Wednesday, September 21, 2022 T 17/22 - On the "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC"

In the present case, the examining division issued a decision to refuse the application based on the ground under Article 123(2) EPC and on lack of novelty, lack of inventive step and lack of clarity. However, the examining division had issued only two communications before deciding to refuse the application: the first was a communication under Rules 161(1) and 162 EPC, inviting the applicant to correct any deficiencies noted in the written opinion raised by the EPO as ISA in the international phase, and the second was a communication under Rule 137(4) EPC headed "Invitation pursuant to Rule 137(4) and Article 94(3) EPC", accompanied by an annex raising an objection under Article 123(2) EPC and the statement: "nota bene: The amendment appears also not suitable to remedy the deficiencies". In the statement setting out the grounds of appeal, "the appellant contended among others that the examining division had committed a substantial procedural violation as, in the proceedings before the examining division, the appellant never had the opportunity to address the objections as expressed in the appealed decision. Moreover, with the invitation pursuant to Rule 137(4) EPC, the appellant had only been alerted that certain amendments had not been sufficiently identified and/or their basis in the application as filed has not been sufficiently indicated. The subsequent decision to refuse the European patent application without any further ado had come completely to the surprise of the appellant. Thus, the appellant submitted that the right to be heard under Article 113(1) EPC had been violated.".
The Board considered the scope of Art. 94(3) EPC in detail and considered that at least one substantive communication pursuant to Art. 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on substantive grounds is issued (or, exceptionally, summons for OP). The Board addressed in detail whether a communication under Rules 161(1) and 162 EPC can/cannot be considered a communication under Article 94(3) EPC and whether an "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC" can/cannot considered a substantive communication under Article 94(3) EPC.

Tuesday, July 12, 2022 T 3000/19 - Use of video retrieved from the internet as prior-art

The grounds for refusal of the decision under appeal are based on lack of inventive step when taking as starting point documents D4 and D5. The prior-art evidence cited by the examining division as "document D4" refers to a video titled "Mac OS X Leopard Overview : Mac OS X Leopard Dictionary", retrieved from the YouTube website and, at the same time, a document including a screenshot of a web browser visiting that YouTube website. The video of D4 was cited for the first time in the examining division's communication of 24 January 2018, which provided the URL for accessing the video on the internet. The document with the screenshot also shows YouTube information about the video, including the publication date of 9 July 2008 used by the examining division. It does not show any other information relevant to the case. The Board discussed Internet disclosure as prior-art evidence, Use of electronic evidence in proceedings and Use of online video evidence in the EPO. The Board considered the procedure in accordance with the Guidelines for Examination, B-X, 11.6 to be insufficient for preserving video evidence and guaranteeing its accessibility over time as needed for EPO proceedings or for further judicial proceedings before the boards of appeal of the EPO or national courts (Article 131(1) EPC). The Board concluded to be not in a position to make its own assessment of the relevant evidence in its original presentation in an objective and independent manner. In view of this, the Board concludes that the decision under appeal is not sufficiently reasoned and violates Rule 111(2) EPC. This constitutes a substantial procedural violation. The measures recommended by the Guidelines for Examination of November 2018, B-X, 11.6, which were followed by the examining division, did not adequately preserve the relevant electronic evidence to guarantee accessibility over time.

Tuesday, October 27, 2020 T 560/20 - Change from novelty objection to inventive step in decision to refuse

Does membrane thickness have a technical effect? Does it matter?

During prosecution the claim was objected to on the basis of novelty. In its decision to refuse, it was acknowledged that the thickness of a membrane was not disclosed in the prior art document. As said thickness had no technical effect, the Examining division turned the novelty objection into an inventive step objection. The appropriate thickness could be found from the common general knowledge. 

