T 0976/11 - Surprise in OP before ED

Key points

• During oral proceedings before the ED, the ED took another document as closest prior art.
• "The [applicant] challenged the [examining] division's new inventive step objection, presented for the first time at the oral proceedings, by arguing that a high number of features of claim 1 [] such as "use of digital TV, [etc.]"  were not disclosed in the new closest prior art D7." " The examining division thereupon gave a break after which they announced that the division concluded that all features not explicitly mentioned in D7 were [considered trivial]"
• " Thus, at this point in time, the examining division already closed the discussion on all requests then on file, without hearing the [applicant]'s comments as to which feature[] established an inventive step over D7 and how. [] Therefore the examining division has committed a substantial procedural violation through the violation of the appellant's right to be heard. " 

EPO T 0976/11 - link

Reasons for the Decision

1. Substantial procedural violation

1.1 The appellant submits in the statement setting out the grounds of appeal that it was not expecting the examining division to change at the oral proceedings the closest prior art from D1 to D7[]

1.2 The board however does not agree that the change of the closest prior art alone can constitute a substantial procedural violation. An examining division has the procedural discretion to revise its objection of inventive step, including the choice of the closest prior art, at any stage of the examination proceedings including the oral proceedings. Furthermore, even if one were to assume for the sake of argument that the division's reading of D7 is incorrect, misinterpretation of a document does not constitute a procedural violation (see "Case Law of the Boards of Appeal", Eighth Edition, IV.E.8.4.5, pages 1196 and 1197 of the English version).

1.3 It is however a different matter whether the change of the closest prior art was followed by actions safeguarding the appellant's right to be heard under Article 113(1) EPC, i.e. whether the appellant was given an opportunity to present its comments on the examining division's revised inventive step objection.

1.3.1 The board understands from the minutes of the oral proceedings that the appellant challenged the division's new inventive step objection, presented for the first time at the oral proceedings, by arguing that a high number of features of claim 1 of the then main request such as "use of digital TV, a data content delivery system, a plurality of TV servers, use of a single fast Ethernet, a firewall, a headend, content streaming" (see the minutes of the oral proceedings, page 1, last paragraph) were not disclosed in the new closest prior art D7.

1.3.2 The examining division thereupon gave a break after which they announced that the division "concluded that all features not explicitly mentioned in D7 were either considered trivial, implicitly contained in the block diagram or relate to problems which could be solved without requiring inventive activity" (see the minutes of the oral proceedings, page 2, first paragraph, and the contested decision, 17.4.4).

1.3.3 Thus, at this point in time, the examining division already closed the discussion on all requests then on file, without hearing the appellant's comments as to which feature, in the appellant's view, established an inventive step over D7 and how. The board further doubts whether the appellant could have ever made such comments, as the appellant had not been informed which of the features it challenged were deemed to be implicit in D7, which features were found to be trivial and why. The division's concluding remark (see the citation in 1.3.2 supra) is a blanket statement merely informing the appellant that the division found the subject-matter of claim 1 to lack an inventive step without providing reasons as to why.

1.4 Therefore the examining division has committed a substantial procedural violation through the violation of the appellant's right to be heard. A violation of the right to be heard constitutes a fundamental deficiency in examination proceedings which would require a remittal of the case to the examining division under Article 11 RPBA, unless special reasons present themselves for not doing so.
The board finds that such special reasons exist in the present case and thus decides not to remit the case to the examining division: In particular, the feature of "the provided services and medical/hospital data [being] operable or accessible from the head end at the visual display console, via a single fast Ethernet network", which was the major point of dispute in examination proceedings, indeed violates Articles 123(2) EPC, for the reasons set out in point 2 below.