T 1741/12 - Unsearched feature added

Key points

• The Board decides to not admit a request, under Article 12(4) RPBA, inter alia because it contains an added feature taken from the description, which may  not have been searched.  " An auxiliary request which incorporate[s] a probably unsearched feature taken from the description [is not to be] admitted, using the board's discretionary power under Article 12(4) RPBA" 
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EPO T 1741/12 - link

5. Sixth auxiliary request - admissibility

5.1 The sixth auxiliary request essentially corresponds to the fourth auxiliary request as filed with the statement of grounds of appeal.

5.2 Claim 1 (see point IX above) incorporates the feature "checking that ... the heads will not collide with each other". This feature has hitherto never been claimed.

5.3 In accordance with Article 12(4) RPBA, the board has the discretion to not admit requests which could have been presented before the first instance (here, the opposition division). In the board's view, the sixth auxiliary request, since it incorporates entirely new matter taken from the description, could, and indeed should, have been presented before the opposition division and not for the first time in appeal proceedings. The board points out that the primary purpose of opposition appeal proceedings is to examine the correctness of the decision (cf. G 9/91, OJ EPO 1993, 408, 419, reasons, 18) rather than provide an opportunity to amend the claims by introducing new features from the description, requiring entirely new issues to be examined.

5.4 The board further notes that at the oral proceedings before the opposition division, the proprietor expressly declined the opportunity to present another request (cf. point 17 of the minutes).

5.5 The board also points out that, as the features added are taken from the description, it is unclear whether they have been the subject of the search. As a consequence, even in the hypothetical case that the subject-matter of claim 1 were not obvious having regard to the prior art on file, the board would not be in a position to maintain the patent in amended form on the basis of this request, but would have to remit the case to the opposition division for further prosecution (see also the respondent's reply to the statement of grounds of appeal dated 14 February 2013, point 7.1.2). This situation is analogous to that dealt with in decision T 881/09, point 4 of the reasons, where it was decided that an auxiliary request which incorporated a probably unsearched feature taken from the description be not admitted, using the board's discretionary power under Article 12(4) RPBA.

5.6 At the oral proceedings, the appellant argued that the request should be admitted as it was simple to understand, had been filed at the earliest opportunity in the appeal procedure, i.e. with the statement of grounds of appeal (i.e. by way of the fourth auxiliary request), and was specifically focused on the multiple head aspect. The appellant also alleged that the request had not been filed during the opposition procedure as this had taken an unexpected turn when the opposition found the requests on file to lack inventive step.

5.7 The board however considers that the proprietor should have been prepared for the eventuality that its request(s) on file would be refused by the opposition division due to lack of inventive step with respect to the combination of E1 and E2, as this had been raised in the notice of opposition. Further, none of the other reasons alter the fact that the board would be forced to remit the case to the opposition division if the request were to be admitted.

5.8 In the letter dated 30 September 2016, the appellant stated that a reason for filing the sixth auxiliary request was to respond to the board's observations regarding the need for claim 1 to be functionally limited to an adequately defined technical process [to be considered as a non-intellectual activity]. However, leaving aside the fact that the request was essentially filed before the board had made observations (i.e. as the fourth auxiliary request filed with the statement of grounds of appeal), whether or not claim 1 is limited to an adequately defined technical process is not the issue here and therefore alone not a justification for admitting the request.

5.9 For these reasons, the board decided not to admit the sixth auxiliary request (Article 12(4) RPBA).