The board does not like this, and in fact, considers it to be a substantial procedural violation 

Tuesday, March 31, 2020 T 482/16 - Last-minute additional searches during the oral proceedings to make up for the poor search carried out earlier

In the present case, the applicant was confronted with two new documents, D2 and D3, introduced by the Examining Division during the oral proceedings for the first time. The applicant's request for postponement of the oral proceedings in view of this introduction of D2 and D3 was denied. Upon filing amendments trying to take the disclosure of D2 and D3 into account, the applicant was confronted with two further new documents, D4 and D5, also introduced by the Examining Division during the oral proceedings. No time was given to the appellant to consider these new documents. Rather, the appellant's request for postponement was rejected and the application refused. The applicant appealed the refusal. In the appeal, the Board concluded that: "[Therefore,] the appellant was confronted with new objections based on new evidence during the oral proceedings. Although it is possible for an examining division to introduce new evidence even at a late stage of proceedings, in the present case the course of the examination proceedings suggests that the examining division tried to make up for the poor search carried out when the application was filed by performing last-minute additional searches, in an attempt to find documents more relevant than D1 for the claimed subject-matter", as the Board noted that "According to the impugned decision, these new documents had been found by carrying out an additional search on the day of the oral proceedings, just before their start. This means that the introduction of D2 and D3 was not motivated by the new claim requests filed by the appellant to overcome the lack-of-clarity objection raised during the oral proceedings". "The Board concludes that, by rejecting the appellant's request for postponement of the oral proceedings, the examining division did not provide the appellant with the appropriate opportunity to present its comments on the objection of lack of novelty over D3 in the light of D4 and D5. The appellant's right to be heard on the examining division's novelty objection has thus been violated by the examining division's refusal of its request for adjournment of the oral proceedings, contrary to the requirement of Article 113(1) EPC. This amounts to a procedural violation."

Monday, January 14, 2019 T 2707/16 - waiting, waiting and still waiting

This examination appeal was lodged after exceptionally lengthy examination proceedings. 
The patent application in suit was filed on 30 November 2001 with a priority date of 30 November 2000. The European search report was transmitted to the applicant almost 5,5 years after the priority date. After timely filing the request of examination, the applicant receives the first communication of the Examining Division on 7 April 2008 to which he timely replies in August 2008. After more than 7 years, on 7 January 2016, the applicant receives the second communication (summons to Oral Proceedings) from the Examining Division! In the Oral Proceedings the Examining Division refuses the application for lack of inventive step (Art. 56, EPC).  
In the grounds of appeal the appellant requested that the application be granted  on the basis of a sole request and that the appeal fee be reimbursed.
At the end of oral appeal proceedings held on 25 April 2018, the BoA remits the case to the department of first instance for further prosecution.
In order to establish whether the appeal fee could be reimbursed under Rule 103(1), EPC, the BoA extensively argues (see reasons 16 to 34 of the decision), even by making reference, in line with the appellant, to the case law of the European Court of the Human Rights (ECHR), on whether the delay in the first-instance proceedings amounts to a substantial procedural violation according to Rule 103(1), EPC. The BoA concludes that indeed such a delay can be considered a substantial procedural violation (in line with T 823/11 but deviating from T 1824/15). However, the BoA considers the reimbursement of the appeal fee in view of the unreasonable delay not equitable because the applicant did not make clear by any action that he did not tacitly agree with the stagnation of the proceedings (see reasons 35 and 36).
Thus the BoA refuses the request of the appellant for the reimbursement of the appeal fee.

To date the proceedings are still pending and the applicant is requested to pay renewal fees for the 18th year to the EPO! 

