T 2010/17 (Selection of an available memory size/THALES DIS FRANCE) of 9.6.2021

Summary of Facts and Submissions

I. The appeal was filed by the patent proprietor (appellant) against the decision of the opposition division to revoke European patent No. 2399257 ("the patent") granted on European patent application No. 10703845.7, which had been published as international application WO 2010/094592.

During the opposition proceedings, the opponent (respondent) had raised the grounds for opposition under Article 100(a) EPC (lack of novelty and lack of inventive step), Article 100(b) EPC (insufficiency of disclosure) and Article 100(c) EPC (added subject-matter).

II. The opposition division decided that the patent as granted (main request) fulfilled the requirements of Articles 83 and 123(2) EPC and that the subject-matter of claim 1 lacked novelty over document D7 (US 2009/024805 A1, published on 22 January 2009).

The opposition division also decided that the then first auxiliary request was not admissible under Rule 80 EPC as it introduced an amendment in granted claim 1 that was not occasioned by a ground for opposition and that the subject-matter of claim 1 of the then second auxiliary request lacked novelty over document D7.

III. In its statement of grounds of appeal, the appellant requested that the patent be maintained on the basis of the granted set of claims (main request) or in amended form on the basis of either a first or second auxiliary request, both submitted for the first time with the grounds of appeal. The appellant argued why document D7 did not disclose the claim feature related to the generation of a signature. The first auxiliary request was limited to claims 3 to 6 of the granted set of claims. The second auxiliary request limited the first auxiliary request further to a specific way of calculating the signature disclosed in paragraph [21] of the opposed patent.

IV. With its response to the appellant's statement of grounds of appeal, the respondent requested that the appeal be dismissed. It maintained its submissions made in the opposition proceedings before the department of first instance with respect to non-allowability. It submitted further arguments against novelty of the claimed feature relating to a signature, clarity of the auxiliary requests and inventive step of the second auxiliary request. Moreover, it questioned the admissibility of the auxiliary requests.

V. The parties were summoned to oral proceedings. In a communication under Article 15(1) RPBA 2020, the board informed the parties that the first and second auxiliary requests appeared to be inadmissible and expressed its provisional opinion on the ground for opposition under Article 100(a) EPC for all requests then on file. In particular, it expressed that claim 1 of each of the requests did not seem to be inventive over document D7.

VI. With its letter of reply dated 11 August 2020, the appellant submitted third to fifth auxiliary requests together with further arguments.

VII. Oral proceedings were held by videoconference as scheduled before the board. During these proceedings, the appellant submitted its sixth and seventh auxiliary requests. At the end of the oral proceedings, the Chair pronounced the board's decision.

VIII. The appellant's final requests were that the decision under appeal be set aside and that the patent be maintained as granted or, in the alternative, that the patent be maintained in amended form on the basis of one of the first or second auxiliary request filed with the statement of grounds of appeal, the third to fifth auxiliary requests filed with the letter of 11 August 2020, or the sixth or seventh auxiliary request filed during the oral proceedings.

IX. The respondent's final request was that the appeal be dismissed.

X. Claim 1 of the patent as granted (main request) reads as follows (itemisation in parentheses added by the board):

"(1.1)A method for configuring an available memory size of an integrated circuit comprising at least a processor and a total memory,

(1.2) the method comprising a stage for the configuration of an available memory size

(1.3) smaller than or equal to that of the total memory,

(1.4) characterised in that the configuration method is carried out by a circuit user

(1.5) other than the circuit manufacturer, and in that the configuration method includes:

(1.6) - a step of selecting the memory size of the integrated circuit,

(1.7) - a step of registering and locking the selected memory size,

(1.8) where such registration is locked permanently, and

(1.9) - a step of generating a signature representative of the selected memory size by the integrated circuit."

XI. Claim 1 of the first auxiliary request reads as follows:

"An integrated circuit including a total memory that is configurable so as to obtain an available memory with a size smaller than the total memory, characterised in that it comprises:

- at least one memory zone to permanently store setting up information that defines the configuration of the memory size, and

- means to generate a signature representative of the configuration of the memory size."

