T 0948/19 - Remittal for inventive step

Key points

• The Board considers the claims of an auxiliary request to be novel of the (pre-published) prior art, differently from the opposition division. The Board considers the claims of the main request to be not novel.
• The Board does not discuss inventive step. It is not clear to me if the added features of the auxiliary request are trivial or not. 
• "D1 discloses a distribution of slopes and baselines obtained prior to sensor insertion. However, D1 does not disclose the criteria according to which this selection is performed. Hence, D1 does not disclose that the calibration line selected from of multiple possible calibration lines is the one that has the slope and the baseline closest to the maximum joint probability of both the slope and the baseline."
•  The Board remits the case: "In this context, the following should be noted: In a last-instance decision, when a request is not allowed on other grounds it is normally superfluous to address further objections raised against that same request that were found unconvincing after having been discussed at oral proceedings. However, the situation is different for a decision of an opposition division, which may be the subject of an appeal. In this case, if the Board is not convinced by the reasons the opposition division gave in support of precluding the maintenance of the patent on the basis of a certain request, the lack of a decision to review in respect of the aforementioned further objections may result in a remittal for the consideration of said further objections, resulting in a delay in the proceedings."
• The Board does not indicate that the OD departed from the usual practice of the OD or from the Guidelines. I think the OD followed the normal practice of the first-instance departments. The Board nevertheless considers the result of this normal practice to be " a special reason within the meaning of Article 11 RPBA 2020".
• It is not clear to me if there were any specific reasons that prevented the Board from considering inventive step, like the parties not making any submissions on that topic in appeal (which possibly would be contrary to the instruction in the RPBA to present a complete case, incidentally).
• 
  EPO 

You can find the link to the decision and an extract of it after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t190948eu1

Hence, the subject-matter of claim 1 of auxiliary request 2 is novel in view of D1.

7. Remittal to the department of first instance

During the opposition proceedings, both respondents raised further objections as to a lack of novelty, added subject-matter, insufficiency of disclosure and a lack of inventive step, none of which had been considered in the decision of the opposition division. In respect of these issues, including those that were discussed at the oral proceedings such as added subject-matter and sufficiency of disclosure, there is no decision to be reviewed. It is true that during the oral proceedings the opposition division considered objections of added subject-matter and sufficiency of disclosure against the main request, coming to the conclusion that none of these objections, which would also have applied to the auxiliary requests, was convincing (pages 2 and 3 of the minutes). However, neither these findings nor the reasons underlying them are present in the decision under appeal.

In view of the primary object of the appeal proceedings being to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020), the Board is therefore of the opinion that the absence of reasoning regarding these other objections represents a special reason within the meaning of Article 11 RPBA 2020 for remitting the case to the opposition division for further prosecution under Article 111(1) EPC. In this context, the following should be noted:

In a last-instance decision, when a request is not allowed on other grounds it is normally superfluous to address further objections raised against that same request that were found unconvincing after having been discussed at oral proceedings. However, the situation is different for a decision of an opposition division, which may be the subject of an appeal. In this case, if the Board is not convinced by the reasons the opposition division gave in support of precluding the maintenance of the patent on the basis of a certain request, the lack of a decision to review in respect of the aforementioned further objections may result in a remittal for the consideration of said further objections, resulting in a delay in the proceedings.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.