T 1039/22 26-03-2024

1. Auxiliary request III - admittance

1.1 The respondent requested that auxiliary request III, filed for the first time with the statement of grounds of appeal as auxiliary request 4, not be admitted into the appeal proceedings.

The respondent argued that the requirements of Rule 80 EPC were not fulfilled because the only amendment with respect to the then auxiliary request 4 which formed part of the decision under appeal, was the replacement of the term "educator" with the term "eductor".

The term "educator" had not been objected to by the respondent or the opposition division, and the replacement of "educator" with "eductor" was not occasioned by a ground for opposition as required by Rule 80 EPC.

1.2 The board notes that the provisions of Rule 80 EPC relate to amendments with respect to the granted patent (see Case Law of the Boards of Appeal ("CLB"), 10th edition 2022, IV.C.5.1.2 a), with particular reference to decision T 946/16, Reasons 3.5).

Claim 1 of auxiliary request III differs from claim 1 as granted due to the introduction of the feature

"said fill system comprising a hopper (22) and solids pump (24) including a pneumatic pump having an eductor and/or a venturi to move solid adhesive from the hopper (22) with pressurized air through the hose (26) to the receiving device (12, 112)".

This feature was added in order to overcome objections related to added subject-matter. The amendment was therefore occasioned by the ground for opposition under Article 100(c) EPC and fulfils the requirements of Rule 80 EPC.

Notwithstanding the above, the board also notes that, even if the opposition division did not raise the issue, the introduction of the term "educator" is clearly an amendment which extends the subject-matter of the claim beyond the documents as originally filed, so that the replacement of "educator" with the term "eductor" is also occasioned by the ground for opposition under Article 100(c) EPC.

1.3 The set of claims according to auxiliary request III was not submitted during the opposition proceedings, as claims 1 and 12 of auxiliary request 4 decided on by the opposition division contained the term "educator" not "eductor". This request is therefore regarded as an amendment to the appellant's case, which may only be admitted at the discretion of the board (Article 12(4) RPBA).

1.3.1 The opposition division clearly saw the inclusion of the word "educator" in claims 1 and 12 as a typographical error and referred in its reasoning relating to the then auxiliary request 4 to an "eductor" rather than an "educator" (see decision under appeal, for instance points II.6.4 and II.6.6 and also feature M12.3 recited on page 13).

1.3.2 The decision under appeal therefore dealt with all the substantive aspects of this request, as if it had included the term "eductor". Thus, the admittance of the request into the appeal proceedings does not add complexity nor is it detrimental to procedural economy.

1.4 The board therefore exercises its discretion under Article 12(4) RPBA and admits auxiliary request III, filed as auxiliary request 4 with the appellant's statement of grounds of appeal, into the appeal proceedings.

2. Auxiliary request III - extension of subject-matter - Article 123(2) EPC

2.1 The respondent argued that the introduction of feature M1.4.1 gave rise to an unallowable intermediate generalisation as the following features were not included in claim 1 although they were inextricably linked to feature M1.4.1 as described in paragraph [0021] of the application as originally filed which is the only basis for a periodic delivery to the receiving device:

- the hopper includes a "large storage tote"

- the hose "extending" from the hopper to the receiving device

- the solid adhesive is "particulate" or

- "pelletized"

- the hopper is "with" a solids pump.

In addition, there was no basis for the feature of the periodic delivery of a "small amount" of solid adhesive.

The respondent also objected to the combination of features of method claim 12.

2.2 "storage tote"

2.2.1 The respondent argued that the opposition division erred in finding that the omission of the "storage tote" did not result in an unallowable intermediate generalisation.

2.2.2 The board agrees with the respondent that it is established case law that it is normally not allowable to base an amended claim on the extraction of isolated features from a set of features disclosed only in combination unless the extracted feature is not inextricably linked to the omitted feature (CLB, supra, II.E.1.9.1).

2.2.3 The respondent argued that the only literal disclosure of a periodic supply of solid adhesive to the receiving device from a fill system was found in the following sentence of paragraph [0021]:

"The hopper 22 may include a large storage tote configured to store solid particulate adhesive such as pelletized adhesive for periodic delivery to the receiving device 12".

The skilled person would understand from this passage that when periodic delivery of the solid adhesive takes place, as in feature M1.4.1 of claim 1 of auxiliary request III, the hopper must include a large storage tote as this was inextricably linked with the supply of a small amount of solid adhesive periodically to the receiving device.

