T 0158/16 30-07-2019

1. Submissions of appellant 1 dated 24 January 2019 - not a withdrawal of the appeal

The case law of the Boards of Appeal concerning the withdrawal of an appeal has established several principles. One is that for a withdrawal to be effective it is not necessary that a declaration is made which includes the word "withdrawal" expressly (J 7/87, OJ 1988/422).

Another established principle is that a request for a withdrawal of an appeal can only be accepted without question if it is completely unqualified and unambiguous (J 11/80, OJ 1981/141, Reasons 5). Where there is any doubt as to the actual intent of a party, a declaration may be construed as a withdrawal only if the related facts confirm that such was the party's true intent (applying J 11/87, OJ 1988/367 to a withdrawal of an appeal).

Appellant 1 had declared in its letter dated 24 January 2019 that the patent proprietor "does not intend to further proceed with the appeal". An intention not to proceed is open to several interpretations. It can mean that the party does not wish to take an active role in the appeal anymore while maintaining the party status of an appellant. It can also mean that the appellant intends to withdraw the appeal at a later date without indicating when this might be the case. The wording used by appellant 1 is as such not unambiguous and does thus not amount to a withdrawal of an appeal, see also T 60/00 (Reasons 2.3 and 2.4) and T 2514/11 (Reasons 2.1) where similar declarations were held not to amount to a withdrawal of an appeal.

Appellant 2 emphasised that the declaration of appellant 1 was made in reply to a communication of the Board asking the appellants, pursuant to Rule 84(1) EPC, to declare within a period of two months whether they intended to further proceed with the appeal ("Rule 84(1) EPC communication"). The Board notes that in the case where there is more than one appellant, such as in the present one, the legal consequence that proceedings are terminated only ensues if none of the appellants requests that the proceedings be continued. The answer of one appellant as to whether to continue the proceedings will often depend on that of the other. Appellant 2 had declared already on 9 January 2019 that it intended to further proceed with the appeal. For the other appellant then to withdraw the appeal would be a rather unusual behaviour of a party. This factual context does therefore not lend support to the suggestion that it was the true intent of appellant 1 to withdraw the appeal.

To summarise, a reply to a Rule 84(1) EPC communication is taken with a view to the legal consequences that are foreseen in that rule. In the case where there is more than one appellant, a declaration made by one of several appellants stating that it no longer intends to further proceed with the appeal is aimed at this legal consequence, which only ensues if none of the appellants requests that the proceedings be continued. The only clear and unambiguous information that the Board can derive from such a declaration is the appellant's agreement that the proceedings are terminated if no other appellant requests that they be continued. This, however, is far removed from a withdrawal of an appeal, which is a procedural act entirely independent of the behaviour of the other parties.

To conclude, with letter dated 24 January 2019 appellant 1 did not withdraw the appeal.

2. Main request - Article 100(c) EPC

2.1 The patent is based on a 4th generation divisional application. The parent applications are WO 98/29057 (EP 0967939, AN 97953935.0), EP 1 621 162 (AN 05024006.8) and EP 2 000 115 (appeal case T 565/14, AN 08016624.2).

The description and drawings of all parent applications are identical to the description and drawings of the application. However, the claims of the original WO application have not remained in the respective divisionals. As discussed in T 565/14, point 1.1 of the reasons (the case concerns the direct parent application of the present one), it is thus sufficient to verify whether the claimed subject-matter is directly and unambiguously derivable, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the description and drawings of the earliest application WO-A-98/29057 (referred to as BB1 in the following) as filed.

2.2 The invention is directed to a prosthetic valve assembly for replacing a stenotic native aortic valve, the prosthesis comprising an internal cover for preventing regurgitation of blood through the wall of the prosthesis frame below the valvular structure, while being suitable for allowing passage of blood from an aorta towards the coronary ostia.

The parties agree that features 4e and 4f - being the most relevant features of the internal cover for the present decision - are in essence based on BB1, page 21, second paragraph. This passage reads as follows:

"In the different sectional views of the different examples of IV [read: "implantable valves"] according to the invention, as illustrated at Figures 6a to 6c, the internal cover 19 covers the totality of the internal side of the frame 10 (Figure 6a), only the lower part of the frame 10 (figure 6b), or it can additionally cover partially 3 to 5 mm as shown in the passage of blood from aorta to the coronary ostia Figure 6c, the upper part defined above the coupling line 18 of the valvular structure."

(emphasis added by the Board)

From this passage, the skilled person derives that the frame has an upper part and a lower part. The upper part is defined as being above the coupling line. Consequently, the lower part per definition lies below the coupling line.

The embodiments described in this paragraph are reproduced below:

FORMULA/TABLE/GRAPHIC FORMULA/TABLE/GRAPHIC FORMULA/TABLE/GRAPHIC

The paragraph describes an embodiment wherein only the lower part of the frame is covered (Figure 6b). Figure 6b is consistent with the definition of the "upper part" in the same paragraph in that the internal cover only extends below coupling line 18 and thus exclusively along a lower part of said frame.

As can be derived from the word "or" (represented in bold in the citation above) after the embodiment of Figure 6b, an alternative embodiment is described, in which the internal cover additionally covers a part in the passage of blood from the aorta to the coronary ostia as shown in Figure 6c. While also in this embodiment the lower part is covered, it is not only the lower part which is covered but the lower part and additionally a part of the upper part. Indeed, the feature that only the lower part is covered excludes the embodiment of Figure 6c. There is thus no disclosure of only the lower part being covered (as defined in feature 4e) and a portion of the upper part being additionally covered (as required by feature 4f).

Thus, the subject-matter of claim 1 as granted which comprises features 4e and 4f in combination, i.e. connected by an "and" and not by an "or" (as originally disclosed), extends beyond the disclosure of BB1 as originally filed.

