T 2115/15 06-07-2017

1. The appeal is admissible.

2. The invention

The invention as defined in claim 1 of all requests relates to an ultrasonic instrument, for example as depicted in figure 12 of the patent, reproduced below.

FORMULA/TABLE/GRAPHIC

The instrument has a housing (222) supporting an ultrasonic transducer (230), a stationary (228) and a movable (236) handle for manipulating a jaw assembly (232) disposed at a distal end of an elongate body portion (224) extending from the housing. The jaw assembly comprises a cutting jaw and a clamp.

Such ultrasonic instruments are typically used in surgery for performing dissection and coagulation of tissue. More particularly, the elongate body portion may be introduced into a patient's body through a trocar, so that it reaches the tissue to be dissected (for example a blood vessel). The tissue is then clamped and cut by the cutting jaw by manipulation of the handles and the actuation of the ultrasonic transducer.

The features of the characterising portion of claim 1 of all requests relate to the cutting jaw being defined as integral with the distal end of the vibration coupler, and the elongate body portion, the clamp, the cutting jaw, the housing, the stationary handle and the movable handle being packaged as an integral unit requiring no assembly by the user prior to use.

From the patent it is derivable that these features facilitate the use of the instrument, since the user only needs to attach the transducer to the housing to have the instrument ready for use.

3. The patent is derived from divisional application No. 10012264.7 (published as EP-A-2 311 393) of application number 08008175.5, which is itself a divisional of 06010587.1, which is itself a divisional of 97944573.1 (hereinafter "the first parent").

It is common ground that the technical disclosure of the first parent application as originally filed is also present in all those divisional applications as originally filed. For the purpose of assessing compliance with Article 76(1) EPC it is therefore sufficient to consider the first parent application as originally filed.

For ease of citation the (numbered) paragraphs of the description of the present application as published, which correspond to respective (not numbered) paragraphs of the description of the first parent application as originally filed, will be referred to.

4. Substantial procedural violation

The appellant argued that the impugned decision was tainted by a substantial procedural violation.

The Board notes that the paragraphs of the impugned decision specifically dealing with the ground for the revocation of the patent are 22 to 32.

In paragraph 26 it is explained that "in the original application the subjective technical problem is presented as being the improvement of the cutting results by providing good blade to tissue contact" and that "this problem is solved by providing a particular combination between a clamp member and an angled blade member".

Paragraph 27 goes on to say that "the claimed subject-matter is shifted from the particular combination between the clamp member and the blade member discussed originally to a particular construction of the cutting jaw and vibration coupler and the packaging of parts as an integral unit in order to avoid assembly by the user prior to use".

It is clear from paragraph 31 that the Opposition Division considered this shift as problematic in view of Article 76(1) EPC: "the granted patent has now a different scope of protection than it could be foreseen, shifting from an ultrasonic instrument with a particular construction of a clamp and blade member in order to achieve better cutting properties to an ultrasonic instrument in which particular parts are such constructed or packaged to assure less assembly prior to use". In the light of this statement, the following sentences provide the reasons why, in the Opposition Division's opinion, this shift contravened Article 76(1) EPC. In particular: "by reading the original application the skilled person could not have foreseen that such an invention would be granted".

Paragraph 30 can only be read in this context. This makes clear that the first sentence of that paragraph provides additional reasons why the Opposition Division concluded that the shift was in contravention of Article 76(1) EPC: "the combination of the two features above [i.e. the claimed construction of the cutting jaw and vibration coupler, and packaging of parts as an integral unit in order to avoid assembly by the user prior to use] was not presented as solving a particular problem and it was no indication in the original application [...] that such a combination of features would be pursued".

In summary, the Opposition Division provided sufficient reasons in its decision as to why it concluded that the above-mentioned shift in the claimed subject-matter did not comply with Article 76(1) EPC. Hence, Rule 111(2) EPC is complied with.

The appellant may argue that these reasons are wrong. However, this is a substantive rather than a procedural issue, and one which plays no role in the assessment of whether a decision has been adequately reasoned.

