T 0560/20 - Procedural violation ED

Key points

• An examination appeal with a clear substantial procedural violation.
•  " the reasons for the impugned decision are limited to the finding of lack of inventive step of the subject-matter of claim 1 of the main request on file in view of document D5 in combination with the common general knowledge." 
• " The board agrees with the appellant that the examining division had not raised this objection before. In its previous communications, document D5 had been cited as novelty-destroying, while the issue of inventive step had been discussed on the basis of document D1 or D2 in combination with document D3 or D4." 
• The decision is set aside, the case is remitted, and the appeal fee is reimbursed. 

EPO T 0560/20 -  link

1.2 In the case in hand, the reasons for the impugned decision are limited to the finding of lack of inventive step of the subject-matter of claim 1 of the main request on file in view of document D5 in combination with the common general knowledge. In the decision, the examining division essentially held that the subject-matter of claim 1 differs from document D5 in the thickness of the first membrane layer. As this difference is not related to any particular effect, the objective technical problem to be solved is the selection of an appropriate thickness. The skilled person would prepare a membrane with the claimed thickness without technical difficulties. The subject-matter of claim 1 is therefore not based on an inventive step.

1.3 The board agrees with the appellant that the examining division had not raised this objection before. In its previous communications, document D5 had been cited as novelty-destroying, while the issue of inventive step had been discussed on the basis of document D1 or D2 in combination with document D3 or D4.

In consequence, the appellant had no opportunity to present its comments on the sole ground on which the impugned division is based. This contravened the appellant's right to be heard enshrined in Article 113(1) EPC and constitutes a substantial procedural violation.