2.3 The opposition division argued that the wording "a lower part" was not to be understood as being restricted to the part below the coupling line as otherwise it should have been formulated as "the" lower part of the frame. Thus, "a lower part" could be any part below the upper extremity of the frame.

However, in this interpretation the respective upper part would not be defined as being "above the coupling line of the valvular structure", contrary to what is explicitly defined on page 21, lines 9, 10 of BB1. The interpretation by the opposition division thus ignores the explicit definition of the terms in the application as filed. In this context, the use of the indefinite article should not be given too much weight. As the "lower part of the frame" mentioned in feature 4e has no antecedent, the use of the indefinite article is entirely in line with the definition of the terms in BB1, page 21, second paragraph.

2.4 Appellant 1 further argued that the word "only" on page 21, second paragraph, when read in context, would not be understood by the skilled person as strictly exclusive. In view of the term "additionally" in the consecutive part of the sentence, it was clear that "only along a lower part of the frame" did indeed not exclude some coverage of the upper part.

However, the word "only" has a clear meaning: it requires the internal cover to extend along the lower part and nowhere else. The second part of the phrase (connected by "or") discloses an embodiment with the internal cover extending along the lower part and additionally partly along the upper part. Reading the passage in context, the skilled person's understanding is not that the word "only" would need to be given a larger meaning, but that for that embodiment - because of the "or" - the word "only" simply does not apply. As argued above, there is thus no disclosure of an internal cover extending only along a lower part of the frame and additionally along a part of the upper part.

3. Admission of AR1 and AR2 into the proceedings

Although late filed, AR1 and AR2 are considered a bona fide attempt to respond to the course of the proceedings. They are of low complexity and can be dealt with by the Board and the other party without adjournment of the proceedings. They were thus admitted.

4. AR1 - Article 100(c) and 123(2) EPC

The further definition in claim 1 of AR1 according to which the "internal cover (19) additionally covers the internal side of the frame (10) partially 3 to 5 mm above the coupling line (18) of the valvular structure" cannot change the above analysis that feature 4f has not been disclosed as being combined with feature 4e - even if amended - in a single embodiment. As discussed above, the respective original disclosures are connected by an "or" not by an "and". Combining the features into a single embodiment thus results in new technical information for the person skilled in the art.

Consequently, the subject-matter of claim 1 of AR1 likewise extends beyond the disclosure of the earliest application as originally filed.

5. AR2 - Article 123(3) EPC

In claim 1 of AR2 the word "only" in feature 4e has been removed. The claim is now in essence directed to the alternative disclosed after the "or" on p. 21, second paragraph, i.e. to the embodiment of Figure 6c.

In accordance with Article 123(3) EPC it has to be ascertained that the amendment does not extend the protection conferred by the European patent. According to Article 69(1) EPC the extent of the protection conferred by a European patent shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.

Both parties essentially agree that there is a discrepancy between features 4e and 4f in claim 1 as granted. Assuming (as appellant 2 does) that for that reason alone claim 1 as granted did not confer any protection at all is too formalistic. Instead, the person skilled in the art would have used the description and the drawings to interpret the claim and to determine the protection conferred.

Appellant 1 argued that by this approach the person skilled in the art inevitably came to the conclusion that the claim as granted was directed to the embodiment shown in Figure 6c. This was exactly the embodiment now defined in claim 1 of AR2, such that no extension of the protection had been introduced.

However, as discussed during the oral proceedings, if two features are contradictive the contradiction can be caused by either of the two. In the present case, it might be that feature 4e was intended to be drafted without the "only" ('first approach'). It might, however, likewise be that it is feature 4f which had been intended in a way consistent with feature 4e such that indeed only the lower part of the frame was covered (thus covering the embodiment of Figure 6b and not the one of Figure 6c; 'second approach'), e.g. by defining the upper extremity as being sutured to the frame along a zig-zag line at the coupling line of the valvular structure (see e.g. Figure 7). When using - in accordance with Article 69 EPC - the description and the drawings to interpret the claims, both approaches are equally meaningful, because both result in one of the alternative embodiments of Figure 6b and 6c being protected.

However, the second approach results in the protection conferred being extended because following this approach claim 1 as granted did not cover the embodiment of Figure 6c, whereas claim 1 of AR2 does. The amendment thus extends the protection conferred and is not allowable in view of the requirements of Article 123(3) EPC.

In this context, it cannot play a role whether using the first approach would not have resulted in an extension of the protection conferred. It is the proprietor who is responsible for the drafting of the claims. An inconsistency and the ambiguity in scope resulting therefrom cannot be to the proprietor's benefit and to the detriment of third parties.

To put it differently, a third party had good reasons (cf. the 'second approach') to assume that claim 1 as granted covered essentially the embodiment of Figure 6b, and not the one of Figure 6c. It would now be surprised by the protection conferred by claim 1 shifting after grant towards the embodiment of Figure 6c. Such shift of the protection conferred is exactly what Article 123(3) EPC is meant to prevent.

The amendment in AR2 is thus not allowable in view of the requirements of Article 123(3) EPC.

6. Remaining requests - Article 100(c) EPC

The remaining requests either have features 4e and 4f as in claim 1 as granted, such that the reasoning in point 2.2 above applies. Or, they comprise amended feature 4f in which the term "along a zig-zag line" has been replaced by "along a zig-zag line of the intercrossing bars". However, even amendmended feature 4f defines the upper extremity to be sutured to the frame ... above a coupling line of the valvular structure, i.e. somewhere in the upper part, which is in contradiction to the cover extending only along a lower part of the frame.

Thus, also for the remaining requests, the reasoning in point 2.2 applies and their respective subject-matter extends beyond the disclosure of the earliest application as originally filed.