T 1031/17 10-06-2021

Main request

1. Article 76(1) EPC

The subject-matter of claim 1 extends beyond the content of the earlier application as filed, contrary to the requirement of Article 76(1) EPC.

1.1 In the Enlarged Board of Appeal decisions G 3/89 and G 11/91, it was ruled that any amendment to a European patent application or a European patent relating to the disclosure can, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed. Subsequently in G 2/10, this was referred to as the 'gold' standard for assessing any amendment for its compliance with Article 123(2) EPC. The Board sees this as applying equally to the corresponding requirement of prohibition of added subject-matter under Article 76(1) EPC.

1.2 The respondent's reference to the three-point essentiality test and the intermediate generalisation test to assist in identifying whether amendments made meet the requirement of Article 76(1) EPC is not seen to replace the 'gold' standard.

It may, as opined by the respondent, assist in the evaluation of whether amended subject-matter is implicitly, as opposed to explicitly, disclosed in the documents as filed but, even if the amended subject-matter were found to meet the essentiality and intermediate generalisation tests, the Board holds that, in the present case, evaluation according to the 'gold' standard is still necessary and is to be seen as the ultimate yard-stick in the evaluation of the amended subject-matter. The respondent did not bring forward any arguments as to why the 'gold' standard did not apply in the present case.

1.3 The deletion of the door glass being transparent from claim 1 of the earlier application as filed extends the subject-matter of claim 1 beyond the content of the earlier application as filed.

1.3.1 The respondent's argument that the entirety of the earlier application as filed should be considered as the teaching for the skilled person, rather than just individual passages therefrom is not questioned. Nonetheless, when considering the application as a whole, the door glass is addressed in a plurality of places yet provides the skilled person with the overall teaching of a transparent door glass. Not least, the recitation of the object of the invention starting at page 2, line 23 of the earlier application as filed includes a transparent door glass, whilst 'another aspect of the invention' starting at page 3, line 17 and a 'further aspect' from line 25 both explicitly comprise a transparent door glass.

1.3.2 The respondent's reference to page 2, lines 8 to 10 relates to a prior art washing machine and drier door. Even if this discloses a 'door glass' generally, it cannot provide a direct and unambiguous indication to the skilled reader that such a general door glass is the one intended for the disclosed invention, particularly when, as indicated in point 1.3.1 above, the general disclosure of the invention explicitly includes a transparent door glass.

1.3.3 A reference to page 7, lines 14 to 15 of the earlier application is also unpersuasive in providing basis for the door glass not being transparent. The sentence immediately before in lines 12 to 13 introduces 'a transparent door glass 63' such that the recitation of 'the door glass 63' in line 14 unambiguously refers to the 'transparent door glass' of the previous line bearing the same reference sign.

1.3.4 The respondent's further reference to 'the door glass 63' in the paragraphs from lines 16 to 20 of page 9 again uses the same reference sign as used for the transparent door glass in line 13 of page 7, such that the skilled reader would also see this reference, in the context of the entire disclosure, as unambiguously being to the same transparent door glass disclosed before, the dropping of the adjective 'transparent' only avoiding an unnecessary repetition of words.

1.3.5 For all of the reasons in points 1.3.1 to 1.3.4, the Board can see no reason why, contrary to the opinion of the respondent, a non-transparent door glass can be seen as being implicitly disclosed to the skilled person in the earlier application as filed. Rather, the direct and unambiguous disclosure is for quite the opposite: a transparent door glass.

1.3.6 Even considering the respondent's argument that the deletion of the term 'transparent' met the three-point essentiality test, this does not override the finding according to the 'gold' standard above that the amended subject-matter is not directly and unambiguously disclosed to the skilled person.

1.4 The deletion of the 'handle formed in the form of a recess' from claim 1 of the earlier application as filed also extends the subject-matter of claim 1 beyond the content of the earlier application as filed.

1.4.1 In this regard it is noted that a 'handle' has a specific nature to enable it to be gripped and manipulated in some way (e.g. by turning and/or pulling). Replacement of this feature in the present claim 1 with 'the recess portion having a depth and a width enough to put a hand in so as to open and close the door' lacks such limitation. The replacement feature in claim 1 moreover encompasses a hand opening/closing the door in any manner e.g. in the form of a magic eye or a push button located in the recess to enable opening/closing of the door, which was not disclosed in the earlier application as filed.

1.4.2 The respondent's argument that the expression 'so as to open and close the door' in claim 1 required movement of the door about its hinges rather than simply unlocking or locking the door is not accepted. Firstly, claim 1 fails to define the extent of opening of the door such that merely 'cracking open the door' would fulfill the claimed expression. The claim also fails to limit the opening of the door to that achieved by physical 'pulling open' by the user; consequently the door being arranged so as to spring open to a degree, also pointed out by the appellant to be a not uncommon arrangement for washing machine and drier doors, when unlocked (e.g. by activation of a magic eye), would also be a technically reasonable arrangement falling under the scope of the amended claim, yet clearly not being disclosed in the earlier application as filed. The respondent's further reference to page 7, lines 9 to 11 for interpretation of the 'opening/closing of the door' does not change the Board's finding in this regard. Quite on the contrary, the 'hook 65 for opening/closing of the door' in line 9 clearly relates to the hook in a locking capacity (i.e. the skilled person would understand from this passage that the door is open when the hook is not locking it) such that the respondent's contention regarding the expression 'opening/closing' requiring movement of the door about its hinges is not supported by this portion of the description, even if the subsequent lines 10 to 11 reciting a 'handle for opening/closing the door' were to suggest a hand gripping the handle for movement of the door about its hinges.

