T 0113/18 09-11-2020

1. The present proceedings are governed by the revised version of the Rules of Procedure which came into force on 1 January 2020 (Articles 24 and 25(1) RPBA 2020), except for Articles 12(4) to (6) RPBA 2020 instead of which Articles 12(4) RPBA 2007 remains applicable (Article 25(2) RPBA 2020).

2. The respondent has informed the Board by letter of 14 July 2020 that it would not be represented at the oral proceedings. Moreover it did not file any request for oral proceedings. By means of this the respondent has decided that the Board should decide the present case based on the written submissions of the appellant and any submissions to be made by the latter during the oral proceedings. As the Board was in the position to decide according to the request of the appellant based on the written submissions by that party, the decision could be taken in writing and the oral proceedings were canceled, as not deemed necessary.

Main request

Novelty in view of D1

3. It is not disputed that, as indicated by the opposition division in the paragraph bridging pages 4 and 5 of the contested decision, the priority document D5 of the patent in suit discloses the rubber defined in operative claim 1 as far as the anion is chloride since the nucleophilic substitution reaction with an amine compound at the chloride site of the polymerized epichlorohydrin unit which is carried out to prepare the modified rubber of D5 leads to a quaternary ammonium group and a chloride ion, in line with the reaction mechanism indicated in paragraph [0025] of the patent in suit. It was also not disputed that the production of said modified rubbers with a chloride anion was described in an enabling manner in the priority document D5. Under these circumstances, it is concluded in application of the rationale of decision G 1/15 of the Enlarged Board of Appeal (OJ EPO 2017, A82) (see point 6.4 of the Reasons and Order) that the subject-matter of present claim 1 is entitled to partial priority from D5 at least in so far as the anion is chloride, i.e. that partial priority has the effect that the date of priority shall count as the date of filing for the purposes of Article 54(2) and (3) EPC at least in so far the anion is chloride.

4. It follows therefrom that D1 published on 7 July 2011, i.e. between the date of priority and date of filing of the patent in suit, is not prior art pursuant to Article 54(2) EPC at least for such subject-matter. It is furthermore undisputed that said PCT application did not meet some of the requirements for entry into the European phase defined in Rule 159(1)(a) and (c) EPC with the consequence that D1 is not prior art pursuant to Article 54(3) EPC either (Article 153(5) EPC and Rule 165 EPC).

5.

6. As far as the disclosure of D1 is concerned, it is undisputed that Examples 1 to 10 of D1 (reference being made to D1a, considered as a true translation of D1, as not disputed by the appellant), which the opposition division considered to disclose the subject-matter of claim 1 of the patent in suit when read in combination with paragraphs 2 to 5 of that document, describe rubber compositions falling within the definition of formula (1) of claim 1 of the contested patent. However, the modified polyether rubber of these examples are obtained by reacting polyether rubbers A, B and C, which are epichlorohydrin/ethylene oxide/allyl glycidyl ether terpolymers (see paragraphs [0104] to [0106]), with trialkylamines (see paragraphs [0108], [0110], [0112], [0114], [0116], [0118], [0120], [0122], [0124], [126] and Table 1). This reaction in view of the same considerations as outlined in the analysis of priority (see section 3., above) leads to rubbers having units according to formula (1) of claim 1 in which the anion is chloride.

For this reason alone the attack of novelty based on Examples 1 to 10 of D1 in combination with passages from the description cannot succeed, as it results in subject-matter for which partial priority is validly claimed and for which therefore D1 is not state of the art.

7. In addition, in view of Table 1 on pages 12 and 13 indicating the characterization of the rubber prepared in those Examples (composition, molecular weight, money viscosity, volume resistivity and increase of value in volume resistivity caused by electric current) and paragraphs [0092] to [0102] explaining the methods by which the tests were carried out, it is observed that a conductive member comprising a conductive support and a conductive layer containing a modified epichlorohydrin rubber is not prepared in those examples, but a cross-linked rubber sheet obtained by moulding and cross-linking the obtained modified rubbers.

