T 0354/20 18-01-2022
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HEATED AEROSOL-GENERATING DEVICE AND METHOD FOR GENERATING AEROSOL WITH CONSISTENT PROPERTIES
Sufficiency of disclosure - (yes)
Novelty - main request (no)
Remittal - special reasons for remittal
I. The appeal by the opponent lies against the decision of the opposition division to reject the opposition filed against European patent No. 2879533 pursuant to Article 101(2) EPC.
II. In its decision, the opposition division held that none of the grounds of opposition raised by the opponent under Article 100(a) EPC in combination with Articles 54 and 56 EPC and under Article 100(b) EPC was prejudicial to the maintenance of the patent as granted. Inter alia, it was found that the claimed subject-matter was new over
D3: WO 2013/098397 A2
and
D7: EP 0 430 559 A2.
III. Oral proceedings by videoconference were held before the Board on 18 January 2022.
IV. The appellant (opponent) requested that the decision under appeal be set aside and that the European patent be revoked.
The respondent (patent proprietor) requested that the appeal be dismissed (main request) or, alternatively, that the patent be maintained in amended form on the basis of one of the auxiliary requests 1 to 19 filed with the reply to the statement of grounds of appeal.
V. The main request (patent as granted) includes four independent claims 1, 13, 20 and 21. These read as follows (with the feature numbering of claim 1 as adopted by the appellant).
Claim 1:
1.1 A method of controlling aerosol production in an aerosol-generating device, the device comprising:
1.2 a heater comprising at least one heating element (14) configured to heat an aerosol-forming substrate (12); and
1.3 a power source (16) for providing power to the heating element, characterised by the steps of:
1.4 controlling the power provided to the heating element such that in a first phase power is provided such that the temperature of the heating element increases from an initial temperature to a first temperature,
1.5 in a second phase power is provided such that the temperature of the heating element drops below the first temperature and
1.6 in a third phase power is provided such that the temperature of the heating element increases again.
Claim 13:
An electrically operated aerosol-generating device, the device comprising: at least one heating element (14) configured to heat an aerosol-forming substrate (12) to generate an aerosol; a power supply (16) for supplying power to the heating element; and electric circuitry (18) for controlling supply of power from the power supply to the at least one heating element, characterised in that the electric circuitry is arranged to:
control the power provided to the heating element such that in a first phase the temperature of the heating element increases from an initial temperature to a first temperature,
in a second phase the temperature of the heating element drops below the first temperature and
in a third phase the temperature of the heating element increases again,
wherein power is continually supplied during the first, second and third phase.
Claim 20:
A computer program which, when run on programmable electric circuitry for an electrically operated aerosol-generating device, causes the programmable electric circuitry to perform the method of claim 1.
Claim 21:
A computer readable storage medium having stored thereon a computer program according to claim 20.
VI. The appellant's (opponent's) arguments relevant to the present decision may be summarised as follows:
Sufficiency of disclosure
The arguments were incorporated by reference to the notice of opposition, paragraphs 124-139. The notice of opposition was filed as annex to the statement of grounds of appeal.
Novelty over D7, D3
The conclusion of the opposition division (impugned decision, point 17.6.2) that D7 only discloses a method comprising two phases (high-low temperature) was wrong. The wording of claim 1 could be read in D7, column 8, lines 28-45. The first phase included the heating from ambient temperature to a higher temperature, the second phase corresponded to the low power mode and the third phase started with activating the switch. Claim 1 did not exclude a device with a manual initiation of the third phase. Furthermore claim 1 did not require aerosol to be generated during all phases.
The opposition division (decision, point 17.2.2) erred in concluding that D3 is silent about the power supply during the second phase as disclosed on page 16, fourth paragraph ("Combustion of the substrate is undesirable. So the target temperature may be lowered when a puffing state is determined in order to reduce the likelihood of combustion of the substrate. The target temperature can then be returned to its original value when a not-puffing state is determined."). The feature described on page 16, fourth paragraph, was disclosed as an additional feature that is applicable to the embodiment shown in figure 3 and described on page 14, third paragraph and page 15, second and third paragraphs. On page 14 ("If the actual operation temperature is above the target operation temperature, the control unit 52 reduces the electrical energy supplied to the heater element 20 in order to lower the actual operation temperature back to the target operation temperature.") it was explicitly disclosed that the target temperature is controlled by adding or reducing electrical energy. Consequently, the same method is applied when lowering the target temperature to avoid combustion.
