T 1773/10 - Amendments in grounds

Key points

• The Boards decide on sets of claims as requests only, also in examination appeals. Indicating possible amendments in (the text of) the Statement of ground does not work. The Board states that it "must disregard substantive requests that do not clearly define the text which should form the basis for the grant of a patent (Article 113(2) EPC)"

T 1773/10 - link

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division to refuse the European patent application no. 03738745.3 which was originally filed as international application PCT/KR2003/001317 and published as WO 2004/006252.

V. As indicated in the statement of grounds of appeal (see in particular section 6), the appellant requested that the decision under appeal be set aside and a patent be granted on the basis of the main request, and if necessary, with one or more of the "alternative amendments indicated in section 5 of the statement of grounds of appeal".

In the event that neither the claims for the main request nor the claims for an alternative main request could be allowed, the appellant requested that a patent be granted on the basis of the claims for the auxiliary request, and, if necessary, with one or more of the alternative amendments indicated in section 5 of the statement of grounds of appeal.

In section 5 of the statement of grounds of appeal, the "alternative amendments" were named "Supplemental requests" and were worded as follows:

- "In case the use of the term 'recording medium' used in claims 5 and 9 for the Main as well as for the Auxiliary Request should be objected to, it is requested that this term be replaced by the term 'computer readable medium' used in claim 1 or by a term considered acceptable by the Board."

"In the event that the Board does not agree with the argumentation presented above that the invention is not limited to a read-only medium, it is requested to amend the term 'computer readable medium' and 'recording medium' into an acceptable term."

- "It is further requested to allow the applicant to file further amendments during the procedure that take care of objections raised by the Board, e.g. a different arrangement of the technical features with respect to the preamble and the characterising part of the claims, or of a more substantive manner."

Reasons for the Decision

Supplemental requests

10. The appellant's "Supplemental requests" (see point 5 of the statements of grounds and point V above) concern the replacement of the term "recording medium" with the term "computer readable medium" or with "an acceptable term" in claim 1 according to the main request or to the first auxiliary request.

10.1 Apart from the fact that the Board must disregard substantive requests that do not clearly define the text which should form the basis for the grant of a patent (Article 113(2) EPC), none of the amendments according to the appellant's "supplemental requests" addresses the Board's objections against the main request.

11. In the result, the Board comes to the conclusion that none of the appellant's requests can form the basis for the grant of a patent. Consequently, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.