T 2196/09 – Not In Line

The applicant filed an appeal after the Examining Division (ED) had refused his application.

The following paragraphs are taken from the Board’s discussion of the admissibility of the main request and of auxiliary request 1:

[4] According to the established case law of the Boards of Appeal, the function of appeal proceedings is to give a decision upon the correctness of a separate earlier decision taken by a department of first instance (cf. “Case Law of the Boards of Appeal of the EPO”, 6th edition 2010, VII.E.1). In line therewith, Article 12(4) RPBA states that it is within the power of the board to hold inadmissible facts, evidence or requests which could have been admitted in the first instance. Although new requests with amended claims may exceptionally be admitted in appeal proceedings, it is not the purpose of the appeal to give the appellant the opportunity to recast its claims as it sees fit and to have all its requests admitted into these proceedings (cf. “Case Law”, VII.E.16.1.2).

[5] As for the main request and auxiliary request 1, the board has the following considerations:

[5.1] The main request dealt with by the ED in the decision under appeal comprised a technical feature characterizing the distal optical tip (“... comprising a tapered portion (305) and a tapered distal tip portion (303) ...”) which was further defined in more detail in auxiliary requests I and II before the ED (“... wherein a substantial step is provided where the tip portion meets the base portion ...”) […]. None of these features are present in the main request and the auxiliary request 1 filed in appeal proceedings […]. The deletion of these features in appeal proceedings does not address, let alone overcome, the objections raised by the ED and reverts the claimed subject-matter to that examined at a much earlier stage of the examination proceedings. Indeed, the claims of the main […], closer to those originally filed than those underlying the decision under appeal.

[5.2] According to the “Minutes of the OPs before the ED”, auxiliary request II was filed at the oral proceedings (OPs) before the ED after the applicant requested, and was granted, a short break. After examining this auxiliary request II and considering it not to meet the requirements of A 123(2), the applicant was asked whether it had further requests, to which it replied that it did not wish to introduce a new request […]. Thus, supplementary time was offered by the ED and not availed by the applicant because it did not consider necessary or, as stated in the Minutes, it did not wish to file further requests. Indeed, in the light of the nature and type of amendments introduced into the main request and the auxiliary request 1 in appeal proceedings, the board considers that it was not a lack of opportunity or of time for the applicant to file such requests at the OPs before the ED but that it had good reasons not to file them at that stage of the examination proceedings since they would certainly not have been admitted into the proceedings by the ED.

[5.3] Thus, neither the main request nor the auxiliary request 1 are in line with the purpose of appeal proceedings as established in the case law. Therefore, in accordance with Article 12(4) RPBA, the board, exercising its discretion, decides not to admit these requests into the appeal proceedings.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

NB: A French summary (and some interesting reader comments) can be found on Laurent’s blog (here).