Wednesday, November 21, 2018 T 1946/17 - blanket statements cannot be considered to address the arguments raised

In this appeal case, the Boards emphasized again that a decision according to the state of the file must, as any other decision, be reasoned and arguments raised must be addressed. The standard form for referring only to an earlier communication can only be used under strict conditions spelled out in the Guidelines. It is only possible to use this form of decision where the previous communication addresses all the arguments raised by the applicant. Further, it is possible by way of exception to refer to more than one communication in the standard form, but then the examiner should carefully consider the requirements of Rule 111(2) EPC. Blanket statements --such as merely stated that the "arguments were carefully considered" but "no new evidence" was provided-- cannot be considered to address the arguments raised and does not comply with the requirement of Rule 111(2) EPC that the decision be reasoned. Also, in view of contradictory statements in the communications referred to in the present standard form decision, it is not clear which of the reasons given by the Examining Division under Articles 54 and 56 EPC, if any, might form part of the reasons for the decision to refuse. Lastly, comments submitted by the applicant after the last communication and before the request for a decision according to the state of the file were ignored. 

Friday, October 26, 2018 T 658/12 - Faulty reasoning does not qualify as insufficient reasoning

In this appeal, the Board agrees with the appellant's argument that the subject-matter of claim 1 involves at least some technical features which are not regarded as notorious knowledge of the skilled person. Apart from business related aspects of order processing the claimed subject-matter also involves aspects concerning authentication and identification of users at different entities of the claimed system. The Board considers the latter to contribute to the technical character of claim 1 so that they cannot be regarded as being part of the non-technical requirement merely to be implemented by the technical skilled person. Further, the examining division interpreted technical features of the claim to be in the administrative, i.e. non-technical domain. The Board in contrast considers those features (related to authentication and identification) to be technical. In the Board's view this was an incorrect application of the COMVIK approach. 
In reason 4.1, the Board indicated that "an insufficiently reasoned decision has to be distinguished from a decision that has faulty or unpersuasive reasoning. The decision under appeal is not based on mere allegations, nor does it lack a clear comprehensive argumentation. The Board agrees with T 690/06 (see reasons, point 13) that notorious prior art, i.e. prior art which cannot reasonably be contested to have been generally known and which is cited without proof, is allowable by the jurisprudence. The COMVIK-approach may have been incorrectly applied, but this is a substantive issue, only involving judgement. Thus, the decision is reasoned in the sense of Rule 111(2) EPC." 
The decision leaves some unsatisfactory feelings... a wrong decision that is -as the Board indicates multiple times- clearly faulty reasoned in several aspects forces the applicant to appeal at the cost of an appeal fee as he would otherwise loose the application, and he will need to pay for the errors made by the first instance division. Some patent attorneys and other stakeholders further expressed their worries that the focus on speed in substantive examination, with only one written round as a main rule, as well as in opposition may lead to more erroneous decisions - which another round of discussion may have prevented. An appeal case like the one below may lead one to consider that also a reimbursement of the appeal fee due to clearly faulty reasoning by the first instance division would be fair, and  not only if there was a substantial procedural violation. 

Keywords:
Remittal - examination of novelty and inventive step (yes - technical features not assessed)
Substantial procedural violation - (no, features incorrectly assessed as non-technical, error of judgement)

Friday, September 21, 2018 T 525/13 - Generalizing from US provisional application

Cat on Microwave

This opposition appeal illustrates the limitations when claiming priority from a US provisional application. While a 'manual cook button' is considered to be implicitly, yet unambiguously and directly derivable from the US provisional application, the claimed microprocessor was considered to represent a different invention as the US provisional application only described a microcomputer.

(In this case, the Board also considers an alleged substantial procedural violations to be merely "a number of unfortunate events", which was communicated by the Board to the parties earlier:

"... it appears to the Board that the alleged substantial violations are rather to be seen as a number of unfortunate events. It is in particular unfortunate that the opposition division did not react sooner to the special request of the representative of the appellant. On the other hand the Board cannot read from the appellant's letter of 13 December 2012 that if the EPO would not be able to accommodate the representative of the appellant, she would not be able EPO Form 3350 6/7T0525/13-3.5.02 to attend the oral proceedings. It is also unfortunate that the respondent, even though there is no legal obligation to do so, did not forward a copy of its submission of 13 December 2012 directly to the appellant, knowing that the appellant would have to obtain a translation and that it would not be unlikely that the letter was not received by the appellant from the EPO before the Christmas holidays. Finally it is standard practice that examiners do not speak directly with a party in inter partes proceedings and all communication with the EPO goes via the formalities officer.")