Dependent claim 2 of the first auxiliary request reads as follows:

"An integrated circuit according to claim 3, which further includes a communication interface capable of transmitting the signature."

Dependent claim 3 of the first auxiliary request reads as follows:

"An integrated circuit according to claim 4, which further comprises blocking/unblocking means that block the normal working of the integrated circuit until an unblocking command is sent back in response to the sending of the signature."

Claim 4 of the first auxiliary request reads as follows:

"A smart card characterised in that it comprises an integrated circuit according to any claim from 1 to 5."

XII. Claim 1 of the second auxiliary request differs from claim 1 according to the first auxiliary request in that it adds the following text at the end of the claim: ", said signature being calculated on the basis of the start address and end address of the selected available memory size, and a circuit serial number."

Claims 2 to 4 of the second auxiliary request are identical to claims 2 to 4 of the first auxiliary request except that claim 4 of the second auxiliary request refers to claims 1 to 3 (instead of claims 1 to 5).

XIII. Claim 1 of the third auxiliary request differs from claim 1 according to the main request in that step (1.7) has been amended to

"- a step of registering and locking the selected memory size, wherein a circuit memory management unit locks read and/or write accessibility to only selected memory size,".

XIV. Claim 1 of the fourth and fifth auxiliary requests corresponds to claim 1 of the first and second auxiliary requests, respectively.

Dependent claims 2 and 3 of the fourth and fifth auxiliary requests differ from claims 2 and 3 of the first auxiliary request in that they refer to claims 1 and 2, respectively. Moreover, claim 4 of the fourth and fifth auxiliary requests is identical to claim 4 of the second auxiliary request.

XV. Claim 1 of the sixth auxiliary request differs from claim 1 according to the fifth auxiliary request in that the text "said setting up information being loaded by a bootloader," has been added after "- at least one memory zone to permanently store setting up information that defines the configuration of the memory size,".

XVI. Claim 1 of the seventh auxiliary request differs from claim 1 according to the third auxiliary request in that it replaces the step of registering and locking with the following text (amendments marked by underlining):

"- a step of registering and locking the selected memory size, wherein the selected memory size is loaded by a bootloader, wherein a circuit memory management unit locks read and/or write accessibility to only selected memory size, wherein a start address and end address defines the selected memory size, and wherein such registration is locked permanently, and".

XVII. The arguments of the parties, where relevant to this decision, are discussed in detail below.

Reasons for the Decision

Main request (patent as granted)

1. Novelty (Article 100(a) EPC)

1.1 Document D7 (paragraph [0008]) discloses methods and computational systems that include or provide an electronic device that enables access to an additional memory capacity. The electronic device ("computer") includes a controller, a memory and an access logic. The memory and the access logic are bi-directionally communicatively coupled with the controller. The memory includes an open memory area and a partitioned memory area, with the open area available being for use by the controller upon an initial sale, installation or start-up. The access logic is configured to enable access to the partitioned memory by the controller after a receipt by the access logic of a key or an access purchase confirmation. The access logic may be comprised within a secure application program comprised within the computer and containing data access logic operable to enable the controller to access the partitioned memory.

1.2 The contested decision found that document D7 discloses features (1.1) to (1.8) of claim 1 in paragraphs [0008], [0012], [0013] and [0029] (see points 12.3 and 12.3.1 of the contested decision and point X. above for the itemisation of claim 1 of the main request). The opposition division also considered that features (1.7) and (1.8) were disclosed in D7, paragraph [0029]. D7 disclosed that users were informed that they could purchase access to the partitioned memory. In response to a purchase request from a user, a key was generated and transmitted to the user's computer where the computer's access logic used the key to enable access to the partitioned memory.

1.2.1 Moreover, the opposition division decided that feature (1.9) of claim 1 was disclosed in D7, paragraph [0042], in the context of the method for enabling access to the partitioned memory according to Figure 4 (see point 12.3.2 of the contested decision). The opposition division interpreted the feature (1.9) as meaning that a characteristic mark of the selected memory size was generated by the integrated circuit. It considered that the payment information transmitted in step 4.12 of the method of Figure 4 in D7 necessarily included the chosen memory size and thus the claimed characteristic mark, i.e. the signature. It was not specified in claim 1 as granted that the characteristic mark contained encrypted information. Nevertheless, the opposition division accepted that a signature had an inherent meaning of security (see contested decision, point 14).

