T 0121/20 11-03-2022

Summary of Facts and Submissions

I. The appeal of the opponent lies against the decision of the opposition division to reject the opposition filed against European patent No. 2809186 pursuant to Article 101(2) EPC.

II. In its decision, the opposition division held that none of the grounds of opposition raised by the opponent under Article 100(a) EPC with Article 56 EPC, under Article 100(b) EPC and under Article 100(c) EPC was prejudicial to the maintenance of the patent as granted.

III. The following documents cited in opposition proceedings are relevant for this decision:

D3: US 7 878 962 B2

D4: US 2009/0126745 A1

D5: US 2006/0191546 A1

D6: US 2010/ 0083959 A1

D8: EP 2 260 733 A1

E1: CN 102266125

E1': Machine Translation of E1

E2: US 2012/145169 A1

E3: CN 20 21 22 097 U

E4: EP 0 845 220 A1

E6: JP 2006-320287

E7: US 4,961,438 A

E8: US 7,726,320 B2

E10: WO 2010/045670 A1

E11: WO 2010/045671 A1

E16: http://www.mhlw.go.ip/stf/houdou/2r9852000000lv0j.html (printout retrieved on 04.01.2018)

E17 : https://www.taeco.jp/contents/law.html (printout retrieved on 04.01.2018)

E18: US 2011/0303231

E19: information letter from the Federal office of

E20: JP H06-114105

IV. With its statement of grounds of appeal the appellant (opponent) filed the following document:

E1": Human English translation of E1

V. Oral proceedings by videoconference were held before the Board on 11 March 2022.

VI. The appellant (opponent) requested that the decision under appeal be set aside and the patent be revoked.

The respondent (patent proprietor) requested that the appeal be dismissed or, in the alternative, that the patent be maintained in amended form on the basis of the first auxiliary request filed with letter of 11 February 2022, or one of auxiliary requests 2 to 8 filed as auxiliary requests 1 to 7, respectively, with the reply to the statement of grounds of appeal, whereby remittal to the opposition division was requested should the main request not be granted by the board.

VII. Claim 1 of the main request (patent as granted) reads as follows:

"An electronic smoking article (60) comprising:

an outer tube (6) extending in a longitudinal direction;

an inner tube (62) within the outer tube (6);

a liquid supply (22) comprising a nicotine-free liquid material, the liquid supply (22) contained in an outer annulus (620) between the outer tube (6) and the inner tube (62);

a heater (14) located in the inner tube (62); and

a wick (28) in communication with the liquid supply (22) and surrounded by the heater (14) such that the wick (28) delivers liquid material to the heater (14) and the heater (14) heats the liquid material to a temperature sufficient to vaporize the liquid material and form a nicotine-free aerosol in the inner tube (62);

characterized in that the electronic smoking article (60) further comprises:

a fibrous element (300) located downstream of the heater (14) and including nicotine dispersed in the fibrous element (300) such that the aerosol can pick up the nicotine as the aerosol passes through the fibrous element (300)."

VIII. Claim 1 of auxiliary request 1 is identical to claim 1 of auxiliary request 4 (see below) but for the removal of the expression "substantially uniformly throughout" and the insertion of the term "in" instead.

IX. Claim 1 of auxiliary request 2 (filed as auxiliary request 1 with the statement of grounds of appeal) differs from claim 1 as granted in that it specifies in its characterising portion that the fibrous element includes nicotine dispersed "throughout all or a portion of" the fibrous element.

X. Claim 1 of auxiliary request 3 (filed as auxiliary request 2 with the statement of grounds of appeal) differs from claim 1 as granted in that it specifies in its characterising portion that the fibrous element includes nicotine dispersed "substantially uniformly throughout" the fibrous element.

XI. Claim 1 of auxiliary request 4 (filed as auxiliary request 3 with the statement of grounds of appeal) differs from claim 1 of the main request by the characterising portion which reads as follows:

"characterized in that the electronic smoking article (60) further comprises:

a fibrous element (300) located downstream of the heater (14) and including an additive, wherein the additive is nicotine and is dispersed substantially uniformly throughout the fibrous element (300) such that the aerosol can pick up the nicotine as the aerosol passes through the fibrous element (300)."

