T 0315/19 19-05-2022

1. The invention

The claimed invention relates to a device for generating an inhalable aerosol, such as in an electronic cigarette.

The device comprises a mouthpiece, a body, an electronic heater within the body and a temperature regulator within the body.

The electronic heater is configured to heat a vaporisable material and generate an inhalable aerosol.

The device has three modes of operation which include a standby mode, an on mode and an off mode.

The device is configured to convert from the standby mode to the on mode in response to at least one of movement, removal from a charging cradle, user touch, the user puffing on the device or activation by pressing any button on the device.

The device is also configured to convert from the on mode to the standby mode after placement in a charging cradle.

Conversion to the standby mode helps saving battery power, whereas the claimed conversion from the standby mode to the on mode is for giving the user the impression of an uninterrupted puffing experience (paragraphs [0061] and [0062] of the patent).

2. Admissibility of the opposition

The respondent argued that the opposition fee had not been paid before the expiry of the opposition period.

The publication of the mention of the grant of the patent in suit in the European Patent Bulletin took place on 21 September 2016. Hence, in accordance with Article 99(1) EPC and Rule 131(4) EPC, the opposition period expired on 21 June 2017.

It is common ground that the opposition fee was not received by the EPO by that date.

However, under Article 7(3)(a) and (b) RFees in force at that time, the period for payment of a fee must be considered to be observed if evidence is provided to the EPO that the person who made the payment duly gave an order to a banking establishment in a contracting state to transfer the amount of the payment within the period within which the payment should have been made and paid a surcharge of 10% on the relevant fee.

On 23 June 2017, the opposition fee together with a surcharge of 10% was received by the EPO.

By letter dated 20 July 2017, the appellant provided a copy of a statement of a German bank (A1) indicating that the order to transfer the amount of the payment was given on 21 June 2017.

The Opposition Division considered this bank statement to be sufficient evidence that the person who made the payment duly gave an order to a banking establishment in a contracting state to transfer the amount of the payment within the period within which the payment should have been made. Consequently, under Article 7(3)(a) and (b) RFees, it concluded that the period for payment of the opposition fee had been observed.

The respondent contested that A1 was sufficient evidence of the order of the payment. It argued that A1 did not include any indication of a bank or any other official feature that identified it as an official document.

On appeal, the appellant filed a further document (D15) showing bank transfers from a bank account of the HypoVereinsbank, including a bank transfer of the opposition fee and the surcharge, ordered on 21 June 2017. The respondent argued that this document should be disregarded as it had been filed late. However, the Board considers its filing, which took place with the statement of grounds of appeal, as a legitimate reaction to the respondent questioning the findings of the Opposition Division in the impugned decision. Under Article 12(4) RPBA 2007, the Board admits D15 into the appeal proceedings.

On the basis of A1 and D15, the Board is convinced that an order of payment to a banking establishment in a contracting state was given before the end of the opposition period. The date on which the money was effectively transferred to the bank account of the EPO ("Valutadatum" in D15) is of no relevance.

For these reasons, the Board concludes that the period for payment of the opposition fee was observed and that the opposition is admissible (Article 99(1) EPC and Rule 131(4) EPC).

3. Admissibility of new arguments of the respondent

The appellant argued that the respondent's arguments concerning the omission of the term "viscous" in claim 1 of the main request and auxiliary requests I to IV filed with the submission of 25 February 2022 should not be admitted into the proceedings in accordance with Article 13(2) RPBA 2020.

Under this article, any amendment to a party's appeal case made after notification of a summons to oral proceedings must, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

The Board notes that the issue of the omission of the term "viscous" was a matter of discussion throughout the first-instance and appeal proceedings. The respondent's arguments filed with the submissions dated 25 February 2022, in particular the reference to passages of the parent application as filed and the well-known viscosity of water and other liquids depending on the temperature, do not introduce new evidence. Furthermore, they are to be seen as a refinement of the respondent's arguments provided with its reply to the appellant's statement of grounds addressing points raised by the Board in its preliminary opinion. They do not amount to a change of the respondent's appeal case. Hence, the Board has no power to disregard them under Article 13(2) RPBA.

4. Main request and auxiliary requests I to IV - added subject-matter

The appellant argued that the subject-matter of claim 1 of the main request and auxiliary requests I to IV included added subject-matter.

The subject-matter of claim 1 of these requests is generally based on paragraph [0071] of the parent application as filed.

The appellant argued that there was no basis in the parent application as filed for an electronic heater configured to heat a vaporisable material without specifying that the material was "viscous".

All the independent claims of the parent application as filed define a heater "configured to heat a viscous vaporizable material and generate an inhalable aerosol". Also in the description, whenever heating of a material is mentioned (about 50 occurrences), it is specified that the material is viscous.

