T 1051/18 () of 15.1.2021

Summary of Facts and Submissions

I. The appeal was filed by the opponent (appellant) against the interlocutory decision of the opposition division finding that, on the basis of auxiliary request 3 then on file, the patent in suit met the requirements of the EPC.

II. Oral proceedings pursuant to Article 116 EPC were held by videoconference before the Board on 15 January 2021.

III. The appellant (opponent) requested that the decision under appeal be set aside and that the patent be revoked. Additionally, it requested that auxiliary requests 3, 4 and 6 to 9 not be admitted because they violated the principle of prohibition of reformatio in peius.

The respondent (patent proprietor) requested that the appeal be dismissed (i.e. that the patent be maintained as allowed by the opposition division) or, alternatively, that the patent be maintained on the basis of one of auxiliary requests 1 to 10 filed with the letter of 5 November 2018.

IV. Independent claim 1 of the main request reads as follows (with feature denominations in accordance with the decision under appeal):

"1) A nasogastric or nasoenteric feeding tube comprising;

1.1) an elongate body being of sufficient length that a proximal end (130B) of the elongate body may be disposed outside of a patient adjacent a nasal or oral cavity of the patient while the elongate body extends through the nasal cavity of the patient, through the patient's esophagus and at least into the stomach,

1.2) the elongate body including at least one lumen (36, 264) having an opening through a distal end,

1.3) the lumen (36, 264) configured for passing a feeding solution therethrough,

1.4) and an optical system (276, 40A, 40B, 346) disposed within the elongate body

1.5) comprising a lighting structure for lighting tissue adjacent the distal end (130A)

1.6) and an image transmitting structure for conveying images of tissue adjacent the distal end (130A),

1.7) wherein the image transmitting structure is selected from a lens (282) or a camera (283) with a lens attached to a plurality of fiber optic fibers (280), and

1.8) wherein the lens is recessed from the end of the feeding tube."

Claim 1 of auxiliary requests 1 and 2 is identical to that of the main request.

In claim 1 of auxiliary requests 3, 4 and 6-9, Features 1.7 and 1.8 are deleted and replaced by other limitations no longer requiring a "lens recessed from the end of the feeding tube" and not related to this feature.

Claim 1 of auxiliary request 5 differs from claim 1 of the main request in the following features (differences highlighted):

"1.2) the elongate body including [deleted: at least onea] lumen (36, 264) having an opening through a distal end,",

"1.4) and an optical system (276, 40A, 40B, 346) disposed within a second lumen of the elongate body,

1.5) the optical system comprising a lighting structure for lighting tissue adjacent the distal end (130A)", and

"1.9) and the second lumen (272) further comprising a void (284) for allowing fluid to flow in the lumen alongside the optical system (276, 40A, 40B, 346);".

Claim 1 of auxiliary request 10 differs from claim 1 of the main request by the additional feature:

"1.10) and wherein the distal end of the optical system (276, 40A, 40B, 346) is anchored so that the distal end of the optical system is deflected towards the central long axis of the feeding tube."

V. The appellant's arguments can be summarised as follows.

(a) Main request

A recessed lens was only mentioned in the application as filed on page 25, lines 11-31. This passage and Figure 13 to which it referred disclosed an "optical system/fluid lumen" or "third lumen" (272) used "both for the optical system and for solution injection to flush the lens". While Figure 13 only showed the "third lumen", it was stated on page 25, line 12, that "the remaining lumens discussed above are omitted" from the figure for clarity. All preceding cross-sectional views of the feeding tube showed three lumina. Accordingly, omission of the three-lumen structure represented an intermediate generalisation which extended beyond the content of the application as filed contrary to the requirements of Article 123(2) EPC.

(b) Auxiliary requests 1, 2 and 10

Claim 1 of auxiliary requests 1 and 2 was identical to claim 1 of the main request, and thus suffered from the same deficiency. The additional Feature 1.10 of claim 1 of auxiliary request 10 did also not overcome this objection.

(c) Auxiliary requests 3, 4 and 6-9

In claim 1 of these requests, Feature 1.8 was deleted. Its scope of protection was thus broader in this respect than the request found allowable by the opposition division. Allowing these requests would therefore put the opponent as the sole appellant in a worse position than if it had not appealed. This violated the principle of prohibition of a reformatio in peius as set out in G 9/92. Hence, auxiliary requests 3, 4 and 6-9 were to be rejected.

(d) Auxiliary request 5

The additional Feature 1.9 of claim 1 was disclosed verbatim on page 22, lines 20-22, of the application as filed. However, the subsequent passage on page 22, lines 23-28, additionally specified that "the void [...] allows a cleaning fluid [...] to be injected through the third lumen and help clean the lens".

This close functional and structural relationship between the "void" and the lens was not reflected in claim 1. The "void" in claim 1 could be anywhere "alongside the optical system" but not necessarily alongside the lens. Claim 1 did not specify that fluid could be injected through the third lumen, nor that the fluid could flush the lens. The "void" of claim 1 could be a confined space that allowed local fluid flow within the void. Hence, claim 1 of auxiliary request 5 omitted the originally disclosed feature that the void allowed fluid to be injected through the third lumen to flush the lens. It thus constituted an intermediate generalisation of the original disclosure which extended beyond the content of the application as filed.

VI. The respondent's arguments can be summarised as follows.

(a) Main request

There was no structural or functional relationship between a recessed lens as disclosed on page 25, lines 12-17, of the application as filed and the presence of three lumina in the feeding tube. While Figures 7-14 all showed a recessed lens, Figure 13, to which the passage on page 25 related, merely showed a single lumen. This emphasised that the other lumina were not necessary. Hence, claim 1 did not extend beyond the content of the application as filed.

