T 1717/13 14-06-2016

1. Alleged procedural violation

1.1 From a general point of view, it is first noted that following European patent practice, the opposition division issues the summons together with an annex drawing attention to the points to be discussed (Rule 116(1) EPC) and normally containing the division's provisional opinion, as well as a final date for making written submissions. If it becomes apparent in the oral proceedings that the timely submitted amended claims in reaction to the division's preliminary opinion are not allowable under the EPC, the admission of further requests is at the discretion of the opposition division, which will take into account, inter alia, procedural expediency but also whether the new requests are reasonable in number, whether their subject-matter is based on dependent claims as granted or based on subject-matter not previously covered by the claims and whether they are prima facie appropriate for overcoming outstanding objections (cf. Guidelines for Examination in the European Patent Office, November 2015, part E-V, 2.2).

If the way in which a department of first instance has exercised its discretion on admitting requests filed during oral proceedings is challenged in appeal, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way as or different from the department of first instance. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if the board concludes that it has done so according to the wrong principles, without taking into account the right principles, or in an unreasonable way (cf. G 7/93, OJ EPO 1994, 775).

1.2 The appellant argues that the opposition division committed serious procedural violations by not properly exercising its discretion. These allegations concern the circumstances under which the appellant had to prepare the auxiliary requests 1 to 3 (cf. above allegations (b) and (c)) as well as the non-admission of auxiliary request 3 and the possibility to file further auxiliary requests (cf. above allegation (a)).

1.3 Turning first to allegation (b), the appellant essentially argues that its representative was caught by surprise by the fact that the opposition division did not comprehensively indicate which of the objections raised by the opponent under Article 123(2) EPC it shared. In that respect, reference shall first be made to the course of the first instance proceedings. It is noted that the grounds for opposition under Article 100(a) EPC 1973 had been raised in the notice of opposition. The appellant reacted by filing a modified main request, wherein the amendments to the independent claim were largely based on the detailed description. In its annex to the summons, the opposition division expressed the preliminary opinion that the amendments were not in compliance with the provisions of Article 123(2) EPC. One month before the oral proceedings the appellant submitted a new main request in response, which was still largely based on the detailed description. In view of this, the appellant's representative could not be surprised that during the oral proceedings the claim amendments were scrutinised by the respondent and the opposition division in order to assess their compliance with Article 123(2) EPC, in particular since the issues raised at that stage did not concern the claims as granted but post-grant amendments of the claims. Moreover, following established case law of the Enlarged Board of Appeal, the EPC does not entitle a party to be provided with all foreseeable arguments in favour of or against it by the deciding body in advance, a principle which also applies to the decisive reasons (see R 16/10 of 20 December 2010, Reasons, point 2.2.4). Thus, the opposition division was not legally required to provide the appellant with a comprehensive list setting out which of the respondent's objections under Article 123(2) EPC against a specific set of claims it shared at the different stages of the oral proceedings. For these reasons, the board does not concur with the appellant's objection (b).

1.4 Regarding the appellant's allegation (c), it is observed that during the opposition proceedings the appellant filed an amended main request and three auxiliary requests in reaction to the various objections of added subject-matter, all caused by the appellant's claim amendments. The opposition division admitted all of them, except for the third auxiliary request. Based on the minutes of the oral proceedings, it is further noted that the opposition division adjourned the oral proceedings at 11:23 hrs, after having announced that the main request did not meet the requirements of Article 123(2) EPC and again at 14:01 hrs, following the conclusion that the first auxiliary request did not overcome the objection under Article 123(2) EPC. After the first interruption, the appellant submitted a first auxiliary request; after the second break the second and third auxiliary requests were presented. Thus, during the oral proceedings the appellant was given two opportunities to react to the objections raised. Even if the oral proceedings were resumed after a first interruption of 26 minutes (instead of the 30 minutes the appellant had initially asked for), the time given was obviously sufficient to take into account the newly raised objections in the oral proceedings and to prepare an amended set of claims in response. Moreover, as admitted by the appellant, it is not apparent from the minutes that during any of the interruptions the appellant asked for more time for drafting amended requests.

In view of the above, the board does not share the appellant's view that it had insufficient possibility and time to consider the raised deficiencies when preparing the first to third auxiliary requests. Thus, the circumstances under which the appellant had to prepare these auxiliary requests do not amount to a serious procedural violation.

1.5 In the further objection (a), the appellant challenges the way in which a department of first instance has exercised its discretion by not admitting the third auxiliary request and by not accepting further auxiliary requests. In the impugned decision, the opposition division justifies the non-admission of the third auxiliary request by stating that its amendment could, at first sight, not overcome the non-compliance found with respect to the first auxiliary request (cf. Reasons, points 4 and 5). It is, hence, not apparent that the department of first instance exercised its discretion according to the wrong principles or in an unreasonable way. In view of the limited competence to review discretionary first-instance decisions (see point 1.1 above), the board does not see a reason for overruling the opposition division's judgement not to admit the third auxiliary request into the proceedings.