1.4.3 It thus follows that a 'magic eye' for opening and closing the door corresponds to 'a recess portion having a depth and a width enough to put a hand in so as to open and close the door' as defined in claim 1 but not to a 'handle formed in a form of a recess' as disclosed in the earlier application as filed.

1.4.4 The respondent argued that the earlier application clearly disclosed the 'handle formed in a form of a recess' (see page 3, lines 1 to 2) such that the claimed recess portion functioned as a handle and that these expressions were thus interchangeable.

However, the expression 'recess portion' is disclosed nowhere in the earlier application as filed. Even if a recess portion could function as a handle in certain structural arrangements of the recess portion, a recess portion is not to be found in the earlier application.

In addition, the portion of the earlier application on page 3, lines 1 to 2 referred to by the respondent defines the handle in terms of a recess's form and thus provides no direct and unambiguous disclosure that the 'handle' can be substituted by a more general 'a recess portion' (i.e. without the implicit limitations of a handle referred to in item 1.4.1) of particular dimensions. This passage therefore fails to address the objection that the replacement of the handle of claim 1 with the more general 'recess portion having a depth and a width enough to put a hand in so as to open and close the door' lacks basis.

1.5 In summary, therefore, at least the deletion of the 'transparent' nature of the door glass and of the 'handle formed in a form of a recess' from claim 1 of the earlier application extends the subject-matter of claim 1 beyond the content of the earlier application as filed.

1.6 Consequently the subject-matter of claim 1 fails to meet the requirement of Article 76(1) EPC. The main request is therefore not allowable.

Auxiliary request 6

2. Admittance, Article 13(1) RPBA 2020

2.1 Having been filed by the respondent as an amendment to its complete appeal case after its reply to the grounds of appeal, the admittance of this request is at the discretion of the Board under Article 13(1) RPBA 2020. One requirement placed on such requests filed at a late stage in the appeal procedure is that the new claims should be prima facie allowable in the sense that they overcome all outstanding objections and that they do not give rise to new objections.

2.2 As to the respondent's contention that this auxiliary request was simply a combination of auxiliary requests on file before the opposition division and should thus not be considered 'new', this is not accepted. Irrespective of an auxiliary request's existence before the opposition division, it must still be filed afresh in the statement of grounds of appeal and the reply in order to be included in a party's complete appeal case (see Article 12(3) RPBA 2020).

2.3 Claim 1 of auxiliary request 6 has been amended to define a handle in the form of a recess, rather than a recess portion, provided in a surface of the outer frame. The last feature in claim 1, however, recites 'the recess portion' with a definite article 'the'. This recitation of 'the recess portion' lacks an antecedent such that it is not clear whether this recess portion is in fact the same feature, as opined by the respondent, or a separate feature to the earlier recitation of 'a recess'.

2.4 The respondent's argument that the 'recess portion' was clearly the same physical feature as the 'recess' recited earlier in claim 1 is not accepted. The use of different terminology points to the 'recess' and the 'recess portion' being distinct, separately identifiable features. Nothing in claim 1 unambiguously suggests the two expressions to denote the same physical feature and, even consulting the description for clarification, the expression 'recess portion' is nowhere to be found such that a matching of 'recess' with 'recess portion' is not disclosed.

2.5 It thus follows that claim 1 of auxiliary request 6 prima facie at least lacks clarity contrary to Article 84 EPC.

2.6 With the amendments to claim 1 introducing a new objection, auxiliary request 6 is prima facie not allowable. Consequently the Board exercised its discretion under Article 13(1) RPBA 2020 not to admit auxiliary request 6 into the proceedings.

Auxiliary request 7

3. Admittance, Article 13(1) RPBA 2020

3.1 This request was filed at oral proceedings after the Board's conclusion regarding auxiliary request 6 had been announced. It was thus filed at a very late stage of the appeal proceedings and its admittance was at the discretion of the Board under Article 13(1) RPBA 2020. Of particular importance in the exercise of this discretion was the prima facie allowability of the request.

3.2 Despite the request being limited to a single claim, the amendments to claim 1 included both additions and deletions such that claim 1 was not convergent with claim 1 of the foregoing auxiliary request 6 and resulted in a not insignificant degree of complexity in the claim. The additional features introduced were also taken from the description such that the amendments were completely unexpected. As also argued by the appellant, the resultant amended claim thus had such a degree of complexity to make it too complex to adequately consider without a significant break in, or even adjournment of, the oral proceedings.

3.3 The respondent's argument that it had been unable to present this request any sooner since the objections had only been introduced at oral proceedings is not persuasive for the Board to admit the request. The objections alleged to have only been tabled at oral proceedings were raised in relation to claim 1 of auxiliary request 6, which itself was a change of the respondent's complete appeal case, filed only after the Board had provided its preliminary opinion. The objections thus could not have been tabled any sooner and were a direct consequence of the amended requests filed by the respondent in reaction to the preliminary opinion. The respondent's justification for filing auxiliary request 7 at such a late stage is thus not convincing. In this regard it should also be noted that the appeal procedure is not to be treated as a continuation of the examination of a patent application, where repeated amendment can be acceptable. Rather, it should primarily serve as a judicial review of the decision under appeal (see also Article 12(2) RPBA 2020).

3.4 Considering the substance of the request, claim 1 now recited 'a handle including a cavity recessed into a thickness of an inner circumferential surface of the outer frame'. It is unclear how a surface, which is a two dimensional structure, can have a cavity recessed into its thickness. The respondent's argument that the cavity would be understood as having an opening in the surface is not accepted. No opening in the surface is defined, rather the cavity should be recessed into the thickness, which linguistically does not make technical sense. Prima facie, therefore, claim 1 has given rise to a new objection of lack of clarity.

3.5 For all the above reasons, the Board thus exercised its discretion under Article 13(1) RPBA 2020 not to admit auxiliary request 7 into the proceedings.