ABITZ
`Patents I Trademarks I Designs
`
`AbiJ? & Partner mbB Postfach 86 01 09, D-81628 Mlinche11
`
`EUROPEAN PATENT OFFICE
`
`MUNICH
`
`2 782 463
`1hr Zeichen Yo11r Riif·
`Unser Zeichen Our Re(: 42952-EP
`
`September 15, 2017
`
`European Patent 2 782 463 (12 805 612.4-1656)
`Patentee:
`Philip Morris Products S.A.
`Opponent: Withers & Rogers LLP
`
`Regarding the opposition by Withers & Rogers LLP. dated March 28. 2017 and
`the EPO's Communication of May 9. 2017:
`
`Request
`
`I.
`On behalf of the Patentee we request that the opposition be rejected and European
`
`Patent 2 782 463 (in the following referred to as the patent in dispute) be maintained
`
`in the form as granted.
`
`As an auxiliary measure we request oral proceedings in the event the Opposition
`
`Division were not to maintain the patent in dispute in unchanged form based on the
`
`written submissions.
`
`Patentee reserves the right to optionally submit one or more auxiliary requests in the
`
`future.
`
`Abitz & Partner
`
`Abitz & Partner
`Patentanwa!tc mbB
`
`Rcgistergericht
`Munchen PR 18
`
`Dr.-lng. Walter Abitz
`(-2005)
`
`Dipl.-Phys.
`Martin Gritschneder
`Patentanwalt
`European Patent Attorney
`
`Dr. Arved
`Frhr. v. Wittgenstein
`(· 2005)
`
`Dipl.-Chem.
`Dr.Jan Morf
`Patentanwalt
`European Patent Attorney
`
`Dipl.-Natw. ETH
`Dr. Monica Heinemann
`Patentanwaltin
`European Patent Attorney
`
`Dipl.-Chem.
`Dr.Oliver
`Dannenberger
`Patentanwalt
`European Parent Attorney
`
`Dipl.-Phys.
`Dr. Sebastian
`Gritschneder
`Patemanwalt
`European Patent /\Horney
`
`In Kooperation mit:
`Gritschneder
`und Partner
`
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`S teuerberater
`
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`
`Ex. 2032-0001
`
`

`

`No addition of subject-matter
`II.
`On page 2 of the opposition substantiation the Opponent alleges that the limitation
`of granted claim 1 of the patent in dispute to include the feature "the extractor
`remains coupled to the aerosol-generating device in both first and second positions"
`is not originally disclosed in
`the application as filed,
`i.e. WO 2013/076098
`( designated as document A 1 by the Opponent). The Opponent only refers to original
`claim 11 to support the allegation.
`
`It is submitted that the disclosure in original claim 11 ( see page 27, lines 14 to 28 of
`A 1) provides sufficient basis for the limitation of claim 1 as granted. It is also
`submitted that the description at least at page 2, lines 13 to 22, and especially lines
`20 to 22 of A 1, provides sufficient basis for the limitation of claim 1 of the patent in
`dispute.
`
`Thus, no subject-matter extending beyond the content of the application as filed has
`been added and claim 1 as granted is in compliance with Art. 123(2) EPC.
`
`Ill.
`Sufficiency of disclosure
`On page 3 of the opposition substantiation the Opponent alleges that claims 1 and 2
`of
`the patent
`in dispute contravene Art. 83 EPC. Both allegations are
`unsubstantiated as will be shown in the following.
`
`With respect to claim 1 of the patent in dispute the Opponent alleges that the claim
`covers embodiments wherein the extractor is not coupled in any way to the aerosol(cid:173)
`generating substrate, whereas the description only provides examples wherein the
`extractor is coupled to a smoking article comprising the substrate.
`
`As an initial point, the argumentation used by the Opponent confirms that the patent
`in dispute indeed contains in the specification a variety of examples how to carry out
`the invention, meaning that Art. 83 EPC is fulfilled.
`
`It is also emphasized that the "patent must be construed by a mind willing to
`understand, not a mind desirous of misunderstanding", meaning that technically
`illogical interpretations should be excluded (see Case Law of the Boards of Appeal
`
`2
`
`Ex. 2032-0002
`
`

