T 0422/23 08-07-2025

1. The appeals are admissible.

2. Auxiliary request 2 of 3 November 2022 (as maintained), claim 1, added subject matter, omission of the battery feature

2.1 In its communication (section 7.2) the Board explained why it considered that not claiming that the intelligent controller comprised a battery and the battery's connections and function in relation to certain other parts of the intelligent controller, constituted an extension of subject matter beyond the application as filed. The Board wrote the following:

"7.2 Claim 1: Omission of the feature battery

7.2.1 In accordance with established jurisprudence of the Board's of appeal (see Case Law of the Boards of Appeal, 10th edition, 2022 (CLBA) II.E.1.3.1) the gold standard for assessing added subject matter is that an amendment to a patent application can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of [the description, claims and drawings] as filed. This has frequently been referred to as the "gold standard" (see G2/10, reasons 4.3), and was also applied by the opposition division in the present case in considering the present amendment (see decision reasons, point 5.2, last paragraph). Whether or not it was appropriate for the opposition division to additionally apply the test often referred to as the three-point essentiality test (cf. Guidelines for Examination, Part H, Chapter V, page 13, section 3.1 "Replacement or removal of features from a claim", second paragraph), the latter cannot give a different result than considering the gold standard alone (direct and unambiguous disclosure) so it is principally this "Gold standard" which the Board will consider.

7.2.2 In its decision, the opposition division wrote to this point: "Also when applying the "gold standard" of G2/10, it is evident to the person skilled in the art from the discussion above [of the three point test] that the language of original independent claim 1 of the grandparent application that relates to the battery and the battery's connections with the other elements of the intelligent controller is not functionally or linguistically associated with the remaining features of independent claim I as originally filed and can therefore be omitted without violating the requirement of Article 100(c) EPC". The respondent-proprietor has argued in the same way.

7.2.3 Whatever significance the opposition division may have attached to its observations regarding linguistic association of the battery with the remaining claim features, the battery was certainly defined in the last part of claim 1 of the grandparent as being comprised in the claimed intelligent controller. Therefore, it is without a doubt originally defined to be a part of the electronic controller, as the appellant-opponent 2 has repeatedly argued (see its grounds, section "d) No battery" starting on page 10), and not more generally as the battery of the electronic cigarette as the respondent-proprietor seems to suggest (cf. its reply to the appeals, point 2.2.2, first paragraph of point b)).

7.2.4 Moreover, it is hard to see how the opposition division came to the conclusion that the battery was not defined in the claim as being functionally connected to other features of the claimed intelligent controller: The battery is defined there as being connected to the switch module, the voltage acquisition module, the control module and the display module and moreover as being configured to supply working voltage power to these elements, which is without doubt its function. Therefore, the battery is originally disclosed functionally [as well as structurally and indeed linguistically] associated with those elements and presented as being an integral part of the intelligent controller. Therefore, the opposition division's premise upon which it based its conclusion (no added subject matter by omitting the battery) appears to have been incorrect.

Put a different way, from claim 1 of the grandparent, the intelligent controller is originally disclosed as comprising a battery connected in a certain way and having a certain function with regard to other components of the intelligent controller. Therefore, there would appear to be no direct and unambiguous disclosure of an intelligent controller without such a battery from the claim considered in isolation.

7.2.5 If there were to be a basis for claim 1 of the present request, it would have to be found in the description/ drawings of the grand parent application as filed. In this regard, the respondent-proprietor has cited paragraphs [0005] to [0007] of EP2921064A1. Paragraph [0005] does no more than state the objective of the invention - providing an intelligent controller by which certain [electrical] conditions of an atomizer's heating wire can be detected. This would appear to shed no light on whether the claimed intelligent controller of claim I is elsewhere disclosed with all the claimed features except the battery. Paragraph [0006] explains a particular embodiment and mirrors the wording of claim 1 and thus discloses a battery as part of the intelligent controller and as being connected and performing the same functions as claim I defines.

Paragraph [0007] explains the advantages of the [grandparent] invention. Contrary to how the respondent-proprietor has argued, the fact that paragraph [0007] does not mention a battery would not be understood by the skilled person to mean that the invention could be carried out by an intelligent controller without a battery. This is because paragraph [0007] opens by explaining that the advantages are achieved "By adopting the above embodiment [explained in paragraph 0006]...". Therefore, paragraph [0007] frames the advantages achieved by the invention within the specific embodiment of an intelligent controller according to paragraph [0006] which, consistent with claim I, is explicitly stated to comprise a battery.