Regarding the possibility of filing further auxiliary requests, the board points to the fact that the second auxiliary request was refused because of a deficiency of added subject-matter regarding a feature ("[...] and the CPU obtains from the raster image processor, concurrently with the instruction to begin the unloading process for the first plate P(N-1) [...] control information associated with a third plate P(N+1) [...]"), which was in substance already present in claim 1 of the first auxiliary request, but was in this context, apparently not indicated by the division as being defective. According to the following statement in the minutes (cf. point 8), the appellant had no possibility to react to the refusal of the second auxiliary request by rectifying this newly established deficiency:

"8. Based on the above opinion the chairman announced that in the view of the opposition division the proprietor had already been given several opportunities to overcome the problems under Article 123(2) EPC and therefore at this late state of the proceedings further requests were not accepted.

8.1 The proprietor announced that by not allowing any more requests the opposition division has violated his right to be heard in accordance with Article 113(1) EPC."

On the other hand, it has to be taken into account that at that stage of the proceedings the opposition division had already accepted the filing of an amended main request and three auxiliary requests in reaction to the objections of added subject-matter. Except for the third auxiliary request, all of them were admitted into the proceedings. Moreover, the applicant's demand for filing further auxiliary requests did not arise from the introduction of new attacks against the patent in suit and/or the submission of additional prior art documents, but exclusively from the fact that the appellant's numerous attempts to rectify deficiencies under Article 123(2) EPC, on the basis of the detailed description of the embodiments, remained unsuccessful.

In view of the above, the opposition division possibly exceeded its scope of discretion by categorically stating that it would not accept further auxiliary requests without duly taking notice of their content. However, even in case this statement ultimately proves to be arbitrary and thus inappropriate, such erroneous application of the law does, under the present circumstances, not amount to a substantial procedural violation (cf. Case Law of the Boards of Appeal of the European Patent Office, 7**(th) Edition 2013, IV.E.8.3.5). The board judges that, having regard to the overall procedure, the opposition division did not breach the appellant's right to a fair trial. Consequently, the appellant's request for reimbursement of the appeal fee under Rule 67 EPC 1973 (applicable here) is refused.

2. Main request - added subject-matter

2.1 The subject-matter of claim 1 of the main request is based on original claim 1 and restricted further with features extracted from the detailed description of the embodiment. The case law typically refers to this type of amendment as an "intermediate generalisation". The parties' views essentially differ on whether or not it was unambiguously clear to a skilled person that all restricting features could be isolated from their originally disclosed context. In particular, the following claim features are objected to by the respondent:

(i) "moving the selected cassette (31) to a plate assembly",

(ii) "and feeding the plate (P) to an image recording assembly (16) such that the pate is halted at a plate pre-loading position",

(iii) "unloading process of removing, from the recording drum (36), the plate (P)",

(iv) "a control assembly (11) for controlling the cassette selection assembly (14), the plate feeding assembly (15), the exposure section (18), the loading section (17) and the unloading section (19)".

2.2 As a preliminary remark, the board notes that the respondent's objections primarily point to differences in the wording between the application as filed and the claim amendments. It is, however, generally accepted that for the purposes of Article 123(2) EPC an explicit basis for an amendment in the original application documents is not required as long as the amendment is clearly and unambiguously derivable, using common general knowledge, from the application as filed.

Turning to the respondent's first specific objection (i), it is observed that according to the original disclosure (cf. page 9, lines 11 to 23), a cassette is horizontally moved from the multi-cassette section (or cassette selection assembly) to the autoloading section (or plate feeding assembly); the autoloading section (or plate feeding assembly) then moves up and down the cassette to a predetermined plate feeding position. The present wording of claim 1 generally reflects the function of the multi-cassette section and the autoloading section, in particular the movements of the cassette, without however, indicating their respective directions. In the judgement of the board, it is unambiguously clear to a skilled reader of the original disclosure that the functions of the above sections are independent from the specific cassette movement directions. Therefore, their omission does not constitute an unallowable generalisation. Consequently, the provisions of Article 123(2) EPC are met in that respect.

Concerning the respondent's second objection (ii), it is implicitly clear that the preloading position of the plate has to be on the feed path. It is equally implicit that the plate movement from the plate feeding position to the pre-loading position (referred to as "step S114" in the detailed description) is completed when the plate is halted at the pre-loading position. Hence, objection (ii) equally does not constitute a violation of Article 123(2) EPC.

The same is true for objection (iii) concerning the allegedly omitted aspect of unloading the plate by moving it in an i-turn fashion. In fact, the statement on page 6, lines 19 to 22, does not refer to an i-turn movement of the plate when unloading it and provides an unambiguous basis for a more general wording of the feature in question.

