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T 2391/18 – Adaptation of the description in opposition and R 80

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The present invention relates to equipment for the measurement and control of feeding load material and scrap into a furnace and the relative method.

Brief outline of the case

The opposition was rejected and the opponent appealed.

The proprietor filed first AR 1-15 with its reply to the statement of grounds of appeal.

Anonymous third-party observations, in accordance with Art 115, were filed after the statement of grounds and the corresponding reply had been filed by the parties to the appeal proceedings. Those were not admitted by the board.

The proprietor requested eventually that the patent be maintained in amended form, on the basis of AR 3 as filed with the reply to the statement of grounds of appeal, i.e. AR3 was made the MR.

Claim 1 of the MR corresponds to a combination of granted claims 1, 2, 3, 4 and 7.

At the end of the OP, the board decided to maintain the patent according to the new MR.

Feature 1.8 reads:

“the weighing device for weighing the furnace shell, its contents and any other components supported by it, is coupled with a furnace shell support structure by means of support rollers”

Paragraph [0017] reads:

In particular, the weighing device of the furnace shell and any other components it may support, provides for a support structure for the furnace shell composed of support rollers.

Consistency with paragraph [0017] – Art 84

According to R 80, the description may be amended, provided that the amendments are occasioned by a ground for opposition.

The proprietor’s position

The proprietor filed an adapted description in which the words “In particular,” were deleted from paragraph [0017].

The opponent’s position

The opponent argued that the introduction of feature 1.8 into claim 1 required a further adaptation of this paragraph, since there was an inconsistency between the claim and the respective paragraph.

In particular, paragraph [0017] referred to a weighing device which provides for a support structure, whereas feature 1.8 of claim 1 specified a weighing device coupled with a support structure.

The amendment by which the words “In particular,” were deleted is occasioned by a ground for opposition. However, this is not the case with respect to the further amendment suggested and deemed necessary by the opponent.

The opponent put forward the argument that such an inconsistency, even if it was already present in the granted version, had also to be addressed by adapting the description to the wording in the claim.

The reason for the alleged obligation to remove such an inconsistency was to be seen in a possible lack of support of the claims by the description within the meaning of Art 84, second sentence.

The board’s position

Regarding this further amendment, the Board observes that granted feature 1.6 already specifies a “weighing device being coupled with a structure supporting the furnace shell”.

Furthermore, added feature 1.8 corresponds to granted claim 2. Consequently, any alleged inconsistency in this respect between paragraph [0017] of the patent as granted and the claim 1 of the present main request was already present in the granted version.

The board held that Art 84 is not a ground for opposition. Therefore, in the present case, the further amendment to the description would not be “occasioned by a ground for opposition” within the meaning of R 80. For this reason alone it is questionable whether such a (hypothetical) amendment would be allowable.

Moreover, the Board considered that the conclusions of the EBA in G 3/14 should be taken into consideration in this context.

The allegedly required amendment to paragraph [0017] does not relate to any amendment to the claims during opposition proceedings. Instead, this amendment relates to an alleged inconsistency that already existed in respect of a feature present in the granted claims.

Such an amendment to the description is not appropriate in opposition proceedings or opposition appeal proceedings. Even without the allegedly required amendment to the description, there is no reason for the Board, or the Opposition Division, to come to the conclusion that the requirements of the Convention, in particular the requirements of Art 84, within the meaning of Art 101(3,a) are not fulfilled.

The reason for this is the conclusion of the EBA in G 3/14: in considering whether, for the purposes of Art 101(3), a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Art 84 only when, and then only to the extent that the amendment introduces non-compliance with Art 84.

Since in a case such as the present one the amendment to the claims did not introduce an issue of non-compliance with Art 84, an OD or a BA cannot examine the claims of the patent for compliance with the requirements of Art 84, including the requirement of “support by the description” in the second sentence of this provision. There is thus no reason for the Board to object to the wording of paragraph [0017] of the amended description as filed during the oral proceedings before the Board.


Adaptation of the description

I do not wish by any means start anew a discussion on the adaptation of the description.

I would simply observe that feature 1.8 at stake was subject-matter of claim 2 as granted. Since claim 2 was incorporated in claim 1, the option given by claim 2 and disclosed as “in particular” in § [0017] had to be deleted.

It has further to be observed that the proprietor deleted terms like “preferably” in § [0016] and [0018] or “should be” in § [0016].

In this respect the proprietor correctly applied Art 84.

The further considerations of the board in relation to G 3/14 should however not lead to the conclusion that in view of this decision the description does not have to be adapted to the new claim. The board simply explained that any further request under Art 84 cannot be raised by the opponent or the board.

Anonymous third-party observations

The fact the third-party observations were aimed at original claim 1 and not to the amended one was sufficient to disregard the third-party observations.

That anonymous third-party observations were not admitted is not a surprise. In T 1285/15 the board noted that, according to established jurisprudence, submissions from third-parties filed after expiry of the opposition period are to be treated, by way of a legal fiction, as “late”. Art 115 cannot be used to extend third parties’ rights, let alone extend them beyond the rights of parties to the proceedings. The same conclusion was reached in T 2913/19.


Art 84 / G 3/14 / R 80

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