T 1548/08 08-04-2010

1. The appeal is admissible.

2. Late filed submissions

According to Article 12(4) RPBA, the Board can hold inadmissible requests that could have been presented in the first instance proceedings. Pursuant to Article 13(1) RPBA the admissibility of amendments to a party's case after it has filed its grounds of appeal is subject to the discretion of the Board. The discretion is to be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. Furthermore, according to Article 13(3) RPBA, amendments submitted after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings.

The Board cannot see any justification for the late filing of auxiliary requests 4, 5 and 8 to 13. The explanation that these requests were filed in reaction to the Board's communication is not acceptable in the present case since the objections of extended subject-matter and lack of novelty mentioned in this communication correspond to the respective objections already raised in the first instance proceedings which led to the revocation of the patent. Consequently, all these requests could have been filed in the first instance proceedings or with the grounds of appeal. Accordingly, they are inadmissible under Article 12(4) RPBA.

Furthermore, the features introduced into claim 1 of auxiliary requests 8 to 11 (specifying the geometrical shape of the apertures) were never claimed before. They are taken from the drawings and relate to unsearched subject-matter. Moreover, these requests gave rise to further objections by the respondent under Articles 84 and 56 EPC. This would justify an adjournment of the oral proceedings and possibly even require a remittal to the first instance. Accordingly, their admission would be contrary to the principle of procedural economy. These requests are therefore not admitted under Article 13(1) and (3) RPBA.

With respect to the late filing of auxiliary requests 12 and 13, the appellant's arguments are not convincing.

A dependent claim is for logical reasons a subject of the decision of the Opposition Division to revoke the patent, even if it has not been explicitly mentioned in the decision or in the notice of opposition, because a dependent claim cannot be maintained if the impugned independent claim from which it depends is not allowable. In the present case, no request was submitted during the opposition proceedings which included an independent claim comprising the features of dependent claim 4. Therefore, the subject-matter of dependent claim 4 was a subject of the decision of the Opposition Division, which was entitled to revoke the patent in its entirety even if this dependent claim was not explicitly impugned or examined.

Auxiliary requests 12 and 13 are therefore amendments to the appellant's case, and their admissibility is also subject to the discretion of the Board under Article 13(1) RPBA. They could have been filed earlier, either during the first instance proceedings or in the appeal proceedings. The appellant has not given any justification for the late filing of these requests during the oral proceedings in appeal. They are not admissible for the reasons already given above.

Accordingly, late-filed auxiliary requests 4, 5, and 8 to 13 are not admitted into the present appeal proceedings under Article 114(2) EPC in conjunction with Articles 12(4), 13(1) and (3) RPBA.

3. Novelty vis-à-vis document D1

3.1 Main request

D1 discloses (see Figure 6A and corresponding text) an intraocular lens as defined in claim 1 as granted, comprising an optic 40 and two or more curved haptics 41 which can be compressed, in the plane of the lens (column 5, lines 23 to 26; column 6, lines 25 to 26), wherein each haptic is shaped such that, in use, the proximal part of the haptic can be fully compressed prior to compression of the distal part (as illustrated in D1.2); and wherein the haptics are compressed to provide an essentially elliptical form of the lens (as illustrated in D1.3). The illustrations D1.1 to D1.3 provided by the respondent as an interpretation of the compression behaviour of the haptics shown in Fig. 6A of D1 are accepted by the Board. The term "essentially elliptical" in claim 1 is to be given the same broad meaning in D1 as in the patent in suit (see paragraph [0013] and reference numeral 8b in Figure 4).

The term "fully compressed" is to be understood as having the special meaning explained in paragraph [0014] of the patent in suit. In the Board's view, the two-stage-compression behaviour as defined in claim 1 as granted, even though not explicitly described in D1, inevitably occurs when the lens shown in Figure 6A is subjected to radially uniform compression, as caused by contraction of the capsular sac. This has been convincingly illustrated by the respondent in illustrations D1.1 to D1.3. The compression behaviour may not be exactly as depicted, but it is clear that initial compression of the haptics 41 will necessarily first lead to collapse of the aperture 42 and thus to abutment of opposed points of its walls (D1.2). Subsequently, further compression will finally bring the distal ends of the haptics into contact with the periphery of the optic 40 (D1.3), exactly as described in paragraph [0014] of the contested patent. As soon as two opposed points of the aperture come into contact with each other, the first stage of compression is achieved, resulting in "full compression" of the proximal part as defined in paragraph [0014]. As a matter of fact, the contact between two opposed points of the aperture depicted in Figure 6A of D1 during compression of the haptics is inevitable. It follows that the proximal part of each haptic can be "fully compressed" prior to compression of the distal part, within the meaning of claim 1 as granted. This compression behaviour is a functional attribute of haptics having an aperture as shown in Figure 6A and is thus implicitly disclosed in D1.