VII. The respondent's (patent proprietor's) arguments relevant to the present decision may be summarised as follows:
Sufficiency of disclosure
The appellant did not put forward any arguments as to why the appealed decision was allegedly incorrect with respect to Article 83 EPC. Therefore the objection under Article 83 EPC was unsubstantiated on appeal and was to be disregarded.
Novelty over D7, D3
D7 not only failed to disclose a method with three steps as found by the opposition division, but also features 1.1 and 1.4 were not disclosed.
By defining "A method for controlling aerosol production" according to feature 1.1, it was clear that in all three steps aerosol had to be produced. However in D7, the low temperature of the low power mode was below vaporization temperature and no aerosol was produced during this phase (column 8, lines 7 to 9). D7 was directed to a puff-on-demand device and not to a device according to the patent in suit, wherein the aerosol is produced continuously for several puffs through the three steps.
Feature 1.4 defined that power is controlled to increase the temperature of the heating element from an initial temperature to a first temperature. In D7, there was no control of power and no control of temperature. When actuating the start switch the battery simply provided power over a certain time. It was not even ensured that a first temperature to produce aerosol was reached.
As regards D3, feature 1.5 was not directly and unambiguously disclosed. The appellant inadmissibly combined different embodiments to arrive at the claimed method. The passage on page 14 referred to figure 3, the passage on page 16 to figure 4. As described on page 11, fifth paragraph, these figures were not related to the same embodiment. The combination of all claimed features was thus not disclosed.
Furthermore, the disclosure on page 16, penultimate paragraph, kept it open how the target temperature is lowered during puffing. By mentioning e.g. a thermostatic feedback loop on page 14, fourth paragraph, D3 rather hinted to a power-off-solution during the second step than to reducing power. How it was actually done was a question of inventive step, not of novelty.
Even if power would be provided during lowering the target temperature, D3 only disclosed a two-phase temperature cycle, switching between a lower (puffing) and a higher (non-puffing) target temperature.
1. Sufficiency of disclosure - Article 83 EPC
1.1 The Board confirms the finding in the impugned decision, point 15, that the requirements of Article 83 EPC are met.
1.2 During oral proceedings, the appellant (opponent) only referred to its written submissions, in which (see statement of grounds of appeal, page 21, points 1 and 2) it was only referred to the submissions made during opposition proceedings.
Hence, the appellant did not substantiate why the opposition division was wrong. Under these circumstances, the Board sees no reason to deviate from the conclusion of the opposition division, which it adopts as its own.
2. Main request - Article 54 EPC
2.1 The subject-matter of claim 1 is not new over D7 and D3.
2.2 D7 - Article 54(2) EPC
2.2.1 The Board agrees with the appellant (statement of grounds of appeal, point 52) that the wording of claim 1 can be read on D7, column 8, lines 28 to 41, when starting from setting the "power switch 48 to the "on" position". The first phase includes the heating from ambient temperature to a higher temperature and holding it, the second phase ("low power mode") includes reducing and maintaining a lower temperature and the third phase starts with "actuating a switch 50" to "re-enter the high power mode". When the time interval for the high power mode elapses for the second time, the method disclosed in D7 continues with a two-phase temperature cycle, alternating between a low or high power mode as found by the opposition division.
2.2.2 The claim wording is silent about the initiation and about the specific purpose of the phases. Therefore, an initial heating from ambient temperature to a first temperature can be seen as a first phase. Moreover, a phase which is initiated by actuating a switch (first and third phase) or by the lapse of a time interval (second phase) is a phase in accordance with the claim.
2.2.3 Contrary to the respondent's (patent proprietor's) opinion, the general wording of feature 1.1 does not limit the claimed method of controlling aerosol production to a method that produces aerosol continuously throughout all three steps. Also the method described in D7 controls the aerosol production, here for a puff-on-demand device. The fact that in the second phase of the method described in D7 (column 8, lines 7 to 9) the temperature lies below the vaporization temperature is not excluded by claim 1. It is only in claim 10 of the patent in suit that the method is limited to producing aerosol continuously over all three steps.
2.2.4 The arguments that in D7 in the first step neither the power nor the temperature was controlled, contrary to feature 1.4, and that the set time limit for the high power mode contradicted feature 1.4, because it could not be guaranteed that the vaporization temperature would be reached within the predetermined time, are not convincing.
The wording of feature 1.4 defines no conditions for the control or the temperature, but only that the first temperature has to be higher than the initial temperature. The same is disclosed in D7, column 8, lines 28 to 33.
