`Patentamt
`
`European
`Patent Office
`
`Office europeen
`des brevets
`
`Beschwsrdekammem
`
`Boards of Appeal
`
`Chambres de recours
`
`Case Number: T 1642/10 - 3.2.02
`
`DECISION
`of the Technical Board of Appeal 3.2.02
`of 23 October 2013
`
`Appellant:
`(Patent Proprietor)
`
`Representative:
`
`Respondent:
`(Opponent 1)
`
`Representative:
`
`Respondent;
`(Opponent 2)
`
`NATIONAL RESEARCH COUNCIL OF CANADA
`1200 Montreal Road
`Ottawa, ON K1A 0R6 (CA)
`Jansen, Cornells Marinus
`V.O.
`Johan de Wittlaan 7
`2517 JR Dan Haag (NL)
`HAMAMATSU PHOTONICS K.K.
`1126-1, Ichino-cho
`Higashi-ku
`Hamamatsu-shi
`Shizuoka 435-8558 (JP)
`HOFFMANN EITLE
`Patent- und Rechtsanwalte
`Arabellastrasse 4
`D-81925 Mimchen (DE)
`Pulsion Medical Systems AG
`Joseph-Wild-Strasse 20
`D-81829 Miinchen (DE)
`
`Decision under appeal: Decision of the Opposition Division of the
`European Patent Office posted on 10 June 2010
`revoking European patent No. 1143852 pursuant
`to Article 101 (3) (b) EPC.
`
`Composition of the Board:
`Chairman:
`E. Dufrasne
`Members:
`M. Stern
`P. L . P. Weber
`
`CI0570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 1 of 29
`
`
`
`1
`
`'T 1642/10
`
`Summary of Facts and Submissions
`
`I.
`
`II.
`
`III.
`
`IV.
`
`The proprietor lodged an appeal against the decision of
`the Opposition Division dispatched on 10 June 2010
`revoking European patent No. 1 143 852.
`
`The Opposition Division revoked the patent on the basis
`that the subject-matter of claim 1 of the granted
`patent lacked novelty over document D32, and that the
`subject-matter of the then pending auxiliary requests
`did not comply with the requirements of Articles 123(2),
`84, 54 and/or 56 EPC. The ground of lack of inventive
`step was based on D32 as closest prior art.
`
`Notice of appeal was filed by the proprietor on 30 July
`2010 and the fee for appeal was paid on 2 August 2010.
`A statement setting out the grounds of appeal was
`received on 11 October 2010.
`
`In a communication under Article 15(1) and 17(2) RPBA
`dated 24 May 2013 annexed to a summons to oral
`proceedings, the Board gave its provisional opinion
`regarding novelty over document D32 and indicated that
`all further objections raised and substantiated by
`respondent-opponent 1 would also be discussed if
`considered necessary.
`
`Respondent-opponent 2 remained silent throughout the
`appeal proceedings.
`
`Hence, in what follows, references to "the respondent"
`are to be understood as referring to "respondent-
`opponent 1".
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 2 of 29
`
`
`
`V
`
`2
`
`T 1642/10
`
`V.
`
`VI.
`
`With its letter dated 9 September 2013, the appellant
`filed auxiliary requests 1 to 6.
`
`In its response dated 23 September 2013, the respondent
`objected to the admissibility of auxiliary requests 1
`to 6 since they had been filed only about six weeks
`before the oral proceedings and contained features
`taken from the description which related to unsearched
`subj ect-matter.
`
`VII.
`
`Oral proceedings took place on 23 October 2013.
`
`The appellant requested that the decision under appeal
`be set aside and that the patent be maintained* as
`granted or, in the alternative, on the basis of one of
`auxiliary requests 1 and 2 filed with letter dated
`9 September 2013, auxiliary request 3 filed during oral
`proceedings, and auxiliary requests 4 to 6 filed with
`letter dated 9 September 2013.
`
`At the beginning of the oral proceedings the appellant
`requested that only novelty over document D32 be
`discussed and decided upon, particularly since novelty
`over document D1 and inventive step starting from D1
`had not been substantiated by the respondents in reply
`. to the statement of grounds of appeal. Moreover, for
`the discussion of any grounds other than novelty over
`D32, the appellant requested remittal of the case to
`the Opposition Division.
`
`The respondent requested that the appeal be dismissed.
