The patent relates to an apparatus for limiting a current of a circuit or breaking a current of a circuit, and a method for controlling the apparatus
Brief outline of the case
The opponent appealed the rejection of the opposition.
The board held the appeal not admissible for lack of substantiation.
The opponent’s point of view
In the statement of grounds of appeal the opponent requested that the decision under appeal be set aside and that the patent be revoked in its entirety. The opponent submitted that the subject-matter of all of the claims 1 to 7 of the patent lacked an inventive step over a combination of D1 and D2.
During the OP before the board, the opponent submitted that the material on pages 1 to 5 of the statement of grounds of appeal in the section entitled “I. Subject matter of EP 2 953 151” had not been submitted in the first-instance proceedings and had been included to show that the OD had misunderstood the technical background of the invention.
The opponent also submitted that the statement of grounds of appeal included in section II.1 a more detailed explanation of the operation of the circuit in D1, as well as an explanation of the teachings of D2 which had not been submitted in the first-instance proceedings.
Furthermore, the opponent pointed to the arguments in section II.3 of the statement of grounds of appeal, which lead to the conclusion that “a combination of the D1 and D2 would lead the skilled person to a circuit in which a series-connection of a high-speed isolation switch and a power semiconductor switch is provided at those positions where the circuit of D1 only provides a single high-speed isolation switch suffering from arcing”.
According to the opponent, these submissions in the statement of grounds of appeal enabled the board to see that the technical analysis of D2 in the contested decision was incorrect, and that it would be obvious for the skilled person to combine D1 and D2 and so come to the claimed arrangement.
The proprietors’ point of view
In the reply to the appeal, the patent proprietors requested that the appeal be dismissed as in their opinion the opponent’s statement of grounds of appeal merely repeated, partially even literally, the written arguments submitted in the first-instance written proceedings and did not address or confront the reasons given in the contested decision.
The board’s decision
The board reminded that, according to established case law on R 99(2) and decision T 2012/16, if the appellant submits that the decision under appeal is incorrect, then the statement setting out the grounds of appeal must enable the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of its own.
There must be a causal relationship between the arguments in the statement of grounds of appeal and the reasons given in the decision under appeal. The absence of any correlation between the grounds of appeal and the contested decision is detrimental to the admissibility of the appeal.
In the contested decision, the question at issue was whether it was obvious, starting from the arrangement of figure 1 of D1, to provide a bidirectional power semiconductor switch in series with the mechanical switch 11, 12, 13, 14 in each of the four branches.
In the penultimate paragraph of section 2.2 of the reasons for the decision, the OD found that when turning to D2 to solve the problem of contact wear caused by arcing on the mechanical switches 11, 12, 13, 14 of D1, the skilled person would not be tempted to isolate just auxiliary breaker 9 from the rest of the circuit of figure 2 of D2 before inserting it in the circuit of D1. The OD held it to be immediately apparent that the skilled person would not do so, as the resulting circuit would be far too complicated.
There is nothing in the new explanations regarding the patent and the teachings of D1 and D2 in sections I, II.1 and II.2 that points to an error in the analysis of these documents in the contested decision. Furthermore, the arguments in section II.3 of the statement of grounds of appeal were presented to the OD and were summarised by the OD in the first and second paragraphs of section 2.2 of the reasons for the decision. The OD set out in the third and fourth paragraphs of section 2.2 the reasons why the opponent’s arguments in this respect were not found to be convincing and there is nothing in the statement of grounds of appeal to explain why the opponent considers these reasons to be incorrect.
In other words, there is no causal relationship between the arguments in the statement of grounds of appeal and the reasons given in the decision under appeal.
Comments
The present decision shows once more that a party questioning a decision of a first instance division must show clearly why the decision of the latter is wrong and should be set aside.
It is clear that some arguments might have to be repeated, but they have to be repeated taking into account the position expressed by the division of first instance.
Whatever has happened in first instance, a causal relationship between the arguments in the statement of grounds of appeal and the reasons given in the decision under appeal has to be established.
Here the core of the argumentation of the OD, that the skilled person would not combine D1 and D2, had been left aside in the statement of grounds of appeal.
https://www.epo.org/en/boards-of-appeal/decisions/t200983eu1
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