T 1432/12 - Interlocutory revision

Key points

• This decision is about an examination appeal, with amended claims filed on appeal, and wherein the ED did not grant interlocutory revision.
• " Since with the set of claims filed together with the grounds of appeal, the appellant overcame all objections raised by the examining division in their communication dated 28 September 2011 [referenced in the refusal decision according to the state of the file], and no opinion on the potential inventive step of the subject-matter as now claimed can be found in the said communication, the examining division should have rectified its decision under Article 109(1) EPC" 
• The Board's decision is in line with the Guidelines which state that " clearly overcome the grounds for refusal, interlocutory revision should be granted even if further new objections arise" (E-XII, 7.4.2). 

3. Article 109 EPC

3.1 The examining division, referring to D3 and in particular to the spaceblocks 148 shown in figure 8 of D3, which are provided with a C-formed concave surface 146, considered that the subject-matter of claim 1 then on file differed from the machine known from D3 only in that the paddles were formed of rectangular flat plates.

The examining division was of the opinion that:

- the problem of improving air flow through the rotor winding ends was not solved in a machine according to claim 1,
- no technical problem was apparently solved by the identified difference in combination with the other features of claim 1, and
- the replacement of the re-entrant portion 154 of the spaceblocks of D3 (see figure 8) comprising the sidewall portions 162, 164 by flat rectangular plates forming the paddles resulted in a non-functional modification (see item 3 of the communication dated 28 September 2011).

The examining division then concluded that the subject-matter of the claim 1 filed with the letter dated 28 September 2011 lacked an inventive step (Article 56 EPC) having regard to D3.

3.2 The claim 1 which was the subject of the contested decision lacked an essential feature relating to the orientation of the C-channel with respect to the machine, namely feature 1 cited under item 2. above. Consequently, the examining division did not assess if the combination of the feature incorporating feature 1 with the other features of the claim 1 as filed with the grounds of appeal renders the subject-matter of claim 1 inventive over D3.

3.3 Since with the set of claims filed together with the grounds of appeal, the appellant overcame all objections raised by the examining division in their communication dated 28 September 2011, and no opinion on the potential inventive step of the subject-matter as now claimed can be found in the said communication, the examining division should have rectified its decision under Article 109(1) EPC (see Chapter IV.E.2.9.1 of the Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, pages 1110 and 1111).

3.4 Article 111 (1) EPC

An objective of Article 109 EPC is to speed up the procedure and to grant the applicant the right to two instances. Nevertheless the board may exercise any power within the competence of the department which was responsible for the decision under appeal in accordance with Article 111(1) EPC.

In their response letter dated 19 January 2017, the appellant did not object to this option.

[...]

The subject-matter is consequently novel having regard to D3.

5. Article 56 EPC

According to the description page 7, lines 13 to 19, and with paddles having the characteristics mentioned in claim 1, a guiding channel is formed such that the cooling flow will be diverted into the gas inlet passage in a largely axial direction. The flow pressure losses at the entrance of the passageway and the cooling losses are thereby minimized. Thus, having regard to the prior art as disclosed in D3, and in the absence of any other relevant teaching in the prior art, the invention as defined in claim 1 is not obvious and the requirements following from Article 56 EPC are met.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside

2. The case is remitted to the department of first instance with the order to grant a patent in the following version:

- Claims No. 1 to 4 filed with the letter dated 19 January 2017