XII. The appellant's (opponent's) arguments relevant to the present decision may be summarized as follows:

Main request - added subject-matter

The closest to granted claim 1 which could be directly and unambiguously derived from the text of the application as filed corresponded to the combination of original claims 1, 6 (dependent on claim 1), 7 (dependent on claim 6) and 25 (dependent on claim 7). Nevertheless, this combination of original claims at best disclosed that the fibrous element comprised nicotine as an additive. The word "additive" designated a component which was added to the fibrous element. However, the wording of the granted claim allowed that the nicotine may be naturally present in the fibrous element, and this was not disclosed in the application as filed.

The opposition division's view that the term "dispersed" itself included the aspect of the nicotine being an additive (decision, chapter 13.5.1) was erroneous. The word "dispersed" related to the position of the nicotine and not to its origin. It did not entail the concept of "something being added" but meant that the nicotine was distributed across at least a portion of the fibrous element.

The new line of argumentation of the respondent (patent proprietor) submitted during oral proceedings before the board should not be admitted into the proceedings. The argument that in the original application "additive" meant "added to the aerosol" and not "added to the fibrous element" constituted an amendment to the respondent's case at a very late stage of the proceedings.

Furthermore the argument was not convincing as e.g. the wording of original claim 6 explicitly recited that "the fibrous element further comprises at least one additive".

Remittal in case the main request is refused

There was no reason for a remittal as all issues were discussed. In particular the inventive step discussion remained more or less the same for the auxiliary requests on file.

Admission of auxiliary request 1

Auxiliary request 1 was filed after the summons to oral proceedings. According to Article 13(2) RPBA 2020, auxiliary request 1 should not be taken into account as there were no exceptional circumstances, which had been justified with cogent reasons by the respondent.

Auxiliary request 1 addressed an objection raised in opposition proceedings and discussed in the statement of grounds of appeal. Thus, auxiliary request 1 could have been filed with the respondent's reply to the statement of grounds of appeal.

Admission of auxiliary request 4 (filed as auxiliary request 3)

Auxiliary request 4, submitted only at the appeal stage, was not an appropriate reaction to a late development in the opposition proceedings. The request represented an amendment to the party's case and should thus not be admitted into the proceedings.

Auxiliary request 4 - added subject-matter

Nicotine-free aerosol in the inner tube:

The application as filed, in particular the passages cited by the opposition division (claim 25, para. [0146]), did not comprise any support for this feature. In particular, a nicotine-free liquid material did not imply a nicotine-free aerosol.

Nicotine dispersed in the fibrous element:

Original claim 24 disclosed that "at least one additive is dispersed substantially uniformly throughout the fibrous element". Original claim 24 thus related to the class of additives in its entirety, not to any additive considered in isolation from the others. This meant that embodiments wherein some of the additives were dispersed uniformly throughout the fibrous element, while the others were not, were excluded. However the wording of claim 1 covered such kind of "hybrid" fibrous element wherein nicotine was dispersed uniformly throughout the fibrous element while other additives, if present, were not.

Furthermore original claim 24 was disclosed specifically in combination with claim 6, not in combination with claim 7 or 25 (i.e. not with liquid material being nicotine-free and a nicotine additive).

Para. [0121] mentioned by the opposition division did not serve as a basis, as it related to a specific embodiment wherein the fibrous element was formed of a plug of fibrous material. However, claim 1 encompassed embodiments not comprising any plug of fibrous material at all.

Furthermore according to para. [0121], the additive was dispersed in the fibrous material, not in any other part of the fibrous element, e.g. in spaces 344 formed within the fibrous element as shown in figure 20. However, this possibility was encompassed by claim 1.

Pick-up of nicotine by the aerosol:

The feature according to which the aerosol picked up the nicotine was disclosed in the application as originally filed, para. [0144], only in combination with specific forms of nicotine (liquid, salt or powder form) and only in combination with specific aerosol formers. Claim 1 thus included an inadmissible intermediate generalisation in this respect.

