Key points
- The opponent appealed. The patentee/respondent files Auxiliary Requests 1-13 with its reply.
- The Board finds the main request to be not inventive and turns to AR-1.
- Claim 1 of auxiliary request 1 differs from claim 1 of the main request by adding the feature of dependent claim 3 as granted.
- The Board, in machine translation: "The appellant raised objections to auxiliary request 1 for the first time during the oral proceedings before the board."
- "She argued that she had already objected to dependent claim 3 in her notice of opposition."
- "Although in the statement setting out the grounds of appeal the appellant made a general reference to the notice of opposition concerning the dependent claims, it must be noted that there it confined itself to asserting that the characteristic of dependent claim 3 as granted was known from documents D4 and D5a.
Document D4 was not cited by the applicant during the novelty appeal proceedings or as a starting point for the examination of inventive step. The assertion that document D4 discloses the additional feature introduced in claim 1 of auxiliary request 1 does not constitute a reasoned objection with regard to novelty or inventive step."
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"Furthermore, the board found that the subject-matter of claim 1 of the main request was new in view of document D5a (see point 1.2 above). The assertion that the additional feature introduced in claim 1 of auxiliary request 1 is known from document D5a is not such as to call this finding into question. As regards a possible objection of lack of inventive step based on this assertion, what has just been said for document D4 also applies."
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"The inventive step of the subject-matter of claim 1 of auxiliary request 1 would therefore have been substantiated for the first time in the appeal proceedings during the oral proceedings. As the applicant did not invoke exceptional circumstances within the meaning of Article 13(2) RPBA 2020 to justify this modification of its pleas, the board decided, in the exercise of its discretion, not to admit this objection in the appeal procedure."
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The decision also deals with the point that product features in process claims are limiting. In particular, a method for coating a stack of articles was novel because the articles used as a substrate were not the same as the substrates in the prior art method.
source http://justpatentlaw.blogspot.com/2023/05/t-176119-dont-forget-rejoinder.html
