T 1952/10 - Non-searched feature in aux. req.

T 1952/10
For the decision, click here. [C]

Key points

• In auxiliary requests 2 and 3, which were filed after oral proceedings were arranged, independent claim 1 has been amended by introducing a feature from the description.
• Board: "This feature was not present in the claims as originally filed [...] and there is nothing to suggest that the European search would have covered this feature. Consequently, the Board could not consider this amendment in substance for novelty and inventive step without postponing/adjourning the oral proceedings to allow for a further search to be carried out. According to Article 13(3) RPBA an amendment to a party's case shall not be admitted if that is the case. Hence, the Board decided not to admit the amendments according to auxiliary requests 2 and 3."

Reasons for the Decision

1. Alleged procedural violation (right to be heard)

1.1 In the first instance proceedings, the examining division set out in the annex to the summons to oral proceedings (communication dated 19 January 2010), that in claim 1 filed with the letter dated 21 May 2009, the feature according to which the light source was attached to the box via an inductive connection added fresh subject-matter (see point 2) and that all of the other features of claim 1 were known from each of the documents D1, D2 and D3 (see point 3).

1.2 One month before the date scheduled for oral proceedings (see letter dated 15 March 2010) the applicants filed amended claims, with claim 1 comprising the sole characterising feature that "the electricity is obtainable via an inductive connection".

1.3 In a communication dated 31 March 2010, which according to the appellants was received on 1 April 2010, i.e. more than 2 weeks before the oral proceedings, the examining division set out the grounds which would later come to be used in the contested decision. The only points that the examining division raised for the first time in that communication concerned the feature that "the electricity is obtainable via an inductive connection". In particular, the examining division set out that this feature:

- was disclosed in document D2 by the passage of column 4, lines 2 to 5, according to which electricity may be provided by "electrical transformers", in other words via inductive connection; and

- "does not involve an inventive step since the skilled person will realise that whenever wired connections are referred to they may where appropriate, be replaced by wire free connections such as induction connection".

1.4 These two points were raised in response to amendments filed by the applicants only one month before the proceedings and were based entirely on documents that were already on the file. The Board considers that they are of such limited complexity that it should have presented no difficulty to react to them in the two weeks remaining before the scheduled oral proceedings, or indeed at the oral proceedings. The Board concludes that the opportunity to address the objections was sufficient and that in basing the refusal on these objections the examining division did not commit a procedural violation. Hence, the appellants' arguments on this point cannot provide a reason for remitting the case to the department of first instance for further prosecution.

[...]

4. Auxiliary Requests 2 and 3

4.1 According to Article 13(3) of the Rules of Procedure of the Boards of Appeal (RPBA), "Amendments [to a party's case] sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

4.2 In auxiliary requests 2 and 3, which were filed after oral proceedings were arranged, independent claim 1 has been amended by introducing the feature that "the light source (20) automatically disconnects from the electricity connection on separation of the lid (14') from the electrical junction box (12')".

4.3 This feature was not present in the claims as originally filed (see EP 1 909 367 A2) and there is nothing to suggest that the European search would have covered this feature. Consequently, the Board could not consider this amendment in substance for novelty and inventive step without postponing/adjourning the oral proceedings to allow for a further search to be carried out. According to Article 13(3) RPBA an amendment to a party's case shall not be admitted if that is the case. Hence, the Board decided not to admit the amendments according to auxiliary requests 2 and 3.

5. Conclusion

In the absence of any allowable request the Board had to dismiss the appeal.