T 0045/10 27-09-2011

1. The appeal is admissible.

2. Procedural aspects

2.1 In the statement setting out the grounds of appeal, the requests made during the first instance proceedings were no longer pursued. All requests filed in the written phase of the appeal proceedings, whether with the grounds of appeal or following receipt of the communication of the Board (annexed to the summons to oral proceedings), comprised an amended claim 1 containing additional features with regard to the manufacturing process of the honeycomb body and with respect to the functioning of the honeycomb body when in use.

2.2 Contrary thereto, the subject-matter of claim 1 of the main request as filed during oral proceedings and now under consideration is substantially identical to the subject-matter of claim 1 of the second auxiliary request before the opposition division (the only amendments being the limitation to silicon carbide as material for the ceramic block and the specification of the method for determination of the surface roughness Ry). The amendments made in all requests filed in the written phase of the appeal proceedings thus included additional features which were then the subject of objections in the appeal proceedings. These additional features were then in effect deleted as the result of the new request filed during oral proceedings. In this way, claim 1 has been broadened significantly with respect to claim 1 of the various requests filed during the written phase of the appeal proceedings. Thus, the framework of the appeal would be altered completely if the new main request were to be admitted.

2.3 Article 12(1)(a) RPBA states inter alia that appeal proceedings are to be based on the notice of appeal and statement of grounds of appeal filed pursuant to Article 108 EPC. So far as concerns an appellant, Article 12(2) RPBA requires that the statement of grounds of appeal should contain its complete case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, or amended, and should specify expressly all the facts, arguments and evidence relied on.

2.4 According to Article 13(1) RPBA, it lies within the discretion of the Board to admit any amendment to a party's case after it has filed its grounds of appeal or reply and states that "the discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy."

3. Application of these procedural principles to the main request

3.1 Comparing the subject-matter of claim 1 with the subject-matter of claim 1 as granted, the subject-matter of dependent claims 2, 3 and 5 has been added. Such subject-matter corresponds essentially to the subject-matter of claim 1 of the second auxiliary request before the opposition division, which was found to lack an inventive step.

3.2 Beyond these amendments, claim 1 has been further limited to specify the material of the columnar porous ceramic block as being silicon carbide, and the surface roughness has been defined as being "measured based upon JIS B0601".

3.3 Such specification of the material of the porous ceramic block and the insertion of the determination method do not prima facie alter the reasons which were given by the opposition division concerning lack of inventive step of the then second auxiliary request. It is also noted that A1, used by the opposition division as a starting document for the problem/solution approach, already cites in its paragraph [0016] silicon carbide as a suitable ceramic material. Hence, this amendment is prima facie not appropriate for overcoming the objection of lack of inventive step. The insertion of the determination method for the surface roughness has no influence on the reasons for the refusal of the patent either. The opposition division already implicitly assumed such a determination method in its reasoning. Accordingly, the reasons given by the opposition division for its finding of lack of inventive step still apply prima facie and have not been commented on otherwise during the written appeal proceedings.

3.4 When taking into account the proposed amendments / deletions of features in claim 1, it is clear that they raise issues which neither the Board nor the other parties could be expected to deal with since the appeal had not been based at all upon such subject-matter. In order to be admitted, any late-filed request should, for procedural economy reasons at least, be prima facie allowable, which is not the case here in view of the subject-matter having been held non-inventive by the opposition division.

3.5 Neither in the statement of the grounds of appeal nor in any subsequent submission did the appellant explain why the decision of the opposition division on inventive step of the second auxiliary request should be overturned. The appellant's argument that sections 3 to 5 in the grounds of appeal equally applied to the requests before the opposition division is not convincing. Section 3 refers in particular to the functional feature relating to the release of ashes, which feature was not present in the first instance requests. Section 4 specifically comments on the improvements added via the manufacturing process of extrusion moulding, which feature was also not present in the requests before the opposition division. Section 5 adds further statements concerning the mechanism to remove ashes and hence only provides arguments for the functioning of the honeycomb body when in use. Thus, all arguments previously filed in the appeal proceedings concern the impact of additional features. Although not decisive, it may also be added that D25 highlights the function of removing ashes as a crucial feature of the invention and compares the exfoliation of ashes when applying silicon carbide sheets in comparison to cordierite sheets. However, this test is not related to a honeycomb structural body having the claimed features and is also not related to the use in an exhaust gas purifying device. Therefore, the test results of D25 lack relevance for the claimed subject-matter.

3.6 Furthermore, the communication of the Board had already highlighted clarity objections to the amended features. Hence, in view of the maintenance of similar features in all subsequent written submissions, it could not have been expected that a request deleting these features would have to be considered at the oral proceedings for the first time.

3.7 If the request were admitted, the Board as well as the parties would be faced for the first time with new arguments as to why this claimed subject-matter would be inventive and why the opposition division's decision was incorrect. Accordingly, the deletion of these features has the effect of changing the appellant's case from that set out in the grounds of appeal and in a direction which, objectively, could not be expected. Such a request and supporting arguments could have been submitted earlier and their submission is thus not consistent with the requirements set out in Articles 12 and 13 RPBA.

3.8 Hence, the Board exercised its discretion under Article 13(1) RPBA not to admit the main request.

4. Auxiliary requests 1 to 4

4.1 Amendments

The subject-matter of claim 1 of all these requests is limited to specific ranges for the average particle sizes of a first and a second type of particles (first and second auxiliary requests) or of alpha- and ß-type silicon carbide particles (third and fourth auxiliary requests). The numerical ranges for the different average particle sizes are always the same and correspond to the ranges defined originally for "particles" in general. Hence, the "first type" or the "alpha-type" silicon carbide particles are claimed to have an average particle size in the range of from 0.3 to 50 mym and to be present in an amount of 100 parts by weight of particles. They are to be mixed with an amount of between 5 and 65 parts by weight of the "second type" or the "ß-type" silicon carbide particles, which are claimed to have an average particle size in the range of from 0.1 to 1.0 mym.