(b) Auxiliary requests 1, 2 and 10

As claim 1 of auxiliary requests 1 and 2 was identical to that of the main request, it also fulfilled the requirements of Article 123(2) EPC. The additional Feature 1.10 of claim 1 of auxiliary request 10 was disclosed in combination with the recessed lens on page 25, lines 21-26, of the application as filed, and did thus also not extend beyond its content.

(c) Auxiliary requests 3, 4 and 6-9

These requests should be considered by the Board as they represented a bona fide attempt to address and overcome the objections raised by the appellant for the first time in the appeal proceedings.

(d) Auxiliary request 5

Claim 1 specified a separate "second lumen" (272) for the optical system. The third lumen (250) disclosed in the application, which contained a steering wire, was not functionally or structurally linked with the second lumen or the optical system and could thus be omitted without infringing the requirements of Article 123(2) EPC.

Claim 1 additionally specified a void (Feature 1.9) in the second lumen that allowed fluid flow alongside the optical system. The skilled person would have understood that the void allowed fluid injection from the proximal end through the lumen to the distal end of the second lumen and thus also implied the function of cleaning the lens. Accordingly, claim 1 specified all the features disclosed in combination with the void and the recessed lens in the application as filed.

Reasons for the Decision

1. Main request

Claim 1 describes a feeding tube comprising an "elongate body" including "at least one lumen [...] for passing a feeding solution therethrough" (Features 1.2 and 1.3) and "an optical system disposed within the elongate body" of the feeding tube (Feature 1.4). The optical system could thus be anywhere within the elongate body, for example, within the feeding lumen or embedded in the wall of the elongate body.

Feature 1.8 specifies that the lens of the optical system is "recessed from the end of the feeding tube". The application as originally filed mentions the recessed position of the lens only on page 25 in a paragraph describing Figure 13, where Feature 1.8 is disclosed verbatim on lines 16-17. While Figure 13 depicts a tube with a single "optical system/fluid lumen", it is explained that "the remaining lumens discussed above are omitted for clarity" from the figure (page 25, lines 11-12).

Accordingly, the embodiment from which Feature 1.8 is taken includes three lumina: a "feeding lumen" (264), a "steering lumen" (250) carrying a steering wire and a "third" or "optical system/fluid lumen" (272) including the optical system, as disclosed, for example, on page 22, lines 9-17.

Page 25, lines 11-20, teaches that the lens is recessed to "protect" it from contact with the feeding solution or bodily fluids in its vicinity and to allow it to "be left in place over a prolonged period of time". Importantly, recessing the lens from the end of the feeding tube is disclosed as an alternative to the conventional approach in which "a protective lens is typically disposed at the distal end of an endoscope" as this would "inhibit the use of the third lumen 272 both for the optical system and for solution injection to flush the lens". Hence, the recessed lens is presented in a specific context, namely in combination with the function of the third lumen, which is used "both for the optical system and for solution injection to flush the lens" (page 25, lines 19-20).

Accordingly, the passage from which the recessed position of the lens of the optical system is derived discloses that the recessed position of the lens is to be seen in a close functional and structural relationship with a separate lumen, which serves both for containing the optical system and for passing a cleaning fluid to flush the lens.

Hence, the omission of these features in claim 1 represents an unallowable intermediate generalisation. Thus, claim 1 as granted contravenes Article 123(2) EPC. The main request is therefore not allowable.

2. Auxiliary requests 1, 2 and 10

Claim 1 of auxiliary requests 1 and 2 is identical to that of the main request. These requests are thus also not allowable for the same reasons as the main request.

Claim 1 of auxiliary request 10 specifies the additional Feature 1.10 relating to an off-axis viewing direction of the optical system but does not specify a separate lumen containing the optical system and being adapted for solution injection to flush the lens of the optical system. Accordingly, claim 1 of auxiliary request 10 contains the same unallowable intermediate generalisation as claim 1 of the main request. Hence, auxiliary request 10 is also not allowable pursuant to Article 123(2) EPC.

3. Auxiliary requests 3, 4 and 6-9

Claim 1 of auxiliary requests 3, 4 and 6-9 no longer contains Feature 1.8. Its subject-matter is thus, at least in this respect, broader than that of claim 1 of the main request which was found allowable in opposition.

Allowing claim 1 of any of auxiliary requests 3, 4 and 6-9 would therefore provide the patent proprietor with a wider scope of protection. This would put the opponent and sole appellant in a worse position than if it had not appealed. According to the principle of prohibition of a reformatio in peius set out in the Enlarged Board of Appeal decision G 9/92 and summarised in G 1/99, such an amended claim must be rejected.

Furthermore, the requests do not fall under the exceptions to the principle of prohibition of a reformatio in peius set out in G 1/99.

Accordingly, auxiliary requests 3, 4 and 6-9 are not allowable.

4. Auxiliary request 5

Claim 1 of auxiliary request 5 specifies a separate "second lumen" in which the optical system is disposed. It further defines that "the second lumen (272) further comprises a void (284) for allowing fluid to flow in the [second] lumen alongside the optical system" (Feature 1.9).

However, claim 1 does not define where the void begins and ends, and from where to where the fluid flows. In particular, claim 1 of auxiliary request 5 does not require that the void and the fluid flow pass alongside the lens to flush the lens.

Accordingly, claim 1 of auxiliary request 5 still does not define the structure and function of the "second lumen" for "solution injection to flush the lens" as disclosed on page 25, lines 19-20, in the context of the recessed lens.

The omission in claim 1 of the function and structure of the second lumen and its void thus represents an unallowable intermediate generalisation which extends beyond the content of the application as filed.

Consequently, claim 1 of auxiliary request 5 is also not allowable pursuant to Article 123(2) EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.