T 1744/22 21-11-2024

1. Admissibility of the appeal

The appeal is admissible.

The respondent's argument that the appeal was not admissible since it was not substantiated is not persuasive for the following reasons.

1.1 According to Article 108, third sentence, EPC, a statement setting out the grounds of appeal must be filed in accordance with the Implementing Regulations. Rule 99(2) EPC requires that this statement of grounds of appeal indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.

1.2 In the case of a decision revoking the patent (such as in the case at hand), it is sufficient that the appeal be substantiated with respect to at least one claim request on which the appealed decision is based. It is, therefore, not necessary that all points of the decision be addressed, and the reasoning does not need to be persuasive either.

1.3 The appellant explained in the statement setting out the grounds of appeal the reasons why in its view the adverse conclusion under Articles 100(c) and 123(2) EPC - decisive for finding the main request not allowable in the appealed decision - was not correct. This is sufficient to meet the requirements of Article 108, third sentence, EPC in combination with Rule 99(2) EPC.

2. Main request - added subject-matter

The Board agrees with the appealed decision that the amendments made to claim 1 of the main request have created subject-matter which extends beyond that of the application as filed. The reasons are at least the following (already communicated to the appellant in point 7 of the preliminary opinion).

2.1 The combination of features of claim 1 is not originally disclosed for the "outlet" option encompassed by features [M2] and [M5].

The application as filed concerns connection arrangements of a fitting unit and a medium pipe. The "fitting unit" may have the form of a tap (4) or of an outlet (2) (see A1, e.g. first sentence). Moreover, according to page 2, lines 30 and 31, the "fitting unit will consist of the housing itself" (emphasis added), i.e. the terms "fitting unit" and "housing" are equivalents in the application as filed, in line with the wording of amended features [M3] and [M4].

The original claim 1 defines (emphasis added) "at least one boring (17, 18) for mounting the medium pipe(s) (24, 26)". The borings referred to by the wording "at least one boring" are exclusively borings receiving the fittings for mounting the medium pipes. This does not encompass a boring for a valve body or an outlet.

Feature [M5] of claim 1 of the main request defines in addition to claim 1 as originally filed (emphasis added) "a first bore (14) for mounting a tap or an outlet". This first bore defined in feature [M5] is thus distinct from the second boring(s) for receiving the fittings for the medium pipes, see features [M6] to [M12], i.e. it is also an additional feature compared with claim 1 as originally filed.

It was undisputed that such a distinct first bore is originally explicitly disclosed for receiving a valve body in relation to the embodiment of a fitting unit in the form of a tap (see A1, page 7, lines 19 to 30 and the embodiments of Figures 3 to 5) while "a first bore for mounting ...the outlet to the fitting unit" (feature [M5]) was not originally explicitly disclosed.

The appellant's argument that such a first bore was implicitly disclosed in Figures 1 and 2 in combination with the further features of claim 1 is not convincing.

Contrary to the appellant's view, in the embodiments of Figures 1 and 2 it is neither shown nor implicitly derivable how the outlet is connected to the housing in detail. While there must be a bore in the housing which allows the water to flow through (i.e. for the fluid communication between the second boring and the first bore), the outlet may well be an integral part of the housing or may comprise a threaded bore into which an extension of the housing is inserted. The provision of a first bore in the housing is thus not indispensable for mounting of the outlet and Figures 1 and 2 do not implicitly disclose a bore for "mounting an outlet".

Therefore the option "or [for] an outlet" in features [M2] and [M5] in claim 1 and in claim 9 extends the subject-matter beyond that of the application as filed.

2.2 A first bore was also not originally disclosed for "mounting a tap" in general (feature [M5])

In addition to the conclusion in the preceding paragraph, the first bore (or "boring") 14 is not generally disclosed for "mounting the tap" in accordance with feature [M5], i.e. including any kind of mounting bores such as mere fixing holes. Instead, the first bore is specifically disclosed "for receiving the valve body" (of the tap). This is more restricted as it implies e.g. that respective fluid connections interacting with the valve body must be present in the housing.

The omission of the first bore's specifically disclosed functional feature "for receiving a valve body" thus extends the subject-matter beyond the content of the application as filed.

