T 1731/13 - Need for remittal is reason not to admit

Key points

• In this examination appeal, the Board gives new reasons for a clarity objection with the summons. During the oral proceedings, the applicant files a new request which overcomes the clarity issues. However, the amended claims "gives rise to new objections under Article 123(2) EPC." The applicant requests a remittal to the ED, because the ED had not decided on that issue. 
• The Board: "In view of the considerations mentioned above under points 2.1 to 2.4 the board is of the opinion that the 1st auxil­iary request should not be admitted into the appeal proceed­ings. Hence, it would be inappro­priate to remit the case to the examining division for considera­tion of that request. Otherwise, every request filed during oral proceedings and raising new issues would have to be remitted for consideration of these issues by the first instance. This cannot be the correct approach already for the reason that necessity for remittal is a reason not to admit a request at this stage of the procedure."
• The case is subject to the pending petition for review R11/18.
• As a comment,  the argument that "necessity for remittal is a reason not to admit a request"  can be applied quite broadly, I don't think it is necessarily restricted to requests filed during oral proceedings. This reasoning would of course quite effectively reduce the number of remittals back to the first instance. 
• Added: the need for a remittal (or postponement) is of course an established reason not to admit amended claims (CLBA. IV.E.4.2.6) however typically in connection with the necessity of a new search.  
• Perhaps the more interesting statement is this: "In the summons to oral proceedings the board had merely provided a different reasoning (compared to that of the exam­ining division) why it regarded these same features as unclear. The board does not consider this as a new development objectively occasioning the filing of the 1st auxiliary request." This seems to imply that you must even file Auxiliary requests in response to poorly-reasoned objections in the first instance, for the case that the Board come us with a proper reasoning for the same objection in appeal. Hence, a party must itself consider whether perhaps the Board can come up with proper reasoning for the same objection. It is apparently not sufficient to successfully refute the Examining Division's reasoning.

EPO T 1731/13 -  link

2. Procedural matters

2.1 The 1st auxiliary request was filed during oral pro­ceedings before the board. It constitutes therefore an amendment to the appellant's case after it has filed its grounds of appeal and may be admitted into the proceedings and considered at the board's discretion (Article 13(1) RPBA).

In accordance with established case law, the board exercises its discretion to admit a late-filed request into the pro­ceedings considering whether there are sound reasons for filing the request at a late stage in the proceedings and whether - prima facie - the request overcomes the outstanding objections under the EPC and does not give rise to new objections (Case Law of the Boards of Appeal of the EPO, 8th edition 2016, sections IV.E. 4.4.1 and 4.4.2).

2.2 The appellant argued that the filing of the 1st auxil­iary request was a reaction to the new objection by the board communicated with the summons to the oral pro­ceedings.

In the summons to oral proceedings the board had merely provided a different reasoning (compared to that of the exam­ining division) why it regarded these same features as unclear. The board does not consider this as a new development objectively occasioning the filing of the 1st auxiliary request.

[...]

At any rate, there is no valid reason for not filing the 1st auxiliary request at least with the letter dated 9 March 2018 filed in preparation of the oral proceedings before the board, but only submitting this request as the third attempt to overcome the clarity objection during the oral proceedings.

Hence, the board is of the opinion that there are no sound reasons for filing the 1st auxiliary request at such a late stage during the appeal proceedings.

2.3 The board accepts that the deletion of the features relating FWHM values of the rocking curves overcomes the clarity objection against these features.

[...]

Hence, the 1st auxil­iary request gives rise to new objections under Article 123(2) EPC.

2.4 The appellant argued further that since the issue of compli­ance of claim 1 of the 1st auxil­iary request with Article 123(2) EPC was not dealt with by the examining division, the case should be remitted to the department of first instance so that the issue could be decided there.

In view of the considerations mentioned above under points 2.1 to 2.4 the board is of the opinion that the 1st auxil­iary request should not be admitted into the appeal proceed­ings. Hence, it would be inappro­priate to remit the case to the examining division for considera­tion of that request.

Otherwise, every request filed during oral proceedings and raising new issues would have to be remitted for consideration of these issues by the first instance. This cannot be the correct approach already for the reason that necessity for remittal is a reason not to admit a request at this stage of the procedure.

2.5 In view of the above, the 1st auxiliary request is not admitted into the appeal proceedings (Article 13(1) RPBA) and the case is not remitted to the department of first instance under Article 111(1) EPC 1973.

3. Conclusion

Since the main request and the 2nd to 11th auxiliary requests are not allowable, the 1st auxiliary request is not admitted into the appeal proceedings and the case is not remitted to the department of first instance, the appeal is to be dis­missed (Article 111(1) EPC 1973).

Order

For these reasons it is decided that:

The appeal is dismissed.