T 2073/15 - Not unsearched

Key points

• In this examination appeal, a partial ISR had been established and no additional search fees had been paid so that the ISR covered only the first invention which included claims 1-4. The claims were then amended by a feature taken from the decision. The ED considered this claim request to be unallowable under Rule 137(5) EPC. 
• "The board agrees with the appellant that the feature [at issue] was included in the search." (underlining added)
• The feature at issue is " the application of the precoding weights to the beams in conjunction with beam-forming ". [Not my field of technology but it is about wireless communication.]
• The Board: "originally filed claim 3, which was included in the search [i.e. claim 3 was expressly covered by the ISR], comprised a list of transmission modes, including SDMA precoding. With respect to SDMA precoding, which was thus included in the scope of the search related to the first invention, the description in paragraph [0067] teaches how sectors, virtual sectors, and beams within a virtual sector, are formed in this transmission mode. This description of SDMA precoding, a feature included in the scope of the search, corresponds fairly well to the description of paragraphs [0049] and [0050] in combination with Figure 4 related to precoding weights applied in conjunction with beam-forming to the beams. The board therefore holds that the claims meet the requirements of Rule 137(5) EPC."
• As a comment, in my view it is rather strange for the Board to decide what is included in the search (rather than what ought to be included in the search). If the ISA did not search the features of para. [0049] of the description, then I don't see how the Board can decide that the ISA did. The Board can decide that the ISA should have searched the feature in the description, and accordingly admit the amended claim and remit the case (such that the ED has to carry out an additional search, free of fee, for the feature). As I've discussed in my article in epi Information 2018/2, for a claim to be unallowable under Rule 137(5) it must be both (i) unsearched (which on a factual level was the case here) and (ii) lack unity of invention with the claims pending at the time of the search. If the feature at issue is a simple implementation of searched claim 3, the feature should not lack unity of invention with that claim 3 and the amendment at issue is allowable because the second requirement of Rule 137(5) EPC is not met. There is however indeed case law which interprets  "unsearched" in Rule 137(5) as "did not need to be searched" and then asks if the feature should have been searched - raising the question when the Examiner should or should not search features only mentioned in the description.

EPO T 2073/15 -  link

2.2 Rule 137(5) EPC

The board agrees with the appellant that the feature defining the application of the precoding weights to the beams in conjunction with beam-forming was included in the search.

In that respect, the board notes firstly that, in the search report issued by the EPO as International Searching Authority [IPRP Chapter I here; no additional search fees were paid; the searched claims included claims 1-4], the invention which was first defined in the originally filed claims, and which was the subject of the search, was defined as being related to "the set of different transmission modes contained in the codebook, of which one can be selected". This indicates the relevance of the transmission modes for the search.

Secondly, the potential special technical features which were identified at the search stage to make a contribution over prior-art document D1 were the features of originally filed claim 3 that the codebook also included an entry for SDMA. The problem solved by these features was formulated as "How to enhance the set of possible options for the mode selection?". This also clearly indicates that the kind of transmission mode was the subject of the search.

Thirdly, originally filed claim 3, which was included in the search, comprised a list of transmission modes, including SDMA precoding. With respect to SDMA precoding, which was thus included in the scope of the search related to the first invention, the description in paragraph [0067] teaches how sectors, virtual sectors, and beams within a virtual sector, are formed in this transmission mode. This description of SDMA precoding, a feature included in the scope of the search, corresponds fairly well to the description of paragraphs [0049] and [0050] in combination with Figure 4 related to precoding weights applied in conjunction with beam-forming to the beams.

The board therefore holds that the claims meet the requirements of Rule 137(5) EPC.

[...]

3. Procedural violations / Reimbursement of the appeal fee

The appellant requested reimbursement of the appeal fee under Rule 103(1)(a) EPC for violation by the examining division of its right to be heard under Article 113(1) EPC.

The appellant argued in substance that both the refusal of the request for continuation in writing (auxiliary request III) and the refusal of the "late-filed main request" (MR-OP) as inadmissible represent a substantial procedural violation of the right to be heard since these requests were filed in response to the objection under Article 83 EPC raised for the first time during the oral proceedings before the examining division.

The board understands that the "'late-filed main request' (MR-OP)" quoted by the appellant is the request filed by the appellant after the request for continuation in writing (auxiliary request III) was refused, and that it is indistinctively referred to as "latest non-considered request", "last late-filed claim set" and "late-filed main request (MR-OP)" in point 9 of the minutes of the oral proceedings. According to point 9 of these minutes, this request was not admitted into the procedure. The decision, however, does not mention this request (see point 26 and 27). Said "late-filed main request" needs to be distinguished from the "Main Request" and the "New Main Request", which were filed during the oral proceedings and before the "late-filed main request" was filed (see the requests attached to the minutes of the oral proceedings). The "New Main Request" was not admitted into the proceedings for the reasons given in points 20 to 24 of the decision (see also points 7 and 8 of the minutes).

The appellant did not have an a priori right to have the "late-filed main request" admitted into the

first-instance proceedings. However, a party filing a request is always entitled to be heard on why it considers the request should be admitted. If the request is not admitted, this decision must be reasoned (Rule 111(2) EPC). From the minutes of the oral proceedings (point 9), it appears that the admissibility of the "late-filed main request" was briefly discussed before the request was filed. The request filed bears a handwritten remark "not considered by ExDiv" (see the corresponding annex to the minutes). At the end of point 9 of the minutes, a statement is made that the "late-filed main request (MR-OP) is not admitted into the procedure, Rule 116(2) EPC". It is not entirely clear whether this statement refers to the "late-filed main request" or the "New Main Request" as filed earlier during the oral proceedings and also referred to as "MR-OP" (see points 7 and 8 of the minutes). It is clear, however, that the decision does not contain any reference to the "late-filed main request", let alone any reasons as to why it was not admitted into the proceedings.

The board thus holds that the handling of the "late-filed main request" involved a violation of the appellant's right to be heard for the above reasons, and that the request for reimbursement of the appeal fee under Article 103(1)(a) EPC is justified.

On the other hand, the board does not see a procedural violation in the context of the then pending auxiliary request III (continuation in writing to allow consultation with the applicant on the objection under Article 83 EPC against then auxiliary request I). The board agrees with the examining division in that the request should have been made before the debate on the auxiliary request I was closed and before lower-ranking requests were discussed.

4. The board has decided that the main request complies with the requirements of Articles 83 and 123(2) EPC and of Rule 137(5) EPC. However, a remittal for further prosecution is appropriate since the issue of inventive step with regard to prior art documents D1 and D2 was not discussed during the first instance proceedings (see above point 2.4).