1.3 With the grounds of appeal, the appellant contested that document D7 disclosed feature (1.9). With its letter of reply to the board's communication, it contested that document D7 disclosed features (1.7), (1.8) and (1.9) of claim 1.

1.3.1 According to the appellant, D7 did not disclose features (1.7) and (1.8) in paragraph [0029]. None of the steps disclosed in that paragraph involved any locking of the memory size as required by feature (1.7) or any locking of the registration of the memory size as specified in feature (1.8) of claim 1. The term "locking" meant an active action of securing any data. In some cases, as described in the patent, this active action was performed by blocking read and/or write access to the portion of the memory which was not going to be available. In contrast, document D7 did not block any accessibility; it only "enabled" access to the partitioned memory. Hence, there was no securing action over the rest of the partitioned memory, which should not be accessed by the user.

1.3.2 The appellant also contested the opposition division's reasoning concerning feature (1.9). D7 did not disclose feature (1.9) but rather that the server (and not the integrated circuit) generated a "signature" as a function of the payment for unlocking memory. The keys for unlocking areas of the memory in D7 could be interpreted as a signature. Moreover, the term "signature" meant "secure signature" as there was no other way of providing a signature in the context of the invention. Contrary to the respondent's view, D7 did not disclose any "clear text signature".

1.3.3 In the appellant's opinion, as document D7 did not disclose features (1.7), (1.8) and (1.9) of claim 1, the subject-matter of claim 1 was new over document D7.

1.3.4 As to inventive step, the appellant agreed that document D7 is the closest prior art for assessing inventive step. However, it argued that D7 would not have provided any prompt to the skilled person for features (1.7) and (1.8) as D7 disclosed neither blocking the memory nor permanently registering a memory size. These features of the claimed invention solved the technical problem of how to improve the security over the non-accessible portion of the memory.

Moreover, in D7, it was the user who decided to buy access to the partitioned memory, and there was no indication that the "signature" was generated by the integrated circuit. In fact, document D7 did not provide any details on the purchasing, and the skilled person would not have known how to address the technical problem of improving the security of the purchase process. Consequently, feature (1.9) would not have been obvious. The other documents also did not disclose any prompt regarding features (1.7) to (1.9).

1.4 The respondent argued that all features of claim 1 were known from document D7. As to features (1.7) and (1.8), document D7 disclosed in paragraph [0029] that the user was denied access to the partitioned memory when the computer was activated. The user could then purchase access and received in return a key to enable access to the partitioned memory.

The patent did not disclose that permanent locking of memory implied a permanent action concerning memory access. Rather, paragraph [0019] of the patent disclosed that the whole memory was accessible and that a memory management unit could deny access to any memory address not belonging to the memory portion according to the selected memory size. Hence, the physical memory was not blocked but just made not addressable.

1.4.1 As to feature (1.9), the respondent argued that the skilled person would not have understood the claimed signature as meaning a "digital signature" in a cryptographic sense. This was supported by the fact that the patent did not disclose how to generate the signature.

According to the respondent, the selected memory size should be derivable from the signature as it represented this memory size. The use of clear text corresponded to a signature used in an email, whereas for an encrypted message, a key for decrypting was needed to read the signature. Hence, an encrypted signature was not covered by the contested patent. Moreover, the signature according to the claims could not be interpreted as a key. Consequently, the proprietor's opinion that the key sent by the server in D7 was a signature was incorrect. Rather, the signature could simply be redundant data transmitted to secure a message against loss of data.

