T 0234/16 26-11-2019

1. Main request - clarity, amendments

1.1 The appellant argued that the amendment in claim 8 of the main request - effected during the opposition pro­ceedings - that the temperature sensor of the discharge lamp was for measuring the tempera­ture level at a posi­tion "in the discharge vessel" near the amalgam (see point V. above, fea­ture (ii)) rendered the claim acces­sible for a clar­i­ty objection. The position of the tem­perature sensor was in fact not determined by the amend­­­­ment. Furthermore, it was unclear whether the tem­pera­ture sensor of the discharge lamp as defined in claim 8 of the main request was also the tem­­perature sensor of the lamp system as defined in claim 1 of the main request (see point V. above, fea­ture (i)) or whether different temperature sensors were intended so that the lamp system comprises in total two temperature sensors. There was also no basis in the applica­tion as filed for the latter understanding of the claims, i. e. a lamp system comprising two temperature sensors.

1.2 The board notes first that the clarity and added sub­ject-matter objections were filed with the grounds of appeal and were - in the appellant's view - evoked by amendments effected during the oral proceedings before the opposition division. The board sees no reason to hold these objections inadmissible under Article 12(4) RPBA 2007.

1.3 However, the different interpretations of claims 1 and 8 of the main request presented by the appellant and leading to the alleged lack of clarity are based on wording which was already present in grant­ed claims 1 and 11. In particular, a tempera­ture sensor is speci­fied to be part of the lamp system in claim 1 of the main request ("the lamp sys­tem fur­ther com­pris­ing ... a temperature sen­sor"), whereas claim 8 of the main re­quest con­tains a reference to claim 1 and de­fines a temperature sensor to be part of the dis­charge lamp ("A low-pressure mercury vapor dis­charge lamp ... compris­ing ... a temperature sensor"). Pre­cise­ly the same wording is already used in the corre­sponding granted claims 1 and 11. Furthermore, in these granted claims it is merely defined that the tem­pera­ture sensor is intended to measure the temperature lev­el at a posi­tion near the amalgam without indicating the location of the sensor.

The invoked lack of clarity is therefore not introduced into the claims by the amendments effected during the opposition proceedings, but is based on wording which was already present in the granted claims. Hence, in accordance with the principles set out in the decision G 3/14 of the Enlarged Board of Appeal, the clarity objection under Article 84 EPC 1973 raised by the appellant may not be examined during the present opposition appeal proceedings.

1.4 The added subject-matter objection was first raised by the appellant in the grounds of appeal and relates to a fresh ground for opposition, namely extension of the subject-matter of the patent beyond the application as filed (first option in Article 100(c) EPC 1973), which is to be distinguished from the ground for oppo­sition concerning the extension of the subject-matter of the patent beyond the parent application (second option in Article 100(c) EPC 1973) (see T 2233/09, point 1.2 of the Reasons).

In particular, the fresh ground for opposition had not been raised by the appellant in its notice of opposi­tion, where - apart from lack of novelty and lack of inventive step - only extension of the subject-matter of the patent beyond the parent application had been raised. On the other hand, the appellant's objection is not related to any amendments effected during the oppo­sition pro­ceedings but is based on wording which was already present in the grant­ed claims and could thus well have been raised in the notice of opposition.

The Enlarged Board of Appeal held in the decision G 10/91 that a fresh ground for opposition may in principle not be introduced at the appeal stage and that an exception to this principle is only justified in case the patentee agrees that the fresh ground for opposition may be considered (see point 18 of the Reasons).

In the present case the respondent did not agree that the fresh ground for opposition may be considered dur­ing the appeal proceedings. The board has therefore no power to introduce it at the appeal stage.

In view of the above, the fresh ground for opposition concerning the exten­sion of the subject-matter of the patent beyond the application as filed is not admitted into the appeal proceedings.

2. Main request - novelty

2.1 At the oral proceedings before the board the appellant raised the objection that the subject-matter claimed according to the main request was not new over document D10 and stated that this document had already been dis­cussed in the notice of opposition.

The respondent argued that this new objection should not be admitted into the proceedings.

2.2 According to Article 12(2) RPBA 2007, the statement of the grounds of appeal must contain a party's complete case and should specify all the facts, arguments and evidence relied on.

Any amendment to a party's case after it has filed its grounds of appeal may, according to Article 13(1) RPBA 2007, be admitted and considered at the board's dis­cretion. The discretion must be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for pro­cedural economy.

2.3 In the present case the objection of lack of novelty over document D10 was submitted for the first time at the oral proceedings before the board. Hence, this objec­tion was submitted after the statement of the grounds of appeal and is an amendment to the appel­lant's case within the meaning of Article 13(1) RPBA 2007. Conse­quent­ly, the ad­mission of this objection is at the board's discretion.

