T 1212/08 – The Third Option

This is an appeal against the refusal of the application under consideration by the Examining Division (ED).

The Board found the main request as well as auxiliary requests 1 and 3 to lack novelty and then discussed the admissibility of auxiliary request 2. All the requests were directed at projection device for medical images.  

*** Translation of the German original ***

[4.1] The subject-matter of claim 1 of auxiliary request 2 refers to the adaptation and display of the projected image taking into account the position of the Laser projection device. A disclosure of these features in the original application is only found in page 7, paragraph 3 of the description.

[4.2] Claims claiming this subject-matter have been filed for the first time together with the statement of grounds of appeal and never been submitted during the first instance proceedings. In particular, the ED has not been able to make a reasoned decision on this subject-matter in its decision to refuse the application.

During the first instance proceedings, the applicant had reacted to the objection of lack of novelty raised in the first communication against original dependent claims 2 and 3 by inserting the features of these claims into original independent claim 1, without any further addition, which triggered summons to the requested oral proceedings (OPs). In the summons the ED objected against the clarity, novelty and inventive step of the subject-matter based on the original claims. Thereupon the applicant renounced the OPs and requested a decision according to the state of the file. This decision was then issued, referring to the reasons mentioned in the summons.

[4.3] As said summons only took account of the subject-matter of the original claims, the fact that the subject-matter claimed in auxiliary request 2 has been submitted for the first time in the appeal proceedings obliges the Board either to examine and to decide on this factual situation (Sachverhalt) for the first time in the appeal proceedings, or to remit the case for further decision to the first instance; A 111(1). However, the Board is of the opinion that in the present case none of these procedural options is adequate and acceptable, for the following reasons:

[4.4] According to the established case law of the Boards of appeal (cf. Case Law, 6^th edition, VII.E.1), appeal proceedings are wholly separate and independent from the proceedings at first instance. Their function is to give a judicial decision upon the correctness of a strictly separate earlier decision taken by a first instance department.

As there is no decision of the first instance on the subject-matter of auxiliary request 2, the Board cannot review (überprüfen) this decision. Moreover, the Board is of the opinion that the feature taken from the description according to which the image is adapted to the position of the Laser projection device constitutes a particular new aspect that has no counterpart in the original claims, which at best constitute the required technical prerequisites. Therefore, it may be doubted whether this particular aspect of the adaptation of the projected image has necessarily been taken into account in the search. As a consequence, the Board does not see any good reason (Veranlassung) to examine this fact for the first time in the appeal proceedings.

The second option of a remittal of the case to the first instance would considerably prolong the proceedings and would, therefore, clearly go against the requirement of procedural economy.

[4.5] These two inadequate ways of continuing the proceedings with which the Board is confronted would not have arisen had the subject-matter of auxiliary request 2 been submitted in due time during the first instance proceedings.

Contrary to the appellant, the Board is of the opinion that auxiliary request 2 could – and should – indeed have been filed in due time before the ED rather than together with the statement of grounds of appeal at a later time. The circumstances relied on by the appellant, according to which the ED had only given a global and provisional negative assessment of the patentability of further unspecified subject-matter contained in the description in the summons to OPs (point 7), should not have deterred the applicant from having the subject-matter for which it intended to obtain protection, at least subsidiarily, finally examined and decided upon by the ED, in particular if the applicant wanted to have a decision of the Board of appeal on this matter, as conceded [by the appellant]. However, by requesting a decision “according to the state of the file” immediately after having received the summons to OPs, the applicant has consciously renounced such an examination and decision of the ED. As follows from the above cited case law of the Boards of appeal, the appeal proceedings are not a continuation of the first instance examination proceedings.

[4.6] Moreover, it has to be noted that – in contrast to the subject-matter of auxiliary request 2 – the other requests filed together with the statement of grounds of appeal were not objectionable regarding their admissibility because the subject-matter claimed therein – with the exception of a few required clarifications or limitations taken from the description – essentially corresponded to the subject-matter of the original claims […], which have been considered in the first instance decision.

[4.7] For these reasons the Board exercises the discretionary power conferred to it under Article 12(4) RPBA by not admitting auxiliary request 2 into the proceedings.

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

The file wrapper can be found here.

PS: This decision was followed in more recent case T 1108/10 (Board 3.2.03), where a copy of T 1212/08 was handed out to the representative during the OPs “for further discussion” (see point [3.2]).