In this passage it is even disclosed that the flavour-generating medium is heated to its preferred higher temperature, enabling the consumer to puff. Thus the power is controlled such that a first temperature above the vaporization temperature is reached within the set time interval. Consequently the time interval is not in contradiction to feature 1.4. It is noted that also the patent in suit defines in claim 5 a predetermined duration of at least one of the steps.
2.3 D3 - Article 54(3) EPC
2.3.1 The Board does not follow the respondent's (patent proprietor's) argument that the method of D3 only comprises two phases. Starting from T=0 in figure 3, a first initial phase, a second phase according to page 16, fourth paragraph, penultimate sentence, to avoid combustion, and a third phase according to page 16, fourth paragraph, last sentence, to return the target temperature to its original value, are disclosed. The arguments under point 2.2.2 herein above apply accordingly.
2.3.2 Contrary to the respondent's opinion, the passages on page 14 and page 16 do not refer to different, alternative embodiments. The disclosure on page 16 is merely describing an additional feature that can be used with the previous described "basic" embodiment of figure 3.
2.3.3 The feature that power is provided during the second phase is disclosed in D3 for the following reasons:
Although figure 3 only shows unintended temperature drops 66 caused by a user's puff, the passage on page 16 clearly discloses an intended decrease of temperature to avoid combustion during puffing. To achieve a controlled decrease of temperature, D3 discloses reducing the power supplied to the heater 20. On page 14, third paragraph, it is disclosed that the reason to decrease an actual operation temperature is to maintain a target temperature. On page 16, fifth paragraph, there is mentioned a second reason for lowering the temperature, i.e. avoiding combustion during puffing. Since the primary purpose - lowering the temperature - is the same, it is clear for a skilled reader that also in the case of lowering the target temperature when a puffing state is determined, this is done by reducing the power.
3. Article 11 RPBA 2020
3.1 From the above it follows that the respondent's main request to maintain the patent as granted fails and that the decision under appeal is to be set aside.
3.2 The respondent (patent proprietor) filed 19 auxiliary requests with the reply to the statement of grounds of appeal. Auxiliary requests 1 to 12 and 14 to 19 were already filed during opposition proceedings.
3.3 As the opposition was rejected, none of the issues concerning the auxiliary requests were part of the impugned decision.
3.4 With the reply to the statement of grounds of appeal, filed on 22 October 2020, the respondent explained what were the amendments made in accordance with the auxiliary requests and stated in very general terms that the auxiliary requests were submitted in response "to the opponent's objection concerning an alleged lack of novelty and inventive step of the main request".
3.5 The appellant filed comments on the auxiliary requests with letter dated 24 March 2021, i.e. about three months after the summons to oral proceedings, which was issued on 18 December 2020, i.e. about 2 months after the reply to the statement of grounds of appeal was filed, and in which it was pointed out (point 5) that the appellant did not file observations in respect of the auxiliary requests.
The appellant objected the admissibility of all the auxiliary requests in particular for lack of convergency, argued that some of the requests were not allowable for lack of compliance with Rule 80, Article 84 and/or 123(2) EPC, that auxiliary requests 1 to 6 lacked novelty and inventive step for the same reasons as the main request, and proposed to discuss the novelty and inventive step of any auxiliary request which are admitted into the proceedings at the oral proceedings.
3.6 Hence the situation that arose at the oral proceedings when the Board announced after deliberation that it considered that the main request was not allowable for lack of novelty, was that - possibly apart for auxiliary requests 1 to 6 - there was no case made by the parties in advance of the oral proceedings as to why the auxiliary requests would or would not overcome the lack of novelty. Consequently, assuming that some of the requests would be admitted into the proceedings, the Board was put in the position to either allow the parties to present their arguments on novelty and/or inventive step for the first time at the oral proceedings or else not admit any argument not presented in writing.
In the former case, this might have led to a new discussion at the oral proceedings, possibly with unexpected twists. In the latter case, this might have led to the maintenance of the patent on pure formal reasons.
The Board notes that the reasons for this situation are mainly due to both parties' failure to properly present in writing their case in respect of the auxiliary requests. The Board further notes that the appellant's statement that a remittal was not appropriate as the objections that would be raised were not complex such that they could not be dealt with at the oral proceedings, is, in the absence of written submissions, of speculative nature.
3.7 Under these circumstances, the Board considers that special reasons in the sense of Article 11 RPBA present themselves for remitting the case to the opposition division for dealing with all relevant issues concerning the auxiliary requests.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the opposition division for further prosecution.