T 1632/14 - New features in examination appeal

Key points

• In this examination appeal, after finding that the main request lacks inventive step, the Board decided on admissibility of an Auxiliary Request filed during the appeal procedure. The reason is that the added features of the AR relate to a different technical problem that the main request. 
• " This [technical] problem was neither mentioned in the original application nor was any feature relating to this aspect included in the independent claims. Further, it is entirely different from the technical problem addressed by the subject-matter claimed so far[.] Consequently, the amendments according to claim 1 of [the AR] result in an entirely fresh case being presented. It is established case law that ex parte proceedings before the boards of appeal are primarily concerned with examining the contested decision (G 10/93 [)]. The appeal proceedings are intended to review the correctness of the first-instance decision rather than to continue examination by other means." 

EPO T 1632/14 -  link

1.6 The board concludes that, since the subject-matter of claim 1 of the main request does not involve an inventive step (Articles 52(1) and 56 EPC), the main request is not allowable.

2. Auxiliary requests 1-1 to 1-3: admissibility (Articles 12(4) and 13(1) RPBA)

2.1 Auxiliary requests 1-1 to 1-3 were submitted with the letter dated 18 August 2017 in response to preliminary objections of the board under Articles 84 and 123(2) EPC to claim 1 of auxiliary requests 1 to 3.

2.2 Since, in the present case, the auxiliary requests were filed one month before the oral proceedings before the board, they constitute an amendment to the appellant's case within the meaning of Article 13(1) RPBA. In accordance with that article, any amendment to a party's case after it has filed its grounds of appeal may be admitted and considered at the board's discretion.

2.3 With respect to claim 1 of auxiliary requests 1-1 and 1-2, the board notes that the additional features compared with claim 1 of the main request, i.e. "displaying ... a price information" and "coupling the tool to a computer such that the tool can upload information to the computer over a connection" respectively, do not, prima facie, overcome the inventive-step objection in respect of claim 1 of the main request. According to D1, a financial exchange takes place (paragraph [0017], lines 17-19), implying or at least suggesting the display of price information. Further, according to D1, the tool may be connected to a personal computer. The software identifier and the licence information are to be passed to the internet database (paragraph [0017], lines 6-13), which the skilled person would understand to be accessed via the personal computer or, alternatively, directly. Hence, information needs to be uploaded to the computer.

During the oral proceedings, the appellant did not submit further arguments in support of the admissibility of auxiliary requests 1-1 and 1-2.

2.4 Exercising its discretion according to Article 13(1) RPBA, the board therefore did not admit auxiliary requests 1-1 and 1-2 into the appeal proceedings.

2.5 With respect to claim 1 of auxiliary request 1-3, the board considers it appropriate?, in exercising its discretion under Article 13(1) RPBA, to take into account Article 12(4) RPBA, following T 361/08 (Reasons for the Decision, point 13) and T 144/09 (Reasons for the Decision, point 1.17).

2.6 The board notes that the additional feature in claim 1 of auxiliary request 1-3 compared with claim 1 of the main request concerns two media access units configured to communicate in accordance with a process industry standard. This feature relates to the technical problem of enabling a field maintenance tool to flexibly communicate with various field buses. This problem was neither mentioned in the original application nor was any feature relating to this aspect included in the independent claims. Further, it is entirely different from the technical problem addressed by the subject-matter claimed so far, which relates to updating and upgrading field maintenance tools (page 4, lines 3-8 of the application). Consequently, the amendments according to claim 1 of auxiliary request 1-3 result in an entirely fresh case being presented. It is established case law that ex parte proceedings before the boards of appeal are primarily concerned with examining the contested decision (G 10/93, OJ EPO 1995, 172, points 3 and 4 of the Reasons)?. The appeal proceedings are intended to review the correctness of the first-instance decision rather than to continue examination by other means.

The appellant pointed out with reference to Figures 6 and 9 and the accompanying description that it was an explicit part of the application that communication with two different field buses was described as a possible upgrade to a field maintenance tool. That is correct. However, the board notes that the feature in question relates to a property of the field maintenance tool, the functionality of which is to be expanded, whereas the example in Figures 6 and 9 relates to the method of expansion and is, thus, more restrictive.

2.7 It follows that auxiliary request 1-3 could, and indeed should, have been filed during the examination procedure if the appellant intended to pursue the claimed subject-matter for the application at issue in the present case. Exercising its discretion according to Article 12(4) RPBA to hold requests which could have been presented in the first-instance proceedings inadmissible, the board therefore did not admit this request into the appeal proceedings.