T 0515/04 05-10-2006

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of the late filed request

2.1 The single claim of the only request was filed by the Appellant at a late stage of the proceedings, namely during the oral proceedings before the Board of Appeal. The only amendment made to the claim compared with the previous version filed with letter dated 26 September 2006 and not objected to by the Respondents, was the replacement of the terms "free of ... natural wax" (for the chewing gum) and "free of mineral hydrocarbon wax and natural wax" (for the gum base) by the literal wording of granted Claim 1 for the definition of the wax content. This amendment takes account of the objections by Respondent 02 under Article 123(2) EPC to the wording previously used.

2.2 The Respondent 02 objected formally to the admission of the request as late filed but did not submit any arguments suggesting that it could not deal with the amended subject-matter at the oral proceedings.

2.3 The Board decided to admit the request into the proceedings because the amendments made (i) amount to the reinsertion of the language of granted Claim 1 concerning the definition of the term wax-free, thereby (ii) addressing observations made by the Respondents and the Board, because (iii) the Claim in all other respects corresponds to the single claim filed with the letter dated 26 September 2006 whose admissibility had not been contested by the Respondents, and because (iv) in the circumstances the amended Claim does not confront the Respondents with facts, evidence and arguments not yet in the proceedings.

3. Amendments

3.1 The Appellant has deleted from Claim 1 underlying the decision under appeal the functional feature added during the first instance opposition proceedings, this feature being the reason for the revocation of the patent by the Opposition Division.

3.2 The Appellant has further made the following amendments to the Claim:

- The elastomer plasticizer is defined as "selected from the group consisting of glycerol esters of rosin, glycerol esters of partially hydrogenated rosin, glycerol esters of polymerized rosin, glycerol esters of partially dimerized rosin, partially hydrogenated methyl esters of rosin, glycerol esters of tal oil rosin, pentaerythritol esters of rosin, methyl esters of rosin, pentaerythritol esters of partially hydrogenated rosin, synthetic terpene resin, natural terpene resin, and combinations thereof" in accordance with the definition given in granted Claim 17;

- the "at least one controlled release sweetener ingredient" is now defined as "comprising a slow release sweetener and a fast release sweetener" as in granted Claim 4, and

- the "slow release sweetener" is further defined as "selected from sucralose, thaumatin and monellin" or "provided by modification of the release characteristics of a high intensity fast release sweetener" in accordance with granted Claims 9 and 6.

3.3 In summary, the Claim under consideration corresponds to the chewing gum of independent granted Claim 1 wherein some of the components of the chewing gum or the chewing gum base have been specified using definitions given in dependent Claims 4, 6, 9 and 17.

4. Procedural matters. Extension of examination

4.1 As stated in G 9/91, OJ 1993, 408 (order and point 7), the power of the Opposition Division or a Board of Appeal to examine and decide upon the maintenance of a patent under Articles 101 and 102 EPC is, pursuant to Rule 55(c) EPC, dependent upon two distinct requirements: the indication of the extent to which a patent is opposed and the grounds of opposition. So far as the powers of the Boards of Appeal are concerned, it is also made clear in the same decision (point 18) that the purpose of the appeal procedure inter parties is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits. It is therefore inconsistent with this purpose for a Board of Appeal to consider grounds for opposition on which the decision of the Opposition Division was not based, unless the Patent Proprietor agrees.

4.2 When it comes to amendments of claims or other parts of the patent in the course of opposition or appeal proceedings, it is also pointed out in G 9/91 (point 19) that in accordance with Article 102(3) EPC such amendments are to be fully examined as to their compatibility with the requirements of the EPC. However, this principle does not affect the wider principles stated in paragraph 4.1 above. Thus the fact that amendments are made to a claim in the course of the opposition or appeal proceedings does not allow an Opponent to raise objections which were not originally raised and substantiated as grounds of opposition (cf. T 693/98 of 25 April 2002, not published in OJ EPO, point 2 of the reasons).

4.3 So, for example, a clarity objection pursuant to Article 84 EPC which does not arise from the amendments themselves is not allowable (see decision T 301/87, OJ 1990, 335, point 3.8 of the Reasons). In the same way, and directly relevant in the present case, an objection under Article 123(2) EPC is not allowable if it is raised for the first time at the appeal stage and does not arise from an amended part of the claim. It is thus not allowable if it arises from a granted claim or a feature already present in the granted claims which was neither challenged in the Notice of Opposition under Article 100(c) EPC nor examined by the Opposition Division on its own motion (cf. T 693/98).