`It also requested that the Board make a final decision
`on all outstanding matters instead of remitting the
`
`C10570 .D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 3 of 29
`
`
`
`3
`
`T 1642/10
`
`case to the Opposition Division, and that auxiliary
`requests 1 to 6 should not be admitted.
`
`VIII. The following documents are of importance for the
`present decision:
`
`D32:
`
`Dl:
`D9:
`
`JP-A-9 309 845 (with English translation)
`Brochure nARGUS-20 with C2400-75i”; printed
`May 1997
`M. Sato et al. : "Development of Deep Organ
`Microcirculation Visualization Techniques Using
`an Infrared Biomicroscope System; Research Report
`1990 from the Suzuken Memorial Foundation; Vol. 9,
`pages 63-73 and 228; 20 December, 1991
`D32a: English translation of D32.
`
`IX.
`
`Claim 1 of the different requests reads as follows
`(amendments with respect to claim 1 of the main
`request, i.e. claim 1 of the patent as granted, are
`highlighted by the Board):
`
`Main request:
`
`"A device for visualizing movement of a fluorescent dye
`carried in the bloodstream of a cardiovascular bypass
`graft during a surgical procedure, the device
`comprising
`a means capable of providing radiation suitable to
`excite the fluorescent dye;
`a camera capable of capturing the radiation emitted
`from the fluorescent dye within the blood vessel as an
`angiographic image; and
`wherein the camera captures images at the rate of at
`least 15 images per second;
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 4 of 29
`
`
`
`4
`
`T 1642/10
`
`wherein the fluorescent dye is ICG and/or has a peak
`absorption and emission in the range 800 to 850 nm; .
`wherein the camera is capable of obtaining multiple
`images of the cardiovascular bypass graft while the
`heart is beating; and wherein the device is suitable to
`convert the images into a viewable image.”
`
`Auxiliary request 1:
`
`”A device for visualizing movement of a fluorescent dye
`carried in the bloodstream of a cardiovascular bypass
`graft during a surgical procedure, the device
`comprising:
`a means capable of providing radiation suitable to
`excite the fluorescent dye;
`a camera capable of capturing the radiation emitted
`from the fluorescent dye within the blood vessel as an
`angiographic image; and
`wherein the camera captures images at the rate of at
`least 15 images per second;
`wherein the fluorescent dye is ICG and/or has a peak
`absorption and emission in the range 800 to 850 nm;
`wherein the camera is capable of obtaining multiple
`images of the cardiovascular bypass graft while the
`heart is beating; and
`wherein the device is suitable to convert the images
`into a viewable image to assess graft patency."
`
`Auxiliary request 2:
`
`”A device for visualizing movement—of a fluorescent dye
`carried in the bloodstream of a cardiovascular bypas-5' ,
`graft during a surgical procedure, the device
`comprising:
`
`C10570 ,D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 5 of 29
`
`
`
`5
`
`T 1642/10
`
`a means arranged for capable—of providing radiation
`suitable to excite the fluorescent dye;
`a camera arranged for cap-able—of capturing the
`radiation emitted from the fluorescent, dye within the
`blood vessel as an angiographic image; and
`wherein the camera captures images at the rate of at
`least 15 images per second;
`wherein the fluorescent dye is ICG and/or has a peak
`absorption and emission in the range 800 to 850 nm;
`wherein the camera is arranged for capable.o-f obtaining
`multiple images of a human coronary artery the
`■cardiova scalar bypass graft while the heart is beating;
`and
`wherein the device is arranged for visualizing -movement
`of the fluorescent dye carried in the bloodstream of
`the bypass graft during the surgical procedure,, and is
`suitable to convert the images into a viewable image.”
`
`Auxiliary request 3:
`
`"A device for visualizing movement--of a fluorescent dye
`carried in the bloodstream of -a.ea-rdlovascular bypass-
`graft- during a surgical procedure, the device
`comprising:
`a laser means- capable of providing radiation suitable
`to excite the fluorescent dye and optics positioned to
`diverge the radiant energy beam to cover the area of
`interest wherein the optics provide for even radiation
`of a 7.5 cm x 7.5 cm area, thereby inducing
`fluorescence in the region being imaged;
`a camera capable of capturing the radiation emitted
`from the fluorescent dye within the blood vessel as an
`angiographic image; -and:
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 6 of 29
`
`
`
`6
`
`T 1642/10
`
`wherein the camera captures images at the rate of at
`least 15 images per second;
`wherein the fluorescent dye is ICG and/or has a peak
`absorption and emission in the range 800 to 850 nm;
`wherein the camera is capable of obtaining multiple
`images of a human coronary artery the- cardiovascu 1 ar-
`bypass graft while the heart is' beating; and
`wherein the- device is capable of visualizing movement
`of the fluorescent dye carried in the bloodstream of
`the bypass graft during the surgical procedure, and is
`suitable to convert the images into a viewable image.”
