T 0320/16 18-03-2020

1. Procedural aspects

The present decision is taken in written proceedings without holding oral proceedings. The principle of the right to be heard pursuant to Article 113(1) EPC is however observed since that provision only affords the opportunity to be heard. By explicitly declaring their intention not to attend the oral proceedings, to which both parties were duly summoned, the appellant gave up that opportunity and said declaration is considered equivalent to a withdrawal of the request for oral proceedings under Article 116(1) EPC, whereby the appellant is to be treated as relying only on its written case (see Case Law of the Boards of Appeal, 9**(th) edition 2019, sections III.B.2.7.3 and III.C.4.3.2, in particular with reference to T 3/90, OJ EPO 1992, 737).

In view of said declaration and of the fact that the case is ready for decision on the basis of the extensive parties' written submissions and the decision under appeal, the Board, while cancelling the oral proceedings, issues this decision in written proceedings in accordance with Article 12(8) RPBA and Article 15(3) RPBA 2020.

2. Main request (patent as granted)

In the following the Board will follow the feature analysis of claim 1 provided by the appellant, see point V above.

2.1 In justifying novelty of the claimed subject-matter, the appellant only contests that D1 (main embodiment and variant of paragraph 78) discloses the following features of claim 1 of the main request:

- an elastomeric layer distinct from the handle

- and interposed between said casing and the handle (feature F); and

- the casing of the vibrator is tightly fitted in the handle (feature E).

2.2 The Board cannot follow the appellant's view for the following reasons:

2.2.1 As put forward by the respondent, claim 1 of the patent as granted does not specify that the elastomeric layer would have to be separable from the rest of the handle.

As a result, the soft component of D1 ("...die anschliessend eingespritze Weichkomponente..." 18) which is subsequently molded around the rigid casing ("Schutzelement", "Schutzhülse", "Hülse" 23; "zwei schalenförmige Kunststoffteile" providing the function of the sleeve 23 in the variant of paragraph 78 and for which "slight press-fit" is mentioned) of the electric vibrator ("Vibrationseinrichtung", "Vibrationsvorrichtung" 20) is unambiguously distinct from the rest of the hollow handle ("Hartkomponente" 16; "Griffbereich" 10; "Halsbereich" 12; "Kopfbereich" 14) even though not separable, see for instance paragraphs 1, 26, 31, 69 to 78, 87 and 88 and Figures 4a, 5a, 9a, 9b.

2.2.2 Claim 1 as granted is also silent about how the elastomeric layer should be interposed - radially and/or axially; partially or completely - between the casing and the handle so that this feature is unambiguously disclosed in D1 since the intermediate layer (18) is interposed at least axially between the casing (23) and the handle (10, 12, 14, 16), compare for instance Figures 3a and 4a. The above interpretation is also supported by P2: "to be or come between" (see impugned decision, point 2.3, last paragraph, of the reasons). Hence, feature F is disclosed by D1.

2.2.3 Claim 1 concerns a product and does not specify any process step for producing the claimed product. As put forward by the respondent the expression "tightly fitted" used in feature E does not specify or imply any such process step which would relate to for instance the introduction of the vibrator with its casing into the handle. In this respect, the Board considers that the definition given in P1 does not apply to feature E of claim 1 as such since there is no disclosure in the original application where the casing and the handle would provide "mating parts with slight negative allowance, requiring light to moderate force to assemble". As a matter of fact, an elastomeric layer is to be interposed between them in accordance with feature F. Hence, the molding of the soft component (18) in D1 represents one of the possible processes resulting in the casing of the vibrator being "tightly fitted" in the handle of D1, especially in view of the variant of paragraph 78 which discloses "slight press-fit". Hence, feature E is disclosed by D1.

2.3 The above reasons on the main request correspond to the Board's preliminary opinion provided to the parties in section 6 of its communication, which has not been commented on nor has it been contested by the parties during the appeal proceedings.

Under these circumstances, the Board - having once again taken into consideration all the relevant aspects concerning said issue - sees no reason to deviate from its preliminary opinion.

2.4 As a consequence, the Board cannot find fault in the reasoning and conclusion of the impugned decision, point 2 of the reasons, regarding the lack of novelty of the subject-matter of claim 1 of the main request over D1 (Article 54(3) EPC).

3. Auxiliary request

3.1 The appellant filed the auxiliary request for the first time with the statement setting out the grounds without any justification for not having done it during the opposition proceedings.

As a consequence, claim 1 of the auxiliary request has not been dealt with by the Opposition Division and is clearly not part of the impugned decision.

The appeal proceedings, which are largely determined by the factual and legal scope of the preceding proceedings, are, however, not about bringing an entirely fresh case to the Board. This means that an appellant is not at liberty to bring about the shifting of its case to the appeal proceedings as it pleases, and so compel the Board either to give a first ruling on the critical issues or to remit the case to the Opposition Division. Conceding such freedom to an appellant would run counter to orderly and efficient appeal proceedings primarily directed to reviewing the correctness of the decision under appeal, contrary to Article 12(4) RPBA 2007. In effect, it would allow a kind of "forum shopping" which would jeopardise the proper distribution of functions between the departments of first instance and the Boards of Appeal and would be absolutely unacceptable for procedural economy generally (G 9/91, OJ EPO 1993, 408, point 6 of the reasons; T 1705/07, not published, point 8.4 of the reasons; T 1067/08, not published, points 7.1 to 7.2 of the reasons).

Therefore, the Board is of the opinion to not admit the auxiliary request into the appeal proceedings.

3.2 The above reasons on the auxiliary request correspond to the Board's preliminary opinion provided to the parties in section 7.1 of its communication, which has not been commented on nor has it been contested by the parties during the appeal proceedings.

Under these circumstances, the Board - having once again taken into consideration all the relevant aspects concerning said issue - sees no reason to deviate from its preliminary opinion and exercises its discretion to not admit the auxiliary request into the proceedings in accordance with Article 12(4) RPBA 2007.

4. As a consequence, the appellant has failed to demonstrate in a convincing manner the incorrectness of the decision under appeal in respect of the main request (patent as granted). Since the auxiliary request is not admitted into the appeal proceedings, there is no valid set of claims on the basis of which the patent could be maintained.