The Board is also not convinced by the respondent-proprietor's argument that the fact that the independent method claim (claim 10) of the grandparent application does not refer to the battery means that the battery can be omitted from the independent device claim without adding subject matter. The method claim 10 defines a method for intelligently controlling an electronic cigarette by carrying out certain steps. The steps, being control steps, do not define a structure of an intelligent controller. Therefore, the fact that a battery is not mentioned in claim 10 does not give a direct and unambiguous disclosure of an intelligent controller without a battery.

7.2.6 It follows from the above discussion that the Board considers the subject matter of present claim 1 adds subject matter extending beyond the disclosure of the grandparent application because it omits the feature of the intelligent controller comprising a battery connected and functioning in the manner defined by original claim 1. Therefore, contrary to the finding of the opposition division, the main request [Auxiliary request 2 of 3 November 2022] would appear to fail, Article 76(1) EPC."

2.2 Neither in writing nor at the oral proceedings before the Board did the parties comment on this aspect of the Board's communication. Having also reviewed it, the Board saw no reason to deviate from its preliminary opinion. Therefore, it concluded that auxiliary request 2 fails on added subject matter.

3. Auxiliary request with claims according to auxiliary request 2 with amended figure 1 filed on 19 September 2023, and according to auxiliary requests 2a, 3 or 3a, with or without amended figure 1 of 19 September 2023

3.1 Claim 1 of these requests does not mention a battery. Therefore, the Board's finding for auxiliary request 2 of 3 November 2022 - added subject matter due to missing battery feature, Article 76(1) EPC, likewise applies to these requests.

4. Auxiliary requests 4 to 7, filed at the oral proceedings before the Board on 8 July 2025

4.1 With its reply to the appeals, the respondent-proprietor had filed amended claim sets according to auxiliary requests 4 to 7. The independent claim 1 of those requests contained a single feature containing the word "battery". It reads:

"wherein the battery is electrically connected to the switch module (10), the voltage acquisition module (20), the control module (30), and the display module (40), respectively, and configured to supply working voltage power to the switch module (10), the voltage acquisition module (20), the control module (30), and the display module (40), respectively."

At the oral proceedings before the Board, the respondent-proprietor filed new "corrected" auxiliary requests 4 to 7 to replace those previously on file. Whilst these requests maintained the above "battery" feature, they amended a feature higher up in the claim to define "an intelligent controller comprising [...] a battery". The new auxiliary requests 4 to 7 thus set the maintained battery feature in a new context that defines, for the first time, the battery as comprised in the intelligent controller.

4.2 Request of the respondent-proprietor for auxiliary requests 4 to 7 to be considered as a correction under Rule 139 EPC

4.2.1 In accordance with Rule 139 EPC, first sentence, linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office may be corrected on request. In the present case, the skilled person might have identified a linguistic error in the wording of former auxiliary requests 4 to 7 insofar as the wording the battery uses the definite article yet the term battery has no precedent in the claim. The respondent proprietor has argued that the amendment corrects a mistake, its intention having always been to claim an intelligent controller comprising a battery. Indeed, the amendment concerned changes the definition of the intelligent controller to include the battery so it introduces a technical limitation going beyond the mere correction of a linguistic or transcription error.

4.2.2 The second sentence of Rule 139 EPC states: However, if the request for such correction concerns the description, claims [as in the present case] or drawings, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.

4.2.3 In the present case, the battery feature as it appeared in auxiliary requests 4 to 7 on file at the start of the appeal proceedings left open whether or not the author of the claim wished to merely refer to a battery or define it to be part of the claimed electronic cigarette, let alone that it should be more specifically defined as comprised in the intelligent controller, as auxiliary requests 4 to 7 filed at the oral proceedings before the Board do. Therefore, the present amendment goes well beyond defining the only possible thing that could have been objectively intended from the claim wording of auxiliary requests 4 to 7 as filed with the respondent's reply to the appeals. Indeed, since the amendments to auxiliary requests 4 to 7 are a substantive response to an added subject matter objection, they can but change the substance of what is claimed. Thus, they are by definition not corrections resulting in no overall change in substance from what the skilled person would have objectively derived from their original versions.

