During oral proceedings before the Examining Division, an auxiliary request of the applicant was found to meet the requirements of the EPC. However, in response to the Rule 71(3) EPC communication, the applicant reverted to earlier higher-ranking requests. The application was refused by the ED.
The applicant appeals, but in its preliminary opinion, the BoA essentially concurs with the ED in respect of the higher-ranking requests, and additionally finds claim 2 of the auxiliary request for which the intention to grant was issued earlier to contravene Art. 84 EPC.
Ultimately, the applicant files a sole main request based on the subject matter of the 'previously allowed' auxiliary request but with claim 2 deleted, and argues that, except for claim 2 having been deleted, the claims of the main request correspond to those on the basis of which the ED had issued its intention to grant during the examination proceedings.
However, rather than ordering a grant, the BoA remits the case back to the ED for further prosecution, while noting that it is not bound to the previous intention to grant, and suggesting that the arguments provided by the applicant in support of inventive step of the main request were to be heard.
1. Remittal according to Article 111(1) EPC
The Board avails itself of its power under Article 111(1) EPC to remit the case back to the examining division for further prosecution.
1.1 With respect to the main request, the appellant argued that a Rule 71(3) EPC communication had been previously issued by the examining division on 16 May 2012. Nevertheless the Board is not bound to find the claims allowable merely by the existence of this communication, nor is the examining division. The request has anyway changed from that considered previously.
Further, the appellant has supplied written arguments concerning inventive step.
1.2 At least the following matters appear to require consideration by the examining division:
(a) The dependency of claim 2 reads 'according to any preceding claim'. Whilst this might normally be understandable in the context of the claims alone as meaning the same as 'according to claim 1', page 3, lines 14 and 15 of the description refer to a plurality of both independent and dependent claims which are not present. The resulting inconsistency between the claims and the description appears prima facie to result in a lack of clarity and lack of support by the description (Article 84 EPC).
(b) The two paragraphs of the description from page 3a, line 12 to page 3b, line 6 are indicated as being 'described herein by way of information only'. These paragraphs, at least prima facie, appear to be 'obviously irrelevant' for the invention (Rule 48(1)(c) EPC).
2. For the avoidance of doubt, it should be noted that the Board has not concluded that the subject-matter of claim 1 of the main request involves an inventive step. Since the decision to reject the application only deals with other matters, it appears fitting that the appellant should have a possibility to have its arguments considered at two instances should this be required.
This decision T 914/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T091413.20170720. The file wrapper can be found here. Photo "A bird in the hand is worth two in the bush" by Kate Ter Haar obtained via Flickr under CC BY 2.0 license (no changes made).