T 0378/17 08-08-2019

Main request

1. Admission

1.1 Claim 1 of the main request differs from the granted claim 1 in that the words "cooling" and "mixing" were added to the characterising part of the claim when referring to the stages (A) and (C) of the apparatus, and in that some reference signs were deleted.

1.2 These amendments are not associated with any change in the scope of the claims. The preamble of the granted claim 1 identifies stage (A) as the cooling stage and stage (C) as the mixing stage. It is immediately clear to the skilled person that the stages (A) and (C) mentioned in the characterising part of the granted claim are those same cooling and mixing stages. The board admits that the symbols (A) and (C) could be viewed as reference signs within the meaning of Rule 43(7) EPC, as argued by the respondents. Corresponding letters are indeed present in figures 1 and 2 and 5 to 13. However, within claim 1 these symbols do also unambiguously identify the stages of the apparatus. This cannot be ignored when reading and interpreting this claim. Any other interpretation of claim 1 would not make technical sense. Thus, the addition of the wording "cooling" and "mixing" to the characterising part of claim 1 of the main request does not change the scope of claim 1.

1.3 The deletion of some reference signs from the granted claim 1 also does not change the scope of the claimed subject-matter. Furthermore, the deleted signs concern embodiments of the invention represented in figures 10 to 13, which are not covered by this claim (the primary conduit not passing outside the exchanger).

1.4 For these reasons it can be concluded that the subject-matter of claim 1 of the main request corresponds essentially to that of granted claim 1.

1.5 The granted claims coincide with those of the initial main request of the then patent proprietor in the opposition proceedings. In the communication issued in preparation for the oral proceedings before the opposition division, the preliminary opinion was expressed that those granted claims lacked novelty over D16, D20 and possibly D17, and that these issues needed to be discussed during the hearing. In reply to this opinion the patent proprietor filed claims of more limited scope.

1.6 The appellant stated that with this replacement the then patent proprietor intended to address the objections raised by the opposition division in its preliminary opinion and to streamline the opposition proceedings. The then patent proprietor had however not surrendered the subject-matter defined in the granted claims. Thus, this subject-matter could be reinstated during the appeal proceedings. In this context, referring to the Case Law of the Boards of Appeal, 8**(th) edition, IV.E.3.2f, the appellant argued that in appeal proceedings proprietors always have the right to reinstate their patent as granted.

1.7 The board does not agree. Under Article 12(4) RPBA a board of appeal has the discretionary power to refuse to admit requests filed with the grounds of appeal which could have been presented or were not admitted in proceedings before the department of first instance. In the board's view, this applies particularly to a request that was filed during proceedings before the department of first instance and subsequently withdrawn. Withdrawing the request in opposition proceedings the patent proprietor prevented the opposition division from providing an appealable decision on the subject-matter defined in the granted claims. The reintroduction of the previously withdrawn request on appeal runs counter to the main purpose of inter partes appeal proceedings, namely to give the losing party the possibility of challenging the decision of the opposition division on its merits. Although Article 12(4) RPBA applies to requests filed with the grounds of appeal, under Article 13(1) RPBA the board's discretion extends to requests which, like the present one, were filed at a later stage of the appeal proceedings.

1.8 Even if, in principle, a proprietor could not be prevented from reverting to the patent as granted, it would be illogical if this right could be exploited without restrictions. For example, a proprietor may not steer the appeal proceedings in a manner which undermines the main purpose for which the proceedings were intended, i.e. to give a judicial review on what was decided at first instance. This would also result in the board being precluded from exercising its discretionary power under Articles 12(4) and 13(1) RPBA in these cases.

1.9 Although there have been decisions where the boards have allowed patent proprietors to reinstate broader requests which had been withdrawn or were not maintained during the opposition proceedings, numerous decision have also been issued in which the board's discretion has been applied in a strict manner and such requests have not been admitted into the appeal proceedings (see the Case Law of the Boards of Appeal, 8**(th) edition, IV.E.4.3.2d and IV.E.4.5.1; T 52/15, T 390/07, T 361/08, T 922/08, T 1525/10, T 140/12, T 1697/12, T 143/14). This appears to be the current predominant approach applied by the boards.

1.10 The present board endorses the principle that the admission of any such request is under the board's discretion, taking into account inter alia whether the undecided issues are critical for the board's decision, their complexity and possibly also the reasons for not maintaining that request before the first instance.

