T 1427/21 14-08-2023

1. Admittance of E4 to E8 into the proceedings and of the objections based on this evidence

1.1 The opponent filed E4 to E8 for the first time with the statement setting out the grounds of appeal, in order to support objections of lack of novelty and of lack of inventive step of the claimed subject-matter, in particular having regard to E4. The opponent argues that due to the difficulty in retrieving E4 and its prima facie relevance, E4 as well as E5 to E8, which the opponent filed in further support of its objections based on E4, should be admitted into the proceedings (see statement of grounds of appeal, point 1.2.1, pages 6 and 7, and point 1.2.4, pages 14 to 18).

1.2 According to Article 12(6) RPBA 2020, second sentence, RPBA 2020 the Board shall not admit requests, facts, objections or evidence which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance.

1.3 The Board is of the opinion that E4 to E8 could and should have been submitted in opposition proceedings, to allow the patent proprietor to react to this evidence in those proceedings and the opposition division to decide on them. The alleged difficulty in retrieving that evidence and the alleged relevance are alleged facts not linked to any development of the appeal case and thus do not constitute a circumstance of the appeal case justifying the admittance of this evidence. The Board therefore considers appropriate to disregard E4 to E8 and the objections based on them pursuant to Article 12(6) RPBA 2020.

2. Admittance of the objections of lack of inventive step in view of the combination of the teachings of documents E3 and E1

2.1 The opponent filed for the first time in appeal proceedings an inventive step objection based on the combination of the teachings of E3 and E1.

2.2 The opponent (see statement setting out the grounds of appeal, point 2.3.1, page 27, first to fourth paragraph) argues that the above objection should be admitted into the proceedings since both E1 and E3 were filed with the notice of opposition and their combination is prima facie relevant for assessing inventive step of the subject-matter of claim 1. The opponent also argues that the filing in appeal proceedings of the new objection is due to the fact that the opposition division has for the first time indicated in the decision that the characterizing features of claim 1 also covers the possibility of having very small and very large axial distances (see statement setting out the grounds of appeal, point 2.3.1, page 27, fifth paragraph).

2.3 The Board rather shares the view of the patent proprietor (see reply to the statement setting out the grounds of appeal, page 6, point 2.3.3, first paragraph) that the course of action of the opponent is contrary to the primary object of the appeal proceedings, which is to review the decision under appeal in a judicial manner (see Article 12(2) RPBA 2020).

2.4 The Board is of the opinion that the objection of lack of inventive step based on the combination of the teaching of E3 and E1 could and should have been submitted in opposition proceedings, to allow the patent proprietor to react to this objection in those proceedings and the opposition division to decide on it.

2.5 This even more since documents E3 and E1 had been cited with the notice of opposition and thus the opponent clearly had the possibility of filing an objection based on these documents in opposition proceedings. It is the duty of the opponent to submit all the relevant lines of attack as soon as possible in the proceedings and not to wait for the outcome of the opposition proceedings to refine its strategy.

2.6 As regards the interpretation of the characterizing features of the claim (features "9", see appealed decision, point 16.1), the opposition division (see the second paragraph of point 16.1) accepted the opponent's interpretation that "the claim does not define ranges for the offset of the two axes and its scope includes very small and very large offsets". Indeed such reading of the claim was already mentioned in the opponent's letter dated 18 February 2021, page 4 ("Zu Merkmal 9 ist zunächst festzustellen..."). Hence, the opposition division's interpretation of the claim was not a new fact justifying filing a new objection on inventive step in appeal proceedings.

2.7 Hence, why the objection based on the combination of the teachings of E3 and E1 specifically results from the reasoning of the appealed decision and why this objection could not have been filed in opposition proceedings is not apparent from the submissions of the opponent.

Furthermore the relevance of the objection is not a criteria foreseen for the application of Article 12(6) RPBA 2020 to which the new objection of lack of inventive step is subjected.

2.8 The Board therefore analogously to point 1. above considers it appropriate not to admit this objection of lack of inventive step into the proceedings pursuant to Article 12(6) RPBA 2020.

3. Admittance of the third party observations into the proceedings

3.1 A third party filed documents E9 and E10 and objections based on these documents for the first time in appeal proceedings pursuant to Article 115 EPC. According to the established case law submissions provided by a third party should not be given a more favourable status than submissions of a party to the proceedings (see the Case Law of the Boards of Appeal, 10**(th) edition, 2022, III.N.4.4.1, in particular the last sentence of the penultimate paragraph with reference to T 1348/11).

Should the third party observations, i.e. documents E9 and E10 and the corresponding objections, be admitted into the proceedings, the third party would then receive a more favourable treatment than the opponent (see points 1 and 2 above).

The Board considers thus appropriate to disregard the third party observations.

4. Allowability of the patent as amended according to the main request

4.1 The patent proprietor filed with the reply to the statement setting out the grounds of appeal a new main request with an independent claim 1 corresponding to the one decided upon by the opposition division in which the following combination of features:

"A glueing roller (22) to apply glue onto the lateral edge (4) and/or onto the finishing band (17)",

has been amended by deleting the second alternative, so that the claim only foresees that the roller applies glue onto the lateral edge.

4.2 No objection has been admissibly raised in appeal proceedings based on the first alternative of the above combination of features of claim 1 of the patent as maintained in opposition proceedings, to which claim 1 of the main request is presently limited (see the statement setting out the grounds of appeal, points 1.1, 2.1 and 2.2, and the reply to that statement, point 2.2.1, page 4, first two lines). Instead, all the objections admissibly raised are based on the assumption that document E1 discloses the second alternative of the above mentioned combination of features of claim 1 of the main request as decided upon by the opposition division but not the first alternative, as can also be derived from the notice of opposition (see page 6, second paragraph thereof).

4.3 Therefore no admissibly raised objection stands against the maintenance of the patent as amended according to the main request submitted by the patent proprietor with the reply to the statement setting out the grounds of appeal.

5. The above opinion of the Board has been communicated to the parties with the communication pursuant to Article 15(1) RPBA 2020 to which the parties have not reacted apart from the opponent's conditional withdrawal of the request for oral proceedings.

5.1 After having reconsidered all the factual and legal aspects of the case the Board does not see any reason to deviate from its preliminary opinion. The Board thus considers that claim 1 of the main request fulfils the requirements of the EPC.

5.2 The dependent claims, the description and the drawings of the main request correspond to those which the opposition division considered to fulfill the requirements of the EPC. The opponent did not had any objections in this respect and the Board also does not see any.

6. In view of the above the patent is to be maintained as amended according to the patent proprietor's main request.