T 0815/18 - Claim amendments changing CPA inadmissible

Key points

• In this examination appeal, the Board concludes that the Main Request is not inventive in view of  D2. The applicant then files a new Main Request at the end of the oral proceedings. The Board does not admit this request.
• " The appellant further argued that, because of [the] amendments, D2 did not represent the closest prior art anymore since it did not relate to microwave radio transmissions but to mobile communications." 
• “The board holds that, even if this technical argument were accepted, amendments to a claim aiming to change the closest prior art, considered as such during the whole examination proceedings, introduces subject-matter which has not been discussed so far and or probably even searched and could not be dealt with without the adjournment of oral proceedings.” 
• As a comment, in this case, the features were taken from the description, so in a way it introduced new subject-matter which have not been discussed so far. That may be enough for holding inadmissible amended claims filed at the end of the oral proceedings. Nevertheless, I tend to agree that the fact that the claim amendments aim to switch the closest prior art document, may provide an additional reason for holding requests inadmissible (also if filed earlier in the procedure). 
• This decision also illustrates that the CPA is to be determined for the claim(s) at issue, not for the patent application as a whole. 

EPO T 0815/18 -  link

Reasons for the Decision

1. The appeal is admissible (see point II above).

2. Main request - Admissibility

2.1 This request was filed late by the appellant at the end of the oral proceedings before the board, after the other requests had been examined, and replaced the previous main request which was thus withdrawn.

2.2 In the oral proceedings, the board had previously expressed the opinion that claim 1 of the previous main request did not meet the requirements of Article 56 EPC in view of D2. During discussion of the previous main request, the board held that D2 discloses the following

[...]

For these reasons, during oral proceedings the board concluded that the subject-matter of claim 1 of the previous main request did not involve an inventive step, in view of D2.

2.3 Claim 1 of the main request differs in substance from claim 1 of the previous main request in that the line interface is a baseband wireline interface and the radio transmission is a microwave radio transmission, i.e. that the radio channels operate in the microwave range.

The appellant argued that these amendments were supported by the description in page 1, line 21 and from page 1, line 24 to page 2, line 6, respectively. The board notes, however, that these passages belong to the part entitled "Background of the invention" and that the terms "microwave" and "baseband" do not appear further in the description, so the board is not convinced that the requirements of Article 123(2) EPC are fulfilled.

The appellant further argued that, because of these amendments, D2 did not represent the closest prior art anymore since it did not relate to microwave radio transmissions but to mobile communications. The board holds that, even if this technical argument were accepted, amendments to a claim aiming to change the closest prior art, considered as such during the whole examination proceedings, introduces subject-matter which has not been discussed so far and or probably even searched and could not be dealt with without the adjournment of oral proceedings.

For these reasons, during the oral proceedings the board decided not to admit the main request into the proceedings (Article 13(3) RPBA).