`

`of the European Patent Office, Eighth Edition, July 2016, II.A.6.1., first paragraph;
`page 287 of the English edition).
`
`The skilled person is aware that claim 1 requires an extractor that has an operating
`position, wherein the substrate is in contact with the heater, and an extraction
`position, wherein the substrate is separated from the heater. The skilled person is
`also aware that the description enables several embodiments of an extractor that
`has an operating position and an extraction position to be produced, as defined in
`claim 1. A mind willing to understand would not seek to construct illogical
`embodiments of the invention; rather, as we have stated above, he or she would
`recognize that there are examples in the specification to exercise the claimed
`invention. As such, the patent in dispute meets all of the requirements of Art. 83
`EPC.
`
`With respect to claim 2 of the patent in dispute the Opponent states that claim 2
`refers to "the aerosol-generating article" although an aerosol-generating article has
`not been introduced before in claims 1 or 2. It is submitted that this is a clarity
`argument. However, lack of clarity is not a ground for opposition according to Art.
`100 EPC.
`
`For the sake of argumentation, however, it is further submitted that the skilled
`person knows what is an aerosol-generating article. S/he knows from her/his
`technical background as well as from the disclosure of the patent in dispute (see,
`e.g., paragraph [0009] in column 2 on page 2) that the aerosol-generating substrate
`as defined in claim 1 may be part of an aerosol-generating article. Accordingly, the
`skilled person recognizes that in claim 2 of the patent in dispute it should read
`"receiving an aerosol-generating article" instead of "receiving the aerosol-generating
`article" (see page 15, column 27, line 19 of the patent in dispute). Accordingly, the
`skilled person has no problems in interpreting claim 2 correctly and, thus, claim 2 is
`not only sufficiently disclosed but it also does not lack clarity.
`
`Hence, it is submitted that claims 1 and 2 of the patent in dispute are in compliance
`with Art. 83 EPC.
`
`3
`
`Ex. 2032-0003
`
`

`

`IV.
`Novelty
`Document WO 96/39879 A 1 (E1 ), either alone or in combination with the therein
`referenced document US 5,591,368 B1 (E2), has been cited by the Opponent as
`relevant for novelty of various claims of the patent in dispute. However, neither E1
`alone nor a combination of E1 and E2 takes away novelty of any of the claims of the
`patent in dispute.
`
`IV.1.
`Novelty of independent claim 1
`Regarding novelty of claim 1 of the patent in dispute, the Opponent alleges on pages
`4 to 6 of the opposition substantiation that E1 discloses "a heater (115) for heating the
`aerosol-forming substrate (203) and configured for penetrating an internal portion
`(211) of the aerosol-forming substrate (203)" (designated on page 4 of the opposition
`substantiation as feature 1 b by the Opponent) by means of incorporation of the
`disclosure of E2. This allegation, however, is incorrect.
`
`As we will discuss below, the alleged incorporation of portions of E2 into the
`disclosure of E1 is not proper. But as an initial matter, this argumentation from the
`Opponent confirms that E1 alone does not take away novelty of claim 1 of the patent
`in dispute because at least feature 1 bis not disclosed in E1.
`
`Regarding the alleged combination of E1 and E2 we note, to begin with, that E1 at
`page 11, lines 15 to 23 only gives a generic reference to a total of 8 different
`documents. A precise reference to Figs. 13 and 14 of E2, as alleged by the
`Opponent, is not made there or anywhere else within E1.
`
`In case a combination of two documents has to be made for the novelty assessment
`the EPO case law applies particular requirements in order to assert lack of novelty. In
`decision T 610/95 of the Boards of Appeal of the EPO, "in view of the objection of lack
`of novelty, the question to be answered was whether or not the proposed solution in
`the patent was derivable directly and unambiguously from the disclosure of citation
`(2), which contained cross-references to the entire content of three patent
`specifications without giving priority to any of these references. Each of these
`references offered a plurality of different options for preparing pressure-sensitive
`layers of medical dressings. The board held that, under these circumstances, it could
`not be said that the use of the specific product acting as pressure-sensitive material in
`
`4
`
`Ex. 2032-0004
`
`

