T 0324/14 - Request for remittal

Key points

• In this examination appeal, the Board decides that claim 1 of the Main Request is obvious. AR1 to 4 are not admitted into the proceedings as being filed late. The applicant then requests remittal to the examining division. The applicant argues "that the new objections raised by the board as well as the fact that there seemed to be patentable subject-matter included in the application, justified remittal and further consideration by the examining division" .
• The Board does not grant this request. " the mere presumption of potentially patentable subject-matter in the application does not justify a remittal to the department of first instance. Should the appellants have wished to proceed with requests that they considered to contain potentially patentable subject-matter and thus as a promising basis for the examination proceedings, requests defining subject-matter of this nature should have been filed already in the first instance proceedings." (the Board also expresses that it had not raised new objections).
• As a comment, appeals before the USPTO can be taken back to the examiner by filing an RCE and paying the applicable fee.

T 0324/14 - link

2.12 The board therefore concludes that the subject-matter of claim 1 is an obvious combination of concepts known from documents D1 and D2. In particular, the combination of two stages of amplification in each amplifier with pre-distortion provided in a first stage in the amplifier is obvious to the person skilled in the art and the subject-matter of claim 1 of the main request therefore does not involve an inventive step in the sense of Article 56 EPC.

3. First to fifth auxiliary requests - Admittance (Articles 12(4) and 13(1) RPBA)

[...]

3.8 In consideration of the specific circumstances of the present case, in particular the late stage of the proceedings as well as the new complex issues raised by the auxiliary requests, the board exercised its discretion under Articles 12(4) and 13(1) RPBA to not admit the first to fifth auxiliary requests into the appeal procedure.

4. Remittal to the department of first instance

4.1 The appellants have requested that the case be remitted to the examining division for further prosecution. They have particularly argued that the new objections raised by the board as well as the fact that there seemed to be patentable subject-matter included in the application, justified remittal and further consideration by the examining division.

4.2 Contrary to the appellants' arguments, no new objections have been raised by the board during the appeal procedure (see the reasons under point 3.7 above). Furthermore, the mere presumption of potentially patentable subject-matter in the application does not justify a remittal to the department of first instance. Should the appellants have wished to proceed with requests that they considered to contain potentially patentable subject-matter and thus as a promising basis for the examination proceedings, requests defining subject-matter of this nature should have been filed already in the first instance proceedings.

4.3 For these reasons, the board refuses the request for remittal of the case to the examining division.

4.4 Since there is no allowable request on file, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.