T 0689/15 - New line of reasoning is exceptional

 Key points

• In this examination appeal, an auxiliary request was filed after the preliminary opinion of the Board, after the summons, on 23 July, in advance of oral proceedings scheduled for 17 September.
• “Therefore the board is not convinced that the arguments set out in its [preliminary opinion] differ from the arguments set out in the decision under appeal to such an extent that they present a whole new line of reasoning […] Hence the board sees no exceptional circumstance leading to the amendment which would justify admitting the auxiliary request into the appeal proceedings. Therefore the auxiliary request is not admitted into the appeal proceedings (Article 13(2) RPBA 2020).” 
• emphasis added. 

EPO T 0689/15 - link

4. Admission of the auxiliary request into the appeal proceedings

4.1 According to Article 13(2) RPBA 2020, "[a]ny amendment to a party's appeal case made ... after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned".

The following explanatory remarks are given with respect to Article 13(2) RPBA 2020 in Rules of Procedure of the Boards of Appeal, Supplementary publication 2, OJ EPO 2020.

The basic principle of the third level of the convergent approach is that, at this stage of the appeal proceedings, amendments to a party's appeal case are not to be taken into consideration. However, a limited exception is provided for: it requires a party to present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular appeal ("cogent reasons"). For example, if a party submits that the board raised an objection for the first time in a communication, it must explain precisely why this objection is new and does not fall under objections previously raised by the board or a party.

4.2 None of the arguments set out in the appellant's letter dated 23 July 2020 (see point XIII(f) above) is a cogent reason within the meaning of Article 13(2) RPBA 2020 since they do not relate to any exceptional circumstances.

4.3 The board is not persuaded that, in the present case, a redefinition of the problem to be solved constitutes an exceptional circumstance within the meaning of Article 13(2) RPBA 2020.

The application was refused inter alia because the subject-matter of claim 1 of the then first auxiliary request lacked inventive step over the combined disclosures of documents D1 and D2 (Article 56 EPC 1973).

In its preliminary opinion, the board agreed with the examining division that document D1 was the closest prior art for the assessment of inventive step (see communication of the board under Article 15(1) RPBA 2020, point 3.1).

The board tended to share the appellant's view that D1 did not disclose: determining whether the client's stored content had reached the allocated storage limit; delivering content to the allocated storage space if the storage limit had not been reached; and delivering content from the allocated storage space to the client while continuing to deliver content to the storage space if the storage limit had been reached (see communication of the board under Article 15(1) RPBA 2020, point 3.3).

However, in contrast to the examining division and the appellant, the board was of the preliminary opinion that D1 disclosed that limited storage capacity was allocated to each (entitled) user (see communication of the board under Article 15(1) RPBA 2020, point 3.4). The examining division reasoned that the "circular buffer" known from document D2 by definition had a limited storage capacity (see decision under appeal, point 10.4). The board was of the preliminary opinion that this was also the case for rented storage capacity and hence document D1 implicitly disclosed limited storage capacity.

Thus the board identified one difference with respect to document D1 (see communication of the board under Article 15(1) RPBA 2020, point 3.3), whereas the examining division identified two differences: the limited storage capacity and the difference acknowledged by the board. As a result, the board defined an objective technical problem (how to find an alternative to deleting retained content "due to an expired term or time") which was not as broad as the objective technical problem defined by the examining division in point 10.3 of the decision under appeal ("How to prevent the storage requirement in the server to grow above the storage capacity").

In points 3.6 and 3.7 of its communication under Article 15(1) RPBA 2020, the board in essence confirmed the examining division's reasoning set out in point 10.4 of the decision under appeal that the person skilled in the art would implement the storage space management known from document D2 in the method known from document D1.

In summary, the board's assessment of inventive step in its preliminary opinion was based on the same documents as cited in the decision under appeal (documents D1 and D2), and the board identified the same closest prior art (document D1). While the board was of the preliminary opinion that document D1 implicitly disclosed limited storage capacity, the examining division was of the opinion that limited storage capacity was obvious in view of the disclosure of document D2. The board confirmed the examining division's assessment that the person skilled in the art would implement the storage space management known from document D2 in the method known from document D1.

4.4 Therefore the board is not convinced that the arguments set out in its communication under Article 15(1) RPBA 2020 differ from the arguments set out in the decision under appeal to such an extent that they present a whole new line of reasoning (see point XIII(g) above). Hence the board sees no exceptional circumstance leading to the amendment which would justify admitting the auxiliary request into the appeal proceedings. Therefore the auxiliary request is not admitted into the appeal proceedings (Article 13(2) RPBA 2020).

5. Since neither of the appellant's requests is allowable, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.