T 0397/09 25-10-2011

Reasons for the Decision

1. The appeal is admissible.

2. Added subject-matter

During the examination proceedings claim 1 was amended by introducing the feature according to which the inflatable member is formed by partially fusing or adhering the outer layer to the inner tubular member such that the inflatable member is provided between those portions of the inner tubular member and the outer layer where the outer layer is fused or adhered to the inner tubular member.

The application as originally filed discloses, on page 4, lines 16-19, that the inflatable member is formed by partially fusing or adhering an outer layer to the collapsible tubular member so as to provide one or more inflatable members therebetween. It is clear that no inflatable member can be formed in the regions where the outer layer is fused or adhered to the inner tubular member. Hence, said passage of the application as filed can only be understood to mean that the inflatable member is provided between those portions of the inner tubular member and the outer layer where the outer layer is fused or adhered to the inner tubular member.

It is true, as submitted by the appellant, that the passage on page 4 defines that the inflatable member is situated radially outward of the inner tubular member. However, the same applies to the member in accordance with present claim 1, which states that the inflatable member formed between said portions extends around the inner tubular member.

Moreover, the passage on page 4, lines 16-19, does not refer to any specific embodiment. Therefore the amendment under consideration is not an inadmissible intermediate generalisation of the embodiment disclosed at page 11, lines 10-16, as argued by the appellant.

Therefore, the amendment under consideration does not extend beyond the content of the application as originally filed.

3. Sufficiency of disclosure

A European patent must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Since the patent is addressed to the person skilled in the art who may use his common general knowledge to supplement the information contained in the patent, it is not necessary to give details of well-known features to comply with this requirement.

In the present case there is no doubt that inflatable graft stents and other inflatable members to be inserted and to remain in the human body were well-known before the priority date of the patent in suit, as evidenced for instance by the prior art cited in paragraphs [0011] to [0014] of the patent in suit. Hence, the person skilled in the art had no difficulty in realising a member which could be inflated and remain inflated in the human body. Therefore, the claimed invention is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

4. Document D5

Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion. This discretion is exercised inter alia in view of the state of the proceedings and the need for procedural economy (see Article 13(1) RPBA, OJ EPO 11/2011, page 536). This need, together with the requirement of inter partes appeal proceedings that all parties involved in these proceedings have the guarantee of a fair and equitable procedure, demands that facts and evidence are brought to the attention of the adverse parties and of the board without delay and in sufficient time for their consideration (see G 4/92, point 5 of the Reasons, OJ 1994, 149).

In the present case the statement of grounds for appeal makes no reference to D5. Hence, the board of appeal has discretion as to whether or not to admit this document and consider the alleged lack of novelty based on it.

It is undisputed that, albeit no objection based on this document was raised during the opposition proceedings, D5 was known to the appellant at least since the beginning of said proceedings, as it was cited in the notice of opposition. However, the appellant waited more than four years after filing its notice of opposition and some 29 months after filing its statement of grounds for appeal before seeking to introduce an objection based on this document with the letter dated 23 September 2011, about one month before the date set for the oral proceedings.

No good reason can be seen for this delay. The appellant argued that it had waited to see how this document was assessed in the case of the appeal T 0949/07 and that it had tried to negotiate an agreement with the patent proprietor outside the present appeal proceedings. However, T 0949/07 refers to another independent case and waiting for an assessment of document in that case does not excuse the delay in submitting an objection which was considered relevant to the present appeal. Moreover, the decision concerning the appeal T 0949/07 was issued in August 2009, i.e. more than two years in advance of the letter dated 23 September 2011. As to the hope of negotiating an agreement with the patent proprietor, such negotiations are outside the scope of present appeal proceedings and cannot excuse a late filing of a document.

Under these circumstances the board finds that the submission at a very late stage of the proceedings of D5 is to be dismissed independently of the possible relevance of this document.

5. Priority

D0 relates, as present claim 1, to a stent graft (see for instance the paragraph bridging pages 3 and 4). The appellant pointed out that a balloon graft is mentioned at page 9, lines 11-12. However, said balloon graft is indicated with the same reference 20 used at page 9, lines 8-11 for the stent graft. Therefore, it is clear that in D0 the "balloon graft" is the same as the stent graft.

It is undisputed that D0 describes all the features according to present claim 1. Nevertheless, the appellant argued that the disclosure of the claimed invention to be found in this document was not enabling and that, as a consequence, the priority claim was invalid.

This argument is not convincing. Contrary to the appellant's view the person skilled in the art would have no difficulty, on the basis of the information provided by D0 and his common general knowledge, to find a way of closing the inflatable member and lining a blood vessel with the claimed device. As already explained above when assessing sufficiency of disclosure, possible ways of realising a member which could remain inflated in the human body were well known to the person skilled in the art before the priority date of the patent in suit. As to the way of lining a blood vessel with the claimed device, D0 discloses, for instance in Figures 5 and 6 or on page 5 line 22 to page 6, line 1 how the device can be fixed to a blood vessel. Hence, D0 provides sufficient information for the person skilled in the art to realise the claimed invention. Under these circumstances there is no need to consider whether or not the lack of an enabling disclosure can invalidate a priority claim. Therefore, the priority is validly claimed.

6. Novelty and inventive step

6.1 Since the priority of the patent in suit is validly claimed, D3, a PCT application with a filing date prior to the priority date of the patent suit and a publication date subsequent to said priority date can only be prior art under Article 54(3) EPC. As such it can only be relevant for the assessment of novelty and not for inventive step.

6.2 For an invention to lack novelty, its subject-matter must be clearly and directly derivable from the prior art.

It is undisputed that D3 discloses a stent graft with a tubular member and an outer layer made of ePTFE. However, this document is silent as to the microstructure of these elements. The appellant submitted that said microstructure must exhibit uni-axially oriented fibrils since this was the inevitable result of extrusion, which was the process used for producing tubular members. However, this argument is not convincing, as D3 does not disclose that the outer layer made of ePTFE has a tubular shape. Hence, extrusion is not the sole possibility of obtaining said outer layer. For instance the process disclosed in D10 could be used, which can be applied to the production of all kinds of shaped articles such as films, tubes, rods and continuous filaments (see abstract) and which does not inevitably result in a microstructure in accordance with present claim 1 (see column 6, lines 36-41). Novelty of the subject-matter of claim 1 is acknowledged only for that reason.

6.3 The sole objection of lack of inventive step based on the documents admitted into the proceedings is based on the combination of D3 and D15. However, D3 is not part of the prior art to be considered for assessing inventive step. Under these circumstances, the board has no reason to depart from the assessment made in the appealed decision that the subject-matter of claim 1 involves an inventive step.