T 1840/15 - Ping pong between Board and ED

Key points

• This is an examination appeal.
• " The patent application was refused for lack of inventive step only. As the subject-matter of claim 1 of the present auxiliary request 1 fulfils the requirements of Article 56 EPC, the appeal is allowable and the appealed decision is to be set aside." 
• "Since the examining division did not deal with the subject-matter of independent claim 2 or with requirements for patentability other than inventive step, the board decides to remit the case to the examining division for further prosecution."
• As a comment, if there are two independent claims, and the ED sees a problem with one independent claim and refuses the application, there is no legal obligation for the ED to discuss any of the other independent claims. However, if the Board then restricts itself to mere review, a very slow ping pong can come into play (in this case, the appeal took a bit more than 3 years, examination before the ED took 5 years). 

Allowability of the appeal

19. The patent application was refused for lack of inventive step only. As the subject-matter of claim 1 of the present auxiliary request 1 fulfils the requirements of Article 56 EPC, the appeal is allowable and the appealed decision is to be set aside.

Remittal (Article 111(1) EPC)

20. Pursuant to Article 111(1) EPC, following the examination as to the allowability of the appeal, the board must decide on the appeal and, in this respect, it may either exercise any power within the competence of the department which was responsible for the decision or remit the case for further prosecution.

21. Since the examining division did not deal with the subject-matter of independent claim 2 or with requirements for patentability other than inventive step, the board decides to remit the case to the examining division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the set of claims of auxiliary request 1 submitted with the letter of 27 April 2018.