1.5 The board agrees with the respondent that document D7 discloses features (1.7) and (1.8). These features specify that the selected memory size is registered and locked permanently. The claim wording specifies the method steps on a functional level and does not imply any actions for blocking access to physical memory on a permanent basis (such as using a one-time programming memory, which is disclosed in paragraph [0020] of the patent as an implementation option). The claim features (1.7) and (1.8) specify that only the selected memory size is registered and locked. This is exactly what document D7 discloses in paragraph [0029], where the selected memory size is indicated by the key, which is then applied to permanently enable access to all or some of the partitioned memory depending on the user's selection. In document D7, by use of the received key, the selected memory size is registered permanently. In view of its interpretation of the claimed subject-matter and its analysis of D7, the board is not convinced by the appellant's arguments. Consequently, features (1.7) and (1.8) of claim 1 are disclosed in document D7.

1.6 The board considers that document D7 does not explicitly or implicitly disclose feature (1.9) of claim 1. The term "signature" used in this feature is interpreted as meaning a "security signature" (see paragraph [0021] of the patent) used to calculate a signature for data to be transmitted (see paragraph [0022] of the patent). Hence, the board agrees with the appellant that, at least in the context of the current application, the term "signature" is to be interpreted as being associated with security and may be used for enhancing the security of a message to the server. This interpretation is consistent with the fact that the signature is generated by the integrated circuit itself. Consequently, the board is not convinced by the respondent's arguments that the signature could be interpreted as a clear text signature or as merely providing redundancy for data transmission.

The board is also not convinced that document D7 explicitly or implicitly discloses in paragraph [0042] that the payment information transmitted to the server according to step 4.12 of D7 includes a signature for security purposes. There is no explicit or implicit disclosure of the calculation of any signature. The board considers that payment information is often, but not always, secured when it is transmitted. Moreover, even if it were accepted that payment information is secured, it may be secured other than by means of a signature.

1.7 In view of the above, the subject-matter of claim 1 is new over document D7 (Article 54 EPC) since feature (1.9) is not disclosed in D7.

2. Inventive step (Article 100(a) EPC)

2.1 The skilled person, when starting from document D7, could and would have arrived at feature (1.9) without exercising inventive skill in view of the business requirement to transmit payment data in a secure manner to the manufacturer of the integrated circuit. In this context, the board notes that in accordance with the established case law of the boards, when assessing inventive step using the problem/solution approach, an aim to be achieved in a non-technical field (such as the business need mentioned above) may legitimately be added to the problem as a constraint to be met (see decisions T 641/00, OJ EPO 2003, 352; T 154/04, OJ EPO 2008, 46).

Moreover, it was well known to use digital signatures or the like to enhance the security of messages. The board notes that the contested patent does not disclose any details on how the signature is calculated. It discloses merely which data is used to calculate the signature. In view of this, from the patent specification, it is assumed that it would have been well known to calculate signatures. Since the skilled person would have considered adding a signature to the payment data to be transmitted to the server in D7 as a matter of routine development, it also would have been immediately clear that the signature has to be generated on the side of the sender of the message, i.e. the computer (integrated circuit), and not on the side of the server, as the signature needs to be sent with the payment data. Consequently, feature (1.9) of claim 1 cannot be a basis for acknowledging inventive step.

2.1.1 The board further considers that the key sent to the computer for enabling access to the memory according to document D7 has a similar function as the return receipt that is sent back by the server, in response to the received message comprising the signature, to the integrated circuit according to paragraph [0023] of the patent. This return receipt "may also constitute a condition for allowing the overall working of the circuit [...]", i.e. the return receipt may be necessary to enable access to the memory on the integrated circuit. Moreover, paragraph [0023] of the patent also explains that the message comprising the signature is "particularly for the purpose of charging the price". Hence, the appellant's argument that the signature according to feature (1.9) is contrary to the approach of D7 in which the key is sent from the server to the computer is not convincing.

2.2 In view of the above, the subject-matter of claim 1 lacks inventive step (Article 56 EPC) when starting from document D7 in combination with the common general knowledge.

First auxiliary request

3. Admissibility

3.1 The set of claims of the first auxiliary request corresponds to granted claims 3 to 6.

3.2 The appellant did not substantiate the first auxiliary request in its statement of grounds of appeal. In the oral proceedings, the appellant argued that the first auxiliary request was admissible since no amendments had been made. Thus, the subject-matter of independent claim 3 of the patent could be discussed in the appeal proceedings.

