Wednesday, 18 January 2012

T 1864/09 – One Or The Other

This decision also contains an interesting statement on remittals pursuant to A 111(1).

Having found both requests on file to lack inventive step, the Board had to deal with the request to remit the case to the Examining Division (ED) .

*** Translation of the German original ***

[6] The request for remittal pursuant to A 111(1) could not be granted, for the following reasons.

[6.1] This request, which had already been filed during the written proceedings (written submission of July 17, 2009) and in view of which the Board, in the annex to the summons dated January 12, 2010, pointed out that “it will have to be discussed whether the case may have to be remitted to the ED” […] at first was not pursued in the oral proceedings (OPs). A request for remittal was again made at the end of the OPs, at a time when the substantive examination had already been terminated. During this substantive examination, in which [the Board] acted as if it was the ED pursuant to A 111(1), second sentence, first half sentence, the subject-matter of claim 1 according to the main request, which had been amended following its discussion during the OPs, was extensively examined as to its compliance with the requirements of A 56 and A 84 (inventive step and clarity) ; the same holds true for claim 1 according to the auxiliary request.

[6.2] The request for remittal, according to the second way in which a Board of appeal may proceed, which is mentioned in A 111(1), second sentence, second half sentence, therefore, has been made at a time when the examination according to the first option of this article had already been terminated.

[6.3] As a consequence, the request for remittal could not succeed, on procedural grounds alone, because the EPC does not establish the right to have a Board act along both options mentioned in A 111(1) during examination appeal proceedings.

[6.4] Nor could the request succeed on factual grounds. It is true indeed, as argued by the appellant, that the impugned decision has been based on lack of clarity and lack of novelty only and that the amendment of the claims has restored novelty. However, […] in view of the claims to be examined, the factual situation is not completely new with respect to the factual situation underlying the impugned decision.

The same holds true for the prior art to be taken into account for the examination of inventive step. Besides document D1/D2, which has already been taken into account for the examination of novelty in the examining proceedings, only document D4, which had been referred to as closest prior art in the present application and which had the same applicant as the present application, has been taken into account.

Therefore, contrary to the appellant’s opinion, no new aspects which would justify a remittal have arisen during the appeal proceedings.

[6.5] Finally, it has to be noted, for the sake of completeness, that the appellant already had the opportunity to carry out the amendment within the framework of the examination of novelty and clarity before the ED, at least as an auxiliary request, as he has done during the appeal proceedings.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.