T 0140/21 - Rule 137(5)

Key points

• The Examining Division refuses amended claims of an auxiliary request under Rule 137(5), first sentence.
• "in its reasons the Examining Division argued that "original claim 1 was concerned with solving the problem of platform-independent graphics rendering, but the amended features are concerned with solving the different problem of handling and processing input gestures"
• For [Rule 137(5)] to apply, it must thus be shown (i) that the amended claims relate to unsearched subject-matter and (ii) that they lack unity with the originally claimed invention or group of inventions".
• The Examining Division argues that "These amended features could not have been expected to be searched since they do not relate to the originally claimed invention nor are they disclosed in combination with the originally claimed invention in a specific embodiment of the originally filed description".
• The Board considers this assertion to be inaccurate. " Although the International Search Authority had identified three separate inventions, only the second and third of which contained the gesture-related features, all were even­tually searched (see the Written Opinion of the Inter­national Search Authority, 5 June 2014, Box No. IV and Box No. V). Moreover, original claim 10 contained both the gesture-related features and referred to "platform independent graphics rendering" (reciting a "generic scene graph [...] executable on a plurality of different technology platforms")."
• "Original claim 10 having been searched, the Board has no doubt that the subject-matter of the claims of the third auxiliary request was also searched."
• As a comment, I find this reasoning of the Board to be less helpful. Rule 137(5), first sentence, is not concerned with the payment or not of additional search fees, because that is addressed by G 2/92 (see my article). Because the feature is specified in original claim 10, the amended claim likely has unity of invention of invention with original claim 10, which is sufficient for Rule 137(5) to be inapplicable. If the context of the feature is different between original claim 10 and the current claim such that there would be an additional lack of unity of invention if the current claim was to the original set of claims (over and above any lack of unity between the original claims themselves), then likely the feature was not searched in the context of current claim 1 either.
• " The Board concludes that Rule 137(5) EPC, first sentence, does not preclude consideration of the third auxiliary request. "
• "It is therefore up to the Examining Division during the further prosecution to decide again on their consent under Rule 137(3) EPC to this amendment."
• The case is remitted.

EPO 

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

https://new.epo.org/en/boards-of-appeal/decisions/t210140eu1.html

Third auxiliary request

11. This auxiliary request is based on the auxiliary request underlying the decision, which was "not admitted into the proceedings under Rule 137(3) EPC because the subject-matter of claim 1 [did] not comply with the requirements of Rule 137(5) EPC" (decision, reasons 12.1.5). As a reason it is stated (reasons 12.1.2) that "the amendment introduces features related to unsearched subject matter which does not combine with the originally claimed invention to form a single general inventive concept", and reference is made to the Guidelines for Examination, H-II, 6.2. So the Examining Division apparently meant to refer to Rule 137(5) EPC, first sentence.

11.1 Further, in its reasons the Examining Division argued that "original claim 1 was concerned with solving the problem of platform-independent graphics rendering, but the amended features are concerned with solving the different problem of handling and processing input gestures" (underlining by the Board). It is clear that this argument is not affected by the deletion of the "wherein" clause in the present third auxiliary request.

12. Rule 137(5) EPC, first sentence, states that "Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept." For this rule to apply, it must thus be shown (i) that the amended claims relate to unsearched subject-matter and (ii) that they lack unity with the originally claimed invention or group of inventions".

12.1 The reasoning of the Examining Division is deficient at least in what regards the question whether the amended claims were searched. The Examining Division stated that "original claim 1 was concerned with solving the problem of platform independent graphics rendering, but the amended features are concerned with solving the different problem of handling and processing input gestures" and that "These amended features could not have been expected to be searched since they do not relate to the originally claimed invention nor are they disclosed in combination with the originally claimed invention in a specific embodiment of the originally filed description".

12.2 The latter two assertions are inaccurate. Although the International Search Authority had identified three separate inventions, only the second and third of which contained the gesture-related features, all were even­tually searched (see the Written Opinion of the Inter­national Search Authority, 5 June 2014, Box No. IV and Box No. V). Moreover, original claim 10 contained both the gesture-related features and referred to "platform independent graphics rendering" (reciting a "generic scene graph [...] executable on a plurality of different technology platforms").

12.3 Original claim 10 having been searched, the Board has no doubt that the subject-matter of the claims of the third auxiliary request was also searched.

13. The Board concludes that Rule 137(5) EPC, first sentence, does not preclude consideration of the third auxiliary request. As the Examining Division justified their denial of consent under Rule 137(3) EPC merely with reference to Rule 137(5) EPC, this decision cannot stand.

Remittal

14. The Board notes that no claim with the new, gesture-related features has as yet been considered by the Examining Division in substance. In view of the primary object of the appeal proceedings to review the decision under appeal, Article 12(2) RPBA 2020, the Board considers that this first substantive assessment should be carried out by the Examining Division and deems this to constitute special reasons for remittal under Article 11 RPBA 2020.

14.1 At the same time, the Board notes that by setting aside the decision for the above reasons, it has not itself given consent to the present third auxiliary request. It is therefore up to the Examining Division during the further prosecution to decide again on their consent under Rule 137(3) EPC to this amendment.

Order



For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Examining Division for further prosecution.