Finally regarding objection (iv), the amended version of claim 1 defines that the control assembly is suitable for controlling the cassette selection assembly, the plate feeding assembly, the exposure section, the loading and the unloading section. The feature in question makes clear that all claimed machine sections of the apparatus are controlled by the control assembly. The board does not concur with the respondent's objection that the claim erroneously omitted the further aspect of controlling a line buffer 13, which is mentioned in the detailed embodiment on original page 12, lines 15 to 18, for the reason that the line buffer 13 does not, as such, form part of the subject-matter claimed.

In view of the above, the board is satisfied that the wording of claim 1, according to the main request, does not go beyond the content of the application as filed, Article 123(2) EPC.

3. Main request - inventive step

3.1 Both parties base their respective inventive step assessment on document D1 which relates to a plate producing apparatus. Moreover, the parties are in agreement that subject-matter of claim 1 differs from document D1 essentially in the features of the last part of the claim starting with "wherein, once the unloading section (19) ..." and in that the objective technical problem to be solved is to increase the productivity of the apparatus. Thus, the issue of inventive step primarily hinges on the question of whether or not the teaching of document D1 and the common general knowledge are sufficient to point the skilled person to the claimed solution.

3.2 In that respect, the respondent generally submits that it was a straightforward measure to identify waiting times in the process and to reduce them by carrying out the steps of unloading, loading, exposing, pre-loading cassette selection in parallel if necessary. If all the steps were started as soon as possible, which was expressed by the wording "concurrently" in the contested claim, the waiting time would inevitably be reduced and the productivity of the apparatus increased.

3.3 The board first refers to column 2, lines 31 to 34 of document D1 according to which it was an object to increase the productivity and efficiency by providing an automated queue management. Document D1 goes on by proposing in particular in column 4, lines 38 to 44, to start the cassette selection by the plate handler (corresponding to the cassette selection assembly in the terminology of the present claim) for the third plate as soon as the picker (corresponding to the plate feeding assembly) has delivered the second plate to the image recording section:

"The picker 28 then moves over the positioned cassette, the plate is "picked," and the picker 28 returns to the imaging engine (home) position to deliver the plate. The imaging engine 20 accepts the plate and while the picker is in the engine 20 in the home position, the handler 18 is free to position the cassettes 24 in preparation for the next plate to be imaged."

The above teaching is equally reflected in claim 4 of document D1:

"The method according to claim 1, wherein said step of automatically positioning a stack of plates required for the job by the imaging engine can occur during delivery of a previous plate to the imaging engine."

In view of the above, the board agrees with the respondent in that this aspect of the prior art solution could indeed render obvious the last feature of the present claim that the control assembly causes, when determining that the exchange of cassettes is necessary, the cassette selection assembly to start the cassette selection operation for the third plate, such that the cassette selection operation for the third plate begins before completion of image recording for the second plate.

3.4 However, taking into account the detailed wording of the further claim features ("the control assembly (11) obtains, from the image processing device (1), concurrently with the instruction to begin the unloading process for the first plate (P(N-l)) performed by the unloading section (19), control information associated with a third plate (P(N+1)) for which third plate (P(N+1)) the image recording is to be performed following the second plate (P(N)), and determines whether or not to perform an exchange of cassettes, by comparing control information of the second plate (P(N)) obtained concurrently with the instruction to begin the unloading process for the first plate with the control information of the third plate (P(N+1)), or by comparing control information of the second plate (P(N)) stored in an image buffer (23) with the control information of the third plate (P(N+1))"), the board does not share the respondent's view that the subject-matter of claim 1 as a whole would be self-evident in view of document D1 and the common general knowledge.

To that effect, particular reference is made to column 4, lines 11 to 16 of document D1:

"The front-end 12 sends data to the engine 20 through an interface connection. Typically this data represents a "job" which requires the imaging of plates. This data contains information about the job's requirements, such as the type of plate, its size and plate thickness, the number of plates that are part of the same job, etc."

It can be inferred that this prior art control assembly is provided with control information relating to a batch of plates belonging to the same job, while in present claim 1, the data are provided for an individual plate and delivered concurrently with the instruction to unload the previous plate. Even if it is not excluded that a job consists of processing only one plate, as submitted by the respondent, document D1 fails to point the skilled person towards the claimed solution of systematically providing control information for an individual plate and delivering it concurrently with the instruction to unload the previous plate. Moreover, document D1, in particular column 10, lines 61 onwards, does not give any guidance on how to determine the need for an exchange of cassettes. The same is true for the exact timing for processing the control information.

In view of the substantial differences between the solution now claimed and the one known from document D1, the board judges that the skilled person, based on document D1 and the common general knowledge, but without hindsight, would not arrive at the subject-matter of claim 1 of the main request, which is, thus, based on an inventive step, Article 56 EPC 1973.