`

`the claimed invention was directly and unambiguously derivable from the wholly
`general reference to the three different prior documents quoted in citation (2) and had
`therefore already been made available to the public" (see Case Law of the Boards of
`Appeal of the European Patent Office, Eighth Edition, July 2016, I.C.4.2.; page 105,
`fourth paragraph of the English edition).
`
`The situation underlying T 610/95 thus is highly similar to the present situation. E1
`contains on its page 11, lines 15 to 23 cross-references to the entire content of 8
`patent specifications without giving priority to any of these references and without
`giving a direct and unambiguous indication of which features of these documents
`should be incorporated. Moreover, as described in more detail below, E2 offers a
`plurality of different options, one of which can be found in its Figs. 13 and 14, for
`designing the heating element. Thus, the use of a specific heating element of E2 is
`not directly and unambiguously derivable from the general reference to the 8 different
`prior art documents quoted in E1. Accordingly, for this first reason claim 1 of the
`patent in dispute is novel over a combination of E1 and E2.
`
`Additionally, even if it was proper to look to E2 as asserted by the Opponent, then
`such combination still is not novelty-destroying for claim 1 because an unreasonable
`number of selections has to be made in order to arrive at this particular combination.
`
`At page 7, lines 8 to 11 of E1 it is disclosed that a preferred embodiment according to
`E1 comprises "a mechanism such as a plunger'. This means that E1 does not require
`the presence of such a plunger. Thus, in a first selection step the preferred
`embodiment comprising the plunger as shown in Figs. 2A to 2D of E1 has to be
`chosen.
`
`Page 11, lines 2 to 8 of E1 disclose that a heater which radially surrounds the
`cigarette as shown in Fig. 2A of E1 is the presently preferred embodiment. In a further
`preferred embodiment eight heating blades 120 are used (see page 11, lines 8 to 11
`of E1 ). Accordingly, in a second selection step it has to be chosen not to use the
`preferred heating element of Fig. 2A but to use another non-preferred heating
`element.
`
`Further, in the following lines 15 to 23 on page 11 of E1 there is provided a long list of
`
`5
`
`Ex. 2032-0005
`
`

`

`citations introduced by the phrase: " ... the heating system can comprise any of the
`resistance and induction heating systems disclosed in ... " (emphasis added, see lines
`15 and 16 on page 11 of E1 ). Accordingly, a general reference to suitable heating
`systems is made. However, the term heating system, i.e. resistance versus induction
`heating, rather refers
`to
`the general heating system
`than
`to any particular
`configuration of heating elements. Thus, the list in lines 15 to 23 on page 11 of E1
`does not refer to all of the various configurations of heating elements disclosed in the
`quoted references. If one nonetheless comes to the conclusion that E1 makes
`reference to the various configurations of heating elements of the cited references,
`then even further selection steps have to be made.
`
`Within the list of 8 documents in lines 15 to 23 on page 11 of E 1 application Serial No.
`08/426, 165, i.e. E2, is cited (see lines 21 and 22 on page 11 of E1 ). However, E1
`does not claim that E2 would be anyhow preferred over the other documents cited in
`the list, and does not make reference to any particular disclosure within E2.
`Accordingly, in a third selection step E2 has to be chosen from the list provided at
`lines 15 to 23 on page 11 of E1.
`
`Even further, E2 itself discloses various embodiments, only one of which discloses
`heating elements that pierce into a disposable portion (see again column 21, lines 30-
`36 together with Figs. 13 and 14 of E2). E1 in no way points towards this certain
`embodiment of E2, since E1 does not cite any particular passage of E2. Accordingly,
`in a fourth selection step the embodiment of Figs. 13 and 14 of E2 has to be chosen.
`
`Hence, a totality of at least four selection steps has to be made in order to arrive at
`the combination which, allegedly, destroys novelty of claim 1 of the patent in dispute.
`However, according to established EPO case law, if a selection from only two lists ( of
`a certain length) has to be made in order to arrive at a specific combination of
`features, then the resulting combination of features, not specifically disclosed in the
`prior art, confers novelty (see Guidelines for Examination in the European Patent
`Office, November 2016, G-VI, 8.).
`
`Accordingly, claim 1 of the patent in dispute is novel over the combination of E1 and
`E2 for at least this additional and independent reason.
`
`6
`
`Ex. 2032-0006
`
`