2.2.4 The board does not agree with the opposition division's reasoning that the storage tote is to be considered optional (see decision under appeal, page 7, second paragraph), however, it is of the view that the skilled person, taking into account the application documents as a whole, would understand that the storage tote is not inextricably linked to the periodic supply required in feature M1.4.1.

As the appellant argued in its written submissions, it is clear from the content of the application as originally filed, for example in paragraphs [0020] and [0021], which refer to a dispensing device for a melt on demand process with a fill system having a hopper, solids pump and hose supplying the receiving device, that the fill system contains solid adhesive which is released when demand requires it.

The skilled person therefore understands that the fill system must have storage within the hopper from which the small amount of solid adhesive is supplied to the receiving device when required by the melt on demand process, i.e. periodically.

The board agrees with the appellant that the skilled person would not understand the term "periodically" to refer to delivery at fixed intervals. The board follows the reasoning of the opposition division that the term "periodically" is understood by the skilled person to mean "from time to time" (see decision under appeal, page 16, first paragraph, in relation to novelty of the subject-matter of claim 1).

2.2.5 As the only technical requirement of the large storage tote with respect to the periodic delivery is that of storage and the hopper alone fulfils this requirement, the skilled person understands that the storage tote is not inextricably linked to feature M1.4.1 so that its omission in claim 1 is allowable.

2.3 hose "extending"

2.3.1 The board agrees with the opposition division that the absence of the word "extending" does not lead to an extension of subject-matter (see decision under appeal, page 7 d)). The claim requires that solid adhesive is moved "from the hopper (22) with pressurized air through the hose (26) to the receiving device (12, 112)". The hose therefore must "extend" between the hopper and the receiving device.

2.3.2 The respondent argued that the wording of claim 1 did not exclude that one hose from the hopper could, via a joint, split into two hoses, one of which continued to the receiving device, whereas the wording of paragraph [0021] excluded such an embodiment.

2.3.3 The board does not agree. Both claim 1 and paragraph [0021] refer to "a hose", so that the skilled person would understand both the claim wording and the wording of paragraph [0021] to include or exclude the same embodiments.

2.4 "particulate/pelletized"

2.4.1 The opposition division reasoned that it was not necessary to include the terms particulate or pelletized in claim 1 as the size and form of the solid adhesive was inherent with the introduction of the term "solids pump" into claim.

2.4.2 The respondent argued that paragraph [0021] linked periodic delivery with particulate/pelletized adhesive.

2.4.3 However, the board agrees with the opposition division that the inclusion of the solids pump and a hose in claim 1 is sufficient as "particulate" and "pelletized" do not imply any further limitations than already inherent in a fill system configured to supply a small amount of solid adhesive from a hopper to a receiving device through a hose using a solids pump.

2.5 hopper "with" a solids pump

The respondent argued that the term "hopper and a solids pump" in claim 1 of auxiliary request III should be replaced with the term "hopper with a solids pump" because paragraph [0021] of the published application, disclosed "a hopper 22 with a solids pump 24 and a hose 26 extending from the hopper 22 to the receiving device 12."

According to the respondent the term a "hopper with a solids pump" implied that the solids pump was part of the hopper, whereas the term "hopper and a solids pump" was broader as both components could be separate.

The board disagrees and follows the reasoning of the opposition division that in the context of the claim, due to the functional relationship already present between the hopper and solids pump, the subject-matter has not been extended through the use of "and" rather than "with" (see decision under appeal, page 11, item a)).

2.6 "small amount"

2.6.1 The appellant gave the basis for this feature as paragraphs [0007], [0022], [0025], [0033], [0036], [0042] and claim 1 as originally filed.

2.6.2 The board notes that claim 1 as originally filed included the feature "said receiving device including a receiving chamber, which is configured to receive a small amount of solid adhesive"; it is therefore implicit that any fill system which supplies the receiving device through a hose must therefore supply a small amount, in order that the receiving device receives a small amount.

2.7 Claim 12 - independent method claim

The respondent argued that the opposition division was incorrect in finding that the application as originally filed provided a basis for independent method claim 12.

In its preliminary opinion (point 15.3) the board noted that the respondent had not clearly shown which features of claim 12 it considered to extend beyond the content of the application as filed. The respondent did not respond to this point either in writing or during the oral proceedings before the board.

Therefore, in the absence of any objections specific to claim 12, claim 12 also fulfils the requirements of Article 123(2) EPC, for the same reasons as given above for claim 1.