4.2 Article 123(2) EPC

4.2.1 No clear and unambiguous disclosure concerning such "first" and "second" "type" silicon carbide particles (as defined in the first and second auxiliary requests) is present in the application as originally filed, let alone any disclosure linking such particles to the defined range of particle size.

4.2.2 The disclosure of alpha-type and a ß-type silicon carbide particles (as defined in the third and fourth auxiliary requests) in the examples in the application as originally filed is linked to specific particle sizes and mixing relationships, whereas no disclosure is present which links these two types of silicon carbides to the ranges for the average particle sizes and the mixing relationship such as defined in claim 1 of the third and fourth auxiliary requests.

4.2.3 The appellant stated that "type" means the same as "size" and referred to paragraph [0032]. Paragraph [0032], however, refers to "two kinds of powders" but does not specify whether two different types of material or whether two different types of the same material should be considered. This ambiguous description therefore does not clearly disclose the two types of silicon carbide as claimed. The ranges disclosed in paragraph [0032] are not linked to silicon carbide, let alone to silicon carbide of particular types and particle sizes. The examples in the patent in suit do not provide a basis for such generally claimed two types of silicon carbide particles either, since they exclusively refer to a mixture of an alpha-type silicon carbide having a particle size of either 11 mym or of 50 mym and a ß-type silicone carbide having a particle size of 0.5 mym, rather than disclosing any ranges of particle sizes as in claim 1.

4.2.4 Hence, although the examples refer to a mixture of alpha- and ß-type silicon carbide, they do not cover the ranges disclosed in paragraph [0032] but refer to specific alpha-type silicon carbide and ß-type silicone carbide. Therefore, the examples do not provide a disclosure of the claimed ranges for alpha- and ß-type silicon carbide nor do they provide disclosure of the claimed ranges of particle sizes for any other types or kinds of compounds either.

4.2.5 Accordingly, there is no disclosure of "a first type" and "a second type", or "alpha-type silicon carbide" and "ß-type silicon carbide", linked to the claimed ranges and proportions. Thus the amendments to claim 1 result in subject-matter which is not disclosed in the application as filed, contrary to the requirement of Article 123(2) EPC.

4.3 Articles 83 and 84 EPC

The term "average particle size" is not further specified in the specification. There are two issues related to this terminology.

4.3.1 The first issue is that it is not clear (Article 84 EPC), whether the "average particle size" should be understood as the arithmetic mean diameter d, the volume or the mass mean diameter dv or the mean surface area diameter ds (see e.g. T 1819/07, reasons 3.2). These different definitions are commonly applied by the skilled person for particles having asymmetric shapes. The patent in suit also discloses no information in this respect.

4.3.2 The second issue is linked to the method of determination of the average particle size and concerns the availability of different methods for determining the values and ranges for the different definitions of average particle sizes. Again, there is no disclosure in this respect in the patent in suit.

4.3.3 The appellant referred, with regard to "average particle size" and its determination methods, to the disclosure in paragraph [0032] as providing sufficient information for the skilled person, who could therefore apply any well-known method to reliably reproduce such data. However, paragraph [0032] neither defines the kind of average particle size to be considered nor does it refer to a method for its determination. Claim 1 thus lacks clarity, contrary to Article 84 EPC.

4.3.4 In a further argument, the appellant relied upon D27. D27, however, only discloses a particular sort of alpha- and ß-type silicon carbide particles which could be purchased via one supplier. The method (TEM electron microscopy) applied by this supplier for the determination of the particle size is not further defined with regard to its specific determination characteristics, something that would be necessary in order to allow reliable reproducibility of the results. D27 is also an internet-printout from 2011 and thus, being published well after the filing date of the patent, lacks relevance.

4.3.5 The lack of any indication as to which type of average particle size is meant, and the lack of any determination method in the patent specification, also result in a lack of sufficient disclosure. Although the appellant referred to well-known sieving methods, not only does the patent not disclose such a method, but in view of the claimed nm- and mym-ranges of the particle sizes it is evident that a detailed description of such a method would be required. The requirements of Article 83 EPC are therefore also not met.

4.4 It follows from the above that these requests are clearly not allowable. Under these circumstances and since they were filed at a very late stage of the proceedings, namely during the oral proceedings, the Board exercised its discretion under Article 13(1) RPBA not to admit these requests.

5. Auxiliary request 5

5.1 Since claim 1 also defines an "average particle size", the objections under Article 83 and 84 EPC applicable to the first to fourth auxiliary requests above apply equally to this request.

5.2 At least for these reasons also this request is clearly not allowable. Hence, the Board exercised its discretion under Article 13(1) RPBA not to admit this request into the proceedings.

6. Appellant's request for remittal of the case to the opposition division

Since none of the late-filed requests could be admitted into the proceedings, remittal of the case to the opposition division would not serve any useful purpose.

Whilst under Article 111(1) EPC the Board has a power ex officio to remit the case to the opposition division for further prosecution, it would only be appropriate to do this in a case where, as a minimum, there were materials before it which indicated that one or more of the claims under attack in the appeal proceedings were prima facie highly likely to be valid (see e.g. T 1002/92, paragraph 3.4 (OJ EPO 1995, 605)). In the present case, no such materials exist. The request for remittal is therefore refused.