T 1598/20 - New objections in the decision

Key points

• The applicant appeals against the refusal. 
• On the admissibility of the amended claims: "As explained by the appellant in the statement of grounds of appeal, the amendments made in the new main request filed on appeal clearly address the objection of added subject-matter raised by the examining division, for the first time, in the decision under appeal." emphasis added. 
• The amendments overcome the objections under Art. 123(2).
• The Board " points out that, in such circumstances, the examining division should have considered the appeal admissible and well founded and, consequently, should have rectified the decision under Article 109(1) EPC. "
• The case is remitted.
• The appeal fee is not reimbursed (or more precisely: there is no order to do so in the decision).
• If the ED raises new objections  "for the first time in the decision under appeal" this is a violation of the right to be heard, and the appeal fee is (normally) reimbursed under Rule 103(1)(a) EPC ex officio.

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t201598eu1

1. Admissibility of the appeal; admittance of the new main request

1.1 The appeal is admissible.

1.2 As explained by the appellant in the statement of grounds of appeal, the amendments made in the new main request filed on appeal clearly address the objection of added subject-matter raised by the examining division, for the first time, in the decision under appeal. Therefore, although this new main request is to be regarded as an amendment within the meaning of Article 12(4) RPBA 2020, the Board decides to admit it into the proceedings.

2. Added subject-matter

2.1 As set out in points 1 to 7 of the reasons for the decision under appeal, the examining division refused the application on the sole ground that the wording of claim 1 of the main and only request then on file, namely the claims filed with the submission of 13 January 2020, used the generic expression "first quality of sleep" rather than the terms "typical sleep" and "high-quality sleep" originally disclosed on page 75, lines 1-5 of the original application. The examining division objected that there was no basis in the original application for this substitution of terms and that for this reason claim 1 infringed Article 123(2) EPC.

2.2 In the new main request filed with the appellant's statement of grounds of appeal, the originally disclosed wording "typical or high-quality sleep", to which the examining division had pointed in the decision, was reintroduced into claim 1. This clearly overcomes the examining division's objection under Article 123(2) EPC.

2.3 Since the only objection on which the refusal of the application was based has manifestly been remedied, the appeal is allowable and the decision under appeal is to be set aside.

2.4 The Board points out that, in such circumstances, the examining division should have considered the appeal admissible and well founded and, consequently, should have rectified the decision under Article 109(1) EPC. Indeed, the first-instance department has no discretion in applying the provision of Article 109(1) EPC which stipulates that the department whose decision is contested "shall rectify its decision" if it considers the appeal to be admissible and well founded. In particular, the fact that there may be other objections which have not been removed but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC (see in this respect T 139/87, point 4).

3. Request for grant of a patent; remittal to the examining division for further prosecution

3.1 The appellant requested that a patent be granted on the basis of the amended claims filed with the statement of grounds of appeal.

However, only the compliance of "[t]he amendments filed with the letter dated 13.01.2020" with Article 123(2) EPC was considered in the decision under appeal (see points 1 and 6 of the reasons). In particular, it is not evident from the decision whether the examining division considered the other features still claimed in claim 1 and in the dependent claims to comply with Article 123(2) EPC. The Board notes in this respect that the minutes of the oral proceedings before the examining division state (see point 2) that the subject-matter of claim 1 was examined for compliance with Article 123(2) EPC, but do not mention that a similar assessment was also made for the dependent claims. Indeed, neither the remaining features of claim 1 nor those of the dependent claims are discussed in the contested decision.

Furthermore, the decision under appeal does not address the other requirements of the EPC, in particular those relating to clarity, novelty and inventive step.

3.2 For these reasons, and having regard to the primary object of the appeal proceedings, which is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020), the Board considers that special reasons within the meaning of Article 11 RPBA 2020 exist for remitting the case to the examining division for further prosecution, in accordance with Article 111(1) EPC.

3.3 The appellant made an auxiliary request for oral proceedings in case the Board was minded to refuse the application. This is not the case and, in any event, according to established case law, remittal for further prosecution is not considered as being adverse to the appellant (see Case law of the Boards of Appeal,

10th edition, III.C.4.5). In view thereof, there is no need to hold oral proceedings before the Board.

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.