The appellant's argument that D1 does not describe any compression behaviour and does not allow its analysis since the materials of the haptics are not disclosed is not accepted in view of the information given in this document about the materials (see for instance the last two paragraphs of column 2 and last paragraph of column 3). These materials are well known to the person skilled in the art.

The "in use" requirement does not distinguish the claimed subject-matter over D1 since the kind of "use" is not at all specified in the claim. It is to be noted that a claim to a device also covers the uses of the device, so that a difference in use, if any, is unable to confer novelty on the device. The appellant's argument that D1 is primarily concerned with the insertion of the lens into the eye and that the phrase "substantially without buckling" in line 26 of column 6 of D1 must necessarily also relate to properties achieved during insertion, rather than to the conditions after implantation when capsular sac shrinkage occurs, is not convincing since the "use" of the lens also includes its insertion into the eye. Moreover, the second paragraph of column 5 of D1 explicitly deals with the centration of the lens, i.e. with conditions after implantation of the lens into the eye.

The fourth paragraph of column 6 of D1 states that the "haptics can be compressed in the median plane of the lens" and explicitly refers to Figures 5 to 7B, including Figures 6A and 6B. There is no reason to restrict the above-cited statement to Figures 7A and 7B only since Figure 7B shows haptics lying in the median plane of the lens whereas Figure 6B shows haptics angled with respect to this plane, as argued by the appellant. Moreover, even in case of slight angulation as shown in Figure 6B, the haptics are not prevented from being compressed, at least to some extent, in the plane of the lens. The wording of the claim does not rule out that some compression may also occur outside this plane. Furthermore, compressibility of the haptics in the median plane of the lens is mentioned more generally in lines 23 to 26 of column 5 of D1.

3.2 Auxiliary requests

Claim 1 of auxiliary request 1 additionally includes the phrase "to provide a lens that is essentially resistant to haptic failure" which was comprised in claim 1 as originally filed. This feature is also present in claim 1 of auxiliary requests 3 and 7. Claim 1 of auxiliary requests 2 and 3 comprises the features of granted claims 1 and 2, i.e. the additional requirement that each haptic includes an aperture having opposed points brought into contact, in use. Claim 1 of auxiliary requests 6 and 7 additionally requires that the opposed points effectively define a bend in the aperture and the boundary between proximal and distal parts of the haptic (cf. page 3, lines 14 to 16 of the application as originally filed), while the expression "in use" comprised in the higher ranking requests is omitted.

3.2.1 Resistance to haptic failure

The additional feature "to provide a lens that is essentially resistant to haptic failure" included in claim 1 of auxiliary requests 1, 3 and 7 does not represent a novelty-conferring distinction over D1. In fact, this feature is a general requirement common to all intraocular lenses, including the one disclosed in D1, without the need of an explicit disclosure. Moreover, the definition of "haptic failure" given in the patent in suit ("dislocation caused by buckling or twisting of the haptic", column 1, lines 18 to 20) is very general and corresponds to what is mentioned in line 26 of column 6 in D1: "the haptics can be compressed in the median plane, substantially without buckling". The further specification in D1 that the final diameter should be suitable for insertion of the lens into the eye, whereas "haptic failure" in the patent in suit relates to conditions after implantation upon capsular sac contraction, is of no further relevance since the wording of the claim merely states "essentially resistant to haptic failure", without defining any final diameter.

In the Board's view, the issues of the compression behaviour and the resistance to haptic failure can be decided on the basis of D1 alone, i.e. without having to take into consideration the test results provided by both parties ("E13" filed by the respondent and "RDTR908" and "RDTR908/2" submitted by the appellant). The broad definitions of the compression behaviour "in use" and "essentially resistant to haptic failure" given in claim 1 and in the patent specification are not such as to permit meaningful experiments allowing a reliable comparison with the prior art. The test conditions (compression techniques in vitro, in vivo animal experiments) as well as the properties of the lenses tested can be varied with respect to numerous parameters, and thereby yield entirely different or even contradictory results. Moreover, the conditions found in the human eye can hardly be replicated at all. Accordingly, the significance of any such test results is regarded as doubtful, so that the respective results submitted by both parties are not able to change the conclusions of the Board.

3.2.2 Aperture having opposed contact points

The considerations presented under point 3.1 in relation to the main request also apply to the features added to claim 1 of auxiliary requests 2 and 3, according to which "each haptic includes an aperture having opposed points and each haptic is shaped such that, in use, the opposed points are brought into contact, during compression of the proximal part, and the proximal part of the haptic can be fully compressed prior to compression of the distal part". As explained above, the contact between "two opposed points" of the aperture depicted in Figure 6A of D1 during compression of the proximal part of the haptics is inevitable, and the claim does not define further details of the contact points besides their "opposed" location in the aperture.

