T 0650/21 15-11-2022

Admissibility of the patent proprietor's appeal

1. The patent proprietor's appeal is found inadmissible.

1.1 The patent proprietor filed the notice of appeal and paid the appeal fee within the prescribed time limit in accordance with Article 108, second sentence, EPC. By these acts the appeal is deemed to have been filed (see also G 1/18, OJ EPO 2020, A26, point VII). Once the existence of the appeal has been established, it remains to be decided, in a second step, whether it is admissible.

1.2 The submission intended by the proprietor to be regarded as the statement of grounds of appeal was filed on 3 November 2021 and thus not within the time limit given in Article 108, third sentence, EPC. Neither the notice of appeal of the proprietor nor the submission dated 9 July 2021 (an amended version of the notice of appeal comprising the proprietor's address) contain anything that can be regarded as such a statement. This is not disputed by the patent proprietor.

1.3 The failure to submit the statement of grounds of appeal in time results in the appeal being inadmissible pursuant to Rule 101(1) EPC (cf. G 1/18, point VII.). After the prescribed period has expired, no legal remedy is available apart from re-establishment of rights (Article 122 EPC). However, re-establishment was not requested within the time limit and under the conditions mentioned in Rule 136(1) EPC.

1.4 The patent proprietor's arguments that at the time of submitting the statement of grounds of appeal "the appeal proceedings [had] not yet started" and that "none of the involved parties would [have been] seriously affected by the present submission" are not relevant in view of these legal provisions.

1.5 The board has decided not to issue a separate decision on the admissibility of the proprietor's appeal as requested by opponent 1. In view of the requirements of Article 113(1) EPC and the patent proprietor's request for oral proceedings, separate oral proceedings would have to be arranged solely for the question of admittance of the patent proprietor's appeal. The board considered this detrimental to the economy of the appeal proceedings.

Reimbursement of the patent proprietor's appeal fee

2. The patent proprietor's request for reimbursement of the appeal fee is refused.

According to established case law, the appeal fee paid for a validly filed appeal is not refundable in case the appeal is found inadmissible (Case Law of the Boards of Appeal, 10th edition 2022, V.A.11.3.1, confirmed in G 1/18, point VIII.). As the proprietor has not withdrawn the appeal, the provisions of Rule 103 (3) and (4) EPC are not applicable.

Prohibition of reformatio in peius - non-admissibility of auxiliary request 1

3. In view of its appeal being inadmissible (see above), the patent proprietor is merely a respondent. Thus, according to the principle of prohibition of reformatio in peius (see G 9/92 and G 1/99), the proprietor is primarily restricted to defending the patent as maintained, i.e. on the basis of auxiliary request V according to the decision under appeal. This is equivalent to the request that the opponents' appeals be dismissed.

Auxiliary request I comprises all of the features of claim 1 of auxiliary request V except for feature [1.4a] and is thus broader in scope than the maintained auxiliary request V. Hence, it has to be regarded as comprising amendments which are neither appropriate nor necessary within the meaning of G 9/92, headnote 2, last sentence. This request is thus inadmissible.

Auxiliary request V - added subject-matter

4. Auxiliary request V is not allowable since the subject-matter of claim 1 extends beyond the content of the earlier application as filed (parent application EP 06 75 43 06) as well as the application as filed.

4.1 Claim 1 of auxiliary request V fails to establish a link between the "horizontal guiding means" defined in feature [1.3] and the further structural features defined in feature [1.4a]. The consequence of this missing link is that feature [1.4a] cannot be considered a further restriction of feature [1.3]. Instead, as will be explained in more detail in the following, the two features define two independent structures which are not clearly and unambiguously derivable, individually and in combination, using common general knowledge, and considered objectively and relative to the date of filing, from the entirety of the application documents as filed, i.e.:

(a) the "horizontal guiding means" without a limitation to a location at the vertical flange and

(b) the "horizontal grooves and intermediate flange parts" without a limitation to the horizontal guiding function.

4.2 With the filing of the divisional patent application feature [1.3] was added as compared to claim 1 of the parent application. It defines a "horizontal guiding means" by its general function, namely to "guarantee that the horizontal level of the two adjacent slabs is always maintained at the same height". This amendment finds a literal basis in the parent application A1 on page 1, lines 12 to 15. However, features from cross-referenced documents can be added to a claim only under particular conditions, e.g., inter alia, when the description of the invention as filed leaves the skilled reader in no doubt that protection was sought for those features (cf. Case Law of the Boards of Appeal, 10th edition, 2022, II.E.1.2.4). Indeed, the passage on page 1, lines 12 to 15, is related to the description of the state of the art represented by document D4 and not to the most general embodiment of the horizontal alignment function of the invention and is thus not a suitable basis for feature [1.3].

The disclosure of D4 is explicitly incorporated by reference in A1 at another part of the specification, i.e. the description of the specific embodiments (cf. page 2, lines 25 to 27).

D4 discloses a specific solution for a structural joint comprising a vertical stem and a distinct vertical flange as also defined by features [1.4] and [1.4a] of claim 1 (cf. also T 179/18, Reasons 3.1.1 and 3.1.2, discussing the construction of the features "vertical stem" and "vertical flange" in the parent appeal case). This particular structure is found in the embodiments of D4, Figures 2 to 4, wherein the vertical stem corresponds to the "fer plat continu" (3,8)" and the vertical flange to the "tôle verticale (4)". In the embodiments of both of A1 and D4, the "horizontal guiding means" are disclosed as a system of vertical flanges either provided with cooperating grooves or with a groove and a further horizontal flange, restrictions which are missing from feature [1.3].

As far as "other known types" are referred to on page 2, line 32, of A1, it is not disclosed how these can be embodied other than the ways disclosed on page 3, lines 1 and 2, i.e. as a system of vertical flanges either provided with cooperating grooves or with a groove and a further horizontal flange. Consequently, this passage does not provide a general disclosure of the broad functional definition of feature [1.3]. Since feature [1.3] is not supported by the incorporation by reference of D4 or any of the further described embodiments, it has no basis in the parent application as originally filed.

4.3 The omission of these restrictions in feature [1.3] is not rectified by the inclusion of feature [1.4a]. Contrary to what was concluded in the decision under appeal, feature [1.4a] is not a further restriction of feature [1.3] but rather an independent second feature. The wording of feature [1.4a] is substantially based on paragraphs [0012] and [0013] of A2, or page 2, line 29, to page 3, line 2, of A1. However, the herein disclosed interaction of the horizontal grooves with the intermediate flange requires that the groove(s) have to "accommodate" the flange, a feature which has been omitted in feature [1.4a]. It is merely defined in feature [1.4a] that the intermediate flange is "positioned between" the grooves. The wording of feature [1.4a] thus does not clearly and unambiguously define explicitly or implicitly a horizontal guiding function, thereby resulting in an unallowable intermediate generalisation with respect to the application as filed.

4.4 Hence, the subject-matter extends beyond the content of the parent application, A1 (restriction a, Article 100(c) EPC), as well as the content of the present application as filed, A2 (restriction b, Article 123(2) EPC). Consequently, the patent cannot be maintained on the basis of auxiliary request V.

5. It follows that the appeals of opponents 1 and 3 are allowable and that the patent must be revoked.