5. Article 84 EPC

5.1 Concerning Article 84 EPC, in the present case the Respondents argued that the terms "fast release sweetener", "slow release sweetener", "high intensity fast release sweetener" lacked clarity as there was no clear definition of these terms in the specification and there was no generally acknowledged method to establish if a sweetener was a fast or a slow release sweetener. Additionally, the expression "modification of the release characteristics" was also unclear as the nature of the modification could not be determined.

5.2 As explained above (see 3.3) the present claim is a direct combination of claims 1, 4, 6, 9 and 17 of the patent as granted, i.e. its subject-matter corresponds to that of a claim of the patent as granted.

The terms and expressions objected to by the Respondents were all already in the granted claims (see granted claims 4 and 6) and consequently these objections have no connection with the amendments made. They cannot be objected to under Article 84 EPC at this stage of the proceedings.

5.3 This finding is not in contradiction with the decisions T 525/90 and T 684/95 cited by Respondent 02 (see point IX above). In T 525/90 it is stated that objections to clarity of the claims under Article 84 EPC must be taken into account in opposition proceedings whenever the granted claims have been amended, but it is not concerned with clarity objections already present in the claims, as in the present case. In T 684/95, T 301/87 is followed in that it is said that only objections resulting from the amendments are to be considered (see point 2.1 of the Reasons of T 684/95).

6. Article 123 EPC

6.1 The ground of opposition under Article 100(c) EPC was not originally invoked by any of the three Opponents in their respective grounds of opposition and during the oral proceedings held before the Board of Appeal the Appellant refused to give its approval to the introduction of the ground of opposition under Article 100(c) EPC into the proceedings. Consequently, this ground for opposition cannot be considered by the Board of Appeal (cf. point 4.3 above).

6.2 Nevertheless, it remains to be assessed whether any objection arises out of the amendments specifying some of the ingredients of the chewing gum on the basis of information already present in the granted claims. Thus, while in granted Claim 1 it was specified that "at least one controlled release sweetener ingredient" was present, this ingredient is now defined as comprising a fast release sweetener and a slow release sweetener in accordance with dependent granted Claim 4, and the slow release sweetener is further specified as selected from sucralose, thaumatin and monellin (granted Claim 9, dependent on Claim 4) or as provided by modification of the release characteristics of a high intensity fast release sweetener (granted Claim 6, also dependent on Claim 4). Additionally, the elastomer plasticizer has been defined as in granted Claim 17, which was also dependent on claim 4.

These amendments are not objectionable under Article 123(2) EPC as they only limit the scope of Claim 1 by restricting the choice of the ingredients concerned in accordance with the disclosure in granted dependent claims but without singling out a particular combination of ingredients of the chewing gum.

The further objections raised by the Respondents concerning Article 123(2) EPC do not arise from these limitations made to the claim during the opposition or appeal proceedings but arise from amendments made before grant which cannot be examined at this stage (see point 4.3).

6.3 Accordingly the objections of the Respondents based upon Article 123(2) EPC are rejected as inadmissible.

6.4 The claim as at present amended contains all the features of granted Claim 1 and its scope is clearly limited over the granted Claim 1. It therefore meets the requirements of Article 123(3) EPC.

6.5 Therefore the amendments fulfil the requirements of the EPC in the sense of Article 102(3) EPC to the extent that they may be examined for such compliance.

7. Remittal (Article 111 EPC)

7.1 The Board considers that the subject-matter of the single claim of the request overcomes the objection of lack of clarity forming the basis of the decision under appeal.

7.2 The patent in suit was revoked solely for lack of clarity of the then pending Claim 1. The Opposition Division has not yet taken a decision on the other patentability issues raised by the Opponents, namely sufficiency of disclosure, novelty and inventive step.

7.3 The Appellant has requested the remittal of the case to the Opposition Division for further consideration of these issues and during the oral proceedings the Respondents 01 and 02 did not object to such remittal.

7.4 Under these circumstances, the Board considers it appropriate to exercise its discretion under Article 111(1) EPC to refer the case back to the Opposition Division for further prosecution.