T 1318/22 - Rule 137(3) and anticipated fallback positions

Key points

• " the Board agrees with the Examining Division that claim 1 of the first auxiliary request lacks inventive step, Article 56 EPC."
• [AR-2] does not define the objects [to be imaged] to be human or animal organs [as in AR-1], but specifies instead that the reflectance measurements are collected using integrating spheres."

• The Examining Division did not admit this request because (decision, point 6)

  [...]- the Appellant did not "build on" the previous request but "trie[d] out this feature as a different direction for specifying what the invention is", which direction was not compatible with the previous one,

  - an integrating sphere was not claimed in the original set of claims and was not considered to be a likely fallback position, and 
  - an integrating sphere was commonly known for measuring material reflectance so that its use in D1 was, "prima facie, not based on an inventive step".

• "The Board notes that [...] the points made by the Examining Division to justify their non-admittance are correct."

• The Examining Division held the request inadmissible under Rule 137(3) EPC. The applicant had filed it by the deadline for written submissions of Rule 116 EPC. 

• Under Rule 137(3) EPC, the amendment is not a voluntary amendment and adding a feature is normally a suitable amendment to address an inventive step issue. Hence, it is not clear that the amendment can be held inadmissible under Rule 137 (3) EPC (without violating the applicant's right to be heard).

• Moreover, the auxiliary request was filed in time under Rule 116.

• Under Rule 137(5) EPC, it might be relevant that the applicant that submitted that "the subject-matter of claim according to the second auxiliary request related to the same invention as the main request,"

• The Board: "while this request may be a limitation of the main request, it shifts the focus of the invention from a method of optimizing illumination to details related to measurements. This, in principle, constitutes a new perspective in the examination of novelty and inventive step, which the Examining Division did not consider up to that point, i.e. it was not an anticipated fallback position."

• However, under Rule 137(5) EPC, the question is whether the feature (in the description) has unity of invention with any of the claims pending at the time of the search by the EPO or was actually searched by the EPO, not so much whether it was "a new perspective in the examination of novelty and inventive step". Is the rule then different under Rule 137(3)? Is Rule 137(5) not applicable to submissions under Rule 116 in the sense that a stricter or different rule applies for submissions under Rule 116 ?

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t221318eu1