4.2.4 Consequently, the Board considers that the amendments to auxiliary requests 4 to 7 do not meet the requirements of Rule 139 EPC, second sentence.

4.2.5 Nor has the Board been convinced otherwise by the respondent-proprietor's arguments that the amendment chosen was the only possible one because it had stated in its reply to the appeals (page 37, sections 3.1 a) and 32 a) that [the amendments in auxiliary requests 4 to 7 were filed] in response to formal objections/matters and, and that this was confirmed by the appellant-opponent 2 (appeal grounds, page 28, section 11.2) since it had recognised auxiliary request 4 appeared to be an attempt to address an attack under Art. 100(c) EPC [...] "No battery".

The respondent's general intention to overcome objections cannot prove a specific intention to redefine the intelligent controller to include a battery which is not derivable from the original documents (auxiliary requests 4 to 7 filed with the respondent's reply to the appeals). Similarly, the appellant-opponent's assessment of auxiliary request 4 as failing to overcome an added subject matter objection raised against a higher ranked request can hardly constitute proof that a specific claim wording that should achieve that aim might have been originally intended.

Therefore, the arguments of the respondent-proprietor that the amendments to auxiliary requests 4 to 7 constitute an allowable correction to an error or mistake under Article 139 EPC are moot also for these reasons.

4.3 Admittance of auxiliary requests 4 to 7, Article 13(2) RPBA

4.3.1 The Board established that the amendments made in auxiliary requests 4 to 7 filed at the oral proceedings before the Board are not merely corrections of errors/mistakes. Rather, they constitute an amendment to the respondent-proprietor's case after issuing of the Board's communication under Article 15, paragraph 1 RPBA and their admittance is thus subject to the Board's discretion as set out under Article 13(2) RPBA. According to this article, such amendment shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

4.3.2 The respondent-proprietor reasoned that the exceptional circumstances in the present case were that the amendments made were prima facie allowable insofar as they overcame objections of lack of clarity and added subject matter. Neither of the appellants raised an objection of added subject matter against these requests. Only an unsubstantiated clarity objection had been raised against auxiliary request 4 by the appellant-opponent 2. Neither objection against any of the auxiliary requests 4 to 7 was explained by the Board in its communication. Therefore, according to the respondent-proprietor, it was informed of these objections and their nature for the first time at the oral proceedings before the Board. Consequently, its first opportunity to respond to these objections was at the oral proceedings. These constitute exceptional circumstances, justifying the admittance of auxiliary requests 4 to 7.

4.3.3 The Board notes that, whether or not an amendment prima facie overcomes an objection is a criterion considered by the Board when exercising its discretion to admit amendments at an earlier stage of the proceedings (prior to its communication), Article 13(1) RPBA. Whilst an amendment filed after the Board's communication would also have to clear this hurdle, merely doing so at this late stage in the proceedings does not constitute an exceptional circumstance.

4.3.4 In its appeal grounds, section 11.2, the appellant-opponent 2 noted that auxiliary request 4 in opposition (maintained unamended at the start of the appeal proceedings) appeared to be an attempt to address the [added subject matter] attack under Art. 100(c) EPC detailed [in a previous section of the same grounds] under the subheading "d) No Battery". In the last two sentences but one of the same section the appellant-opponent 2 wrote:

"Furthermore, the amendments do not prima facie address the plurality of objections discussed above in relation to AR2 discussed above. For example, it is not clear from claim 1 of AR4 what "the battery" is or how it relates to the intelligent controller/electronic cigarette." The statement, highlights the wording "the battery" with the definite article, and points out that the relationship between the battery and the intelligent controller is not defined.

4.3.5 Although this part of the appellant-opponent 2's grounds of appeal talks about the admittance of auxiliary request 4 rather than spelling out an objection under Article 76(1) EPC, the latter objection is nevertheless present: Saying that the request does not prima facie address the "No Battery" issue of auxiliary request 2 (as maintained) boils down to arguing that, on the face of it, the request does not solve this added subject matter issue. In that context, the relevant objection regarding auxiliary request 2 (see opponent 2's appeal grounds, starting page 10, points 6.19 to 6.24) was succinctly summarised in the last point as follows: "As there is no direct and unambiguous disclosure in the grandparent application as filed of an intelligent controller without a battery, claim 1 includes subject-matter that extends beyond the grandparent application as filed".