The Board also notes that the issue of the shift in the claimed subject-matter was presented by the respondent in the notice of opposition. In Part II - Formal Grounds of Opposition, section C, entitled "Art.100(c) - Shift in claimed invention against the interests of third parties", it is specifically argued (paragraphs 12 and 13) that "the opposed patent was granted to the patentee with claims which have nothing to do with the invention set out in the original application and which could not have been foreseen", and that "there is nothing in the first application [...] which explains that [... the packaging of parts as an integral unit] was not also entirely conventional; addressed a perceived problem; or was a concept for which the patentee intended to pursue protection". The requirements of Article 76(1) EPC in general and the particular issue of the shift in the claimed subject-matter were also discussed in the oral proceedings at first instance, as derivable from section 3 of the minutes. In particular, in section 3.2 mentioned by the respondent it is stated: "the patent proprietor argues that a third party reading the entire earlier application would realise that it contains subject-matter for solving technical problems other than the one solved by the original claim features. Hence, a third party could have reasonably expected that this subject-matter may be claimed in a divisional application".

For these reasons the Board concludes that the appellant was not deprived of its right to be heard on the ground and arguments on which the revocation of the patent was based. Hence, Article 113(1) EPC is complied with.

As a consequence, no substantial procedural violation was committed by the Opposition Division. It follows that the appellant's request for reimbursement of the appeal fee is refused under Rule 103(1)(a) EPC.

5. Added subject-matter

5.1 The respondent argued that omitting the definition of an angled blade in claim 1 of all requests contravened Article 76(1) EPC.

In this respect, Article 76(1) EPC is only complied with if the information provided by this omission is directly and unambiguously derivable by the skilled person, using common general knowledge and seen objectively and relative to the date of filing of the first parent application, from the whole of this application as originally filed. This is the general test for assessing added subject-matter established in opinion G 3/89 and decision G 11/91, and referred to as the "gold" standard in decision G 2/10 (point 4.3 of the Reasons).

5.2 Paragraph [0001] of the description of the application as published reads:

"The present disclosure relates to an ultrasonic dissection and coagulation system for surgical use. More specifically, the present disclosure relates to an ultrasonic instrument including an angled blade and a clamp member particularly suited for performing dissection and coagulation of tissue."

In the section "Background of Related Art" (paragraph [0004]) the only explicitly defined "need" to be satisfied by the invention is presented as follows:

"Accordingly, a need exists for an improved ultrasonic surgical instrument which is easy to use and provides fast and easy cutting and improved coagulation."

The "SUMMARY" of the invention goes on to explain how this need is satisfied, in particular by the angled blade. According to paragraph [0005], last sentence, and paragraph [0006], last sentence:

"The clamp member and angled blade member combine to enhance contact between the tissue and the blade member during operation of the instrument to improve the performance of the instrument."

"Because the cutting blade is angled with respect to the longitudinal axis of the elongated body portion, the contact pressure applied by the blade surface is increased as the force applied of the instrument is increased."

Consistently, all the preferred embodiments presented in the detailed description and all the independent claims of the first parent application as filed comprised an angled blade.

5.3 It is the Board's view that the skilled person, considering the whole of the disclosure of the first parent application as originally filed, would grasp the technical teaching that the angled blade is an important feature of the described ultrasonic surgical instrument.

In this context, the appellant's argument that the features of the characterising portion of claim 1 of all the requests are not concerned with the same problem as the angled blade is not decisive. The Board acknowledges that the problems addressed are different. More particularly, from the description of the embodiments in paragraphs [0026] to [0037] and [0038] to [0052] of the present application as published, referred to by the appellant, the problem of facilitating the set-up of the ultrasonic instrument before use, solved by the claimed provision of a one-piece instrument, is derivable. However, that same description also includes a detailed disclosure of the angled blade and its advantages (for example in paragraphs [0030] and [0042]).

In the Board's view, the teaching of those embodiments is that, in the general context of the ultrasonic instrument with the specific angled blade as consistently described throughout the first parent application as originally filed, the provision of a one-piece instrument as claimed may be a further advantage. This alone, however, is not sufficient for concluding that the skilled person would directly and unambiguously derive, using common general knowledge and seen objectively and relative to the date of filing of the first parent application, that the angled blade can be dispensed with.

For these reasons, claim 1 of all the requests, conveying the information that the angled blade is merely an optional feature of the ultrasonic instrument disclosed in the patent, introduces subject-matter which extends beyond the content of the first parent application as originally filed. It follows that Article 76(1) EPC is not complied with.

6. Since none of the requests is found to comply with Article 76(1) EPC the appellant's request that the case be remitted to the Opposition Division for further prosecution on issues of novelty and inventive step is without object.