T 1906/13 - Dependent claim in examination

Key points

• In this examination appeal, a request based on dependent claim 5 as filed is not admitted under effectively article 12(4) RPBA (should have been filed in first instance proceedings).
• "The board notes that in the first instance proceedings, at the end of the oral proceedings, the applicant confirmed that he had no further requests. It was therefore clear that the applicant did not wish to submit any further amendments or requests in the examination procedure, including a request based on the subject-matter of original claim 5. If the request were admitted now, the board would be forced either to examine the claim itself with respect to D1 and the other documents on file, or to remit the case for further prosecution." 

EPO T 1906/13 -  link

4. Third auxiliary request - claim 1 - admissibility

4.1 This auxiliary request was filed shortly before the oral proceedings before the board. It is thus an amendment to the appellant's case within the meaning of Article 13(1) RPBA.

In accordance with Article 13(1) RPBA, 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. Following T 361/08 (point 13 of the reasons) and T 144/09 (point 1.17 of the reasons), in exercising its discretion under Article 13(1) RPBA, the board considers it appropriate to take into account the provision of Article 12(4) RPBA, which reads: "Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extend it relates to the case under appeal and meets the requirements in (2).".

4.2 The amendments made to claim 1 (see point XII above) include features which were part of dependent claim 5 as filed and which relate to a correction of the contact point according to a flexure of the robot, estimated by the detected force in the pushing direction.

4.3 The board notes that in the first instance proceedings, at the end of the oral proceedings, the applicant confirmed that he had no further requests. It was therefore clear that the applicant did not wish to submit any further amendments or requests in the examination procedure, including a request based on the subject-matter of original claim 5.

4.4 If the request were admitted now, the board would be forced either to examine the claim itself with respect to D1 and the other documents on file, or to remit the case for further prosecution. The first option would run contrary to the purpose of appeal proceedings (see G 10/93, OJ EPO 1995, 172, point 4 of the reasons), which is essentially to examine the correctness of the first instance decision rather than to give a ruling on substantive matters which have not previously been examined (this indeed being essentially the reason why the boards are empowered under Article 12(4) RPBA to not admit requests not presented before the first instance). The second option would run entirely contrary to the requirement for procedural efficiency.

4.5 The appellant argued that the added features were disclosed in a claim on file from the beginning, that the request was neither surprising nor complicated, and that the board was in a position to deal with it.

The board disagrees. The feature of correcting the contact point based on the flexure of the robot is a substantial amendment relating in general to robot mechanics. It is not intrinsically tied to the detection and removal of burrs and leads the discussion of inventive step in a completely new direction.

4.6 Consequently, the board decided to not admit the third auxiliary request (Article 12(4) RPBA).

5. Conclusion

As there is no allowable request, it follows that the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.