T 0690/18 - Board confronts party, does not admit response

Key points

•  The Board finds AR-1 to be not inventive over D2 because "the claimed subject-matter defines an arbitrary modification of the oven according to D2".
• The patentee files AR-2 during the hearing before the Board
• As a preliminary development, "In contrast to the approach developed in the [decision of the opposition division], the provisional opinion issued by the Board envisaged an alternative scenario as to how to arrive at the claimed subject-matter [of AR-1, presumably, AR-2 not having been filed yet] starting from the embodiment of Figure 1 in D2."
• In the preliminary opinion "the Board stressed that the introduction of an additional thermally insulating layer between the induction coil and the ferrite layer would have led to the claimed subject-matter. Such a modification was considered then to solve the problem of protecting the magnetically insulating means from the effects of excessive heat."
• Now the key event" "In the course of the oral proceedings before the Board, the proprietor was confronted with a revised provisional analysis of D2 from the Board according to which the claimed invention did not solve any technical problem due to the absence of a technical effect."
• I understand this as meaning that during the oral proceedings, the Board confronted the proprietor with a new ("revised") analysis of D2, i.e. one or more members of the Board said something to inform the patentee of their new analysis of D2. 
• The Board gives no details of what this new analysis precisely was. Was a new paragraph of D2 cited? A new interpretation? New common general knowledge used to interpret something? 
• Does the Board give the patentee a chance to respond by filing the auxiliary request?
• No.
• The Board: " inventive step attacks against claim 1 of auxiliary request 1 starting from D2 were subject to the appealed decision. The first objection therein relied on D2 and common general knowledge. By the end of the corresponding section of its statement of grounds of appeal (pages 16-18), the opponent, in a summary of its D2-based inventive step attacks, stressed that D2 was also put forward as a sole document"
• The Board does not state that the inventive step attack decided on in the appealed decision was based on the same essential reasoning as the "revised provisional analysis" of the Board.
• " the Board is not bound in any manner by the content of its provisional opinion"
• "The circumstances referred to by the proprietor do not constitute exceptional circumstances, but relate, on the contrary, to ordinary aspects of the appeal proceedings. For there is nothing exceptional in the Board, as a result of a preparatory meeting or as a result of arguments presented during the oral proceedings, assessing a situation differently from its provisional opinion, thus diverging from or revising its provisional analysis. "
• It may be added that the Board does not cite Article 113(1) and accordingly does not expressly comment on how the decision complies with that provision. 
• "Moreover, the amendments introduced in claim 1 of auxiliary request 2 do not prima facie overcome the issue of lack of technical effect raised against claim 1 of auxiliary request 1. The additional limitations, ... refer to structural aspects of the thermally insulating layer. They are without any bearing on the above finding that said thermally insulating layer does not provide any additional technical effect over the thermally insulating layer present between the induction coil and oven wall in D2."
• Adding features to a claim seems prima facie a suitable reply to me to an inventive step objection. The Board doesn't state that D2 already teaches the added features. 
• As a comment, it would have been useful if the Board could have explained in more detail how the patentee's right to be heard under Article 113(1) was safeguarded. What is the purpose of the Board confronting the patentee with "a revised provisional analysis of D2 from the Board" if the Board holds the patentee's response inadmissible? 
• I do not exclude that there is some principle of good faith that when the Board asks a question (or "confronts" a party), the party can legitimately expect to be given a fair opportunity to reply, even if, strictly speaking, the Board was not required to ask the question under Art. 113(1). Giving a party a  fair opportunity to reply may involve allowing the party to file appropriate evidence or auxiliary requests, in my view, depending on the circumstances (and to have such evidence or requests duly considered on the merits, for that matter, i.e. admitted and then considered on the merits by the judicial panel).

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t180690eu1.html