`
`Auxiliary request 4;
`
`"A device for visualizing movement of a fluorescent dye
`carried in the bloodstream of a cardiovascular bypass
`graft during a surgical procedure, the device
`comprising:
`a means capable of providing radiation suitable to
`excite the fluorescent dye;
`a camera capable of capturing the radiation
`emitted from the fluorescent d'ye within the blood
`vessel as an angiographic image; and
`a computer running image capture and processing
`software,
`wherein the camera captures images at the rate of at
`least 15 images per second;
`wherein the fluorescent dye is ICG and/or has a peak
`absorption and emission in the range 800 to 850 nm;
`wherein the camera is capable of obtaining multiple
`images of the cardiovascular bypass graft while the
`heart is beating; ©*4 wherein the device is suitable to
`convert the images into a viewable image; arid wherein
`the software is arranged for selecting from the
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 7 of 29
`
`
`
`7
`
`T 1642/10
`
`multiple images the optimal images for analysis, and
`for determining from the selected images the diameter
`of the blood vessel as well as a rate and volume of
`blood flow through the vessel.,T
`
`Auxiliary request 5:
`
`"A device for visualizing movement of a fluorescent dye
`carried in the bloodstream of a cardiovascular bypass
`graft during a surgical procedure, the device
`, •
`comprising:
`a means capable of providing radiation suitable to
`.excite the fluorescent dye;
`a camera capable of capturing the radiation emitted
`from the fluorescent dye within the blood vessel as an
`angiographic image; and
`a computer running image capture and processing
`software,
`wherein the camera captures images at the rate of at
`least 15 images per second;
`wherein the fluorescent dye is ICG and/or has a peak
`absorption and emission in the range 800 to 850 nm;
`wherein the camera’is capable of obtaining multiple
`images of the cardiovascular bypass graft while the
`heart is beating; and wherein the device is suitable to
`convert the images into a viewable image; and wherein
`the software is arranged for selecting from the
`multiple images the images with greatest contrast for
`analysis, and for determining from the selected images
`the diameter of the blood vessel as well as a rate and
`volume of blood flow through the vessel."
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 8 of 29
`
`
`
`8
`
`T 1642/10
`
`Auxiliary request 6:
`
`"A device for visualizing movement of a fluorescent dye
`carried in the bloodstream of a cardiovascular bypass
`graft during a surgical procedurer the device
`comprising:
`a means capable of providing radiation suitable to
`excite the fluorescent dye;
`a camera capable of capturing the radiation emitted
`from the fluorescent dye within the blood vessel as an
`angiographic image; ae4
`wherein the camera captures images at the rate of at
`least 15 images per second;
`wherein the fluorescent dye is ICG and/or has a peak
`absorption and emission in the range 800 to 850 nm;
`wherein the camera is capable of obtaining multiple
`images of the cardiovascular bypass graft while the
`heart is beating; and wherein the device is suitable to
`convert the images into a viewable image^
`wherein the means capable of providing radiation is a
`laser and the-device further comprises optics
`positioned to diverge the radiant energy beam to cover
`the area of interest, wherein the optics are adjustable,
`permitting variation in a field of illumination, and
`wherein the camera comprises a lens system for a [sic]
`magnifying a field of view, wherein the lens system is
`capable of being switched to the laser to
`correspondingly adjust a field of illumination provided
`by the laser to match the field of view of the camera."
`
`C1057O.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 9 of 29
`
`
`
`9
`
`T 1642/10
`
`X.
`
`The arguments of the appellant relevant for the present
`decision are summarised as follows.
`
`(i) Procedural matters:•
`
`- Since the Opposition Division had only decided
`questions of patentability on the basis of D32 it was
`justified to remit the case to the Opposition Division
`for examination of any other groundsr in particular the
`grounds of novelty over D1 and of inventive step
`starting from D1. The appellant should not be deprived
`of its right to have its case considered by two degrees
`of jurisdiction. Furthermorer the objection of lack of
`novelty over D1 had not been adequately substantiated
`by the respondent since its reply to the statement of
`grounds of appeal merely referred to submissions made
`during the- first-instance proceedings (point 1.3 of the
`respondent’s reply to the statement of grounds of
`appeal).