Sufficiency of disclosure

The application as filed did not comprise any teaching on how the nicotine had to be dispersed in the fibrous element such that "the aerosol can pick up the nicotine". Para. [0115] referred to by the opposition division only recited that "the additive 348 [can] be nicotine in a liquid, salt or powder form". An indication how nicotine specifically in a salt form or powder form was "dispersed in the fibrous element such the aerosol can pick up the nicotine" was missing.

Auxiliary request 4 - clarity

The new interpretation of the claim that the term "additive" meant "added to the aerosol" given by the respondent during the appeal hearing gave rise to a clarity objection. The boundaries of the claimed subject-matter were undefined as the meaning of the term "additive" was unclear. It could be read such as to mean "added to the fibrous element" but allegedly had to be understood as "added to the aerosol". This objection was a direct reaction to the respondent's new argument on added matter.

Auxiliary request 4 - Inventive step

Claim 1 was not inventive over

- E1 with general knowledge as e.g. disclosed in D3, D4, D5, D6 or D8 or in combination with one of the documents E8, E20, E6, E16, E17 and/or E19;

- E18 (alternatively E2, E3 being similar to E18 concerning the relevant features) in combination with one of the documents E8, E20, E4, E6, E7, E10, E11;

- E8 in combination with one of the documents E1, E2, E3, E18.

Starting from E1:

E1 contained a general teaching of a smoking device which comprised a fibrous element (drug cartridge 12) including a medicine. Claim 1 only differed in that the additive in the fibrous element was nicotine. The technical problem was to provide an alternative, nicotine-containing, electronic smoking article.

The skilled person would consider adding nicotine in the fibrous element because it was common general knowledge that electronic smoking articles, including smoking cessation devices, could be provided with or without nicotine. Examples of smoking cessation devices comprising nicotine were found in D3, D4 (paras. [0006, 0035]), D5, D6 and D8 (para. [0027] of D8 showing compositions with and without nicotine). Claim 1 did not define the level of nicotine in the fibrous element. Even a very low amount fell under the claim. Accordingly, the device of E1 was suitable for smoking cessation. El did not contain any adverse teaching preventing the article from being used, as an alternative, with nicotine (see the translation E1").

Finally, including nicotine had no technical effect.

Alternatively, the combination of E1 with E8, E20 or E6 led in an obvious way to the claimed subject-matter. All three secondary documents disclosed the same concept of nicotine in a fibrous element through which a nicotine-free aerosol passed and picked up the nicotine. In E8 (column 24, line 62, to column 25, line 8, with figure 2), the cartridge 85 comprised a nicotine-free liquid. After being heated, the aerosol was provided with nicotine by passing the fibrous element 89 which comprised nicotine as an additive (column 11, lines 49 to 54).

The disclosure of E20 (figure 2) was summarized in D5, para. [0006]. Therein it was described that an aerosol passed through tobacco 5 to pick up nicotine.

E6 (figure 3b) disclosed a filter 6, i.e. a fibrous element, containing additives 6a such as nicotine (para. [0026]).

Claim 1 of auxiliary request 4 simply combined these disclosures without any synergetic effect.

A skilled person faced with the technical problem of providing a nicotine-containing aerosol had only two options where to add the nicotine in the device of E1: either in the liquid material or in the fibrous element 12. Choosing one option out of two did not involve an inventive step. The option to add the nicotine to the fibrous element was even more obvious for regulatory reasons reflected in E16, E17 or E19. From E16 and E17 the skilled person was taught that if nicotine was added to the liquid material approval by the Pharmaceutical Affairs Law was needed, from E19 (page 1, section 1, first paragraph) the skilled person was advised against adding nicotine to the liquid material ("Il déconseille en particulier de recourir à des liquides de recharge contenant de la nicotine").

Starting from E18 (E2, E3):

The smoking devices of E18, E2 and E3 had the same structure, all being similar to the structure of the claimed device. The inventive step argumentation for all three documents was the same and was provided exemplary for E18.

The distinguishing features were the fibrous element with nicotine dispersed therein while the liquid material was nicotine-free. However these features did not provide any technical effect. At the end a smoking aerosol with nicotine was provided. The alleged technical effect mentioned in the patent in suit, para. [0117] was a mere speculation not substantiated by any experimental data.