`

`Further, if it is assumed for the sake of argumentation, that E1 and Figs. 13 and 14 of
`E2 are combined, then still a combination of the heating elements shown in Figs. 13
`and 14 of E2 and the device shown in Figs. 2A to 2C of E1 is not possible, at least not
`without the exercise of various non-straightforward technical modifications. If the
`heating blades 120 shown in Figs. 2A to 2C of E1 are moved towards the centre of
`the cylindrical receptacle so as to be able to pierce into the cigarette (as it is the case
`in the embodiment of Figs. 13 and 14 of E2), then the relocated heating blades 120
`will block the movement of the plunger 210 so that an extraction of the cigarette by
`the movement of the plunger as disclosed in E1 is no longer possible. Thus, Figs. 2A
`to 2C ( on which the Opponent relies) cannot without non-disclosed technical
`modifications be combined with Figs. 13 and 14 of E2.
`
`Thus, claim 1 of the patent in dispute is also novel over a combination of E1 and E2
`for this further and independent reason.
`
`In addition, in the embodiment of E2 to which the Opponent refers in paragraph 3 on
`page 5 of the opposition substantiation the heating elements pierce into a "disposable
`portion" (see column 21, lines 30-36 together with Figs. 13 and 14 of E2). The
`disposable portion corresponds to the inserted cigarette (see column 21, line 26 of
`E2). Thus, it is not unambiguously disclosed in E2 that the heating elements of the
`embodiment of Figs. 13 and 14 of E2 actually pierce into an aerosol-generating
`substrate as defined in claim 1 of the patent in dispute.
`
`Accordingly, claim 1 of the patent in dispute is novel over a combination of E1 and E2
`for this additional and independent reason.
`
`Hence, claim 1 of the patent in dispute is novel over the cited prior art. Additionally,
`because claims 2 to 10 ultimately depend from claim 1 it is submitted that these
`claims are novel for at least the reasons provided above.
`
`IV.2.
`Novelty of independent claim 11
`The Opponent alleges on pages 17 to 19 of the opposition substantiation that E1
`discloses all features of claim 11 of the patent in dispute. This assertion, however, is
`incorrect.
`
`7
`
`Ex. 2032-0007
`
`

`

`Claim 11 of the patent in dispute requires "a smoking article (203) received in the
`sliding receptacle (105)" and further "removing the smoking article (201) from the
`sliding receptacle (105)" (emphasis added, see page 15, column 28, lines 22 and 23
`and lines 35 and 36 of the patent in dispute). This means that at least part of the
`smoking article has to be located within the sliding receptacle. Otherwise, the
`smoking article could not be "received in" or "removed from" the sliding receptacle.
`
`In contrast, according to E1 a smoking article can only be received at the plunger 210
`or, more specifically, abutting the plunger front face 212 (see page 22, lines 10 and
`11 together with Fig. 2A of E1 ). The plunger of E1 therefore does not allow for the
`smoking article to be "received in" or to be "removed from" the plunger.
`
`Accordingly, and in contrast to the Opponent's allegation (see the last two lines of the
`feature 11 b discussion on page 18 of the opposition substantiation), the plunger of E1
`does not correspond to the sliding receptacle as defined in claim 11 of the patent in
`dispute.
`
`Hence, claim 11 of the patent in dispute is novel over the cited prior art. Additionally,
`because claims 12 and 13 depend from claim 11 it is submitted that these claims are
`novel for at least the reasons provided above.
`
`V.
`Inventive step
`With regard to inventive step the Opponent relies on several combinations of
`documents starting from either E1 or EP 2 394 520 A 1 (E4a - which has been cited
`by the Opponent as an English translation of WO 2010/090338 A1 which itself has
`been designated as E4) as the closest prior art.
`
`We would like to point out that the skilled person does not find any incentive in either
`of the documents E1 and E4a to combine these documents in a manner that results
`in the claims of the patent in dispute. It will be shown below that a combination of E1
`and E4a would only arise as a result of an impermissible ex post facto analysis.
`
`E1 relates to an aerosol-generating device comprising an external heater which is
`arranged so as to circumscribe the side walls of a heated cigarette. E1 describes
`
`8
`
`Ex. 2032-0008
`
`

`

`that external heaters preferably hold
`the cigarette at
`its periphery (see "A
`substantially cylindrical heating fixture 39 for heating the cigarette 23, and,
`preferably, for holding the cigarette in place ... " at page 10, lines 17 and 18 of E 1 ),
`meaning that the heating elements press on the sides of an inserted cigarette.
`
`E 1 further describes that its heaters heat the cigarette from the outside and, thus,
`thermally weaken the cigarette, especially the outer portions of the cigarette ( see
`page 22, line 25 to page 23, line 3; and in more detail page 23, lines 3 to 17 of E1 ).
`E 1 also teaches that this thermal weakening is beneficial for enabling air to enter the
`cigarette transversely, through the heated and weakened sides (see page 19, lines
`7 to 11 of E1).
`
`As a further consequence of the heating process, E1 describes that a used
`cigarette, held at the thermally weakened periphery by the heater, would easily tear
`if pulled upon by a user during its removal. In order to avoid that the cigarette falls
`apart during removal, E1 teaches to use a plunger. Thus, the need for the plunger of
`E1 is a result of the specific heating process described in E1. Any hint that the
`plunger would be used also in combination with a heating device different from this
`external heater configuration is missing in E1.
`
`In contrast, the device of E4a uses an entirely different approach for the heating.
`Instead of externally heating the cigarette from its periphery, E4a utilizes an internal
`heater which pierces into the center of the cigarette and heats the cigarette from the
`inside. E4a does not at all discuss weakening of the outer portion of the cigarette
`during heating. In particular, there is no teaching in E4a that a used cigarette may
`break when removed from the device. Consequently, E4a does also not disclose
`any means for assisting in removal of the cigarette.
`
`Thus, even when for the sake of argumentation assuming that the devices of E1 and
`E4a could be combined, there is still no reason provided in either of these
`documents as to why the skilled person would ("not simply could, but would'; see
`Guidelines for Examination in the European Patent Office, November 2016, G-VII,
`5.3) make such combination.
`
`9
`
`Ex. 2032-0009
`
`