`
`- Auxiliary requests 1, 2, and 4 to 6 had been filed
`about six weeks before the oral proceedings in response
`to the Board’s communication dealing with the novelty-
`objections regarding'D32, arid should certainly be seen
`as an appropriate attempt to counter the objections of
`lack of inventive step departing from D1 as discussed
`during the oral proceedings. The further limitations
`added to claim 1 of each of these requests did not
`involve technically complex issues preventing the
`respondent or the Board from dealing with them
`effectively. Current auxiliary request 3 had been filed
`at oral proceedings as a slightly amended version of
`the previously filed auxiliary request 3 in response to
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 10 of 29
`
`
`
`10
`
`T 1642/10
`
`the objection under Rule 80 EPC discussed for the first
`time during the oral proceedings.
`
`(ii) Novelty and inventive step:
`
`- The ICG complex of the examples of D1 had apparently
`been specifically designed for migration in the nervous
`system- It was administered by direct injection into
`the brain for gradual diffusion and migration
`throughout the body, rather than as a tight bolus
`directly into the bloodstream, whereby D1 taught away
`from the use of ICG as a means to measure the rapid
`blood flow in vessels.
`
`- The particular visualisation feature of visualising
`movement of a fluorescent dye carried in the
`bloodstream of a cardiovascular bypass graft during a
`surgical procedure while the heart was beating had not
`been disclosed previously. Moreover, the experiments
`described in D1 were performed in real time using
`exposure times of 1 second (paragraphs [0037], [0040]),
`as low light conditions would prompt the user to use an
`increased integration time. Hence, the camera of D1 was
`set to capture images at a much slower rate than the
`maximal capture rate of about 30 images per second
`disclosed in D9. Such a long exposure time would not
`allow visualisation of movement of a fluorescent dye
`carried in the blood stream of a cardiovascular bypass
`graft while the heart was beating. In contrast, the
`device of the invention provided the camera with the
`capability of capturing angiographic images at an image
`capture rate of at least 15 images per second. In
`particular, a high image capture rate was necessary to
`determine the movement of the dye to assess graft
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 11 of 29
`
`
`
`11
`
`T 1642/10
`
`patency, as further defined in claim 1 of auxiliary
`request 1. There was no hint in D1 to use the camera of
`D1 in low light conditions with the higher capture rate
`disclosed in D9.
`
`- There was no reason to replace the halogen lamp
`disclosed in D1 by a laser, as defined in claim 1 of
`auxiliary request 3. Moreover, the area of interest was
`defined to be large enough to visualise the whole
`length of a human coronary artery bypass graft.
`
`(iii) Rule 80 EPC:
`
`The expression "arranged for" in claim 1 of auxiliary
`request 2 was intended to define more clearly that the
`device was intended to expressly carry out the
`specified functions. There was however no structural
`difference between a feature recited to be "arranged
`for" performing a certain function and the same feature
`recited to be "capable of" performing that function.
`
`XI. The arguments of the respondent relevant for the
`present decision are summarised as follows.
`
`(i) Procedural matters:
`
`- For the sake of procedural efficiency and in the
`interest of the respondent’s and the public’s legal
`certainty, the Board was requested to make a final
`decision on all outstanding matters, rather than remit
`the case to the Opposition Division after consideration
`of D32. The respondent’s reply to'the statement of
`grounds of appeal contained several passages (sections
`1.2.1, 2.1.1 and 2.1.2) in which the objections of
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 12 of 29
`
`
`
`12
`
`T 1642/10
`
`novelty and inventive step based on Dl, even in
`combination with D9, were discussed. These objections
`were thus substantiated and formed part of the
`respondent’s case in the present appeal. Moreover, the
`appellant had presented detailed counterarguments to
`the objections based on Dl in its letter in preparation
`of the oral proceedings.
`
`- Auxiliary requests 1, 2 and 4 to 6 had been filed
`about six weeks before the oral proceedings, and
`auxiliary request 3 had been filed during the oral
`proceedings. These late-filed requests could have been
`presented earlier, particularly during the first-
`instance proceedings when D32 was discussed. In
`particular, claims 1 of auxiliary requests 4 to 6 had
`been amended with features extracted from the
`description (page 13, lines 13 to 16.; page 11, lines 5
`to 8) which had not yet been searched, had not been
`examined by the Opposition Division, and involved
`considerable complexity which prevented a thorough
`assessment of their patentability. Therefore, the Board
`was requested to exercise its discretion under
`Article 13(1) RPBA not to admit these late requests.