2.4 The appellant did not provide any justification for rais­ing the new objection at such a late stage of the proceedings. Indeed, the board does not see any reason why the appellant should not have been in a position to submit the objection at the earliest possible stage of the appeal proceedings, i. e. with the grounds of appeal. In this case a thorough exchange of views con­cerning the objection could have taken place already during the written stage of the appeal proceedings.

By contrast, if the new objection were admitted into the appeal proceedings at the oral hearing, the focus of the discussion could be expected to shift - at a very late stage of the appeal proceedings - to en­tire­ly new issues which had played no role in these proceed­ings up to that point. In particular, since document D10 was not even cited during the writ­ten stage of the appeal proceedings nei­ther the re­spon­dent nor the board

had any reason to consider the con­tent of D10 at that stage of the proceedings, let alone to examine whether the claimed sub­ject-matter lacked novelty in view of that docu­ment, especially since this ground for opposi­tion played no role at that stage. The new issues may well be complex and en­tail lengthy discussions, e. g. concerning the question of what is not explicitly but only implicitly dis­closed in document D10. The fact that this document had been re­ferred to in the notice of opposition is not rele­vant in this respect. In any case, it had mere­ly been dis­cussed there in the context of in­ven­­tive step and more­over the claimed sub­ject-matter has changed since ­then due to amendments effect­ed during oppo­sition pro­ceed­ings.

2.5 In view of the above considerations, exercising its discretion under Article 13(1) RPBA 2007, the board did not admit the new objec­tion of lack novelty over docu­ment D10 into the appeal proceedings.

3. Main request - inventive step

3.1 The appellant argued that the subject-matter claimed according to the main request lacked inventive step over document D3 as closest state of the art in com­bina­tion with docu­ment D6 and over document D11 as closest state of the art in combination with ­D6. The former line of attack was merely stopped but not aban­doned during oral proceedings before the opposition division.

The respondent argued that these objections should have been raised during the opposi­tion proceedings and should not be admitted into the appeal proceedings.

3.2 According to Article 12(4) RPBA 2007, everything pre­sented by the parties under Article 12(1) RPBA 2007, in particular the statement of the grounds of appeal (Article 12(1)(a) RPBA 2007), is taken into account by the board if and to the extent it relates to the case under appeal and meets the requirements of Article 12(2) RPBA 2007, the board having the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings.

3.3 In the present case the objections of lack of inventive step on the basis of document D3 or document D11 as clos­est state of the art in combination with document D6 were submitted for the first time in the letter set­ting out the grounds of appeal.­ In the opposition pro­ceedings the appellant had merely argued in relation to inventive step of the subject-matter claimed accord­ing to the main request starting from document D6 as the closest state of the art. The objection based on docu­ments D3 and D6, which was raised during the oral pro­ceedings before the opposition division and then not further pursued, also assumed document D6 to be the closest state of the art (see points 4.20 to 4.24 of the minutes of these oral proceedings).

The board has thus the power to hold these new objec­tions, which represent a new factual framework that could have been submitted during the opposition pro­ceedings, inadmissible under Article 12(4) RPBA 2007 (see T 392/16, points 2.1 and 2.2 of the Reasons).

3.4 The appellant did not provide any justification for raising the new objections only during the appeal pro­ceedings rather than already during the opposition proceedings. The board does not see any reason why the appellant should not have been in a position to submit these objections already during the opposition pro­ceedings, in particular at the oral hearing before the opposition division, especially since the combina­tion of documents D3 and D6 had been considered during this hearing in the context of document D6 constituting the closest state of the art. In that case the objections would have been dealt with in the con­tested decision, the parties would have been in a position to com­ment on these parts of the decision and the board would be able to review the decision in this respect.

Furthermore, during the oral hearing before the opposi­tion division the appellant had admitted that document D3 did not disclose all the features of claim 1 of the main request which were not disclosed in document D6 (see point 4.24 of the minutes of the hearing). In accordance with this appraisal there are thus features in this claim which are disclosed in neither one of these documents. The objection based on documents D11 and D6 was only brief­ly discussed in the grounds of appeal using a reference to the objection based on document D3 as closest state of the art in combination with D6 and is appar­ently - as admitted by the appel­lant - less relevant than the objection based on docu­ments D3 and D6. Hence, both objections appear to lack prima facie the relevance warranting their admission into the proceedings and in-depth discussion as to their significance in relation to inventive step.

3.5 In view of the above, the board does not admit under Article 12(4) RPBA 2007 the new objec­tions of lack of inventive step of the subject-matter claimed according to the main request over

- document D3 as closest state of the art in com­bina­tion with docu­ment D6 and

- document D11 as closest state of the art in com­bi­na­tion with ­D6.

4. Conclusion

Since none of the appellant's objections under the EPC against the patent in the version maintained by the opposition divi­sion is successful, the opposition division's deci­sion maintaining the patent is to be confirmed. Con­se­quently, the appeal has to be dis­missed in accordance with the respondent's main request (Article 101(3)(a) EPC and Article 111(1) EPC 1973). Con­sidera­tion of the respondent's auxiliary request I is therefore not necessary.