T392 / 16: admissibility of new attacks
We have seen Article 12 (4) RPCR very often applied to new facts or new requests. It is here applied to new lines of attack, assimilated to new facts .
Like the Opposition Division, the Chamber finds that the object claimed is new under D1.
During the first instance, the Opponent had made inventive step attacks based on the combinations D3 + D4, D3 + D5, D3 + D9, D10 + D6, D10 + D3 and D10 + D2.
With its appeal brief, the Opponent made objections based on the following combinations: D1 + D4, D1 + D2, D1 + D4 + D2 and D4 + D6.
The Chamber notes that these objections are based on documents submitted with the statement of opposition. However, the specific combinations were never the subject of the opposition proceedings. These objections thus represent new facts alleged by the Opponent and presented for the first time as an appeal.
However, Article 12 (4) RPCR gives the Chambers the discretionary power not to admit new facts, motions and evidence that could have been produced at first instance.
For the Opponent, the new attacks based on D1 were a reaction to the position taken by the Opposition Division during the oral proceedings, according to which D1 did not disclose the three layers of claimed treads. The Board is not convinced that the presence of this feature was challenged by the Registrant in its response to the Opposition so that the Opponent should have foreseen that the Opposition Division could also have this interpretation. The Opponent should therefore have considered the possibility, in a fallback position, of taking D1 or D4 as the closest alternative state of the art. The Chamber draws a parallel here with a Holder who provides alternative requests as possible fallback positions in case his arguments are not followed.
The Chamber also recalls that the purpose of an appeal is to contest the validity of the impugned decision, not to continue the opposition proceedings, and decides not to admit the new lines of attack in the proceedings.