4.3.8 Reasons for a decision allegedly surprising

In R 6/18 the petitioner (patent proprietor) complained that the board's finding of added subject-matter with respect to the second auxiliary request in the decision under review was made in violation of its right to be heard. It claimed the decision was based on non-discussed passages of the description that had never been relied on before by the opponents or the board. The Enlarged Board found that it could not come as a surprise that the board, when deciding whether there was an unambiguous disclosure of the claimed invention, did not only consider the passage sensu stricto referred to by the petitioner but also the sentences which directly followed that passage. Parties had to be aware that in general the question of added matter could not be decided by simply relying on isolated passages of the description but required a comprehensive analysis of the application documents.