T 0359/12 - Need to react to Examiner

Key points

• In this examination appeal, the Board does not admit an auxiliary request, because (i) it was divergent from the main request and (ii) the amendments made could have been produced in first instance proceedings. The Board notes that the clarity issues with the AR had been discussed during oral proceedings before the Examining Division. " Hence, the [applicant] had already been confronted with this objection during first instance proceedings. In view of this, the [applicant] could have submitted amended claims corresponding to the pending auxiliary request during oral proceedings before the examining division at the latest. [The applicant] however, waived his right to comment or to file further requests to overcome said objection."
• As a comment, it can be quite though to react immediately to a (new) clarity objection raised during oral proceedings, and come up on the spot with appropriate claim wording having the approval of the client. Making good for that could be seen as a legitimate purpose of the appeal procedure. 

EPO  T 0359/12 -   link

4.6 A further aspect to be considered is that according to Art. 12(4) RPBA a board has the power to hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings.

In the present case, the examining division already raised clarity objections under Art. 84 EPC 1973 against the formulation "having a trapezoidal or substantially rectangular shape" during oral proceedings on 11 October 2011 (cf. minutes, page 5, second paragraph) and discussed them in more detail in the decision under appeal (cf. reasons, section 2.2.2). Hence, the appellant had already been confronted with this objection during first instance proceedings. In view of this, the appellant could have submitted amended claims corresponding to the pending auxiliary request during oral proceedings before the examining division at the latest. As it results from the minutes (cf. page 5, third paragraph), the appellant, however, waived his right to comment or to file further requests to overcome said objection.

4.7 Since the subject-matter of the pending auxiliary request diverges from the subject-matter of the pending main request submitted during oral proceedings and, moreover, the amendments made could have been produced in first instance proceedings, the pending auxiliary request was not admitted into the appeal proceedings under Art. 12(4) and 13(1) RPBA.

5. Since the pending main request and auxiliary request were not admitted into the proceedings and all previous requests had been withdrawn, there are no requests on file, so that the appeal has to be dismissed.

Order

For these reasons it is decided that:

1. The appeal is dismissed.