T 0089/16 17-04-2019

1. Main request - inventive step

1.1 The Board agrees with the opposition Division and the parties that D3 forms a suitable closest prior art.

1.2 D3 discloses:

A stent (Figures 1 and 5a) comprising:

one continuous elongated helical element (page 6, lines 25-27), the continuous elongated helical element having undulating portions (15) forming a serpentine configuration and extending substantially over the length of the stent body, wherein adjacent undulating portions are out of phase (page 8, lines 23-25); and

a plurality of curvilinear connectors (Figure 5a, 38a), the curvilinear connectors extending between and interconnecting at least some of the adjacent undulating portions (15).

1.3 It is undisputed that the subject-matter of claim 1 differs from the disclosure of D3 (see Figure 5a) in that

"the curvilinear connectors are attached to locations on the undulating portions other than the extreme ends of the undulating portions".

1.4 According to the patent specification, the problem solved by the patent is to provide a "flexible, conformable stent which expands uniformly and provides good radial strength, scaffolding and fatigue characteristics when expanded" (paragraph [0011] of the patent).

However, according to the original disclosure, the embodiments of the invention - which evidently have to solve the problem posed - comprise "a plurality of curvilinear, most preferably sinusoidal, connectors extending between and interconnecting at least some of the adjacent undulating portions, preferably connected to the end loop portions, of the helical element over its length" (page 3, first paragraph). This is likewise stated in the patent specification itself (column 2, lines 42-47). Said disclosure is further in accordance with the passage on page 4, lines 6-9 of the description as originally filed, which states that "the interconnecting elements 14 preferably join end portions 13 at their extreme ends and extend directly between longitudinally spaced adjacent end portions", while acknowledging that "the connectors may be attached to other locations on the undulations other than the extreme ends".

From these passages it has to be deduced that whether the interconnecting elements "join the end portions at their extreme ends" or whether "they are attached to other locations on the undulations other than the extreme ends" is of no relevance for solving the problem posed in the patent. Thus, the problem formulated in the patent is, indeed, solved by the stent disclosed in D3 (in which the interconnecting elements join the undulatimg portions at their extreme ends) as well as by the stent defined in claim 1 (in which the interconnecting elements are attached to locations on the undulating portions other than the extreme ends).

In this context it is irrelevant that D3 explicitly mentions a further, different problem to be solved (see point 5.4. of the impugned decision). A further problem solved does not change the fact that the stent disclosed in D3 has all the features of a stent which is disclosed to solve the problem posed in the patent in suit and in the original application.

With the technical problem posed being solved by the stent according to prior art D3, an alternative, less ambitious problem needs to be formulated, i.e. to provide an alternative solution to the problem posed.

1.5 D3 discloses on page 8, lines 18-20 that as an alternative, the "bridges could be interconnected between adjacent windings midway between bends on each adjacent winding, with consistent corresponding placement of the remaining bridges", i.e. D3 discloses an alternative stent design in which the curvilinear connectors are attached to locations on the undulating portions other than the extreme ends.

In the context of the technical problem being simply to provide an alternative to the prior art, features already conventional in the art for the product (such as the one disclosed on page 8, lines 18-20) represent an equally suggested or obvious solution to the posed problem (see in this context e.g. T892/08, reasons 1.7 with references to further cases).

Consequently, the subject-matter of claim 1 is obvious.

1.6 The proprietor and the opposition division have pointed out that the attachment at locations other than the extreme ends of the undulating portions reduced stresses being present in the stent at the extreme ends, thereby lowering the risk of breaking of the stent.

However, the patent and the application from which it derives are completely silent on any stress development in the extreme ends and of any breaking risk at these locations. Fatigue characteristics are referred to on page 2 , lines 14-16 of the application as filed (column 2, lines 25-29 of the patent specification), but as mentioned above, according to the original disclosure any favourable effect in this respect is present whether the curvilinear elements are attached to locations of the undulating portions other than the extreme ends or not.

The problem allegedly solved is thus not derivable from the application as filed and cannot establish the presence of an inventive step.

1.7 One could - for the sake of the argument - assume that the skilled person was sufficiently gifted to immediately recognize from the patent specification that attaching the curvilinear elements to locations of the undulating portions other than the extreme end portions results in inducing part of the forces at a location away from the extreme end portions, thereby reducing local stress and the risk of breaking at these extreme end portions.

Then one had, however, to assume that the skilled person was as well gifted enough to recognize the identical technical effect and problem solved from the alternative disclosed in prior art D3, page 8, lines 18- 20, in which the connectors are likewise attached at a location away from the extreme end portions of the undulating portions.

Attaching the curvilinear elements to locations other than the extreme end portions will then, again, be an obvious solution to the problem derived by the respondent and the opposition division.

1.8 Either way, the Board comes to the conclusion that the subject-matter of claim 1 of the main request does not involve an inventive step.

2. Auxiliary requests 1-9

2.1 The respondent filed auxiliary requests 1 to 9 with the reply to the statement setting out the grounds of appeal. The only explanation given is that these requests are filed as an auxiliary measure and address in various forms the attacks raised by the appellant. No further submissions were made on this issue at any other point in the proceedings, neither in writing nor orally (the respondent did not participate to the oral proceedings).

2.2 Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) provides that both the grounds of appeal and the reply thereto must contain a party's complete case. They must set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and must specify expressly all the facts, arguments and evidence relied on. The reason for requiring the parties to present their complete case at the earliest stage of the proceedings is to ensure a fair procedure, where both parties know from the outset the case they have to meet, and to enable the Board to commence its work on the basis of these submissions.

2.3 By filing the auxiliary requests the respondent requested in effect that the decision under appeal be amended so that the patent be maintained on the basis of one of these requests. Pursuant to the principle underlying Article 12(2) RPBA that a party is to present its entire case at the outset of the proceedings it was for the respondent to provide arguments as to why these amended sets of claims overcame the objections raised by the opponent against the main request.

2.4 There may be exceptional circumstances where the Board does not require such arguments, namely where it is immediately apparent to the Board why the new request overcomes the objections. An example of such a case is where the patentee files an auxiliary request in which a feature which has been objected to under Article 123(2) EPC is amended in such a way that it is immediately apparent to the Board that the objection has been overcome. However, in the present case no such exceptional circumstances exist.

2.5 The opponent had raised various objections against the main request under Articles 100(a) and (c) EPC, including lack of inventive step. The respondent has not provided any arguments on the patentability of the subject-matter of claim 1 of any of the auxiliary requests, and thus on why these requests overcome the objections made by the opponent against the main request.

2.6 In view of the above, the Board concludes with regard to auxiliary requests 1-9 that the respondent has not complied with Article 12(2) RPBA. Pursuant to Article 12(4) RPBA the Board does not take these requests into account (see also T 1890/09, Reasons 4).