T 0511/08 06-06-2012

1. The appeal is admissible.

2. Amendments

Claim 1 of the main request is based on original claims 1 and 4 in combination with lines 13 to 14 of page 2 of the description as originally filed.

The claimed combination requires that there must be a longitudinal distal reinforcing rib for longitudinally supporting the distal region of said main cuff and that the said distal rib is seated on the anterior surface of the distal region of said main-cuff.

In the description there are numerous references to distal ribs. In the statements of invention on page 2 for example, the term used is consistently "a reinforcing rib" (page 2, lines 6, 13, 17, 18, 20, 23 and 25). In line 27, simply "the rib" is used, clearly referring to the ribs previously mentioned. In the specific embodiments, the first references to ribs appear on page 10. Thus at line 5, "an elongate integral reinforcing distal rib 105" is mentioned, whilst at the paragraph at lines 18 to 23, the reference is to "the distal rib 105". On page 13, line 8, reference is again made to a "reinforcing distal rib 105", still describing the same embodiment. Even though the terminology used to refer to the ribs in the embodiments is somewhat variable, it is clear to the skilled person reading the original disclosure that all ribs are of the same general type, with words such as "reinforcing", "supporting", "stiffening" etc. being effectively used as synonyms to describe the rib's function. It is also clear that the rib, disclosed to be "reinforcing" and "incorporated into the distal end of the inflatable cuff" (page 2, lines 13 to 14) "for longitudinally supporting the distal region of said main-cuff" (cf. end of original claim 1) when located between the posterior and the anterior surface (Fig. 5), is implicitly also disclosed as fulfilling these criteria when located on the anterior surface as defined in original claim 4.

Accordingly, the Board is satisfied that claim 1 of the main request meets the requirements of Article 123(2) EPC.

3. Support and Clarity

Granted claim 4 relates back to granted claim 1 and has been incorporated into claim 1 of the main request. This combination of granted claims therefore concerns a specific device which as such was already claimed in the patent as granted. The lack of support in the sense of Article 84 EPC of claim 4 was hence already present in the patent as granted and has not been introduced after grant of the patent. Consequently, following for instance decision T 367/96 (cf. point 6.2 of the Reasons), it is concluded that in the present case Article 101(3)(a) EPC does not allow objections to be based on Article 84 EPC since such objections do not arise from the amendments made.

As mentioned above, the term "incorporated into the distal end of the inflatable cuff" was introduced from the description into claim 1 of the main request and serves to more precisely define the location of the distal reinforcing rib (105) within the distal region (60) of the cuff. In the Board's view the term "distal end" is clear as such and does not lead to any ambiguity or lack of clarity within the meaning of Article 84 EPC.

4. Sufficiency of disclosure

In the description of the specific embodiments of the original disclosure, the reinforcing rib is either located at the posterior surface of the distal region of the main cuff (see reference numeral 105a in Figure 10), or between its anterior and posterior surfaces (see reference numeral 105 in Figure 5). When located at the posterior surface, it is disclosed in the last paragraph of page 13, that the rib can be formed by thickening the posterior wall of the distal region of the main cuff, without piercing the posterior surface thereof. It is disclosed in the third paragraph of page 10 that the rib pierces the proximal, i.e. the posterior surface when located between the posterior and anterior surfaces.

Accordingly, when seated on the anterior surface as claimed in the main request, it is clear to the skilled person that the rib can be formed by thickening the anterior wall of the distal region of the main cuff, with the posterior surface being pierced, even though such an embodiment is not explicitly described. Consequently, the disclosure is sufficient in order to allow the skilled person to obtain the claimed device.

When seated on the anterior surface, the rib's purpose of preventing the cuff from getting folded onto itself during insertion of the device into the patient's throat (see paragraph [0010] of the patent in suit) is also fulfilled. Since the claim is directed to a device rather than to a method of its use, it is not necessary that the disclosure specifies further details of the insertion techniques in order to comply with the requirement of sufficiency.

The Board is therefore satisfied that the disclosure enables the skilled person to reduce the invention to practice and to obtain the claimed device, the requirements of Article 83 EPC thus being fulfilled.

5. Remittal for further examination

As stated above, the main request is free from objections under Articles 83, 84 and 123(2) EPC. However, the remaining requirements of the EPC, in particular patentability, have not been dealt with during the first instance proceedings, and no substantiation was brought forward by the patent proprietors in this respect.

Accordingly, the Board finds it appropriate to exercise its discretion under Article 111(1) EPC to remit the case to the department of first instance for a resumption of the examination procedure with respect to the remaining requirements of the EPC, in particular those of inventive step. If the Opposition Division comes to the conclusion that the patent is to be maintained in amended form on the basis of claim 1 of the present main request, the description would still have to be adapted thereto, in particular with respect to the embodiment of Figures 10 and 11 which no longer seems to fall under the scope of this claim.