D1 has not been shown to disclose elsewhere a layer of one of the modified rubbers prepared in any of Examples 1 to 10 with a conductive layer comprised in a conductive member. The information provided in paragraphs 2 to 5 of that document referred to by the opposition division which according to the reasons for the decision would be read by the skilled person in combination with the disclosure of Examples 1 to 10 are under the heading "background art" and merely concern a description of the prior art, although without any reference to a specific document. There is no indication that said mentioned unspecified prior art referred to in D1 would concern a rubber in accordance with claim 1 of the patent in suit or that its teaching should to be applied to the specific rubber compositions described in Examples 1 to 10 of D1. Also for that reason, it can be concluded that the reasons for the lack of novelty of claim 1 of the main request over D1 do not hold.

8. It is also added that the general teaching of D1 in paragraph [0088] concerning the conductive members which can be prepared with the conductive rubbers of D1 does not either explicitly or implicitly disclose a conductive member comprising a conductive support and a conductive layer. The Board has therefore no reason to conclude that the subject-matter of claim 1 of the granted patent is described in D1.

9.

10. Accordingly, the sole reason in the contested decision for not allowing the main request, namely that the conductive member of claim 1 lacked novelty over D1, fails to convince.

Remittal

11. In view of the above conclusion the appeal is allowable to the extent that the decision under appeal is to be set aside. As the next step under Article 111(1), second sentence, EPC, the board may either exercise any power within the competence of the opposition division or remit the case to it for further prosecution, taking into consideration that the appellant also requested that the patent be maintained as granted.

11.1 In the present case the respondent did not react to the submissions by the appellant and therefore did not make known to the Board whether other objections were considered to prejudice maintenance of the patent in the form as granted. The respondent did not even submit any request. According to decision G 10/91 of the Enlarged Board of Appeal (OJ 1993, 420, point 18 of the Reasons), the appeal procedure inter partes is, in contrast to the merely administrative character of the opposition procedure, considered as a judicial procedure, which by its very nature is less investigative than an administrative procedure and in which opposing parties should be given equally fair treatment (see G 10/91, loc. cit., point 2). In view of the judicial nature and purpose of inter partes appeal proceedings and in the interests of an efficient and fair procedure, it is therefore necessary that all parties to opposition proceedings complete their submissions at the beginning of the appeal stage in so far as this is possible. This is reflected in Article 12(3) RPBA 2020, whose wording is in essence identical to that of Article 12(2) RPBA 2007, which specifies that the statement of grounds of appeal and the reply shall contain a party's complete appeal case. Accordingly, they shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on.

11.2 Thus, in the present case, it would have been to the respondent to indicate its request, also setting out the reasons why such request would have been made. The opponent ceased to take an active part in the proceedings after having received the opposition division's decision. In view of the character of the inter partes appeal proceedings, it cannot be expected, that the Board in breach of the principle of equal treatment of the parties, investigates whether other objections raised before the opposition division (which is any case were found not to be successful for the second auxiliary request limited to chloride as anion) would be likely to prejudice maintenance of the patent, and if so provide on its own, an elaborate and full reasoning, substituting itself for that opponent which remained passive.

11.3 As to the question whether the Board should remit the case to the opposition division for further prosecution, it is the boards' settled case law that parties do not have a fundamental right to have their case examined by two instances (Case Law of the boards of Appeal, 9th edition 2019, V.A.7.2.1). Article 111(1), second sentence, EPC leaves it instead to the board's discretion to decide on an appeal either by exercising any power conferred on the department of first instance or by remitting the case to that department taking into account the circumstances of the individual case, also bearing in mind the need for procedural economy (Case Law, supra, V.A.7.2.1), i.e. the need to avoid undue prolongation of the entire proceedings before the EPO (see explanatory remark concerning Article 11 RPBA 2020 in Supplementary publication 2 to OJ EPO 2020, page 54). It's the Board's position that the silence of the respondent cannot lead to an automatic remittal of the case to the opposition division to decide whether further objections are likely to prejudice maintenance of the patent remain, as it would deprive the Board of its discretion conferred to it by Article 111(1) EPC, the purpose of which is to weight up all the circumstances of the present case, in particular the existence of additional contentious issues which in the present case have not been brought to the attention of the Board.

11.4 Accordingly, in the absence of any objection raised by the respondent against the main request, let alone any request by that party, the Board does not remit the case to the opposition division for further prosecution and has no reason to consider that the claims in accordance with the main request do not fulfil the requirements of the EPC. The Board therefore decides that the main request is allowable.