T 2135/14 - Remittal in examination

Key points

• In this examination appeal case, the Board finds that the claims are not obvious in view of D1, based on a feature (b). Therefore, the refusal decision under appeal is to be set aside. The Board needs to decide whether to remit the case to the ED for further examination, or whether the Board can decide on inventive step. The Board decides to remit the case for further examination, because " a number of further documents (D2-D7) were cited during examination but neither discussed with the examining division nor dismissed as irrelevant, the board considers that inventive step has not yet been exhaustively discussed with the examining division."

EPO T 2135/14 -  link

8.2.5 The board concludes that feature (b) would not have been obvious to the skilled person from D1 and common general knowledge alone.

Remittal to the examining division

9. As a consequence, the decision under appeal must be set aside.

9.1 The board notes that feature (b) was not specifically contained in the claims as originally filed. However, the feature of determining whether an upgrade "can be completed" was contained in original claim 3. Given that the description is fairly short and discloses only a small number of clearly identifiable instances of that determination, the board considers that feature (b) at least should have been searched (see T 789/07, headnote). The board is not in a position to decide whether it actually was, but notes that the examining division did not question that feature (b) was covered by the search when admitting, considering and deciding on the third auxiliary request.

9.2 However, in view of the fact that a number of further documents (D2-D7) were cited during examination but neither discussed with the examining division nor dismissed as irrelevant, the board considers that inventive step has not yet been exhaustively discussed with the examining division.

9.3 Therefore, the board exercises its discretion under Article 111(1) EPC and remits the case to the examining division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution.