During examination poor quality drawings had been replaced by drawings that made more details visible. The opponent argued that replacement of these drawings by the original drawings, to overcome Article 123(2) objections, extended the scope of protection (Article 123(3)). The board concluded that the skilled person remained clearly able to determine what was protected, because the technical features of the claims had been discussed extensively and with sufficient detail in relation tothe drawings as filed with the application.
A panel of the Enlarged Board of Appeal (EBA) of the EPO rejected a request to replace the EBA chairman for suspected partiality. The reasons for allowing such a request in decision R19/12 had since been removed because the chairman had discontinued all his managerial activities in the senior management committees of the EPO. Under the new circumstances it remained for the chairman to judge in each individual case to preserve a balance between his potentially conflicting judicial duties and his duties as vice-president of the EPO. Until proven otherwise, the chairman was presumed thus to avoid partiality.
The Board of Appeal rejected an attempt to apply the fiction of novelty of “medical” substances and compositions of article 54(5) EPC to a dialysis membrane. Contrary to T2003/08 the claimed dialysis membrane did not contain any further substance that might constitute an active ingredient. With reference to arguments in T2003/08, the board noted that it was not decisive that the dialysis membrane could perform the same function as a drug. The board also did not consider the membrane a single-use product consumed during use, because the reason for not re-using merely was fouling, which could theoretically be removed.
The Board emphasized that there was a relation between who was to be considered to be the skilled person for judging inventive step on one hand and the choice of the closest prior art on the other hand. A general problem to modify a product from one field so that it could be used in any field failed to incite the relevant skilled person to select application to the specific other field of the patent, and directing the problem to a specific other field would add an impermissible pointer to the solution.
The board held that a document of speculative nature could not objectively be considered as a realistic starting point or the most promising springboard towards the claimed invention: the document was no more than a speculative review of what might be potentially feasible in the future and no concrete realization of the claimed type of product was described therein.
The Board of Appeal used its discretionary power to declare inadmissible an appeal based on the claims as granted after the proprietor had only defended amended claims before the opposition division. Even if this should not be construed as abandonment of the claims as granted, the request should not be admitted for reasons of procedural economy, because it would require the board to take a first instance decision. The proprietor had lost its right to a decision on the claims as granted by amending the claims to circumvent an objection by the opposition division.