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The Board introduced new facts, not even based on evidence, regarding the skilled person's common general knowledge before the effective date of the contested patent, neither of which had been brought forward by the appellant. This amounts to a breach of the principle of equal treatment of the parties in opposition and to a lack of neutrality of the Board. Due to the fact that in inter partes proceedings the Board's behaviour is of fundamental importance and that the law should be applied uniformly in that respect, this issue should be referred to the Enlarged Board of Appeal.
Finally, the appellant explicitly contested in paragraph E) of his statement setting out the grounds of appeal point 10 of the impugned decision on the issue of extending the content of the patent beyond the application as originally filed, on the basis of the introduction of the word "use" in claim 1 in examination. As argued by the appellant a change of a claim category could, under some circumstances, lead to an extension of the subject-matter. Hence, the arguments presented enable the Board to understand immediately what is argued against the decision and on what facts the appellant bases his arguments, without compelling the Board to perform investigations of its own. The fact that the arguments are not convincing does not interfere with admissibility of the appeal (Case Law of the Boards of Appeal, 7th Edition 2013, IV.E.2.2.6.3.a and IV.E.2.6.6).
4.3.3 Contrary to the appellant's view, the opposition division has thus provided in the impugned decision, point 10, the reasons for which it considered the introduction of the word "use" as allowable pursuant to Article 123(2) EPC.
The introduction of the word "use" in the claims does not provide any new teaching that the skilled person would not be able to derive directly and unambiguously from the application as originally filed, taken as a whole.
Contrary to the appellant's view this implicit feature is not disclosed in D4/D5(D1a) which clearly requires that the capsule packaging is stationary when the piston (2) comes in contact with it (paragraphs [14] to [16]). The argument of the appellant that it could also possibly happen in the apparatus of D4/D5(D1a) while the capsule drops down after the coffee has been made cannot hold, because that is not what D1a describes on page 2: after the coffee has been made the handle ("poignée" 7) is actuated ("ouverture") and the used capsule drops down. It is only upon subsequent actuation of handle (7) ("fermeture") to make coffee from yet another capsule, that the first used capsule is compressed by piston (2). To anticipate the claimed feature, it should have been directly and unambiguously derivable that one should not introduce the second capsule, but actuate piston (2) independently and swiftly as soon as handle (7) liberates the capsule. That is not the case, particularly not since the apparatus of D1a is not conceived, nor constructed for that purpose.
5.3.1 On the premise that the Board indeed introduced new facts, reference should be made to G 9/91 (supra), reasons 18. As concerns the raising of a new ground of opposition, the Enlarged Board accepted this from a Board, if the latter found it highly relevant. Whether the Board could actually decide on it, depended however on the approval of the patent proprietor.
If a new ground is introduced, this can include new facts, new evidence and new arguments. If such an introduction is permissible, the present Board cannot see that there is a problem of it adding points a) and b) (see point 5.1 above) to the already existing ground of opposition "lack of inventive step", based on the existing prior art D4/D5(D1a) and the existing argument that the skilled person using his common general knowledge would find a way to convert translation of the piston into rotation. 041b061a72