3.2.3 Opposed points defining a bend and boundary

Claim 1 of auxiliary requests 6 and 7 includes the additional limitation that "the opposed points effectively define a bend in the aperture and the boundary between proximal and distal parts of the haptic", further described in paragraph [0011] of the contested patent. The aperture 42 shown in Figure 6A of D1 is clearly curved and the opposed points therefore define a "bend" in the aperture. Contrary to the opinion of the appellant, the location of the opposed points to be brought into contact is not specified in claim 1. Consequently, the resulting boundary between the proximal and distal parts of the haptics remains ill-defined and entirely open as well. Wherever the contact between the walls upon compression first occurs, a "boundary" between the proximal and distal parts is formed, with the proximal part being "fully compressed" and the distal part being further compressible. Appellant's argument that, in the configuration shown Figure 6A of D1, the compression of the haptics would allow a contact area to be formed instead of a contact point, is neither realistic nor convincing since the contact of the opposed "points" 5 and 6 shown in Figure 3 of the contested patent corresponds likewise to an area rather than a contact point, taken in a mathematical sense.

3.3 From the above it follows that the subject-matter of claim 1 of the main request and auxiliary requests 1 to 3, 6 and 7 is not new within the meaning of Article 54(1) and (2) EPC 1973.

4. Since none of the above-mentioned requests is allowable for lack of novelty vis-à-vis D1, it is not necessary for the Board to deal further with the additional objections under Article 83 EPC 1973 and Article 123(2) EPC raised by the respondent.

5. Procedural issues

5.1 Expert's opinion

Since the Board was able to decide the case without relying on the diverging test results provided by both parties, as indicated above (point 3.2.1), it did not find it necessary to appoint an independent expert. All the elements of information already on file and the general knowledge of the skilled person provided the Board with a sufficient basis to reach a decision, particularly when taking into account the equally general teachings of the patent in suit and of document D1.

5.2 Right to be heard

The Opposition Division duly and correctly exercised its discretionary power when refusing to appoint or accept an expert or to hear Mr. E. Roth at the oral proceedings, as indicated in points 7.2 and 7.3 of the decision under appeal.

The evidence and crucial arguments submitted by the opponent were duly considered and analysed by the Opposition Division, so that its conclusions cannot be regarded as a "mere formal acknowledgement of the submissions", as argued by the respondent (cf. also T 921/94, reasons 6.2.3). Moreover, the Opposition Division decided in point 4 of the decision on the issue of sufficiency in a reasoned manner as required by Rule 68(2) EPC 1973, and was clearly entitled to decide on this issue. The right to be heard under Article 113(1) EPC 1973 is fulfilled, and no substantial procedural violation can be ascertained.

5.3 Referral to the Enlarged Board

The questions regarding the examination of sufficiency of disclosure by the Opposition Division, proposed for referral to the Enlarged Board of Appeal by the respondent, are irrelevant to the present decision since the patent cannot be maintained due to lack of novelty. As a matter of fact, the admissibility of a referral under Article 112(1)(a) EPC presupposes that an answer to the question is necessary for the referring Board to be able to decide on the appeal (cf. G 3/98, point 1 of the reasons). A purely theoretical interest in clarifying points of law is no justification for a referral. Moreover the present Board has ruled in favour of the respondent, i.e. the party requesting the referral. Under these circumstances requests for referral are on principle refused (see Case Law of the Boards of Appeal of the EPO, 5th Edition (2006), VII.D.13.2, 2nd and 4th paragraphs). Therefore, the request for referral to the Enlarged Board of Appeal is rejected under Article 112(1)(a) EPC.

5.4 Request for recording a statement in the minutes

According to Rule 124(1) EPC the minutes of oral proceedings shall contain the essentials of the oral proceedings and the relevant statements made by the parties. According to the jurisprudence of the boards of appeal (see T 71/06, point 6 of the reasons), it is not the function of the minutes to record statements which a party considers to be possibly relevant such as the statement made by one of the representatives of the appellant, relating to the experimental deducibility of the compression behaviour of the haptics from the disclosure of D1. This statement does not relate to the surrender or abandonment of subject-matter and does not otherwise have an impact on the definition of the subject-matter to be dealt with by Board. It does not form part of the essentials of the oral proceedings and is not relevant for the present decision, either. Consequently, it is not a proper subject for the minutes according to Rule 124(1) EPC, and the respondent's request to include this statement in the minutes is therefore refused.