Tuesday, August 28, 2018 T 0536/13 - A too hasty decision

An Applicant requested a so-called "decision according to the state of the file" after an unsuccessful telephone consultation with the first examiner in response to summons for oral proceedings in examination and subsequent written submissions. In its decision, the Examining Division argued that "The applicant filed no comments or amendments in reply to the latest communication ..." and refused the application.

The Board made short work of overturning the Examining Division's decision, manifesting that not taking into account the Applicant's written submissions in response to the summons, nor providing any reasoning in respect of the Applicant's amendments and comments - including those made in the telephone consultation - amounts to a substantial procedural violation. Accordingly, the decision was set aside, the case was remitted to the department of first instance for further prosecution and the appeal fee was reimbursed.

Wednesday, April 04, 2018 T 1423/13 - OP at the instance of the EPO

A (belated) Easter picture, with no relation to this case...

In this examination appeal, the Examining Division (ED) warned the Applicant now Appellant that "in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings in the Hague". However, the Applicant did not previously request oral proceedings, and the application was subsequently refused without holding oral proceedings as "the applicant did not request the oral proceedings at any point of the written procedure" and it is therefore "concluded that the applicant's right to be heard has been entirely respected (Art. 113(1) EPC)".

In appeal, the Board however concludes that the applicant had a legitimate expectation that oral proceedings were to be scheduled, and that the course of action of the ED amounted to a substantial procedural violation. As a reminder, Art. 116(1) expressly allows oral proceedings to be arranged "at the instance of the EPO" and thereby "without a request from a party", see GL E III-4.

Tuesday, October 24, 2017 T 1972/13 - Examination at an end?

With his response "R3" to summons for oral proceedings, the applicant filed amended claims of respectively a main and an auxiliary request, together with arguments. In addition, the applicant requested "cancellation of the oral proceedings and the continuation of the examination in writing, possibly supplemented by a telephone interview with the primary examiner, if the Examination Division deems it expedient". Subsidiarily it was requested "that the oral proceedings are conducted by video-conference, using IP technology; and that the date of the oral proceedings is changed". Shortly after, the applicant's representative contacted the primary examiner by telephone asking "whether the proceedings could be cancelled, and if not whether they could be postponed ... or held by visio [sic] conference". The examiner replied "that he would have a look at the case and at the internal instructions before giving an answer" (idem). With a communication a few weeks later, the applicant was informed that the oral proceedings were cancelled and that the procedure would be continued in writing. Subsequently, the decision to refuse the application was issued. In its reasons, it said "The examining division consented to the request of the applicant to cancel the oral proceedings and to continue the examination in writing, thereby issuing this decision." The applicant appealed.

Tuesday, July 11, 2017 T 2092/13 - Misleading communication

In the statement of grounds of appeal against a decision from the Examining Division, the appellant also alleged a series of procedural violations in the first-instance proceedings and requested the reimbursement of the appeal fee. In particular, the appellant submitted that no intention to refuse the application was announced in the official communication preceding the refusal of the application. This argument was further developed by the appellant during the oral proceedings held before the board. The Board agreed with the applicant: "It is a general principle governing relations between the EPO and applicants that communications addressed to applicants must be clear and unambiguous so as to rule out misunderstandings on the part of a reasonable addressee, and that an applicant must not suffer a disadvantage as a result of having relied on a misleading communication. Therefore the board considered that, in the specific circumstances of the case, the examining division's communication created a realistic and reasonable expectation that any subsequent negative finding of the examination division on the issue of novelty and/or inventive step would then be communicated to the appellant before any adverse decision on any of these issues would be taken by the examining division. The appellant could therefore not expect that by closely following the examining division's suggestion [in the preceding communication] in respect of the original claims 1 and 2 a decision refusing the application on the grounds of lack of inventive step of these claims could then be immediately issued." 

