T 2349/18 04-05-2022

1. Non-attendance of the respondent at the oral proceedings before the board

In accordance with Rule 115(2) EPC, if a party duly summoned to oral proceedings before the EPO does not appear as summoned, the proceedings may continue without that party. Pursuant to Article 15(3) RPBA 2020 (which is applicable in accordance with Article 25(1) RPBA 2020), the board is not obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of a duly summoned party, which may then be treated as relying only on its written case.

In the case in hand, both parties requested oral proceedings at the outset of the appeal proceedings. The respondent withdrew its request for oral proceedings and announced that it would not be attending the oral proceedings. By not attending these oral proceedings, the respondent effectively chose not to avail itself of the opportunity to present its observations and counter-arguments orally but instead to rely on its written submissions. The board was in a position to announce a decision at the conclusion of the oral proceedings in accordance with Article 15(6) RPBA 2020, which applies in accordance with Article 25(1) RPBA 2020.

2. Admittance of the main request "12.20"

2.1 A new main request "12.20" was filed in the oral proceedings before the board after the chairman's announcement of the board's preliminary view that auxiliary request 2 could form a basis for an allowable request. The main request "12.20" is based on auxiliary request 2 as filed with the statement of grounds of appeal with the replacement of the term "food packaging" by "on a substrate", which constitutes an amendment to the appellant's appeal case.

In the case in hand, the summons to oral proceedings was notified after the date on which RPBA 2020 entered into force, i.e. 1 January 2020 (Article 24(1) RPBA 2020). Thus, in accordance with Article 25(1) and (3) RPBA 2020, Article 13(2) RPBA 2020 applies to the question of whether to admit the main request "12.20", which was filed after notification of the summons to oral proceedings and is therefore an amendment within the meaning of Article 13(2) RPBA 2020. As a consequence, the main request "12.20" is, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the appellant.

2.2 The reasons advanced by the appellant for the late filing of this request were that it was impaired by personal problems and that the minor amendment was based on the patent as granted and did not affect the discussion of inventive step as compared to auxiliary request 2 as filed with its statement of grounds of appeal.

2.3 The board sees no justification for the late filing in the appellant's personal problems as they did not prevent the appellant from filing auxiliary request 3 with its letter dated 7 April 2022. Therefore, the new main request "12.20" could at least have been filed at that time.

2.4 The board concurs with the appellant's view that claim 1 of the main request "12.20" contained only minor amendments compared with claim 1 of auxiliary request 2 as filed with the statement of grounds of appeal. This per se is not an argument in favour of the admittance of the main request "12.20". However, there are two issues which constitute exceptional circumstances. First, by replacing the term "food packaging" with the more general term "on a substrate" in claim 1 of the main request "12.20", the wording was adapted to claim 1 as granted. As correctly stated by the respondent, food packaging is not anything special to the patent, and there is only a very brief mention of food packaging in the patent in suit (see the patent in suit, paragraph [0066] and the reply to the statement of grounds of appeal, page 7, last paragraph). Second, this amendment does not have any influence on the inventive-step argument as brought forward by the respondent and in the preliminary opinion of the board (see the board's communication under Article 15(1) RPBA 2020, point 13). The respondent correctly wrote in its reply to the statement of grounds of appeal, page 8, first paragraph that "[s]imply stating in claim 1 that the packaging is for food cannot change the technical content of the claim and does not mean that a problem associated with providing food packaging has been solved by the disclosure of the Patent when only the briefest mention of food packaging is made". Consequently, when presenting its arguments for lack of inventive step of the subject-matter of claim 1 of auxiliary request 2, the respondent did not refer to food packaging at all.

Since the respondent only raised objections based on lack of inventive step for claim 1 of auxiliary request 2 as filed with the statement of grounds of appeal and since its arguments are not influenced by this amendment, the board holds that exceptional circumstances justified with cogent reasons exist.

2.5 The respondent was not present at the oral proceedings before the board and was, therefore, not in a position to comment on the amendments made in the appellant's new main request "12.20". According to the decision of the Enlarged Board of Appeal G 4/92 (OJ EPO 1994, 149), a party who fails to appear at oral proceedings must have the opportunity, in accordance with Article 113(1) EPC, to comment on new facts and evidence submitted in the proceedings. In accordance with the established case law (see for example decision T 202/92), the finding in decision G 4/92 does not, however, prevent the admission into the proceedings of new claims of requests introduced only at the oral proceedings before the board, and a decision thereon, where the amendments made overcome objections raised in the written proceedings and the amendments are of a nature that the absent respondent might have expected.

In the case in hand the respondent could have reasonably expected amendments like those made in the claims of the appellant's new request and thus it could not have been taken by surprise. Accordingly, the absence of the respondent was no obstacle to admitting the appellant's main request "12.20" into the proceedings and taking a decision on it.

2.6 For these reasons, the board in exercising its discretion under Article 13(2) RPBA 2020 decided to admit the main request "12.20" into the appeal proceedings.

3. Inventive step of the subject-matter of claim 1 of the main request "12.20"

3.1 Document D15/D15T discloses a liquid antibacterial liquid finishing composition and a method of forming the printed and antibacterial coated substrate using a four-colour offset printer (Lithron S26) (see document D15/D15T, paragraphs [0009], [0010], [0019] and [0020]). It is a suitable starting point for the examination of inventive step. Starting from document D15/D15T, the distinguishing features are the "single pass" feature and the use of a doctor blade and a chamber system for the application of the liquid finishing composition.

3.2 The objective technical problem is to find an alternative way of applying a liquid antibacterial finishing composition.

3.3 It is undisputed that a doctor blade and a chamber system is, as such, a standard system in printing (see the patent in suit, paragraph [0012] and document D11, Figure 2.20). However, it is not obvious for the person skilled in the art to choose this well-known alternative for applying the coating in the context of the four-colour offset printer of document D15/D15T. According to paragraph [0019] of document D15/D15T, the four-colour offset printer is used for first printing a three-colour pattern and then applying a liquid antibacterial finishing composition. There is no reason apparent why the skilled person would have deviated from this integrated solution by combining the four-colour offset printer of document D15/D15T with a doctor blade and chamber system for applying the liquid antibacterial finishing composition.

3.4 The respondent did not file further arguments and did not raise further lines of arguments which could have convinced the board. Documents D12 and D14 are less relevant than document D15/D15T and do not disclose a doctor blade and chamber system in the current context.

3.5 Consequently, the board concludes that the subject-matter of claim 1 of the main request "12.20" meets the requirements of Article 56 EPC since it is not rendered obvious by the cited prior art.

4. Claims 2 to 14 are dependent claims. Therefore, their subject-matter also involves an inventive step. The amended description according to the main request "12.20" meets the requirements of the EPC. It follows that the main request "12.20" is allowable.