`

`It is also added that the argumentation provided above similarly applies for any
`combinations of documents E1 and E2 (regarding the embodiment of E2 which uses
`an internal heater; see Figs. 13 and 14 of E2). Again, E 1 does not suggest that its
`plunger could be useful for the internally heated system of Figs. 13 and 14 of E2.
`(Moreover, as already described above in our discussion on novelty, there is also no
`teaching how such combination could even be technically achieved.) On the other
`side E2 does not provide any incentive that the embodiment of its Figs. 13 and 14
`would suffer from any disadvantages such that it would benefit from incorporation of
`any subject-matter of E 1.
`
`Thus, any combinations of E1 and E4a, or E1 and E2 (embodiment of Figs. 13 and
`14 of E2) starting from any one of these documents as the closest prior art are not
`made obvious to the skilled person. Hence, claims 1 to 13 of the patent in dispute
`are inventive over the cited prior art.
`
`In contrast to the cited prior art, structures described in the patent in dispute can
`facilitate a different kind of operation. According to the patent in dispute the
`substrate ( or the aerosol-generating/smoking article) can be withdrawn from the
`aerosol-generating device in a two-step process (see, e.g., page 3, column 4, lines 9
`to 17 of the patent in dispute). In a first step the heater can be separated from the
`substrate by moving the extractor from the heating position into the extraction
`position. However, the extractor can be still holding the substrate when being in the
`extraction position. In a second step the substrate can be withdrawn from the
`extractor and thereby also from the aerosol-generating device.
`
`The effect of this two-step process is that the structural integrity of the aerosol(cid:173)
`generating substrate or the aerosol-generating/smoking article is more effectively
`preserved as the substrate is withdrawn from the aerosol-generating device more
`gently than it would be if the device did not comprise the extractor. This more gentle
`withdrawal is due to the fact that, according to the patent in dispute, the overall
`shear force which the substrate experiences during withdrawal is portioned by the
`two-step process. In more detail, in the first step, only the shear force resulting from
`the movement of the substrate relative to the heater is applied to the substrate. In
`the second step, only the shear force resulting from the movement of the substrate
`relative to the extractor is applied to the substrate. This of course means that not all
`
`10
`
`Ex. 2032-0010
`
`

`

`the shear force applies at the same time. Consequently, the physical stress
`simultaneously applied to the substrate is reduced. Therefore, the likelihood of
`damaging the substrate or the aerosol-generating/smoking article during
`the
`extraction/withdrawal process is reduced.
`
`The extraction/withdrawal processes described in the patent in dispute are not
`obvious from the teaching of E1 because E1 relates to specific kinds of heaters
`which radially surround the smoking article. In E1
`there is - because of the
`surrounding wrapper - no direct contact between the substrate and the heater and
`no penetration of the heater into the substrate. Thus, according to E1, extraction or
`separation of the substrate from the heater and extraction or separation of the
`smoking article from the aerosol-generating device each relate to the same contact
`areas between the smoking article and the device and thus the same shear force.
`Hence, the extraction described in E1
`is necessarily a one-step process that is
`specific to the type of heating structure described in E1. It does not provide a pointer
`toward the extraction/withdrawal processes described in the patent in dispute.
`
`Turning to E4a, this document does not relate to the extraction of a smoking article
`from the aerosol-generating device. Thus, E4a does not provide any indication to
`the skilled person towards use of an extractor.
`
`Also, the remaining cited prior art E2, US 5,388,594 B1 (E3), and WO 1994/006314
`A 1 (E5) do not provide any further incentive to use an extractor.
`
`In light of the above, the allegation from the Opponent that the claims lack an
`inventive step appears to be based on a hindsight piecing together of prior art
`documents. Hence, claims 1 to 13 of the patent in dispute are inventive over the
`cited prior art.
`
`/ 1//;/
`/ -/1//!f/L_-
`';:::/4l" fl
`
`Dr.7serstian Gritschneder
`European Patent Attorney
`
`11
`
`Ex. 2032-0011
`
`