T 0104/15 - The Board can properly judge technical content

Key points

• In this examination appeal, the Board cites a new document D8. The applicant requests immediate remittal so that D8 can be discussed in two instances. The Board does not grant the remittal.
• D8 originates from the applicant is cited by the Board in reply to fresh arguments of the applicant. Furthermore, in examination appeal, the Boards are restricted neither to an examination of the grounds for the contested decision nor to the facts and evidence on which the decision was based (G10/93). 
• " Thirdly, the board, comprising technically qualified members, is in a position to properly judge the technical content of the present claims and the newly introduced prior-art document, and to deal with the merits of the present case without remittal" 

EPO T 0104/15 -  link

2. PRINCIPAL REQUEST

2.1 The appellant requested that the case be remitted to the examining division for further prosecution in the light of newly introduced document D8. The appellant argued that citing a document for the first time at this late stage of the proceedings effectively meant that prosecution of the application had to be condensed down to one round of written communication during which the opportunities for amendment and for filing new requests were limited. Thus, immediate remittal was consistent with the principles of G 9/91 (OJ EPO 1993, 408).

2.2 The board, however, in the exercise of its discretion under Article 111(1) EPC, has decided not to remit the case in view of the following observations:

- Firstly, prior-art document D8, originating from the appellant, was introduced by the board in reaction to fresh arguments submitted with the statement setting out the grounds of appeal (see e.g. sections 2.1 and 2.3, referring to different figures of D7 such as Figs. 3C to 3E, and section 2.2 discussing the "Outlook" email program in connection with D7).

- Secondly, the board refers to G 10/93 (OJ EPO 1995, 172, Reasons 3) stating that, in ex parte proceedings (rather than in inter partes proceedings as dealt with in G 9/91), the Boards of Appeal are restricted neither to examination of the grounds for the contested decision nor to the facts and evidence on which the decision was based.

- Thirdly, the board, comprising technically qualified members, is in a position to properly judge the technical content of the present claims and the newly introduced prior-art document, and to deal with the merits of the present case without remittal.