The objective technical problem was to provide an alternative for producing the nicotine-containing aerosol.

The skilled person would consider E8 (paragraph bridging columns 24, 25, figure 2) which taught providing a nicotine-free liquid material together with a fibrous element with nicotine dispersed therein.

Alternatively, E20 would be considered as explained in the inventive step attack combining E1 with E20.

In addition, it was commonplace in the field of electronic smoking articles to provide an aerosol-forming liquid material together with a fibrous element (E7: "filter plug 28" and "aerosol generating material 18", E4: "a liquid material" and "a filter 58", E10, Ell (elements 61, 62 in both documents), E6 (figure 1).

A fibrous element with nicotine dispersed therein could easily be implemented in the device disclosed in E18. The skilled person would place such a fibrous element in the space between elements 10, 11 in figure 2 and would thereby arrive at the claimed subject-matter.

Starting from E8:

The claimed device differed from the device known from E8, in particular the embodiment shown in figure 2, in that it comprised an alternative aerosol-generating configuration. The technical problem consisted in providing an alternative form of aerosol generation.

The skilled person confronted with this technical problem would consider E1/E1" (figure 1), E2 (figure 3), E3 (figure 4) or E18 (figures 1, 2 with paras. [0020] and [0021]), all documents disclosing an aerosol-generating configuration according to claim 1.

The skilled person faced no difficulty in combining the teaching of E8 with any one of the documents E1, E2, E3 or E18 as these documents simply provided equivalent, alternative aerosol generating modules to the module already disclosed in E8.

Adaptation of the description

At least paragraph [0033] needed to be adapted to be consistent with claim 1.

XIII. The respondent (patent proprietor) arguments relevant to the present decision may be summarised as follows:

Main request - Added subject-matter

Given that there was basis for the additive being nicotine, it followed that, in accordance with English linguistics, established patent drafting practice and common sense, the term "nicotine" could be used in place of "additive".

During oral proceedings, the respondent submitted that the term "additive" meant that nicotine was added to the aerosol, not to the fibrous element. Basis for this interpretation was provided throughout the original description, e.g. in para. [0016] ("the fibrous element 300, 300' can alter the character of the aerosol by providing additives and/or can provide additional flavors, aromas, and alter the mouth feel of the aerosol during smoking") or para. [0139] ("the additive may diffuse into the aerosol as it passes through the fibrous element 300, 300'") or para. [0146] ("However, adding nicotine to the aerosol after formation of the aerosol..."). The fact that the nicotine, i.e. the additive, was added to the aerosol was reflected in the characterizing portion of granted claim 1. The term "additive" was thus not required.

Remittal in case the main request is refused

Since the opposition division did not decide on any of the auxiliary requests on file, the case should be remitted for further prosecution should the auxiliary requests become relevant. It was unfair to the parties for these requests to be decided upon for the first time in appeal, without the opportunity for appeal.

Admission of auxiliary request 1

Auxiliary request 1 addressed the objections upheld by the board in the preliminary opinion. The request did not introduce any new amendment but corresponded to auxiliary request 4 on file (filed as auxiliary request 3), albeit with the amendment "substantially uniformly throughout" removed from claim 1.

The remaining amendment in auxiliary request 1 addressed an objection that was raised for the first time during oral proceedings before the opposition division. As stated in the impugned decision, the objection was found not valid. The objection became relevant for the first time in view of the preliminary opinion of the board. Auxiliary request 1 was thus filed at the first opportunity.

Admission of auxiliary request 4

The request was filed in response to objections of added matter raised by the appellant. One of these objections, namely that claim 1 did not define nicotine as an additive, was submitted for the first time at the opposition hearing. The opposition division did not find this objection valid. The appeal proceedings were thus the first opportunity to file the respective amendment.

Auxiliary request 4 - added subject-matter

Nicotine-free aerosol in the inner tube:

Paras. [0144] and [0146] provided basis for forming an aerosol without nicotine. Forming the aerosol in the inner tube was the clear and unambiguous consequence of the described embodiments and operation when using a nicotine-free liquid material.