3.3 In its reply to the statement of grounds of appeal, the respondent argued that the first auxiliary request was inadmissible since the dependencies of the dependent claims were incorrect. A further reason for not admitting the first auxiliary request was that the proprietor had not explained why the opposition division's opinion that granted claim 3 (i.e. claim 1 of the current first auxiliary request) lacked novelty over document D7 was incorrect. In the oral proceedings, the respondent stated that the first auxiliary request also gave rise to new issues under Articles 123(2), 83 and 56 EPC, as explained in the notice of opposition for claim 3 as granted.

3.4 Since the statement of grounds of appeal was filed before the entry into force of the Rules of Procedure of the Boards of Appeal 2020, Article 12(4) RPBA 2007 is still applicable (Article 25 (2) RPBA 2020).

3.5 In accordance with Article 12(4) RPBA 2007, the board has the power to hold inadmissible facts, evidence or requests which could have been presented in the first-instance proceedings.

With its statement of grounds of appeal, the appellant submitted for the first time requests which no longer contained the independent method claim 1 on which the contested decision is based but which only comprised claims of a product category (integrated circuit).

The board sees no reason why the current first auxiliary request could not have been filed earlier in the opposition proceedings at least as an auxiliary request since its purpose is to obtain a decision on the subject-matter of claim 3 as granted which had been objected to already in the notice of opposition (see also the decisions cited in Case Law of the Boards of Appeal of the EPO, 9th edition 2019, V.A.4.11.3 d)).

The appellant did not provide any convincing argument why it could only file the first auxiliary request in reaction to the contested decision. Filing this request only with the statement of grounds of appeal forced the board either to decide for the first time on the subject-matter of claim 1 of the current first auxiliary request (i.e. claim 3 of the patent as granted), something which is contrary to the primary object of appeal proceedings to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020), or to remit this request to the opposition division for further prosecution. However, in the case at issue, no special reasons present themselves for remitting the case (Article 11 RPBA 2020).

3.5.1 Moreover, the appellant did not substantiate the first auxiliary request in its statement of grounds of appeal but only later with its reply to the board's communication. The board agrees with the respondent that the appellant should have explained in its statement of grounds of appeal why the subject-matter claimed in the first auxiliary request was new over document D7. In particular, Article 12(4) RPBA 2007 requires among other things that everything presented with the statement of grounds of appeal should meet the requirements set out in Article 12(2) RPBA 2007, i.e. contain the appealing party's complete case (see also the decisions cited in Case Law of the Boards of Appeal of the EPO, 9th edition 2019, V.A.4.12.5).

3.6 In view of the above, the first auxiliary request is not admitted into the appeal proceedings under Article 12(2) and (4) RPBA 2007.

Second auxiliary request

4. Admissibility

4.1 The second auxiliary request differs from the first auxiliary request in that claim 1 additionally specifies that the signature is calculated on the basis of the start and end addresses of the selected available memory size and a circuit serial number.

4.2 In its statement of grounds of appeal, the appellant submitted that this request specified the way the signature was calculated more precisely based on paragraph [0021] of the granted patent. In the oral proceedings, it argued that this amendment was made to confirm that the signature is a digital signature given that the opposition division had not correctly interpreted this feature. Hence, the second auxiliary request was admissible as it was substantiated with respect to novelty and inventive step, even though the appellant had not expressly addressed all steps of the problem-and-solution approach.

4.3 In its reply to the statement of grounds of appeal, the respondent argued that the dependencies of the dependent claims were incorrect and that the proprietor had not provided a basis for the amended subject-matter of claim 1. Hence, the second auxiliary request was inadmissible. Furthermore, the respondent argued that the subject-matter of claim 1 was not inventive. In the oral proceedings, it added that the second auxiliary request was also inadmissible as it raised new complex issues under Article 84 EPC (the feature regarding the signature added in the second auxiliary request was unclear) and Article 123(2) EPC (there was an intermediate generalisation as claim 1 of the second auxiliary request isolated features from the description which disclosed further interrelated features such as the boot loader). Moreover, the request was inadmissible as the claimed subject-matter lacked inventive step.

