This attack fails in view of established case law followed by the Board of Appeal, see reasons 3 and 4. (Lack of clarity not objectionable if lack of clarity already present in claims as granted and G9/91: No fresh grounds in opposition appeal without consent of proprietor)
The Board remits the case to the Opposition Division and in reasons 15-21 provides guidance on the legal approach to be adopted with respect to the burden of proof. These parts, summarised below, form to my opinion very interesting reading material in preparation for the EQE and/or understanding the EPC.
R. 15 : The general rule is that the legal burden of proof is on the party who has to establish a fact.
R. 16: In the case of lack of novelty the legal burden of proof is on the opponent. Claimed subject-matter would lack novelty only if it were derivable as a whole directly and unambiguously from a prior art disclosure and if a "clear and unmistakable teaching" of the combination of all claimed features (and not only the essential ones) could be found in said disclosure (see decision T 0411/98, point 4.1).
R. 17: Where as in this case for the feature of crystallite size [..] the claim is silent as to how a particular feature is to be measured, it is open to the opponent to adopt any method of measurement which can be said to be standard for a skilled person in the art concerned, and show that on this method of measurement the claimed feature is already known from a particular piece of prior art.
R. 18: If the proprietor wishes to argue that a feature in a claim needs to be measured in a particular way mentioned in the description, then for this argument to be accepted it is first
necessary to limit the claim to this method of measurement by amendment, assuming this can be done meeting the requirements of Article 123(2) EPC. It is not enough to argue that the claim should be read in a particular way, when the wording of the claim does not require this.
Article 69 EPC and the protocol thereto cannot be relied on to read a claim in a restricted sense which is not required by the wording of the claim itself. Article 69 EPC and its protocol were intended to allow a claim to be read by a court, considering an alleged infringement, in a broader way than might have been suggested by the strict wording of the claim, and were not intended to allow a claim to be read in a more restricted way than that suggested by its wording so as to avoid a novelty objection.
R. 19: When it comes to considering inventive step the legal burden of proof of showing that at least part of the claimed subject matter can be derived in an obvious manner from the state of the art is on the opponent.
R. 20: However, where the proprietor alleges that the problem to be solved by the subject matter claimed over the closest prior art is to obtain an improvement of some particular property of this closest prior art, the legal burden of proof that there is an improvement is on the proprietor. A mere allegation that there is an improvement is not sufficient, there should be at least some experimental evidence that the particular property of the prior art is improved, when this closest prior art is modified in the minimum way necessary to fall under the subject matter now claimed. Experimental evidence is required to show that the improvement is necessarily attributable to the difference between the claimed subject matter and the closest prior art. The instances of the EPO should also be satisfied that this evidence makes it plausible that the problem has been solved over the whole range of the subject matter claimed.
R. 21: It is of course not necessary that the claimed subject matter achieve an improvement. If the subject matter claimed provides an alternative to the closest priorart this may suffice for
inventive step to be recognized if there are no reasons why the skilled person would modify the state of the art in the direction of what is claimed.
Read the full decision here.
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