4.3.6 Therefore, the Board is not convinced by the respondent-proprietor's argument that no objection of added subject matter was raised by the appellant-opponent 2 against auxiliary request 4 as on file at the start of the appeal proceedings. That such an objection may not have been also raised by the appellant-opponent 1 does not relieve the respondent-proprietor of its obligation to have addressed this issue in a timely manner with its reply to the appeal, should it have wished the Board to consider it as part of its complete case.

4.3.7 Moreover, section 16.2 of the Board's communication noted: "[it] may therefore need to considered [sic] the admittance of the auxiliary requests [including auxiliary requests 4 to 7 then on file] and, if they [sic] admitted, consider them in substance".

In the immediately following sub-section (16.2.1), the Board noted that: "Amongst other things, it may need to be considered whether the respondent proprietor has sufficiently substantiated the reasons as to why any of the auxiliary requests might overcome the objection of added subject matter for the omission of the battery feature in the independent device claim 1 of auxiliary request 2 [and a further issue] should either of these issues prove to be prejudicial to the maintenance of the patent according to auxiliary request 2." In the context of a discussion on admittance which, as the Board had already explained might need to be followed by a discussion of the claims in substance, the Board's comments highlighted the issue of the omission of the battery and question whether this was addressed by the respondent-proprietor's auxiliary requests.

4.3.8 Nor is the Board persuaded by the respondent-proprietor's argument that the nature of the omitted battery feature issue in auxiliary request 2, and its repercussions for lower ranked requests was so vaguely expressed in the appellant-opponent 2's grounds of appeal and by the Board in its communication that it could only have became known to the respondent at the oral proceedings before the Board.

The issue was spelt out both in the appellant-opponent 2's appeal grounds (page 11, point 6.24) quoted above and in the Board's communication, section 7.2.6. for auxiliary request 2. The core of the objection was the omission of the intelligent controller comprising a battery. In the Board's view, the nature of this objection is not in itself complex, so it should have caused no difficulties in being understood. As already explained, the appellant-opponent 2 (appeal grounds, section 11.2 and 11.3) highlighted that auxiliary request 4 did not resolve this problem. Likewise, in its communication, point 16.2.1 discussing the auxiliary requests [4 to 7], the Board pointed to the omission of the battery feature.

4.3.9 Therefore, the Board holds that the respondent-proprietor was already informed of the added subject matter problem in auxiliary request 4 when it received the appeal grounds of opponent 2 and could therefore have timely addressed the issue with suitable auxiliary requests with its reply to the opponents' appeals, well before the Board issued its communication that again drew attention to the problem.

The same reasoning applies to auxiliary request 5 whose claim 1 reads, as far as the battery feature is concerned, the same as claim 1 of auxiliary request 4.

4.3.10 Auxiliary requests 6 and 7

Although auxiliary requests 6 and 7 as filed with the respondent-proprietor's reply to the appeals were not commented on by the appellants in written proceedings, as far as the battery feature is concerned they were the same as auxiliary request 4 in opposition. Although they addressed certain inventive step objections, the added subject matter issues with the battery are the same as for auxiliary request 4, as pointed out by the appellant-opponent 2 in its appeal grounds. Therefore, the respondent-proprietor had the opportunity to timely address it with suitable auxiliary requests with its reply to the appeals.

4.3.11 In the light of the above, the Board saw no exceptional circumstances which might have justified addressing the "intelligent controller missing a battery" added subject matter problem for the first time at the oral proceedings before the Board, rather than with its reply to the appeals. Therefore, the Board decided not to admit auxiliary requests 4 to 7 into the appeal proceedings, Article 13(2) RPBA.

5. The version of the patent as maintained in the opposition proceedings (auxiliary request 2) fails because it adds subject matter extending beyond the grandparent application as filed. Therefore the appealed decision must be set aside. The remaining auxiliary requests either fail for the same reasons or were not admitted into the proceedings. Therefore the patent must be revoked.