Friday, December 21, 2018 T 1648/17 - repeated non-attendance at oral proceedings

 Foto from Guddanti (Pixabay) unrelated to the case

This appeal was lodged against a decision of the examining division refusing the European patent application in suit on the ground that claim 1 and 8 lacked an inventive step (Art. 56 EPC).  

In the statements of the grounds of appeal, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims of two new requests never presented during first instance examination proceedings. The two new requests were based on an additional feature derived from the description and not from the claims as originally filed. This would have meant that the BoA would have needed to remit the case to the Examining Division for a new search thereby going beyond the scope of appeal proceedings that are primarily concerned with examining the contested decision rather than to continue examination  (G 10/93). The applicant/appellant did not attend the Oral proceedings both during examination and during appeal proceedings reason for which the BoA believes that the applicant did not want to submit any new request from that point in examination. Therefore the BoA did not admit the requests in appeal (Art. 12(4) RPBA) and dismissed the appeal. 

Friday, September 14, 2018 T 2489/11 - panning once, continuous panning or scrolling

This appeal was filed against a decision of the Examining Division to refuse the application for violating Art. 84, EPC and Art. 83, EPC.

The applicant filed a main and seven auxiliary requests in support of the statements of the grounds of appeal.

Claim 1 of the main request is directed to a device comprising a touch interface. The claim  attempts to distinguish a 'click' touch from a 'panning' touch merely based on a duration of the touch measured in the device.

The Board does not admit the main request  (Art. 12(4), RPBA) because the applicant attempts to broaden claim 1 by unjustifiably returning to the claim 1 as filed. Original claim 1 was limited during the early stage of examination in that the distinction between 'click' touch and 'panning'  touch was not only based on the duration of the touch but also on a position of the touch. 

All other requests introduce the position of the touch in the claims but further attempt to distinguish a 'continuous panning' from 'panning once'  and/or 'panning' from 'scrolling' which the Board finds unclear (Art. 84, EPC) or not sufficiently described with examples in the description (Art. 83, EPC, Rule 42(1)(e), EPC).

Tuesday, January 30, 2018 T 2101/14 – Not admissible if not promptly substantiated

The applicant filed an appeal against a decision of the Examining Division refusing applicant’s European patent application. With the statements of the grounds of appeal, the applicant forwarded a new set of claims not previously presented during examination. In a preliminary assessment of the claims, the Board expressed its concerns about the introduction of a new unsearched feature.

In order to obviate the Board’s concerns, the applicant presented a further set of new claims. Since this further set of new claims was based on a suggestion for an allowable claim of the Examining Division, the applicant did not consider necessary to file substantiating arguments in support of this new request. Only during oral proceedings the applicant substantiated the patentability of the further set of new claims.

For the Board, an unsubstantiated request becomes effective at the date on which the request is substantiated (T 1732/10) and thus too late in the present case because it would have inevitably required an adjournment of the oral proceedings, which is excluded by Article 13(3) RPBA. Thereby the Board refused to admit the further set of new claims into the proceedings even if the claims were filed well before arrangement of the oral proceedings and dismissed the appeal.