T 569/08 – Predestined Yet Doomed

Ye who have not amended before the ED, abandon all hope to do so later on.

This is an examination appeal.

The Examining Division (ED) had found the claims on file not to comply with the requirements of A 123(2).

The Board confirmed this finding for the main request and the first auxiliary request and then dealt with the admissibility of auxiliary requests II and III that had been filed about one month before the oral proceedings (OPs) before the Board.

*** Translation of the German original ***

[4.1] An applicant shall be given at least one opportunity to amend the application of his own volition (A 123(1)). It is undisputed that in the present case the applicant has made use of this opportunity in the examination proceedings (R 86(3) EPC 1973 and R 137(2), respectively) and finally has decided to request the grant of a patent covering the combination of features M3+M4.

[4.2] Even during the examination proceedings, further amendments of the application can only be made with the consent of the ED (R 86(3) EPC 1973 and R 137(3), respectively). In the present case the applicant has not tried to obtain the consent of the ED for some limited or alternative subject-matter in case that the objection of lack of disclosure of the combination of features M3+M4 was finally confirmed. Thus the ED had no reason to examine possible combinations of the original claim 1 with originally dependent claims as to their inventive step, because this question was not relevant for the decision on any of the requests before the ED.

[4.3] The primary purpose of appeal proceedings is to review the correctness of the impugned decision. There may be amendments during the appeal proceedings in order to remedy formal or substantial deficiencies, but their admission is within the discretion of the Board.

[4.4] Together with the statement of grounds of appeal, the appellant has pursued the subject-matter of the main request before the ED and limited its complete case correspondingly (Article 12(2) RPBA, OJ EPO, 2007, 536). It was only in response to the summons to OPs that the appellant has modified its submissions such that in case of a confirmation of the decision of the ED [the Board] should examine subject-matter that did not contain the combination of features M3+M4 any more. However, [the admission of] such amendments of the submissions during the appeal proceedings [is] within the discretion of the Board pursuant to Article 13(1) RPBA, which has to be exercised in view of the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy.

[4.5] Thus the question arises whether in the present case the amendments are of the kind that could have been filed during the examination proceedings (Article 12(4) RPBA) or at least do not make the proceedings during the OPs so complicated that their admission would contradict the need for procedural economy (Article 13(1) and (3) RPBA).

Auxiliary request III

[5.1] Claim 1 of auxiliary request II essentially corresponds to a combination of features taken from original claims 1 and 3, together with a feature taken from the description (“wherein in the mobile radio unit (1, 15) the data transfer rate of the compressed is adapted to the data transfer rate of the fixed line network (45)”). The combination of features M3+M4, which had been considered to be the core of the invention up to then, was completely deleted.

The argument that the inventions according to all the requests concerned methods where a physical data channel was allocated and a data transfer rate was adapted, is not persuasive because these features are too general to characterise the core of the invention(s).

Therefore, the claimed subject-matter was very significantly amended with respect to the subject-matter underlying the impugned decision.

[5.2] In the summons to OPs the Board essentially provisionally adopted, commented and completed the reasons for the impugned decision. The Board cannot see how the provisional opinion could have caused the amendments. Thus auxiliary request II does not constitute an amendment that would have been required because of the provisional opinion of the Board.

[5.3] As the objections that formed the basis for the impugned decision have remained essentially unchanged during the proceedings leading to the OPs before the Board, the appellant could (and should) have filed auxiliary request II already during the examination proceedings, in which case the Board would have disposed of a corresponding first instance decision to be reviewed. Because of the significant shift of the claimed subject-matter, the amendments would require the Board to conduct a debate on the inventive step of a subject-matter in regard of which the file did not contain any informed opinion of the ED. This is not what appeal proceedings are meant to be. The Board is of the opinion that in this case the need for procedural economy hinders it from remitting the case to the first instance.

[5.4] As a consequence the Board exercises its discretion pursuant to Articles 12(4) and 13(1) RPBA by refusing to admit auxiliary request II, which for the first time comprises amendments of the claims that could have been filed before the ED, at least in the form of an auxiliary request, even as an amendment of the case, in order not to jeopardise the need for procedural economy.

Auxiliary request III

[6.1] Claim 1 of auxiliary request III essentially consists in a combination of the features of original claims 1, 2, 4, and 6. The search report was based on all original claims, which means that the claimed method is to be considered to have been searched. Just as claim 1 of auxiliary request II, present claim 1 does not contain the combination of features M3+M4 any more.

[6.2] Normally claims that were filed as dependent claims and searched are predestined to be fall-back positions in case an independent claim is not allowable. However, this does not hold true at any stage of the proceedings because, depending on the stage of the proceedings, [the admission of] amendments of the application [is] subject to the discretion of the ED or the Board, respectively. As already explained under point [5.3] above, in the present case the shift of the subject-matter which is to be decided upon in the appeal towards subject-matter that could have been filed before the ED and which would have to be examined as to its inventive step for the first time during the OPs before the Board, would contradict the need for procedural economy.  

[5.6] As a consequence the Board exercises its discretion pursuant to Articles 12(4) and 13(1) RPBA by refusing to admit auxiliary request III, which for the first time comprises amendments of the claims that could have been filed before the ED, at least in the form of an auxiliary request, even as an amendment of the case, in order not to jeopardise the need for procedural economy.

NB: The Board also offered a catchword:

Even a combination of claims of the application as filed may be disregarded in appeal proceedings (see paragraphs [4] to [6]).

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The file wrapper can be found here.