22 Nov 2017

T 2416/12 - 17 years pending, remittal

Key points

  • This is an examination appeal. 17 years after the filing date (Euro-PCT, not a divisional), the case is remitted back to the Examining Division.
  • Filing date 12.02.1999, entry into the European phase 11.09.2000 , first Communication in 2006, second in 2008, summons in 2012, Notice of appeal also in 2012. Board remits the case. 
  • The Examining Division has meanwhile issued an Intention to grant within a few months from the remittal. 
  • " In the further prosecution of the case, the Examining Division may want to take into account the observations made in the Board's communication with regard to the prior art cited in the first-instance proceedings. The Board further notes that minor corrections of the claims may be required (e.g. "dependent" rather than "dependant" in claim 1)." The ED issued the Rule 71(3) directly  after the remittal, with the typographic error in claim 1. 

EPO T 2416/12 - link

Reasons for the Decision 
[...] 

Further prosecution
7. For the reasons given above, the Board does not uphold the clarity objections raised in the decision under appeal. Moreover, the Board is satisfied that the claims of the main request overcome the objections raised under Article 84 EPC in the appeal proceedings, fulfil the requirements of Article 123(2) EPC and define subject-matter which is new over document D1. It follows that the grounds on which the decision under appeal was based do not apply.
8. The Board further concludes from the above discussion that the Examining Division incorrectly mapped the tracking and storage at the search engine to features of a browser or client. As a consequence, it did not take into account important features of the claimed invention, which have been further clarified in the appeal proceedings.
9. Under those circumstances, and in spite of the long duration of the proceedings thus far, the Board is not minded to assess inventive step in the appeal proceedings.
In accordance with Article 111(1) EPC, the case is therefore to be remitted for further prosecution by the first-instance department. This is in accordance with the procedural suggestion made by the Board in its communication and accepted by the appellant (see sections III and IV above). The decision can therefore be taken without oral proceedings.
10. In the further prosecution of the case, the Examining Division may want to take into account the observations made in the Board's communication with regard to the prior art cited in the first-instance proceedings. The Board further notes that minor corrections of the claims may be required (e.g. "dependent" rather than "dependant" in claim 1).
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.

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