`
`(ii) Novelty and inventive step:
`
`. •
`
`- Dl disclosed a device for imaging a fluorescent dye
`in a rat, wherein the camera captured the radiation
`emitted from the dye in the range of 800 to 850 nm
`(paragraphs [0014], [0021], [0035];. Figure 2). Dl
`disclosed the imaging processing device to be a
`Hamamatsu ARGUS-20 processor with a C2400-75i camera,
`which was explained in D9 to have an image capture rate
`of about 30 or 25 images per second, for.NTSC and PAL
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 13 of 29
`
`
`
`13
`
`T 1642/10
`
`respectively. Hence, D1 disclosed, or at least rendered
`obvious, all the structural features of the device of
`claim 1 ol the main request.
`
`- The device resulting from the combination of D1 with
`D9 was moreover suitable for the claimed application to
`visualise movement of a fluorescent dye carried in the
`bloodstream of a cardiovascular bypass graft during a
`surgical procedure while the heart was beating. D1
`disclosed the imaging-of the fluorescence emitted from
`within the body of a rat through its body tissues. The
`imaging of a fluorescent dye carried by the blood
`stream of a cardiovascular bypass graft required a
`field of view which was comparable to, if not smaller
`than, the field of view necessary for visualising the
`whole body of a rat. Also the fluorescence light
`intensities emitted from an exposed blood vessel were
`comparable to, if not larger than, those emitted by a
`fluorescent dye from inside the body of a rat. The
`appropriate image capture rate was set according to the
`particular application, and was not necessarily
`restricted to be equal to the maximal capture rate of
`about 30 images per second disclosed in D9.
`Consequently, there were no considerations of
`dimensions or light intensities which made the imaging
`of a cardiovascular bypass graft unfeasible, let alone
`impossible. Images revealing the dye would make it
`possible to determine the movement of the injected
`fluorescent dye through the cardiovascular graft while
`the heart was beating, and thus to assess graft patency.
`
`- From D32 it was known that a halogen lamp and a laser
`were alternative light sources for fluorescence imaging
`devices. Moreover, the skilled person would readily
`
`C10570 .D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 14 of 29
`
`
`
`14
`
`T 1642/10
`
`adjust the size of the area of interest to the size of
`the object to be imaged, whereby optics providing an
`area of interest size of 7.5 cm x 7.5 cm as recited in
`claim 1 of auxiliary request 3 would be readily
`considered.
`
`(iii) Rule 80 EPC:
`
`No structural difference was apparent between a feature
`recited to be ’’capable of” (or ’’suitable for”)
`performing a certain function and the same feature
`"arranged for” performing that function. Hence, claim 1
`of auxiliary request 2 was not allowable under Rule 80
`EPC.
`
`Reasons for the Decision
`
`1.
`
`2.
`
`2.1
`
`The appeal is admissible.
`
`Procedural matters
`
`Whilst the appellant requested (during the oral
`proceedings) that the case be remitted to the
`Opposition Division particularly for the examination of
`novelty over D1 and inventive step starting from Dl,
`the respondent opposed this request in order not to
`further delay a final decision on the fate of the
`contested patent.
`
`2.2
`
`Article 111(1) EPC leaves it to the discretion of the
`Board whether to exercise any power within the
`competence of the department of first instance or to
`remit the case to that department. Hence, a party has
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 15 of 29
`
`
`
`- 15
`
`T 1642/10
`
`no absolute right to have each individual issue
`considered by two instances (Case Law of the Boards of
`Appeal of the EPO, 7th edition 2013, IV.E.7.6.1). In
`the present case, the Board observes that the patent
`was granted in 2007, i.e. six years ago, and that
`remittal would prolong the already lengthy opposition
`proceedings. Moreover, the considerations of novelty
`and inventive step regarding Dl, as already addressed
`by bpth parties in the written appeal proceedings,
`appeared to be very similar to those regarding D32 on
`which the impugned decision was based.