3. Auxiliary request III - lack of clarity - Article 84 EPC

3.1 The respondent argued that the opposition division was incorrect in finding that the following feature (part of feature M1.4.1.1) was clear:

"and a solids pump (24) including a pneumatic pump having an eductor and/or a venturi to move solid adhesive from the hopper (22) with pressurized air through the hose (26) to the receiving device (12, 112)."

According to the respondent, this feature represented a result to be achieved and it was not clear how to achieve this result. In addition, as the feature related to a method step but claim 1 was directed to a device, the feature did not limit the claim and had to be interpreted broadly.

3.2 The board, however, agrees with the opposition division that the structural features as well as the desired effect are present in the claim and there is no lack of clarity.

The result to be achieved in claim 1, namely of moving the solid adhesive, also does not correspond to a problem underlying the application (see CLB, supra, II.A.3.2, fifth and sixth paragraphs). It relates instead to the function to be performed by said structural features, i.e. the pneumatic pump having an eductor and/or a venturi. Thus, the features at stake do not relate to a method step.

The board also notes that a claim may be both broad and clear (see CLB, supra, II.A.3.3, first paragraph).

4. Auxiliary request III - Novelty - Article 54 EPC - document E5

The respondent argued that the opposition division were incorrect in finding that document E5 did not disclose all features of claim 1 of then auxiliary request 4.

The opposition division found that features M1.4.1.1, M1.6 and M1.7 were not disclosed in document E5.

4.1 Feature M1.4.1.1

4.1.1 According to the respondent, in one line of argument, the supply reservoir 16 represented the hopper. The illustration of the supply reservoir 16 in figure 1 of E5 was merely exemplary, and from paragraph [0030] it was clearly disclosed that the device was suitable to move solid adhesive from the hopper to the receiving device with pressurized air through the hose (20).

4.1.2 The board however agrees with the opposition division (see decision under appeal, page 16) that the term "hopper" inherently requires the storage or supply reservoir to have a tapered or funnel shape, which allows the contents to be discharged from the bottom. In document E5 the contents of the supply reservoir 16 are discharged through a suction wand 22 (see E5, paragraph [0030] and figure 1). The skilled person would understand a suction wand to imply discharge from the top of the supply reservoir.

4.1.3 In a second line of argument, the hopper 12 of E5 was regarded by the respondent as forming the hopper of feature M1.4.1.1.

4.1.4 However, the hopper 12 cannot be considered to be the hopper of feature M1.4.1.1 as the fill system does not supply a receiving device with solid adhesive from this hopper 12 through a hose. Instead, it is the hopper 12 itself which is filled from supply reservoir 16 through a hose.

4.2 There is therefore no disclosure in E5 of a hopper as required by feature M1.4.1.1, so that claim 1 is novel with respect to document E5, irrespective of whether features M1.6 and M1.7 are disclosed in document E5 or not.

5. Auxiliary request III - claim 1 - Article 56 EPC

5.1 The opposition division found that the subject-matter of claim 1 of then auxiliary request 4 was obvious in view of a combination of the teaching of E1, E4 and the skilled person's common general knowledge, see decision under appeal, point II.6.6.

The opposition division identified two distinguishing features compared with the disclosure of document E1, and found that as the two features did not have a synergistic effect a partial problem approach was to be used.

5.2 In the decision under appeal it was found obvious to modify the system of E1 to include both the distinguishing feature alpha, which reads:

"said fill system comprises a hopper and a solids pump including a pneumatic pump having an eductor and/or venturi to move solid adhesive from the hopper with pressurized air through a hose to the receiving device",

and also the distinguishing feature beta, which reads:

"said receiving device includes an outlet that is positioned within the manifold."

The opposition division reasoned, for feature alpha, that E4 disclosed a number of equivalent alternatives for the fill system, including "pressurized air", which led to a direct and unambiguous disclosure of a pneumatic pump. As the skilled person from their common general knowledge, such as shown in E5 (paragraph [0030]), was aware of pneumatic pumps comprising a venturi or eductor, it was an obvious choice between several well known alternatives.

For feature beta, the opposition division reasoned that document E4 disclosed two alternatives for mounting the receiving device so that it was obvious for the skilled person to choose either one.

5.3 The appellant contested the opposition division's findings with respect to both features alpha and beta.

5.4 Feature alpha

5.4.1 According to the appellant, the opposition division was incorrect as there was no motivation for the skilled person, considering the teaching of E4, to modify the system of E1 to use pressurized air instead of gravity.

