EP 3 083 002 B1 relates to a filter medium, a filter element and a filter arrangement, especially to an interior air filter and an interior air filter assembly for cleaning air entering the interior of a motor vehicle.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board decided that claim 1 as granted lacked N over D3=WO 2008/066022 and its translation. The AR either lack N or IS over D3 or had a problem of clarity.
All AR filed in appeal, but AR6, were carry-over requests.
As the opposition was rejected, the AR were not subject of a decision of the OD.
The patent was thus revoked.
The present case is interesting as it deals with the problem of repeating in appeal submissions made in first instance. The AR at stake is AR4, which the board considered lacking N over D3.
The proprietor’s point of view
The proprietor argued, inter alia, that the opponent did not raise the objection of lack of N in the appeal proceedings, but merely referred to the arguments put forward in the opposition procedure.
The board’s decision
In the submission of the opponent in response to the proprietor’s reply to the appeal, the opponent merely referred its the submission on Art 84 against AR4 filed in opposition.
For the board, in the last paragraph on page 12 of this opponent’s submission, the opponent argued in sufficient detail why this feature, unlike a filter arrangement for a filter membrane, cannot have a limiting effect. Therefore, according to the opponent, the feature cannot lead to a different assessment of patentability.
Here too, the opponent’s submission in first instance regarding the lack of novelty of AR4 was not the subject of the contested decision, which meant that the opponent was unable to address this issue in its appeal.
And here, too, the reference to its submission in the first instance is specific, clearly defined and unambiguously attributable, which allows it to be examined without substantial restriction.
Comments
This decision is to be welcomed as in case of carry over requests, it is difficult for an opponent to say much more than he had said in first instance as the OD did not deal with those. The same actually applies to the proprietor.
If carry over requests are properly substantiated and maintained in opposition, and the objections against those carry over requests are as well properly substantiated by the opponent in opposition, the requests as well as the objections against those can be considered validly raised and maintained.
They might be considered as amendments under R 12(4), as no decision was taken on those by the OD, but their transfer into the appeal procedure should not lead to their non-admissibility.
If the board does not feel like dealing with them, as no decision was taken on those by the OD, it should then refer the case to the OD for further prosecution, and not dismiss requests and objections for formal reasons.
There is also nothing which should withhold a board to deal with them, as all the arguments pro and contra are on the table.
It should also not be necessary to copy/past the arguments raised in first instance, and a mere referral to the submissions in first instance should be sufficient.
On the procedure
D3=WO 2008/066022 bears the classification units A61L9/01, A61L9/16 and B01D39/14.
EP 3 083 002 B1 bears the classification unit B01D 39/16. According the ISR established by the EPO, the search was carried out in B01D and in A61L. The ISR mentioned one document of category X, one of category X,Y, one of category Y and one of category X,P.
It is thus surprising that D3 was not found during the IS carried out by the EPO.
Comments
Leave a comment