`
`Contrary to the appellant's view, the Board considers
`that the objections of lack of novelty regarding Dl and
`of inventive step starting from Dl are part of the
`respondent's case since they were presented in the
`respondent's reply to the statement of grounds of
`appeal (Article 12(2) RPBA). Whilst the appellant
`considered that the lack of novelty over Dl had only
`been addressed in the respondent's reply (point 1.3) by
`referring to submissions made during the first-instance
`proceedings, the Board finds that the reply does in
`fact contain explicit discussions about several
`technical details disclosed in Dl (sections 1.2.1,
`2.1.1 and 2.1.2). It was therefore clear to the
`appellant and the Board which were the main factual
`reasons relied upon by the respondent for its
`objections of lack of novelty and inventive step in
`view of Dl. Moreover, the appellant had in fact already
`presented detailed arguments concerning the objections
`based on Dl in its letter dated 9 September 2013 in
`preparation of the oral proceedings (even the statement
`of grounds of appeal included, on pages 17 to 20, a
`detailed discussion of the disclosure of Dl). '
`
`2.3
`
`C10570 .D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 16 of 29
`
`
`
`\
`
`\
`
`16
`
`T 1642/10
`
`2.4
`
`Accordingly, in view of the above circumstances and
`taking into'consideration the imperative of procedural
`'efficiency and the interest of the respondent and the
`public in a speedy and streamlined procedure, the Board
`considers it appropriate to decide the case itself
`rather than remit it to the department of first
`instance pursuant to Article 111(1) EPC.
`
`2.5
`
`Admissibility of auxiliary requests 1 to- 6
`
`2.5.1
`
`2.5.2
`
`The respondent requested the Board to exercise its
`discretion under Article 13 (1) RPBA not to admit
`auxiliary requests 1, 2 and 4 to 6 which were filed
`about six weeks before the oral proceedings, as well as
`auxiliary request 3 filed during the oral proceedings.
`It was argued that these requests could have been
`presented earlier, particularly during the first-
`instance proceedings when D32 was discussed.
`
`The Board considers, however, that auxiliary requests 1
`to 3 as filed on 9 September 2013, about six weeks.
`before the oral proceedings, constitute an appropriate
`attempt to counter the objections of lack of inventive
`step departing from D1 discussed in the written
`proceedings. The further limitations added to claim 1
`of each of these requests do not involve any technical
`complexity preventing the respondent or the Board from
`dealing with them effectively. Current auxiliary
`request 3 was filed at oral proceedings as a slightly
`amended version of the previously filed auxiliary
`request 3 in order to render it compliant with Rule 80
`EPC, a requirement discussed for the first time during
`the oral proceedings.
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 17 of 29
`
`
`
`17
`
`T 1642/10
`
`Hence, the Board considers that auxiliary requests 1 to
`3 are admissible.
`
`2.5.3 Auxiliary requests 4 to 6 relate to subject-matter
`which does not have a counterpart in the claims of the
`granted patent. In particular, claim 1 of auxiliary
`requests 4 and 5 contains the feature of computer
`processing software for determining from selected
`images the diameter of the blood vessel as well as the
`rate and volume of blood flow through the vessel. This
`subject-matter, which had not been part of the first-
`instance proceedings, has been extracted from the
`description (page 13, lines 13 to 16). This also holds
`for claim 1 of auxiliary request 6 which contains the
`feature of adjusting the field of illumination provided
`by the laser to match the field of view of the camera,
`which is disclosed in the description on page 11,
`lines 5 to 8.
`
`Therefore, the Board shares the respondent's view that
`the subject-matter claimed in these requests has not
`yet been searched and involves considerable complexity,
`preventing the respondent from adequately preparing a
`thorough assessment of its patentability.
`
`As a consequence, the Board does not admit auxiliary
`requests 4 to 6 pursuant to Article 13(1) RPBA.
`
`Main request and auxiliary requests 1 and 3 - novelty
`and inventive step
`
`Document Dl discloses a device for visualising or
`imaging a fluorescent dye in a living body
`
`3.
`
`3.1
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 18 of 29
`
`
`
`18
`
`T 1642/10
`
`(paragraphs [0014], [0021], [0035]; Figure 2), the
`device comprising means capable of providing radiation
`suitable to excite the fluorescent dye and a camera
`capable of capturing the radiation emitted from the
`fluorescent dye (paragraph [0035]). The fluorescent dye
`has a peak emission in a wavelength range which, as
`seen in Figure 1, lies in the claimed range of 800 to
`850 nm (cf. also paragraph [0016]). D1 specifically
`discloses the imaging of an experimental animal, in
`particular the entire body of a Wister rat, after the
`fluorescent dye has been injected into the brain from
`where it migrates to the spinal cord (paragraphs [0036]
`to [0038]; Figures 2 to 6). The device of D1 is
`therefore suitable to convert the images into a
`viewable image, as defined in claim 1.
