T 1523/23 - Remittal for request not arrived at

Key points

• The OD rejected the opposition. The Board finds the claims as granted to lack an inventive step.
• " 4.1 Since the opposition was rejected, the auxiliary requests [1 to 4] were not examined by the opposition division. It is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (Article 12(2) RPBA)."
• "4.2 ... the opponent suggested that the board decide on the first auxiliary request itself. Claims 1 and 6 of this request included the additional feature of a random arrangement. This amendment was introduced in response to an objection under Article 100(b) EPC, not to establish inventive step. The board was therefore in a position to decide on this request."
• "Nevertheless, the board considers it appropriate, for the reasons set out in paragraph 4.1, to remit the case to the opposition division for further prosecution (Article 111(1) EPC). The circumstances of the present case represent special circumstances within the meaning of Article 11 RPBA."
• Point 4.1 is cited in full above.
• Naturally, a second appeal may follow if the OD finds AR-1 to be inventive. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t231523eu1