In E4 the preferred embodiments all used gravity and the document contained no specific disclosure of a pressurized air system, but only a generic list of different principles for transporting solid adhesive on page 5, lines 16-17.

5.4.2 The opposition division regarded the technical effect of feature alpha (with respect to E1) as accurately supplying a small amount of solid adhesive in a periodic manner, and the problem to be solved as providing an improved filling system.

5.4.3 The passage of document E4 cited by the opposition division reads as follows:

"The material is transferred either by some means such as gravity, pressurized air, vacuum, vibration, other method known to those skilled in the art, or a combination of the aforesaid methods through the feed tube down to the inlet of the heat exchanger unit." (E4, page 5, lines 15 to 19).

No advantages of using pressurized air are mentioned, so that there is no motivation for the skilled person to consider pressurized air to provide an improved fill system. In fact, as argued by the appellant, the embodiments of E4 all appear to show gravity feeding.

5.4.4 Further, even if the skilled person were to combine E4 with E1, they would only arrive at the use of pressurized air. There is no disclosure in E4 of a pneumatic pump having an eductor and/or venturi. The opposition division takes this feature from the common general knowledge, but the introduction into the system of document E1 of a combination of the feature from E4 with features from the common general knowledge would only occur to the skilled person with knowledge of the invention. In this respect, the board further notes that E5 is a patent document and, hence, does not represent the common general knowledge. The disclosure in paragraph [0030] of E5 referred to in the decision under appeal is specific to the device shown in figures 1 to 3.

5.5 Therefore, the subject-matter of claim 1 is inventive with respect to the combination of E1, E4 and common general knowledge at least when considering feature alpha, so that it is not necessary to assess whether feature beta would justify inventive step, in particular in view of the disclosure of E4.

6. Further objections (Article 56 EPC) - admittance - Article 12(3) and (5) RPBA

6.1 In its reply to the grounds of appeal, the respondent referred to objections and arguments made during the opposition proceedings relating to lack of inventive step but without specifying to which submissions it referred.

6.1.1 Auxiliary request 4 in the decision under appeal was filed during the oral proceedings before the opposition division. Although the minutes of the oral proceedings do note that the respondent raised objections against this request based on obviousness in view of E1 and the skilled person, E1 and E4 or E5; E5 and E1; E4 and E5 or E1, no detail of these objections was given in the minutes of the proceedings (see minutes of the oral proceedings, page 2, third paragraph).

6.1.2 Therefore, there are no submissions, in either the appeal or the opposition proceedings, on which the board could assess whether or not the respondent's arguments for these lines of attack are convincing.

6.2 The respondent argued in its reply to the appeal that the appellant had not substantiated the amendments made to auxiliary request III, nor had it substantively discussed the decision under appeal for this request.

The respondent indicated that it would provide detailed arguments in the event that the appellant substantiated this auxiliary request.

6.2.1 However, as set out above in point 1., although this request was filed with the statement of grounds of appeal it is substantively fully equivalent to auxiliary request 4 decided upon by the opposition division.

6.2.2 In the board's view, the inclusion of the term "educator" was clearly a typographical error as indicated by the appellant, and from the application documents as a whole it was self-evident that the term "eductor" was the correct term. This was clearly the implicit understanding of the opposition division in the decision under appeal.

It is established case law that where amendments are self-explanatory it is not necessary to give a detailed substantiation (CLB, supra, V.A.4.4.4 c)).

6.2.3 Further, in its statement of grounds of appeal, the appellant indicated that the argumentation given for auxiliary request 3 (also referred to as auxiliary request II and withdrawn during the course of the appeal proceedings) was relevant to auxiliary request III. This argumentation referred to the decision under appeal relating to the then auxiliary request 4 and also to the arguments made for the then main request.

6.3 The board therefore regards auxiliary request III as having been sufficiently substantiated and does not see any justification for the respondent not substantiating its objections with its reply to the appeal.

The respondent's appeal case is therefore not complete as required by Article 12(3) RPBA and the board has the discretion not to admit this part of the respondent's submissions.

6.3.1 As there are no written submissions setting out the respondent's further objections, the entire substance of these objections would have been raised for the first time at the very latest stage of the appeal proceedings, at the oral proceedings before the board.

This would have been detrimental to procedural economy as it would have required a significant interruption or an adjournment of the oral proceedings in order for the board to fully consider both parties' submissions in relation to the new objections.

6.4 For these reasons the board decided to exercise its discretion under Article 12(5) RPBA and not admit the further objections into the appeal proceedings.