EP 2 373 463 B1 relates to the preparation of a wood veneer plate.
Brief outline of the case
The oppositions were rejected and O II appealed.
The board found that the OD had committed a SPV, but decided to deal with the claims as granted and only remitted for further prosecution on the basis of the AR.
The SPV
The decision under appeal sets out which features of claim 1 as granted the OD found not to be present in each of documents D1, D3, D8/D55/D56, D12, D13, D14, D15, D16, D17/D18, D19 and D62.
However, the decision under appeal does not set out the arguments presented by O II in the opposition proceedings, nor does it indicate why the OD disagreed with these arguments in relation to the alleged distinguishing features of claim 1 as granted, at least for D12.
No mention was made of the argument of O II, made in the written proceedings and reiterated at the OP before the OD, that no selection from lists was required and even if it were, that a selection from two short lists of two items does not confer novelty.
At least for the objection relating to lack of N of claim 1 as granted with respect to D12 the decision is insufficiently reasoned. The OD committed thus a SPV which lead to the reimbursement of the appeal fee.
O II’s point of view on D12
According to O II, as D12 disclosed a lack of pre-impregnation as the default position and full resin coverage was singled out as the preferred option, no selections needed to be made.
Additionally, O II noted that even if it was considered that selections were needed, the options from which the skilled person would be required to select amounted only to two options for two features so that there were no selections from lists of a certain or some length.
The proprietor’s point of view on D12
The proprietor argued that D12 did not directly and unambiguously disclose all the features of claim 1 as granted as there was no explicit disclosure of not pre-impregnating veneer surfaces and in addition the features of hot-pressing the veneers and the resin being applied on at least 50% of the veneer surfaces facing each other when piled, were not disclosed together in a single embodiment.
The OD’s decision on D12
The OD found that document D12 disclosed that the veneers could be either pre-impregnated or not pre-impregnated.
In addition, D12 disclosed covering the entire area as a continuous coating as a preferred option, so that the skilled person had to choose between continuous or non-continuous coverage.
The OD then reasoned that two selections from two different lists needed to be made in order to arrive at the claimed invention, so that the subject-matter of claim 1 was new over the disclosure of D12:
- pre-impregnated or not pre-impregnated veneers
- (“prefererably”) continuous or non-continuous glue coverage
The board’s decision on D12
The board followed the established case law that the two list approach is generally used for mixtures of substances in the chemical field, such as starting substances for an end product, or analogous situations, and the lists must be of some length. The board referred to the CLB, I.C.6.1 and I.C.6.2.1b, in particular, to decisions T 2350/16, Reasons 7.2 and T 12/81, Reasons 13.
In the present case there are no lists analogous to lists of alternative substances, and even if the contested features were to be regarded as selections from lists, each “list” would consist of only two options.
Therefore, the board agreed with OII that the two list concept is not appropriate in the present case.
After analysis of D12, the board came to the conclusion that D12 discloses directly and unambiguously a single embodiment showing all features of claim 1.
In a first step, D12 disclosed indeed a first selection between pre-impregnated or not pre-impregnated veneers.
In a second step, D12 did not disclose an option between two alternatives, continuous or non-continuous glue coverage. One possibility was indeed that glue covered only part of the veneer, but preferably the whole surface was covered with glue.
As one of the so-called “options”, continuous or non-continuous glue coverage was merely a preference, it could be considered that beginning with either pre-impregnated or not pre-impregnated veneers, the second step, full coverage, albeit preferably, was disclosed as well in D12, hence the lack of N.
Comments
Selection from two lists
The board reminded that the notion of selecting from two lists only applies to mixtures of chemical substances and that the lists must be of some length.
Two lists with two substances would certainly not fall under this definition.
Preferably
In D12 there was a first step with, two “alternatives” to chose between, pre-impregnated or not pre-impregnated veneers
In D12, the second step comprised a mere preference, for full or partial glue coverage, and hence not two alternatives to chose from.
It shows a rather odd understanding of the term “preferably” by the OD. That a feature “preferable”, has never been seen as a true alternative, like it would be the case with a true OR statement linking two features.
Limiting a claim with a “preferable” feature has never led to an infringement of Art 123(2). However, combining in a claim features linked by OR in the description, would inevitably lead to an infringement of Art 123(2).
Remittal only for the AR
Since the board disagreed with the OD on the N of claim 1 as granted, the board had to explain why, in its view, D12 was N destroying for claim 1 as granted.
If the board disagrees with an OD and considers N given, it just enough to find one difference. This is easier that showing a lack of N.
It is thus normal that the board dealt with claim 1 as granted before remitting in order to deal with the remaining AR.
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