`
`3.2
`
`D1 does not however explicitly disclose the following
`features of the device specified in claim 1 of the main
`request:
`
`(a) the camera captures images at a rate of at least
`15 images per second;
`(b) the device is suitable for visualising movement of
`a fluorescent dye carried in the blood stream of a
`cardiovascular bypass graft while the heart is beating;
`and
`(c) the camera is capable of capturing the radiation
`emitted from the fluorescent dye within the blood
`vessel as an angiographic image.
`
`3.3
`
`The only disclosure given in Dl regarding camera
`specifications is that the device comprises a C2400-75i
`CCD camera with an image processing device ARGUS-20,
`both manufactured by Hamamatsu Photonics Co. Ltd.
`
`C10570 ,D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 19 of 29
`
`
`
`- 19
`
`T 1642/10
`
`The respondent argued that since document D9 was a
`specification brochure of a Hamamatsu .imaging
`processing device with the same product name "ARGUS-20
`with a C2400~75i CCD camera", the disclosure of D9
`should be considered as being incorporated into D1 by
`reference.
`
`3l4 However, the Board does not accept this argument at
`least for the reason that the brochure D9 carries a
`printing date of May 1997 which is later than the
`filing date of Dl, 21 May 1996. Therefore, the
`specifications of the C2400-751 camera and ARGUS-20
`image processing device given in D9 may well be
`different from those at the filing date of Dl. Whilst
`the respondent stated at oral proceedings that this
`possibility had not in fact occurred, the Board did not
`see this statement as evidence for the respondent's
`argument that Dl specifically referred to precisely the
`same device as was later disclosed in D9.
`
`Hence, the absence of the aforementioned structural
`feature (a) from Dl renders the device of claim 1 novel
`over this document.
`
`However, when solving the objective technical problem
`of reducing the device of Dl to practice, the skilled
`person would readily search for specifications of the
`C2400-75i camera and ARGUS-20 image processing device
`mentioned in Dl. Since D9' offers these specif ications,
`it would be straightforward for the skilled person to
`devise the camera of Dl according to the D9
`specifications. In particular, D9 specifies in.the
`C2400-75i parameter table that the camera uses a sync
`
`3.5
`
`3.6
`
`C10570.D
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 20 of 29
`
`
`
`20
`
`T 1642/10
`
`system at 59.94 Hz (NTSC) or 50 Hz (PAL) which, with
`the specified interlace ratio of 2:1, is equivalent to
`an image capture rate of 29.97 or 25 images per second
`(for NTSC and PAL respectively). Both of these image
`capture rates fall within the range of "at least
`15 images per second" defined in claim 1.
`
`3.7
`
`The Board furthermore considers that the device
`resulting from the combination of documents D1 and D9
`has the imaging capabilities expressed by
`aforementioned functional features (b) and (c). The
`reasons are the following.
`
`3.7.1 The appellant is correct in observing that the
`particular application of visualising movement of a
`fluorescent dye carried in the bloodstream of a
`cardiovascular bypass graft during a surgical procedure
`while the heart is beating has not been disclosed in D1.
`'However, claim 1 merely defines a device which is
`suitable for such an application. Thus, the only
`question to be answered is whether the device resulting
`from the combination, of D1 with D9 is deemed to be
`suitable for this application.
`
`3.7.2 Contrary to the view held by the appellant, the nature
`of the fluorescent dye used is relevant for specifying
`the device according to claim 1 only to the extent that
`it requires the camera to be capable of effectively
`capturing images at the fluorescence wavelength ,
`emitting range of 800 to 850 run defined in claim 1. As
`indicated under point 3.1 above, the camera of D1 has
`the capability of imaging fluorescence emissions in
`that range.
`
`C10570 .d
`
` VISIONSENSE - 1009
` VISIONSENSE v.
` NOVADAQ TECHNOLOGIES
` Page 21 of 29
`
`
`
`21
`
`T 1642/10
`
`Moreover, D1 discloses the imaging of the fluorescence
`emitted from within the body of a rat through its body
`tissues. The imaging of a fluorescent dye carried in
`the blood stream of a cardiovasc