2.3 The omission of a second "second boring" is also an extension of the subject-matter, see features [M6] to [M8].

As explained above the subject-matter of claim 1 - due to the inclusion of feature [M5] - is originally only disclosed in relation to the tap embodiment as exemplified in Figures 3 to 5, i.e. in relation to a "fitting unit in the form of a tap". Therefore this fitting unit (13) is originally only disclosed with at least the following features (see also A1, e.g. page 7, lines 25 to 30):

- a fitting housing (13) with at least three bores, one first bore and two second bores

- a valve body received in the first bore

- two second borings, each provided with a thread receiving the respective threaded fitting

Accordingly, the following features are omitted in claim 1 of the main request thereby extending the subject-matter compared with the content of the application as filed:

- at least two second borings (feature [M6])

- each second boring provided with a thread (feature [M7])

- each second boring adapted to receive the respective threaded fittings (feature [M8])

2.4 The omission of the "third part" of the second borings also extends the subject-matter.

While the issue of the omitted "third part" of the second borings with a "third diameter" for "connecting gas and liquid to the valve" was only raised by the opposition division with respect to auxiliary request 20, this was relevant for the main request, too.

The tap embodiment (with a first bore and two second bores) is not only disclosed solely in combination with a valve body, but also with the respective connections of the second borings to the valve body (see features of claim 2), these connections being functionally required for connecting the gas and liquid to the valve body.

Therefore the omission of these features constitutes an unallowable intermediate generalisation of the connection arrangement claimed.

3. Auxiliary request 19

Under Article 12(6), first sentence, RPBA, auxiliary request 19 is not admitted into the appeal proceedings.

The opposition division exercised its discretion by not admitting auxiliary request 19 into the proceedings by applying the criterion of lack of prima facie allowability.

The Board does not see an error in the opposition division's exercise of discretion. It further agrees with the opposition divisions conclusion that auxiliary request 19 is prima facie not allowable.

The wording "fitting unit for a tap" of claim 1 as granted was amended to "fitting unit in the form of a tap" in claim 1 of auxiliary request 19 (emphasis added). As explained above, the term "fitting unit" is equivalent to the term "housing". Therefore a fitting unit in the form of a housing defines different subject-matter from a fitting unit suitable for a tap (i.e. forming a tap arrangement together with other parts). This at least creates issues under Article 84 EPC and Article 123(3) EPC.

4. Auxiliary request 20

4.1 Admittance

Auxiliary request 20 was admitted by the opposition division and addressed on the merits, and the appealed decision is thus based on it. It is also considered in the appeal proceedings.

4.1.1 The respondent's argument that auxiliary request 20 did not form part of the appeal proceedings because it had not been re-submitted with the statement setting out the grounds of appeal is not persuasive.

In accordance with Article 12(3)(a) RPBA, the requirement to attach requests as annexes applies only "insofar as they have not already been filed in the course of the [...] opposition [...] proceedings". The request is the subject of the decision under appeal and is thus also the subject of the appeal proceedings (Article 12(2) RPBA).

4.1.2 The Board also sees no error in the exercise of discretion by the opposition division when admitting this request.

The request was submitted in response to the discussion of added subject-matter of the main request during oral proceedings, as a consequence of which the lines of defence submitted in the form of auxiliary requests 1 to 18 were apparently not successful in overcoming the outstanding objections and were consequently withdrawn by the appellant and replaced inter alia by auxiliary request 20.

The fact that the opposition division nevertheless came to the final conclusion that auxiliary request 20 then admitted was not allowable bears no relevance in this context. The results of a prima facie evaluation and of an in-depth analysis may differ because of the very nature of a prima facie analysis.

4.2 Extension of subject-matter

4.2.1 Auxiliary request 20, although restricted to a fitting unit for a tap and to two "seconds boring [sic]", still does not address at least the following outstanding objections held against the main request:

- The first bore is defined as being "adapted for mounting of the valve body" and not for receiving the valve body which is still a more generic wording than originally filed (see also point 2.2 above).

- The connected "third parts" of the second borings are still not defined (see point 2.4 above).

Auxiliary request 20 is thus not allowable under Article 123(2) EPC.

5. Auxiliary request 21

Auxiliary request 21 is not admitted into the appeal proceedings for the following reasons.