Nicotine dispersed in the fibrous element:

Claim 1 of auxiliary request 4 included all features of original claim 24. The original claim structure did not exclude the combination of the features of claim 7 and 25 with the features of claim 24. From the application as a whole the combination was disclosed.

The features mentioned in para. [0121] and recited by the appellant (e.g. plug) were not inextricably linked to the feature "dispersed in the fibrous element" as was derivable from the general wording of claim 24.

Pick-up of nicotine by the aerosol

The appellant (opponent) did not provide a functional or structural relationship between the extracted language of para. [0144] and features not included in the claim. Instead it was implied that since certain features were disclosed in proximity to each other, they were inextricably linked, however this was not the case.

Sufficiency of disclosure

The passages cited in the impugned decision (point 14.2) provided ample teaching to allow a skilled reader to implement the claimed invention.

Auxiliary request 4 - clarity

The objection under Article 84 EPC was not admissible. It was raised for the first time during the appeal hearing and constituted an amendment to the appellant's appeal case.

Auxiliary request 4 was submitted as auxiliary request 3 with the statement of grounds of appeal. The new clarity objection should have been raised with the appellant's reply dated 7 February 2021 in which auxiliary request 3 was addressed.

Inventive step

Starting from E1:

E1/E1" was not a promising starting point because it not only failed to teach an essential element of the present invention (nicotine) but even taught that its omission was essential. The human translation E1", which should not be admitted into the proceedings as it was filed at a very late stage of the proceedings, made clear that E1 was directed to smoking cessation (para. [0001]) and related specifically to the provision of an electronic cigarette wherein the liquid was nicotine-free (para. [0008, 0009]). However, claim 1 necessarily required the inclusion of nicotine. The purpose of E1/E1" and the patent in suit were thus conflicting.

Even if the skilled person considered adding nicotine to the device of E1, they would simply add the nicotine to the "e-liquid" because this was where nicotine was traditionally added in e-cigarettes, see E2 (figure 3 "tobacco tar cotton 4", E3 (figure 4) or E18 (para.[0021] with figure 2).

Furthermore the skilled person did not have any motivation to combine the teaching of E1 with any of the documents D3 to D6, D8, E6, E8, E20, E16, E17 or E19. The point was not whether the skilled person could have arrived at the invention but whether they would have modified the device of E1 because the prior art incited them to do so in expectation of some improvements or advantages. That was not the case here. E1 instead taught that adding nicotine was disadvantageous.

Additionally the smoking devices of E8, E20 and E6 were of a different construction compared with the device of E1. A number of technical incompatibilities existed which prevented a skilled person from combining the teaching of E1 with one of these secondary documents.

The arguments of the appellant with regard to E16, E17 or E19 referred to a commercial motivation for modifying the device of E1. However commercial considerations were not relevant when assessing whether the skilled person would modify a prior art document to arrive at the claimed invention.

Starting from E18:

E18 (E2, E3 respectively) constituted a viable starting point as the disclosed device and the claimed device were of a similar structure.

Contrary to the appellant's opinion, the distinguishing features that first the aerosol was prepared and nicotine was added later had the technical effect that the impact on the throat was minimized (patent in suit, para. [0117]).

E8 was a tobacco heating device with the concept "heat not burn" and was technically incompatible with an e-cigarette as disclosed in E18, E2 or E3. There was no guidance on which features should or should not be imported into E18 from E8. The same was valid for the device disclosed in E20.

The further attacks of E18 (E2, E3) combined with E4, E6, E7, E10 or E11 were not sufficiently substantiated.

Starting from E8:

E8 disclosed a device that primarily heated tobacco (see e.g. title "Tobacco-containing smoking article" or column 4, lines 7 to 10 "Thus, it would be highly desirable to provide a smoking article that provides a smoker with an ability to enjoy using tobacco without the necessity of burning any significant amount of tobacco."). The device had a different structure as the claimed device and therefore did not constitute a promising starting point.

E1, E18, E2 and E3 referred to another type of smoking device. The number of structural differences did not allow any feature implementation into E8. Therefore E8 could no more be combined with E1, E18, E2, E3 than vice versa.

Adaptation of the description

Following T1989/18 there was no general provision in the EPC that required an adaptation of the description.