4.4 In the board's view, the second auxiliary request, for similar reasons as the first auxiliary request, does not meet the requirements of Article 12(4) RPBA 2007 as it limits the claims to the subject-matter of claims on which the opposition division has not decided. Moreover, the appellant added a feature taken from the description to claim 1 of the second auxiliary request to clarify the meaning of the term "signature". However, it was already evident in the proceedings before the opposition division at an early stage that the meaning of the term "signature" was a point of discussion (see also the second auxiliary request considered in the contested decision, which amended "signature" to "security signature" to clarify the meaning of the term "signature"). Thus, this clarification could and should have been presented in the first-instance proceedings (at the latest in the oral proceedings before the opposition division, which the appellant chose not to attend) and not for the first time with the statement of grounds of appeal.

4.5 In view of the above, the second auxiliary request is not admitted into the appeal proceedings (Article 12(4) RPBA 2007).

Third to fifth auxiliary requests

5. Admissibility

5.1 The third to fifth auxiliary requests were filed after oral proceedings had been arranged with the appellant's reply to the board's communication. In this reply (see points 1.1 and 1.2), the appellant submitted that these auxiliary requests responded to "the objections shown in the decision under appeal" and that "the content of these new auxiliary requests" was "totally within the argumentation contained in the decision

under appeal".

In the oral proceedings, the appellant submitted that it had provided a basis for all amendments made in the third to fifth auxiliary requests. Moreover, the third to fifth auxiliary requests had been filed almost a year before the oral proceedings. Hence, the respondent had had enough time to consider these auxiliary requests and to prepare itself for the oral proceedings.

According to the appellant, the third auxiliary request had been filed in reply to point 2.3.3 of the respondent's reply to the statement of grounds of appeal. There the respondent had argued why it would have been obvious to transmit information about the memory size to be unblocked. The feature of locking the read/write memory access only to a selected memory size was a key feature of the invention, and the third auxiliary request clarified this issue in reply to the respondent's submissions in the appeal proceedings.

As to the issues of clarity and intermediate generalisation brought forward by the respondent only at the oral proceedings against the third auxiliary request, the appellant argued that there were no functional interrelationships supporting an intermediate generalisation regarding the boot loader, for example, and that the wording of the claim was clear when considering that the focus of the patent was only on the changes in manufacturing so that ancillary features known to the skilled person were not mentioned. Consequently, the third auxiliary request should be admitted.

The fourth and fifths auxiliary requests corresponded to the first and second auxiliary requests but with corrected dependencies and were admissible.

5.2 In the oral proceedings, the respondent submitted that the third to fifth auxiliary requests should not be admitted. These auxiliary requests were not convergent as the third auxiliary request reintroduced the independent method claim which was no longer present in the first and second auxiliary requests.

Furthermore, the third auxiliary request was late filed as it could have been submitted with the statement of grounds of appeal. There was no reason for submitting it only after the board presented its preliminary opinion. The third auxiliary request also raised fresh issues regarding clarity ("to only selected memory size" did not imply any restriction of access to the memory itself), Article 123(2) EPC (intermediate generalisation) and Article 56 EPC (claim 1 added merely the usual functionality of a memory management unit to claim 1 of the main request).

The fourth and fifth auxiliary requests were inadmissible as they did not change anything over the first and second auxiliary requests apart from the claim dependencies.

5.3 The board agrees with the respondent that the third auxiliary request prima facie raises new complex issues, in particular clarity and added subject-matter in view of an intermediate generalisation. The board also remarks that the wording of the amended feature is not directly taken from the description, page 4, lines 19 to 22, to which the appellant referred, as it omits a reference to a memory zone, thus also making a discussion of this issue necessary.

Moreover, the board considers that the amendment made does not prima facie overcome the issue of inventive step as it seems to add just the usual functionality of a memory management unit, as argued by the respondent.

The board also agrees with the respondent that the third auxiliary request was late filed since, according to the appellant, it was submitted as a reaction to the respondent's reply to the statement of grounds of appeal but was filed only after the board's summons to oral proceedings and only after the board's subsequent communication. Hence, the third auxiliary request is late filed and detrimental to procedural economy.