5.1 Auxiliary request 21 was submitted for the first time with the statement setting out the grounds of appeal. It is thus an amendment under Article 12(4) RPBA and its admittance is at the discretion of the Board.

While it rectifies most of the issues of added subject-matter identified for the main request (see point 2. above), the following issues of added subject-matter are not resolved.

Feature [M5.3] is directed to a "first bore for mounting of the tap to the fitting housing" instead of the originally disclosed wording "first bore for receiving a valve body" (see point 2.2 above).

Furthermore feature [M13] refers to "a valve" instead of "the valve body", i.e. a broader definition than originally disclosed for the "third parts".

Since this request is prima facie insufficient to overcome all the outstanding objections of added subject-matter raised against the main request, the Board decided to not admit it into the proceedings.

6. Request for reimbursement of the appeal fee

As the appeal is not deemed to be allowable, it is not possible to reimburse the appeal fee under Rule 103(1)(a) EPC. The question of whether the opposition division's decision was based on a substantial procedural violation can thus be left undecided.

7. Requests for remittal

In view of the fact that none of the appellant's claim requests is allowable, the requests for remittal of the case to the opposition division are moot.

8. No different apportionment of costs

The respondent requested a different apportionment of costs pursuant to Article 16(1)(e) RPBA. During the oral proceedings before the Board, the respondent clarified that this request was no longer related to the entire appeal proceedings (as stated in the written reply to the appeal), but was limited to the costs of preparing and conducting the oral proceedings in appeal, which should be borne in full by the appellant.

The Board refuses this request for the following reasons.

8.1 The respondent referred to Article 16(1)(e) RPBA, which mentions costs incurred by any "abuse of procedure". It argued that the appellant should bear the respondent's costs for preparing and conducting the oral proceedings before the Board since the appellant had announced shortly before the oral proceedings that it would not participate, but had explicitly maintained all pending requests, including the request for oral proceedings. The respondent was therefore forced to prepare for and participate in the oral proceedings for the sole reason that the appellant had not withdrawn its requests (or even withdrawn its appeal). In this context, the respondent referred to case T 2350/15, in which - in a similar situation - the deciding board had found it equitable that the party not attending (while maintaining the oral proceeding request) bore the costs for preparation, travel and presence incurred by the other party. In this context, the appellant pointed out that its own request for oral proceedings had been limited to the event that the board did not dismiss the appeal on the merits, i.e. confirmed the revocation of the patent; its request for oral proceedings was therefore not directed to the request for a different apportionment of costs.

8.2 Article 104(1) EPC specifies that each party to the opposition proceedings bears the costs it has incurred. The same applies to appeal proceedings. However, the opposition division (or the board of appeal) may, for reasons of equity, order a different apportionment of the costs.

8.3 In the present case, the Board considers that there are no reasons of equity that would justify a different apportionment of costs.

The respondent's argument is that the oral proceedings before the Board took place only because the appellant had announced that it would not participate in the oral proceedings, while at the same time maintaining in particular its request for oral proceedings.

The Board does not accept the above arguments for the following reasons.

While the Board did indeed decide not to cancel the oral proceedings, it did not do so only because the appellant maintained all its requests (including its request for oral proceedings). Instead, oral proceedings were considered expedient (see Article 116(1), first sentence, EPC) because the respondent had requested a different apportionment of costs in its reply to the statement of grounds of appeal, a negative preliminary opinion had been given on this point, and the respondent had provided further arguments in support of the request for apportionment in its last letter of 13 November 2024. In particular regarding these further arguments, there had not yet been an exchange of arguments and counter-arguments. The Board thus considered it necessary to give the respondent the opportunity to be heard at the oral proceedings on this request pursuant to Article 113(1) EPC. Therefore the need to prepare and conduct the oral proceedings did not arise solely from the appellant's announcement that it would not be attending while maintaining their request for oral proceedings. Indeed, the discussion at the oral proceedings was mainly concerned with the respondent's request for a different apportionment of costs and the further arguments submitted.

8.4 It is for this reason alone that the decision referred to by the respondent is not relevant. In contrast to the present case, the board in T 2350/15 had considered that the oral proceedings (in the absence of the appellant/opponent) would have served no purpose and could have been cancelled, had it not been for the request of the appellant/opponent.