1.11 In the present case considering that:

- the undecided technical issues are complex and also critical for a decision to be taken by the board (e.g. with regard to Article 54(2) EPC),

- these issues could not be decided upon by the opposition division as a consequence of procedural steps chosen by the proprietor during the opposition proceedings,

- there are no special reasons for admission into the appeal proceedings,

the main request is not admitted into the appeal proceedings (Article 13(1) RPBA).

Auxiliary request 1

2. Admission

2.1 Auxiliary request 1 was filed for the first time with the statement of grounds of appeal. It differs however significantly, and is substantially more limited in scope with respect to the granted claims. Furthermore, claim 1 specifies that the apparatus contains chambers which are "disc-shaped". This characterisation addresses the opposition division's objection in the appealed decision that the failure to indicate the shape of the chambers added subject-matter that extended beyond the application as filed.

2.2 Considering that auxiliary 1 was filed at the earliest stage in the appeal proceedings, is significantly more limited in scope compared to the granted claims and addresses the grounds of revocation, this request is admitted into the appeal proceedings.

3. Added subject matter

3.1 Claim 1 of auxiliary requests 1 requires that:

"...a primary conduit (8, 9, 43, 49, 53, 58) for chocolate mass flowing from stage (A) to stage (C), is arranged by-passing the stage (B) for creating crystals so that an amount of mass is by-passed outside the exchanger without being crystallised"

3.2 This feature was not present in claim 1 of the patent application as filed. As the basis for this amendment, the appellant referred to the passage on page 5, lines 15-18 of the application as filed. However, this passage also requires that:

"...the remaining stream of the mass is flowing through the crystallisation stage for creating crystals in the mass". The passage continues: "Thereafter the two streams of mass are brought together and mixed in the mixing stage".

3.3 These two requirements exclude the presence of any other conduit, beyond the primary one, transporting chocolate outside the exchanger defined on page 5. These requirements are however not present in claim 1 of auxiliary request 1. The board does not follow the appellant's argument that the skilled reader would necessarily rule out the presence of any other such conduit in the claimed apparatus.

3.4 As submitted by opponent 1, a further conduit transporting chocolate outside the crystallisation stage could indeed be present in the system to direct a part of the chocolate mass to another stage of the apparatus or to a different manufacturing step or process. These alternative embodiments are technically feasible and are not excluded by claim 1. They are however excluded by the passage on page 5 lines 15-18 of the application as filed which was relied upon by the appellant for amending claim 1.

3.5 For these reasons, the amendment introduced in claim 1 of auxiliary request 1 introduces new subject-matter which is not disclosed in the application as filed (Article 123(2) EPC).

Auxiliary requests 2 to 6

4. Added subject-matter

4.1 Claim 1 of auxiliary requests 2 to 6 include the same amendment mentioned above (points 3.1 and 3.2), which characterises claim 1 of auxiliary request 1.

4.2 Accordingly, the reasons for the finding that auxiliary request 1 adds subject-matter extending beyond the content of the application as filed apply equally to auxiliary requests 2 to 6 (Article 123(2) EPC).

Auxiliary request 7

5. Admissibility

5.1 Claim 1 of auxiliary request 7 was amended adding the expression

"...while the remaining mass is flowing through the crystallisation stage and thereafter the two masses are mixed in the mixing stage."

at the end of claim 1 of auxiliary request 1.

5.2 This amendment was made during the oral proceedings before the board to overcome the negative finding of the board that auxiliary requests 1 to 6 contained added subject-matter. According to the appellant the reason for filing this request during the hearing was that the board's finding was unexpected and could not be foreseen.

5.3 The board does not consider this an acceptable justification for such late filing. The objection leading to this finding was not a new one. In its letter dated 15 June 2017, on page 7, opponent 1 had already argued that the failure to include the aforementioned expression into a claim requiring a part of the chocolate to bypass the crystallisation stage added new originally undisclosed subject-matter.

5.4 Furthermore, in its communication in preparation for the oral proceedings, the board had explicitly indicated that the basis for the feature requiring the presence of a conduit allowing chocolate to bypass the exchanger needed to be discussed. Despite this, the appellant did not file in due time any set of claims addressing this point and waited until the oral proceedings to do so.

5.5 The board considers it inappropriate conduct for a party to wait until the last minute of the oral proceedings to file a request addressing a point already raised during the written proceedings. Therefore, taking into account the stage of the appeal proceedings and the need for procedural economy, the board decided not to admit auxiliary request 7 into the appeal proceedings (Article 13(1) RPBA and decision T 2748/17).