Friday, April 07, 2017 T 1750/14 - New applicant, new representative & upcoming oral proceedings

In the examination case under appeal, the then applicant's representative requested approximately 5 weeks before the scheduled oral proceedings the postponement of the oral proceedings and the postponement of the final date for making written submissions ("final date") on the grounds that he had been informed that the present application had been transferred from the then registered applicant to another applicant, and that he did not know whether he was to remain the representative. This request was refused by the examining division as it allegedly did not constitute a serious ground within the meaning of OJ EPO 1/2009, 68, point 2.3. The applicant appeals, and argues that his right to be heard was violated and that the decision was not sufficiently substantiated.

In considering the appeal, the board considers the request for the postponement of the date of oral proceedings to be distinct from the request for the postponement of the final date, and concludes that 
the examination division failed to sufficiently substantiate in its decision why the final date could not be postponed. The applicant's main request is thus held allowable.

There are interesting deliberations in this case. Does the situation indeed qualify as a serious ground as alleged by the appellant, even though it is not explicitly mentioned in  OJ EPO 1/2009, 68, point 2.3? Did the examination division have discretionary power in the first place to postpone the final date in view of Rule 116(1) EPC stipulating that Rule 132 shall not apply? And can the date of oral proceedings indeed be postponed independently from the final date or not?

Tuesday, March 28, 2017 T 737/11 - Decision according to the state of the file leaves it to speculate on the applicable reasons by mosaicking various objections and arguments

In examination proceedings, the applicant requested an appealable decision according to the state of the file. The Examining Division issued the decision with its grounds as follows: "In the communication(s) dated 22.07.2010, 25.10.2010 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein. The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 08.11.2010. The application must therefore be refused."  The decision does not mention the oral proceedings that were held. The communications referred to different requests.

The Board concludes that in the present case considerable uncertainty exists as to the precise reasons on which the contested decision was based. The written decision leaves it to the appellant and the Board to speculate on the applicable reasons by mosaicking various objections and arguments from two communications and possibly other elements of the file, such as the minutes of the oral proceedings - to which the written decision does not even refer. It is therefore not reasoned within the meaning of Rule 111(2) EPC. This amounts to a substantial procedural violation according to Rule 103(1)(a) EPC and to a fundamental deficiency according to Article 11 RPBA

Tuesday, November 01, 2016 T 1824/15 - Delayed

The appellant has argued that two different delays in the first instance proceedings each amounted to a substantial procedural violation, Rule 103(1)(a) EPC, namely the delay of over eleven years in raising an inventive step objection based on D3 and the delay of seven months in issuing the written decision and minutes after the oral proceedings. In view of these issues, the board took this case considerably out of turn, well before it would otherwise have been started. As set out below, the board finds that, in particular because neither delay was contrary to a provision of the EPC, no fundamental deficiency, Article 11 RPBA, or procedural violation, let alone a substantial procedural violation, Rule 103(1) EPC, occurred. This does not however mean that the board is indifferent to the consequences of unjustified procedural delays. (r.2.1). 
The board deviates from T 823/11, where the Board concluded "that the duration of the first-instance proceedings was excessive, the written reasoning given in the communications was inadequate, and the contested decision is insufficiently reasoned within the meaning of Rule 111(2) EPC. These deficiencies amount to substantial procedural violations."

Wednesday, August 03, 2016 T 1717/13 - How many tries should you get in OP?

How many tries should an opposition division allow a proprietor to rectify an added subject matter problem? After the opposition division had maintained its added subject matter objections during the oral proceedings, the proprietor filed three more auxiliary requests. The first two were admitted into the procedure but the third was not. The reasons given in the minutes are that the third request was late filed and did not resolve an earlier objection.