In view of the above, the board does not admit the third auxiliary request into the appeal proceedings (Article 13(1) RPBA 2020).

5.4 The fourth and fifth auxiliary requests were filed in reply to the board's communication, but they only correct the claim dependencies to which the respondent had objected in its reply to the statement of grounds of appeal. These auxiliary requests thus essentially correspond to the first and second auxiliary requests. As the first and second auxiliary requests were not admitted, the fourth and fifth auxiliary requests are not admitted for substantially the same reasons, i.e. these requests could and should have been filed earlier in the proceedings before the department of first instance.

5.5 In view of the above, the fourth and fifth auxiliary requests are not admitted under Article 12(3) RPBA 2020.

Sixth and seventh auxiliary requests

6. Admissibility

6.1 The sixth and seventh auxiliary requests were filed at a very late stage in the oral proceedings after the board had heard the parties on the main request and the first to fifth auxiliary requests and had informed the parties of its conclusions on these requests.

6.2 The appellant provided a basis for the amendments made and submitted that the sixth and seventh auxiliary requests were filed in reaction to new issues raised by the respondent for the first time during the oral proceedings, in particular relating to an alleged intermediate generalisation. The respondent had argued that the feature added in the third auxiliary request isolated features from further features disclosed in the description such as the boot loader. Consequently, the appellant had submitted the new sixth and seventh auxiliary requests as a quick reaction to overcome this issue. Moreover, it had replied always in time to all issues, whereas the respondent had not replied to the third to fifth auxiliary requests before the oral proceedings, this being an abuse of the procedure.

6.3 The respondent argued that the sixth and seventh auxiliary requests should not be admitted into the appeal proceedings. It argued that Article 12(2) RPBA 2007 also required that any auxiliary requests be submitted with the statement of grounds of appeal. Filing auxiliary requests late in the oral proceedings did not comply with this provision. In both auxiliary requests, the issue regarding the intermediate generalisation was not solved by adding the boot loader as a further feature. The feature related to the boot loader in the sixth auxiliary request was prima facie unclear as it was not clear how this process feature was limiting in the context of claim 1 which related to a product. The seventh auxiliary request was again not convergent as it reintroduced the independent method claim that had been deleted in higher-ranking auxiliary requests.

6.4 The board agrees with the respondent that the sixth and seventh auxiliary requests raise new complex issues such as added subject-matter (intermediate generalisation) and clarity (at least for the sixth auxiliary request) and were filed at a very late stage of the appeal proceedings, namely near the end of the oral proceedings before the board. Moreover, the respondent correctly argued that there was a lack of convergence of these auxiliary requests (see also the decisions cited in Case Law of the Boards of Appeal of the EPO, 9th edition 2019, V.A.4.12.4). The admission of the sixth and seventh auxiliary requests into the proceedings would thus be detrimental to procedural economy.

Consequently, the board exercises its discretion under Article 13(1) RPBA 2020 not to admit the sixth and seventh auxiliary requests into the proceedings.

Allegation of abuse of procedure

7. While the board would have preferred to be informed of the respondent's arguments against the admissibility of the third to fifth auxiliary requests before the oral proceedings, it sees no abuse of the procedure in the respondent presenting its arguments concerning the admissibility of these new claim requests only at the oral proceedings. The third to fifth auxiliary requests were filed in reply to the board's preliminary opinion and before that the respondent had already extensively discussed the claim requests submitted with the statement of grounds of appeal. The appellant had to anticipate that the admissibility of its newly filed auxiliary requests could be challenged by the respondent at the oral proceedings and had to be aware that amendments made by adding features from the description could trigger fresh issues under Article 123(2) EPC. Moreover, a late presentation only at the oral proceedings also bears risks for the respondent, for example, when it is unexpectedly prevented from taking part in the oral proceedings and the oral proceedings take place in its absence or when the board considers that the new arguments change the party's case (see also the decisions cited in Case Law of the Boards of Appeal of the EPO, 9th edition 2019, V.A.4.10.3).

Conclusion

8. Since the sole request admitted into the appeal proceedings is not allowable, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.