T 0674/17 - Switching of invention

Key points

• In this examination appeal, the amendment of claim 1 overcomes the Art. 123(2) objections, but " it nevertheless amounts to the presentation of a fresh case." 
• The EPO as ISA had identified two inventions, one with 'porous starch'  the other with 'pre-gelatinized starch' .
• " Upon entry into the European phase, [] the appellant/applicant maintained a set of claims wherein the subject-matter of the sole independent claim 1 was limited to pregelatinized starch as a mandatory feature. The set of claims no longer referred to porous starch, let alone agglomerated porous starch. All sets of claims filed in the subsequent examination proceedings, including those filed with the statement setting out the grounds of appeal, were limited to pregelatinized starch as the mandatory, essential ingredient. It was not until the new main request was filed that (agglomerated) porous starch was introduced into claim 1 as a mandatory feature." 
• " Thus, the appellant's new main request effectively aims at starting second examination proceedings on an invention that it had not pursued before." 
• " In summary, the new main request []  introduces into the proceedings considerably different subject-matter which in fact amounts to the presentation of a fresh case. By virtue of its powers under Article 111(1), second sentence, EPC the board exercises its discretion not to admit the new main request into the proceedings, in accordance with Rules 137(3) and 100(1) EPC."
• As a comment, both inventions were searched by the EPO as ISA. Furthermore, the decision seems in line with T 0736/14 (hn and para. 3.2.1) but makes it a bit more clear that Rule 137(3) is the appropriate legal basis (if the amendment is made after the time limit of that rule). 

EPO T 0674/17 - link

2.3 Although the amendment in claim 1 might overcome the board's objections under Article 123(2) EPC as regards previous requests, it nevertheless amounts to the presentation of a fresh case. If the new main request were to be admitted into the proceedings, the examination carried out so far on the basis of documents D1 and D2 would become pointless. Moreover, the focus of the proceedings would shift to clarity and to interpretation of the feature "agglomerated porous starch" and, more importantly, examination would have to concentrate on a different set of prior-art documents. In short, admitting this request at this stage of the proceedings would go against the EPO's and the boards' interest in bringing the examination and appeal procedure efficiently to a close.

2.4 The fact that the new main request concerns fresh subject-matter is additionally highlighted by the following:

2.4.1 The present application was filed as an international application, and the EPO had acted as the International Searching Authority. In that role it had carried out an international search and established a written opinion, in which it raised objections of lack of unity because two groups of inventions had been identified in the set of claims:

- the first group of inventions related to an emulsion-like composition comprising water, flavouring agents, edible lipids and porous starch as principal carbohydrate component; and

- the second group of inventions related to an emulsion-like composition comprising water, flavouring agents, edible lipids and a carbohydrate component chosen from the group consisting of pregelatinized starch, maltodextrins and mixtures thereof.

2.4.2 Upon entry into the European phase, in reply to the examining division's communication pursuant to Rules 161(1) and 162 EPC, the appellant/applicant maintained a set of claims wherein the subject-matter of the sole independent claim 1 was limited to pregelatinized starch as a mandatory feature. The set of claims no longer referred to porous starch, let alone agglomerated porous starch. All sets of claims filed in the subsequent examination proceedings, including those filed with the statement setting out the grounds of appeal, were limited to pregelatinized starch as the mandatory, essential ingredient. It was not until the new main request was filed that (agglomerated) porous starch was introduced into claim 1 as a mandatory feature.

2.4.3 Thus, the appellant's new main request effectively aims at starting second examination proceedings on an invention that it had not pursued before.

2.5 In summary, the new main request might be suitable for resolving objections raised under Article 123(2) EPC, but at the same time it introduces into the proceedings considerably different subject-matter which in fact amounts to the presentation of a fresh case. By virtue of its powers under Article 111(1), second sentence, EPC the board exercises its discretion not to admit the new main request into the proceedings, in accordance with Rules 137(3) and 100(1) EPC.

2.6 Consequently, there is no valid set of claims on file which has been approved by the applicant and allowed by the board, Article 113(2) EPC. Thus, the appeal is not allowable.

Order

For these reasons it is decided that:

The appeal is dismissed.