T 2443/11 - Unsearched features

Key points:

• An objection under Rule 137(5) EPC was raised and maintained by the Board because features of unsearched claims were introduced into claim 1 (i.e features from claims relating to the sixth invention which had not been searched). The objection concerned a a postiori lack of unity of invention, no claims were identified as inventive in the supplementary ESR or in the appeal procedure. 
• Note that, according to Guidelines H-II 7.2, Rule 137(5) " does not apply when the applicant has not paid the search fee in respect of a non-unitary invention relating to the originally filed claims" .
• This approach contrasts with e.g. T 0755/14. 

EPO T 2443/11 - link

Reasons for the Decision

[...]

Fifth auxiliary request

10. All other objections raised with regard to the preceding requests persist for this request.

11. Rule 137(5) EPC

11.1 In an obiter dictum of the decision under appeal (see point 15), an objection under R. 137(5) EPC was raised, because the set of claims related to unsearched subject-matter which did not combine with the originally claimed invention to form a single inventive concept. Only the subject-matter of original claims 1 to 4 had been searched and could therefore be the basis for amended claims. In particular, it was argued that unsearched aspects of the sixth invention (previously filed claims 1 and 19 to 21) had been incorporated into independent claim 1 regarding the partitioning of the input molecular description data into a plurality of data blocks and routing said blocks to the affinity engines in a particular manner.

11.2 This objection has not been overcome by the present request, since amended claim 1 is directed to such unsearched subject-matter by claiming "... transmitting the molecular descriptors to the plurality of affinity engines using the plurality of data paths wherein the molecular descriptors are allocated across the plurality of data paths as a plurality of data blocks and the rate at which an individual data block is transmitted along a data path to its destination affinity engine depends on the data bandwidth associated with the data path and on the processing performance of the destination affinity engine".

Sixth and seventh auxiliary requests

12. These two requests were filed at a late stage of the oral proceedings and are therefore late-filed with regard to Article 12(2) RPBA.

12.1 According to the appellant, the intention behind the filing of these requests was to address the issue under Rule 137(5) EPC (see point 11 above).

12.2 The objection under R. 137(5) EPC was presented as obiter dictum in the decision under appeal and was dealt with in the annex to the summons for proceedings. Nevertheless, the appellant had not dealt with this issue earlier in the appeal proceedings, either in the statement setting out the grounds of appeal or in the letter of 21 September 2015.

12.3 Hence, the sixth and seventh auxiliary requests were not presented in reaction to new objections raised during oral proceedings, since all the objections were known to the appellant with the summons. This is in contrast to the requirements set out in Articles 12(2) and 13(1) RPBA.

12.4 Furthermore, both requests prima facie do not overcome the objection under Rule 137(5) EPC.

12.5 For these reasons, and in view of the advanced state of the proceedings, the board decided not to admit these two requests into the appeal proceedings by exercising its discretion according to Article 13(1) and (3) RPBA.

13. Since none of the admissible requests fulfils the requirements of the EPC, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.