T 0386/12 - Unity and unsearched features

T 0386/12

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Key point

• The board considers that the mention in [Rule 137(5) EPC, second sen­tence] - to "unsearched subject-matter" must be con­strued as referring to the subject matter covered by the Euro­pe­an search report. Therefore, the "origi­nally claimed invention or group of inventions" mentioned in that Rule must also be that on which the European search re­port is based (i.e. the claims pending at the time of the search). In the present case, the supplementary European search report takes the place of the European search report pursuant to Ar­ticle 157(1) EPC 1973. Hence, the claims as pending when the supplementary European search was carried out, are deemed decisive for the "originally claimed invention or group of inventions" .

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division, with reasons dated 30 September 2011, to refuse European patent application No. 03783831.5 for lack of an inventive step

III. With its summons to oral proceedings, the board informed the appellant of its preliminary opinion, according to which the main request lacked clarity and an inventive step, Articles 84 and 56 EPC 1973, and the first auxil­ia­ry request was deficient under Articles 123(2) EPC and 84 EPC 1973, but the second and third auxiliary requests appeared to be allowable. The board however considered itself barred from ordering the grant of a patent, since the examining di­vision had stated that the claimed sub­ject matter had not been searched. The board there­fore indicated that it was minded to remit the case for fur­ther prosecution based on either the second or the third auxiliary request.

IV. In response to the summons, the appellant withdrew the main and first auxiliary requests and requested that the application be remitted to the department of first in­stance based on the second auxiliary request. In the ab­sence of any statement to the contrary, the board un­der­stands that the third to fifth auxiliary requests are maintained.

Reasons for the Decision

Admitting the second auxiliary request, Article 12(4) RPBA and Rule 137(4) EPC (2007)

2. In the present case, a supplementary European search re­port under Article 157(2) EPC 1973 was carried out, based on claims amended under Rule 109 EPC 1973. As the supplementary European search report was transmitted on 12 Feb­ru­ary 2008, i.e. after the entry into force of EPC 2000, but before the entry into force of the further amen­d­ed Rule 137 EPC on 1 April 2010, the appli­cable regula­tion is Rule 137 EPC (2007) according to the per­ti­nent transitional provisions (see Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revi­sing the EPC of 29 November 2000, Special edi­tion No. 4 OJ EPO 2007, 219; Article 2 of the Deci­sion of the Admi­nistrative Council of 7 December 2006 amen­ding the Im­ple­menting Regulations to the EPC 2000, Spe­cial edition No. 1 OJ EPO, 2007, 89; and Article 2(2) of the Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the Euro­pe­an Patent Con­ven­tion, OJ 2009, 299).

3. In the minutes of a telephone conversation [of the Examining Division], dated 18 Au­gust 2011, which was held on 11 August 2011 in prepa­ra­tion of the oral proceedings­­, it is noted that claim 14 "appear[ed] prima facie to relate to un­searched subject matter which is not unitary with the original claimed invention and therefore not allowable, Rule 137(5)". This statement is indicated as having been made "merely academi­cally", is not fur­ther rea­soned and does not specify which features or feature combinations in particular were considered to constitute unsearched subject matter. Moreover, the decision itself does not contain a corresponding objection, let alone any rea­so­ning in this regard.

4. The board has no reason to doubt that claim 14 lacks unity with the originally claimed invention.

4.1 The board considers that the mention in Rule 137(4) EPC (2007) - corresponding to Rule 137(5) EPC, second sen­tence - to "unsearched subject-matter" must be con­strued as referring to the subject matter covered by the Euro­pe­an search report. Therefore, the "origi­nally claimed invention or group of inventions" mentioned in that Rule must also be that on which the European search re­port is based. In the present case, the supplementary European search report takes the place of the European search report pursuant to Ar­ticle 157(1) EPC 1973.

4.2 Amongst the claims covered by the supplementary European search report, claims 7 and 8 already contained the transmission of the iden­ti­fier of the delegating pro­cessing resource, the IPU, and claim 15 spe­cified that the delegating processor might go to "sleep" waiting for the result.

4.3 The board is hence satisfied that the independent claims of the present second auxiliary request are unitary with the originally claimed invention and thus concludes­ that Rule 137(4) EPC (2007) does not preclude admittance of the second auxiliary request.

5. Independent claim 1 of the present highest-ranking se­cond auxiliary request limits independent claim 1 as re­fused by fea­tures specifying what the identifier of the delegating processor is meant to be used for and how it is used to direct the result to the right processor. The board therefore considers that the amendments made in the second auxiliary request address the main issue of controversy vis-à-vis the decision under appeal, name­­ly the inventive merit of transmitting ("routing") the iden­ti­fier of the delegating processor with the de­le­ga­tion request. Therefore, the board has no doubt that the claims of the second auxiliary request should be ad­mitted, pursuant to Article 12(4) RPBA.

6. In view of the present decision, the board need not address whether any of the further requests are to be admitted. In par­ti­cular, the board need not address the doubts about the admissibility of the fourth and fifth auxiliary requests, which it expressed in the annex to its summons to oral proceedings (point 7.2).