T 1435/13 - Completeness of the search

Key points

• In this examination appeal, the Board concludes that claim 1 is novel and inventive in view of the documents cited in the search report. The question then arises if perhaps other documents not yet on file teach the features at issue.
• “In the communication accompanying the summons to oral proceedings, the Board had some doubts whether the aspect of a plurality of group interrupt controllers had been sufficiently searched. However, since this subject-matter was present in claim 7 and 8 as originally filed, which are indicated as searched in the search report, the Board must be able to assume that it was searched completely.”
• The Board therefore orders the grant of the patent.
  
• As a separate matter, the appellant requests reimbursement of the appeal fee due to a substantial procedural violation. “The appellant argued that the examining division's failure to deal with all the independent claims of the then main request constituted a substantial procedural violation”.
• “The Board does not consider that the appeal fee should be reimbursed. Whilst it might have been desirable that the decision under appeal included reasoning with respect to all independent claims and thus also claim 9, the fact that claim 1 of the main request did not fulfill the requirements of the EPC meant that the main request could not be allowed, even if independent claim 9 complied with the requirements of the EPC. As the examining division decided on all requests before it, the Board does not consider that a substantial procedural violation occurred.”

EPO T 1435/13 - link



Thus, the Board judges that the subject-matter of claim 1 of the auxiliary request involves an inventive step over D1 (Article 56 EPC).

3.5 No objection was raised during the examination proceedings based on documents D2 to D4 and the Board considers the disclosure in those documents to be no more relevant than that provided by D1 and D5.

4. Completeness of the search

4.1 In the communication accompanying the summons to oral proceedings, the Board had some doubts whether the aspect of a plurality of group interrupt controllers had been sufficiently searched. However, since this subject-matter was present in claim 7 and 8 as originally filed, which are indicated as searched in the search report, the Board must be able to assume that it was searched completely.

5. The request for reimbursement of the appeal fee

5.1 The appellant argued that the examining division's failure to deal with all the independent claims of the then main request constituted a substantial procedural violation, which warranted the reimbursement of the appeal fee under Rule 103(1)(a) EPC.

The appellant cited the EPO Guidelines (IX-5.1): "The decision should normally deal with all independent claims of the valid request(s) that were discussed during the proceedings".

5.2 The Board does not consider that the appeal fee should be reimbursed. Whilst it might have been desirable that the decision under appeal included reasoning with respect to all independent claims and thus also claim 9, the fact that claim 1 of the main request did not fulfill the requirements of the EPC meant that the main request could not be allowed, even if independent claim 9 complied with the requirements of the EPC. As the examining division decided on all requests before it, the Board does not consider that a substantial procedural violation occurred.

For these reasons the appellant's request for the refund of the appeal fee is rejected.

Order

For these reasons it is decided that:

The decision under appeal is set aside.

The case is remitted to the examining division with the order to grant a patent in the following version:

Description: pages 1-8 filed during the oral proceedings on 16 January 2020

Claims 1-14 filed during the oral proceedings on 16 January 2020

Drawings: Sheets 1/4-4/4 as originally filed.

The request for the reimbursement of the appeal fee is refused.