The respondent asserted that the term "viscous" referred to an inherent feature of every material and that adding or omitting this term did not change anything for the claim scope. This argument has no merit as it disregards the context of the patent in suit. For the person skilled in the art, the term "viscous" means that the material, in the condition of use of the device for generating an inhalable aerosol, cannot flow freely even if not otherwise constrained. This is because the person skilled in the art knows that with a device for generating an aerosol in the field of the invention, this kind of "viscous" materials as well as free-flowing liquids may be used, depending on the configuration of the device.

The structural features which a heater configured to heat a viscous material must comprise do not make it necessarily suitable for heating a non-viscous, i.e. a free-flowing liquid, material. The components identified as the heater in the drawings (the oven for receiving pod 270 in Figure 2 and oven 524, Figure 5) are not disclosed to be suitable for heating a liquid material. Such a material, in the absence of specific constructional measures, could flow out of the mouthpiece of the shown devices. The respondent's reference to the embodiment of Figure 2 employing a cartridge is not convincing since, in use, the cartridge has to be pierced and liquid contained in it could also flow out of the mouthpiece in the absence of appropriate measures. The wrong reference to item 270 by the Board in the preliminary opinion, correctly noticed by the respondent, does not change this conclusion.

The respondent's reference to paragraphs [0002], [0005] and [0099] of the parent application as filed is not convincing either. In those paragraphs, materials to be aerosolised are mentioned. There is a difference between the material to be heated by the heater, i.e. the piece of material to be placed within the claimed device, and the materials which are then aerosolised, i.e. the materials which, when inhaled, provide an experience to the user (paragraph [0099]). These latter materials, to which paragraphs [0005] and [0099] of the parent application as filed refer, are intended to be included in the viscous vaporisable material to be heated, according to the terms in the parent application as filed. The same holds true for paragraphs [0101] to [0103], which mention several materials such as chopped tobacco material and glycerin. These materials are processed together with other materials to obtain the "viscous vaporizable material", e.g. with paste-like consistency as mentioned in paragraph [0101], to be heated by the heater.

For these reasons, the Board concludes that the omission of the term "viscous" in claim 1 of the main request and auxiliary requests I to IV adds subject-matter as it conveys the technical information, which was not disclosed in the parent application as filed, that the heater may be configured to heat liquid materials.

It follows that the main request and auxiliary requests I to IV are not allowable for lack of compliance with Article 76(1) EPC.

5. Admissibility of auxiliary requests V to IX

Auxiliary requests V to IX were filed after notification of the summons to oral proceedings.

Under Article 13(2) RPBA 2020, any amendment to a party's appeal case made after notification of a summons to oral proceedings must, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

The respondent's argument that Article 13(2) RPBA 2020 should not be applied because this appeal was pending when this provision entered into force is without merit. Under Article 25(1) RPBA 2020, the revised version of the RPBA applies to appeals pending on the date of the entry into force. As regards Article 13(2) RPBA 2020, an exception is made only where the summons to oral proceedings or a communication of the Board under Rule 100, paragraph 2, EPC was notified before the date of the entry into force (Article 25(3) EPC). This is, however, not the case for the current appeal.

In claim 1 of each of auxiliary requests V to IX, the vaporisable material has been defined to be "viscous". The respondent's argument that the addition of the term "viscous" did not change the substance of the case is without merit since the term "viscous" has a specific technical meaning in the context of the patent, as explained above. The respondent referred to the fact that the newly filed auxiliary requests V to IX had been anticipated with the letter dated 16 August 2019 (pages 13 and 34). In this letter, the respondent referred to a number of potential auxiliary requests which may include "the term viscous, the arrangement of the temperature regulator within the body, the term mode of operation etc. into the Main Request or - as far as necessary - in the Auxiliary Requests I to IV" (page 34 of this letter). However, none of such requests was filed before the notification of the summons to oral proceedings. There was no need for the appellant to prepare objections and arguments until the filing of a request. Thus, the Board has to conclude that the filing of auxiliary requests V to IX amounts to an amendment of the respondent's appeal case.

The respondent could not point to any exceptional circumstances, justified with cogent reasons, for the amendment of its appeal case.

The Board's preliminary opinion on an issue which was a matter of dispute throughout the first-instance proceedings and since the beginning of the appeal proceedings cannot amount to exceptional circumstances, irrespective of whether this preliminary opinion deviates from the impugned decision. The primary task of the appeal proceedings is to review the decision under appeal (Article 12(2) RPBA 2020).

Finally, the respondent's reference to the practice of the boards before the entry into force of the RPBA 2020 is irrelevant.

The Board can understand that a previous practice may give rise to certain expectations. However, it must be borne in mind that when new legal provisions enter into force, previous old provisions and practice may be superseded. The Board has to apply the provisions in force at the time of the decision.

For these reasons, auxiliary requests V to IX are not admitted into the proceedings in accordance with Article 13(2) RPBA 2020.

6. Since the ground for opposition of added subject-matter (Article 100(c) EPC) prejudices the maintenance of the patent as granted and none of the respondent's auxiliary requests in the appeal proceedings meet the requirements of the EPC, the patent has to be revoked (Article 101(2) and (3)(b) EPC).