T 1939/13 - Deciding on the wrong request

Key points

• In this examination appeal, the requests had been replaced multiple times during the oral proceedings. The written decision of the Examining Division is not directed to the last version of the requests, and includes the wording of the independent claims of some earlier version of the requests, filed before the oral proceedings. The Board decides that this forms a substantial procedural violation. 
• " In summary, the Examining Division has violated Article 113(2) EPC by deciding on a version of the first auxiliary request that was no longer approved by the applicant and by not deciding on the text of the first auxiliary request submitted by the applicant during the oral proceedings." 
• The Board does not remit the case, but examines the requests, and decides that they are not allowable.

EPO T 1939/13 - link

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

2. The decision under appeal

2.1 In preparation for the oral proceedings before the Examining Division, with a letter dated 8 January 2013 the applicant filed a main request, a first auxiliary request and a second auxiliary request. According to the minutes of the oral proceedings held on 8 February 2013, the applicant replaced its first auxiliary request with an amended first auxiliary request filed at 10:15 and replaced its second auxiliary request, after two intermediate amendments (at 10:35 and 10:50), with an amended second auxiliary request filed at 13:17. Annexed to the minutes of the oral proceedings are one page with claims 1 to 5 of the amended first auxiliary request filed at 10:15 and further pages containing the three amended versions of claims 1 to 21 of the second auxiliary request (versions of 10:35, 10:50 and 13:17). It is indicated on EPO Form 2009.2, which forms part of the minutes, that the other pages of the first auxiliary request are "as in main request".

2.2 The contested decision makes mention of the requests filed by the appellant with the letter of 8 January 2013 but is silent on the amendments made in the course of the oral proceedings. Under the heading "Claims on file", it gives the text of independent apparatus claim 1 of each of "The Main Request", "The First Auxiliary Request" and "The Second Auxiliary Request". It further mentions that independent claim 15 of the main request, independent claim 14 of the first auxiliary request and independent claim 14 of the second auxiliary request define the corresponding methods. No further indication of the application documents on which the decision is based is given.

2.3 The text of claim 1 of "The Main Request" corresponds to the text of claim 1 of the main request filed with the letter of 8 January 2013. That request also includes an independent method claim 15.

The text of claim 1 of "The First Auxiliary Request", however, does not correspond to the text of claim 1 of the amended first auxiliary request filed during the oral proceedings but to the text of claim 1 of the first auxiliary request filed with the letter of 8 January 2013. In addition, neither version of the first auxiliary request includes an independent method claim 14.

The text of claim 1 of "The Second Auxiliary Request" does not correspond to the text of claim 1 of the second auxiliary request filed with the letter of 8 January 2013 or to the text of claim 1 in any of the three versions of the second auxiliary request filed during the oral proceedings. A comparison of the texts in all versions suggests that the Examining Division attempted to copy the text of the version filed during the oral proceedings at 13:17 but failed to do so correctly (the copied text includes features that had been crossed out).

2.4 From point 2.1 of the reasons for the decision, it is clear that the decision is indeed based on the text of claim 1 of the first auxiliary request filed with the letter of 8 January 2013, i.e. on a text no longer approved by the applicant when the decision was taken.

On the other hand, from point 3.1 of the reasons for the decision it is apparent that the decision in respect of the second auxiliary request was indeed based on the text of claim 1 of the version filed at 13:17, i.e. on the text submitted by the applicant.

2.5 In summary, the Examining Division has violated Article 113(2) EPC by deciding on a version of the first auxiliary request that was no longer approved by the applicant and by not deciding on the text of the first auxiliary request submitted by the applicant during the oral proceedings.

2.6 According to Article 11 RPBA, a Board is to remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, unless special reasons present themselves for doing otherwise. In the Board's view, such reasons do present themselves in the present case. First, the amendment of claim 1 of the first auxiliary request overlooked by the Examining Division, which was intended to overcome an objection under Article 123(2) EPC, was of minor importance for the question of inventive step. Second, the request was again amended on appeal. Third, the appellant has not requested a remittal. Accordingly, the Board proceeds with the examination of the case.