T 1472/08 – It’s Too Late Now

Another decision reminding us that Article 12(4) RPBA may also find application in appeals against a refusal by the Examining Division (ED).

Claim 1 of the main request before the Board read (in English translation):

A method for controlling phytopathogenic harmful fungi, characterised in that the fungi or the materials, plants, the soil or seeds to be protected against fungal attack are treated with an effective amount of a compound of formula I

wherein
X is C1-C12 alkylene or C2-C12 alkenylene, where the carbon chains may be interrupted by one or two heteroatoms selected from the group consisting of S, O and NR1 ,
R1  is hydrogen, C1-C6 alkyl or C(=O)-C1-C6-alkyl.

In what follows, the Board deals with the admissibility of the main request and auxiliary request 2:

*** Translation of the German original ***

[2.1] The concerns expressed in the second communication of the Board against the admission of certain then pending sets of claims also apply to present main request and auxiliary request 2 because here the definition of the radicals X and R1 has been extended with respect to both the claims amended during the examination proceedings and the claims filed together with the statement of grounds of appeal.

[2.2] The appellant already had filed amended claims before the ED. According to R 137(3) no further amendment may be made without the consent of the ED. Pursuant to R 100(1) this provision shall apply to appeal proceedings (see T 1969/08 [3.2]). Therefore, in the present case, further amendments need the consent of the Board.

Accordingly, Article 12(4) RPBA emphasizes the “power of the Board to hold inadmissible … requests which could have been presented in the first instance proceedings” […].

[2.3] The appellant considered that the sudden refusal of the application by the ED hindered it from proposing further amendments […].

[2.4] During the international phase of the present application the EPO has established an IPER on March 20, 2006. Among other things, this report stated that the subject-matter of original claims 1 to 4 was not novel.

The report of the ED of January 11, 2007, confirmed the objections raised in the IPER and invited the applicant to file amended claims.

This is what the applicant did, after extension of the time limit, in its letter dated July 2, 2007.

The decision of the ED was posted on April 22, 2008.

[2.5] As the appellant had not filed any further request for an extension of the time limit, the Board considers that the appellant felt capable of responding to the report and carrying out all necessary amendments when it drafted its response of July 2, 2007.

In its answer it only referred to novelty in the sentence: “We consider that by increasing the precision of the variables in Formula I we have established novelty.”

However, even in view of the sole composition disclosed in document D3 it was obvious that the subject-matter of the thereby amended claims was not novel […]. Therefore, the applicant and now appellant had to expect the refusal of its application after its answer to the first communication.

For this reason the Board is of the opinion that the argumentation of the appellant summarised under [2.3] above is not persuasive. The appellant indeed had enough time to file claims during the examination proceedings wherein the radicals X and R1 were defined as in the present main request and in auxiliary request 2.

[2.6] In ex parte cases also, proceedings before the boards of appeal are primarily concerned with examining the contested decision. (G 10/93 [4]).

Therefore, it cannot be the purpose of examination appeal proceedings to completely re-open (völlig neu aufzurollen) the examination proceedings and to admit claims comprising extended definitions of features if, as here, these claims could already have been filed during the examination proceedings and the extensions are not appropriate in view of overcoming objections that had been raised in the impugned decision or by the Board.

It may be left open whether the subject-matter of these amended claims was covered by the search.

For these reasons, the Board decided not to admit the claims of the main request and of auxiliary request 2 into the proceedings, pursuant to Article 12(4) RPBA.

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