T 1948/14 - ED refuses further amendments

Key points

• In this examination appeal, the ED had admitted a number of auxiliary request, until finally one was found to comply with Art. 76 EPC.
•  " The subject-matter of claim 1 of this [auxiliary request] was then considered by the examining division not to involve an inventive step, in particular in view of a line of argument presented in the consultation by telephone held [] six days before the date of the oral proceedings. [In] reply to the examining division's objection of lack of inventive step, the appellant expressed the intention to file a further amended request in order to overcome the objection under Article 56 EPC, but the examining division did not consent to further amendments." 
• " In view of these facts, [...] the board is of the opinion that the examining division should at least have accepted the proposal of the appellant to file amendments in reaction to the objection of lack of inventive step in order to subsequently decide on the admissibility of the amended request according to the appropriate criteria and, if admitted, on its allowability." 

EPO T 1948/14 - link

The board notes that during the first-instance oral proceedings

- the examining division admitted a main request and first to third auxiliary requests previously filed in writing by the appellant in reply to objections raised under Articles 56, 76(1) and 123(2) EPC in the communication annexed to the summons;

- during the discussion that took place during the first-instance oral proceedings on the issues under Article 76(1) EPC, the examining division was of the view that all these requests contravened Article 76(1) EPC, and subsequently admitted into the proceedings a replacement of the first auxiliary request and then a subsequent replacement of that request, resulting in an amended first auxiliary request - i.e. the first auxiliary request underlying the decision under appeal - which was then considered to comply with Article 76(1) EPC;

- the subject-matter of claim 1 of this amended first auxiliary request was then considered by the examining division not to involve an inventive step, in particular in view of a line of argument presented in the consultation by telephone held on 24 January 2014, i.e. six days before the date of the oral proceedings (see point 6.2 of the communication dated 29 January 2014 showing the result of the telephone consultation, sent also by fax on 24 January 2014); and

- in reply to the examining division's objection of lack of inventive step, the appellant expressed the intention to file a further amended request in order to overcome the objection under Article 56 EPC, but the examining division did not consent to further amendments.

During the appeal proceedings the appellant has contested the use by the examining division of its discretionary power not to consent to further amendments during the oral proceedings, and has submitted that the examining division's failure to consent to further amendments would justify the filing of auxiliary requests 1 to 7 with the statement of grounds of appeal and their admission into the proceedings.

In view of these facts, and more particularly in view of

- the new elements in the line of argument of lack of inventive step presented by the examining division by telephone six days before the first-instance oral proceedings and also during the oral proceedings (in particular, the formulation of different, unconnected objective problems solved by the claimed invention, and the additional combination of two documents in respect of one of the distinguishing features), and of

- the application of the mentioned line of argument to claim 1 of the first auxiliary request amended during the oral proceedings,

the board is of the opinion that the examining division should at least have accepted the proposal of the appellant to file amendments in reaction to the objection of lack of inventive step in order to subsequently decide on the admissibility of the amended request according to the appropriate criteria and, if admitted, on its allowability.

It follows that auxiliary requests 2 to 7 were submitted with the statement of grounds of appeal in reaction to the examining division's objection of lack of inventive step of the then first auxiliary request and also in reaction to the refusal by the examining division to consent to the filing of amendments without first considering the extent and the nature of the proposed amendments. In these circumstances, the board considers that the filing of auxiliary requests 2 to 7 with the statement of grounds of appeal constituted an appropriate reaction from the part of the appellant to the decision under appeal.

Having regard to the above, and noting that the present auxiliary requests 2 to 7 were filed in reply to the board's communication annexed to the summons to oral proceedings and differ from the preceding auxiliary requests 2 to 7 only by the incorporation of reference signs relating to the drawings, the board, exercising its discretion under Article 13(1) RPBA and taking into consideration the provisions of Article 12(4) RPBA, admitted the present auxiliary requests 2 to 7 into the appeal proceedings.