EP 3 318 226 B1 relates to a clean Venturi aspiration system and method used in a interchangeable insert for an ophthalmological medical device.
The liquid region (10) and the negative pressure region (20) are hermetically separated from one another by means of an at least partially flexible membrane (13)
The granted patent comprised the following set of claims
- Claim 1 with dependent claims 2-11 for a interchangeable insert
- Claim 12 for device for eye surgery comprising with an interchangeable insert according to claims 1-11
- Claim 13 with dependent claims 14-15 relating to a method for aspirating a liquid, carried out in an ophthalmological device.
Three different embodiments were originally disclosed.
Brief outline of the procedure
The opposition was limited to claims 1+2+3+4+6+9+13.
Claim 1 as granted lacked N over D18=US 2014/0276428, not mentioned in the ESR.
The OD decided maintenance according to AR1.
The opponent appealed.
The board decided maintenance according to AR7 and remitted to the OD for adaptation of the description.
This request comprises independent claims 1 to 6 and dependent claims 7 to 15.
The opponent’s point of view over AR7
The opponent raised objections of lack of N and IS against independent claims 5 and 6, as well as against claims 7, 8 and 10, in so far as they were dependent on claim 5. In this regard, he referred to the arguments concerning the corresponding claims 7, 8, 9, 10 and 12 of the MR in appeal.
The opponent argued that, in particular, the subject-matter of independent claims 5 and 6 differed from that of claims 11 and 12 of the patent. Although the latter were not within the scope of the opposition, they were, like any claim newly introduced into the proceedings, part of the opposition proceedings and had to be examined in full.
In the alternative, the opponent argued that claims 5 and 6 should be examined even if they were regarded as identical to claims 11 and 12 as granted. Claims 11 and 12 of the patent contained references to preceding claims and were consequently dependent claims.
According to G 9/91, OJ EPO 1993, 408, dependent claims must be examined if the relevant independent claims are not patentable and if the validity of the dependent claims is prima facie called into question by the information already on file.
Both of these conditions were met in this case.
The opponent added that, in the event that claims were deemed not to fall within the scope of the opposition, they could not be amended either.
The board’s decision
The board first observed that no objections have been raised against independent claims 1 to 4 and dependent claims 9 and 11 to 15. As their subject-matter corresponds to the subject-matter of claims in the patent that are not included in the scope of the opposition, they do not need to be examined.
The subject-matter of claims 5, 6, 7, 8 and 9 of AR7 filed during the OP before the board corresponds to the subject-matter of claims in the patent that do not form part of the scope of the opposition, or is limited in relation to those claims.
They were only to be examined in relation to their amendments compared with the claims of the patent, which, however, do not give rise to any problems.
Claim 5
The subject-matter of independent claim 5 corresponds to the subject-matter of claim 11 of the patent, which was dependent on claim 1. Contrary to the opponent’s view, this is therefore not a subject-matter newly introduced into the proceedings.
Claim 11 of the patent does not fall within the scope of the opposition. In principle, however, the facts that may be examined in appeal proceedings are limited to the scope of the opposition.
In examining whether the exception identified in case G 9/91 applies in the present case, it was apparent that the feature of a level sensor defined in claim 11 of the patent, which is also present in the current claim 5, is neither to be found in the subject-matter of the claims forming part of the opposition nor is it covered by the objections raised against those claims.
The objections regarding lack of N and IS raised against claim 5 were therefore not taken into account.
Claim 6
Although the interchangeable inserts defined in claims 1 to 11 of the patent and their features have an implicit effect on the device, they are not part of it. Consequently, claim 12 of the patent is an independent claim in accordance with R 43(4) of the EPC.
The board found that the subject-matter of 6 is actually narrower than that of claim 12 of the patent.
The opponent has not explained how one of the objections regarding lack of N and IS against claim 6 is based on the amendments of claim 12. Rather, the objections appear to be independent of the amendment and also to relate to the broader subject-matter of claim 12 of the patent.
As the objections to claim 6 do not appear to stem from the amendment, they are not taken into account.
Claims 7, 8 and 10
The objections raised by the opponent regarding the lack of N and IS in dependent claims 7, 8 and 10 relate solely to their dependence on claim 5. These subject-matter correspond to that of claim 11 of the patent, which is dependent on claims 1 and 3, 1 and 4, and 1 and 6 of the patent.
Since claim 11 of the patent is not part of the subject-matter of the opposition in any of these dependencies, and since the conditions for the exception set out in G 9/91 are not met for claim 5, which is derived from that claim, the subject-matter of claims 7, 8 and 10 need not be examined.
Comments
G 9/91 cannot be taken as a pretext by an opponent to skip objections against dependent claims as granted, and reintroduces those later..
A combination of a an independent claim as granted with a dependent claim as granted, but not opposed, cannot be challenged. This is nothing new.
At least, objections against amended dependent claims not opposed, but brought in a new independent claim should be properly justified.
In other words, independent claims that do not form part of the scope of the opposition can only be examined in respect of the amendments made to them
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