, the decision of the opposition division went significantly beyond the opponent's grounds of opposition and the arguments in support of those grounds since it considered the decision was based mainly on arguments developed by reference to a second alternative and related to implicit disclosure (3) not brought forward by the opponent.

1.5 As to the argument (3), the Board finds that the decision of the opposition division did not go beyond the opponent's grounds of opposition, and no violation of the right to be heard occurred, but it cannot be overlooked that the reasons for the decision concerning the novelty objection for example with regard to D1 rely on reference to the alternative embodiment disclosed in paragraph [0023] of D1, which was mentioned very briefly by the opponent, without specifying in detail the relevance of this paragraph[deleted: .] Indeed, during opposition proceedings, the proprietor gave a detailed response stating how a skilled person could understand the disclosure of D1 and why lack of novelty could not be assumed.

1.6 Obviously, the appellant was unwise in arriving at its decision (2) (see point 1.4 above), and the alleged clerical error (item (1) in point 1.4 above) made this situation worse. However, that this course of action was the result of a deliberate action on the part of the appellant to shift the case to the board of appeal, or to gain time, or for another tactical reason, is a further conclusion that the Board cannot make in the absence of any hint towards this intention. To do so would be pure speculation. Considering the circumstances as they stand, it remains in doubt whether the appellant's behaviour was minded to delay the proceedings or was a pure error of judgment/assessment concerning the validity of its patent.

1.7 In the absence of any evidence of any such abuse of procedure, the contention of the appellant that the statement of ground was the first opportunity to react to the decision, and in particular to the analysis given in the decision which had not been part of the opponent's arguments, becomes important. The opposition division had not sent any communication and the appellant chose an undoubtedly dangerous course of action in expecting this and from refraining from filing an auxiliary request. To punish the appellant by immediately rejecting all the new requests in the present case, without giving it the benefit of the doubt would nevertheless amount to depriving it of its right of effective appeal, which the Board considers normally encompasses the right to remedy errors in the defence of the patent provided that such errors were indeed simply errors and not a procedural tactic.

1.8 Accordingly, the filing of auxiliary request 1 represents a reasonable response to the development of the proceedings. Also, no new case was made in regard to inventive step, since any discussion of this, given the cited prior art, would be the same, as it was admitted by the appellant that the additional feature included in claim 1 of auxiliary request 1 - now main request - did not alter its inventive step arguments. Hence, the opponent/respondent had enough time to prepare the case as the preparation did not include further issues.

1.9 Although six auxiliary requests were filed, the Board only exercised its discretion to admit auxiliary request 1 (new main request).

2. Main request - claim 1 - Article 123 EPC

Compared to claim 1 as granted, this request additionally includes the feature "the bristles being made of polyester or nylon". This feature is based on the application as filed, page 9, lines 26/27.

No objections concerning the requirements of Article 123(2) and (3) EPC were raised. The Board is also satisfied that the amended feature is disclosed in the originally filed description as pertaining generally to the bristles of the tooth brush head and also that its insertion into claim 1 represents a limitation of the scope of the claim.

3. Main Request - claim 1 - novelty - D1

3.1 D1 does not disclose the feature of claim 1 that the bristles are made of polyester or nylon. For this reason, the subject-matter of claim 1 is novel over D1.

3.2 Although the skilled person reads the prior art while relying on common general knowledge in the field, no evidence has been provided that only nylon or polyester were the materials used for tufts of bristles in conventional toothbrushes, albeit the Board and the appellant accept that these materials are the most common.

3.3 In this regard, the appellant referred to D9 (which document had already been cited in the opposition proceedings for different reasons), which document was published in 1981 and discloses a toothbrush having bristles made of a core which is made of a hard thermoplastic material such as nylon 6 or high-density polyethylene and of a sheath which is made of a softer material such as ethylene vinyl acetate co-polymer, polyethylene or poly-vinyl chloride, or of natural or synthetic rubber. Accordingly, D9 provides evidence for synthetic materials other than nylon or polyester being applied for the same purpose before the priority date. It should be noted that the respondent made no objection to the appellant's reference to D9 in this regard. The Board also considered it appropriate as it was not complex and served the purpose of clarifying whether further bristle materials could have been considered in the context of D1.

3.4 The respondent's argument that in 1996 (priority year of the patent in suit) only nylon and polyesters would have been used, lacks any supporting evidence. Accordingly, the skilled person could indeed have used a variety of polymeric materials for the bristles in D1 and the limitation of claim 1 to the bristles being made of polyester or nylon represents a specific selection from such materials which renders the subject-matter of claim 1 novel.

3.5 The respondent's argument that the skilled person inevitably considered nylon as the mainly used material in view of the historical development of bristles for toothbrushes is not denied. However, in view of the possibility to select other materials, and D1 not referring to any material at all, nor a requirement to inherently require those particular materials, no clear and unambiguous disclosure of nylon and polyester is present therein.

3.6 Concerning the respondent's argument that conventional staple technology for assembling the bristles in tooth brushes as disclosed in paragraph [0023] of D1 was applied exclusively for nylon and polyester, whereas for natural fibres other assembling technologies were to be considered, this argument is not accepted since the disclosure in D1 (reading that the "head may then be tufted using conventional staple technology") does not exclude other technologies being applicable. No further evidence in this respect was submitted either.

3.7 The appellant's contention that D1 fails to disclose further features of claim 1 is, however, not accepted, but for the purposes of this decision irrelevant.

4. Main Request - claim 1 - novelty - D2

Equally, D2 does not disclose the feature of claim 1 that the bristles are made of polyester or nylon. At least for this reason, the subject-matter of claim 1 is novel over D2 and points 3.2 to 3.5 set out above apply as well. No further separate arguments in this regard were made by the respondent.

5. Remittal of the case for further prosecution

5.1 Accordingly, as a result of the amendment made to independent claim 1, the Board finds that the objection of lack of novelty to granted claim 1 is overcome by claim 1 of the new main request. This was also the sole reason leading to revocation of the patent by the opposition division, and further this was based on documents which are prior art only under Article 54(3) EPC (i.e. D1 and D2).

5.2 The respondent requested that the case be remitted to the opposition division for further prosecution and the appellant had no objection to this. In view of the fact that the new main request was filed in the appeal proceedings in order to overcome the above-mentioned objection only, the Board concludes that under the present circumstances it is not appropriate to reach a decision in the appeal proceedings on the matter of novelty concerning different prior art nor on the matter of inventive step for the first time.

5.3 For these reasons, the Board decides, in the exercise of its discretion conferred by Article 111(1) EPC and on the basis of the new main request, to remit the case to the opposition division for further prosecution of the opposition.