T 1011/21 (Hot-melt adhesive for the collation of containers and bottles/KHS) 14-09-2023

AUXILIARY REQUEST 2

1. Article 123(2) EPC

1.1 The subject-matter of claim 1 of auxiliary request 2 differs from claim 1 of the patent as granted in that the feature "wherein the hot-melt adhesive compound has a density of between 0.790 - 1.2 g/cm**(3), a melt flow index of 15 - 4000 g/min (@200°C), a Brookfield viscosity @ 160°C between 200 and 10,000 cPs, a Shore hardness in the range of 15 and 70 A at 23°C according to ASTM D2240, and a softening point determined by ASTM E28 above 40°C and not greater than 158°C" has been introduced into claim 1.

1.2 The appellant did not raise an objection under Article 123(2) EPC against claim 1 of auxiliary request 2. The board does not consider there to be an added-matter problem, either. In particular, the feature newly introduced into claim 1 is disclosed on page 3, third line from the bottom, to page 4, line 2, of the application as filed.

2. Admittance of experimental data

2.1 The appellant filed experimental data on 14 July 2023 and requested that this evidence be admitted into the proceedings. The respondent requested that these data not be admitted to the proceedings.

2.2 For the following reasons, these experimental data cannot be admitted into the proceedings.

2.2.1 Filing these experimental data represents an amendment to the appellant's case. The question of its admittance is subject to Article 13(2) RPBA and thus presupposes that there are exceptional circumstances for taking these data into account.

2.2.2 The appellant argued that the experiments were conducted in order to back up their position and to try to rebut the board's preliminary opinion outlined in the communication pursuant to Article 15(1) RPBA.

These arguments are not convincing, since backing up the appellant's position and responding to the board's preliminary opinion, which merely assesses the parties' arguments submitted in writing without adding anything from the board's side on its own motion, do not qualify as exceptional circumstances.

2.2.3 The appellant also mentioned that the experimental data were prima facie relevant to the patentability of the requests.

However, the question of whether or not late-filed experiments are prima facie relevant is not a relevant criterion which could justify the presence of exceptional circumstances either.

In view of the above, the experimental data are not taken into account in this case (Article 13(2) RPBA).

3. Article 83 EPC

3.1 For the first time in these appeal proceedings, the appellant argued in its letter of 14 July 2023 that the invention could not be carried out. This was the only specific objection raised by the appellant against the subject-matter claimed in auxiliary request 2 in the above letter, i.e. after the board had issued its communication under Article 15(1) RPBA. In particular, it argued that the properties required for the claimed use could not be achieved over the whole claimed range. In this context, the appellant referred to the experimental data filed by letter of 14 July 2023. In its view, in the absence of any examples in line with claim 1, the burden of proof that the invention can be carried out lay with the respondent.

3.2 At the oral proceedings, the respondent engaged in the appellant's insufficiency objection and provided counter-arguments to demonstrate why the invention could be carried out by a skilled person. Amongst other things, it pointed out that the appellant did not provide evidence supporting the mere allegation that not all compositions falling within the scope of claim 1 would exhibit the desired properties necessary for the claimed use.

3.3 For the following reasons, the appellant's insufficiency objection is not considered convincing.

3.3.1 A successful objection of insufficient disclosure presupposes that there are serious doubts, substantiated by verifiable facts. In inter partes proceedings, the burden of proof generally lies with the opponent (i.e. the appellant in this case), who must establish, on the balance of probabilities, that a skilled person reading the patent, using common general knowledge, would be unable to carry out the invention (cf. the Case Law of the Boards of Appeal, II.C.9).

3.3.2 Since the board does not take into account the late-filed experimental data (see point 2 above), there are no verifiable facts on file which could raise serious doubts that the invention can be carried out. The mere absence of an example in the patent that tests the specific use defined in claim 1 cannot raise serious doubts that the invention can be carried out and does not lead to the burden of proof being shifted, either. Under these circumstances, the burden of proof remains with the appellant.

3.3.3 In the absence of any verifiable facts, such as experimental data, the appellant's insufficiency objection is based on unsubstantiated assertions which cannot raise serious doubts that the invention can be carried out.

3.3.4 Moreover, the appellant did not demonstrate that the opposition division's conclusion that the invention can be carried out might have been erroneous (see point 2.1 of the decision).

Under these circumstances, the board concludes that the invention can be carried out by a skilled person (Article 83 EPC).

4. Admittance of the inventive-step attack against claim 1 of auxiliary request 2 (Article 13(2) RPBA)

For the first time in the appeal proceedings, at the oral proceedings before the board the appellant raised a specific objection for lack of inventive step concerning the use according to claim 1 of auxiliary request 2, this objection addressing the features included with respect to claim 1 of the patent as granted (see the underlined features in point VI above). Such a specific objection was not raised at any point in the written appeal proceedings. This was not contested by the appellant, who also refrained from submitting any exceptional circumstances justifying this late objection. The board is also unable to recognise any exceptional circumstances which could justify admitting this new and late objection into the proceedings, which was raised at the very last stage of the appeal proceedings. In this context, it is to be kept in mind that auxiliary request 2 was on file since the respondent's reply to the grounds of appeal (which is more than one and a half years ago) and that the same claim request was filed during the first-instance proceedings as a possible fallback position. Even in response to the board's communication, the appellant raised only a specific insufficiency objection against the subject-matter claimed in auxiliary request 2 as its only specific objection.

Under these circumstances, this inventive-step objection against auxiliary request 2 is not taken into account (Article 13(2) RPBA).

5. The appellant did not demonstrate that the subject-matter claimed in auxiliary request 2 fails to meet one of the requirements of the EPC, and so it is allowable.

6. With respect to the adaptation of the description, the respondent requested that paragraph [0019] of the patent specification be deleted and that the patent be maintained based on claim 1 of auxiliary request 2 and paragraphs [0001] to [0018] and [0020] to [0047] of the patent specification. Neither the appellant nor the board had any objections against the description being adapted in this way.