T 1265/13 - Omitting feature, not searched

Key points

• In this examination appeal the Main Request was directed to amended claim wherein a feature of claim 1 as filed was omitted. The Main Request is not admitted under (current) Rule 137(5) EPC by the Board, because it is directed to unsearched subject-matter. Moreover, claims of the request address a different technical problem as claim 1 filed, in view of the now omitted feature.

EPO T 1265/13 -  link

Reasons for the Decision

1. Main and first to fourth auxiliary requests

1.1 [] According to the international search report drawn up by the EPO, the search was carried out for the invention defined by the subject-matter of claims 1, 2, 8-41 and 54 as originally filed, all of which - and in particular independent claims 1, 9, 23, 25, 27, 34 and 38 - contained the feature "at least one radio frequency transponder device", which feature at the date of filing of the application was held to be essential for the performance of the invention.

1.2 In the amendments to independent claim 1 of the main and first to fourth auxiliary requests at issue, the above feature, however, was deliberately omitted, with the consequence that the new invention not originally claimed is now defined by subject-matter which was not covered by the search.

1.3 According to Rule 137(4) EPC as in force before 1 April 2010, amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept (see also T 708/00, Reasons 8, and T 2459/12, Reasons 4.2).

1.4 In the present case, this requirement is not satisfied because, as explained at page 13, lines 8 to 11 of the application as filed, the biological sample storage device which comprises a radio frequency transponder device is supposed to receive, store and/or transmit data to a system for processing sample data, while the subject-matter of claim 1 of the main and first to fourth auxiliary requests - which does not comprise the required radio frequency transponder device - cannot receive, store and transmit data, and so does not form a single general inventive concept with the invention originally disclosed and searched.

1.5 The appellant argued that the passage at page 12, line 29 to page 13, line 15 described a biological sample device comprising only a sample plate and a lid, with the consequence that the radio frequency transponder device was not indispensable for the function of the invention, since the presence of a radio frequency transponder device had no bearing on the ability of the device to dry store biological samples.

For the board, this argument is irrelevant since the dry storage of biological samples relates to the problem of how to improve storage of biological material and is a different invention from the one originally defined in the searched claims, the purpose of which included the functions of receiving, storing and transmitting data with the goal of creating an inventory system.

1.6 It follows that the five requests, which in their independent claim 1 omit the feature "at least one radio frequency transponder device", are contrary to the requirements of Rule 137(4) EPC as in force before 1 April 2010, with the consequence that they are not allowable.