In appeal the proprietor alleged that procedural violations took place. In particular, he claims that:

(a) by not admitting further claim amendments to overcome newly raised objections by the opposition division during the oral proceedings; in this respect, the opposition division exercised its discretion to disregard amendments incorrectly;

(b) by causing the patent proprietor's representative to be taken by surprise during the oral proceedings by giving contradictory reasoning, which made it difficult to react to newly raised objections;

(c) by not giving sufficient time to take into account the newly raised objections during the oral proceedings and to consider a new version of a main claim in order to be able to appropriately react to the newly raised objections.

The board gives the opposition division a wide berth to make its own decisions with respect to admitting auxiliary request or not. Some doubts are expressed about the divisions refusal to allow all  further auxiliary requests, but in the end no substantial procedure is found. 

At the end of the cited part of this decision there is also an interesting analysis of intermediate generalizations.

Friday, July 01, 2016 T 2365/11: arguments to save your patent that fail without proof

In this opposition appeal the patent proprietor tried some interesting procedure related arguments to save his patent. 
A first line of arguments was based on the fact that in a specific letter another opponent was mentioned than the person who filed the opposition. According to the proprietor: "Since the 'true' opponent was therefore not known, and in any case the original opponent had no legal capacity, this constituted a circumvention of law by abuse of due process according to G3/97, rendering the opposition inadmissible." A second line of arguments was that replacing the chairman of the Opposition Division one day before the oral proceedings resulted in a procedural violation. 
The proprietor was not very successful with these arguments. It seems that the problem was that the proprietor could not prove what he argued - at least he did not provide enough evidence and arguments to show that there was a real circumvention of law and that the new chairman was not well-prepared for the oral proceedings.

Tuesday, June 14, 2016 R 04/14 - Late filed request vs. right to be heard

This petition for review relates to whether or not non-admissibility of a late filed request can be in conflict with the right to be heard under Art. 113(1) EPC, either because of a surprising development of the case, or because of “prima facie” assessment of the allowability of the request.

In the underlying appeal proceedings, the petitioner’s (=proprietor’s) only pending request was not allowed due to lack of clarity. The petitioner was surprised that the discussion of clarity of this particular feature was resumed in the second oral proceedings. The Board had indicated in its summons to the second oral proceedings, that clarity of other features were to be discussed and that it should not be necessary to repeat the argument presented in the first oral proceedings (where this feature had been discussed but not decided on). However, respondent III had indicated in its response, that it still considered it relevant to discuss the clarity of the feature in question.

At the beginning of the second oral proceedings, the petitioner only had one request on file. This request is found unallowable due to lack to clarity. The petitioner filed a new main request during the oral proceedings, which request was not admitted into the proceedings.

The questions here addressed by the Enlarged Board of Appeal are therefore:

1. Can the Petitioner objectively be considered to have been surprised by the Board’s decision in the second oral proceedings?, and

2. Can a “prima facie” assessment of the allowability of a request constitute a violation of the right to be heard?

Tuesday, May 03, 2016 T 2086/13: Decision set aside and still partly binding?

In this opposition appeal there was a discussion about a (further) procedural violation of the Opposition Division. Another part of the decision relates to "not described in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art" - please read the whole decision if you interested in that part . 
In this case there was an earlier appeal (T 306/09) in which a first decision of the Opposition Divisional was set aside. The first decision contained a substantial procedural violation in the inventive step reasoning. The Board of the earlier appeal remitted the case back to the Opposition Division. Subsequently, the Opposition Division admitted a fresh ground of opposition in the proceedings. 
After the second decision of the Opposition Division, the appeal of this case was filed. The admission of the fresh ground is, according to the appellant, a new procedural violation. According to the appellant, the Opposition could only decide on the subject of inventive step, because (only) that part of the previous decision contained a procedural violation - all other parts of the decision "will stand unless specifically overturned by a higher court."
The original Board wrote "... the decision under appeal is set aside ...". What does that imply for the alleged new procedural violation?

Friday, April 22, 2016 J 12/15 Further processing with brief response to an office action

This case deals with an appeal after the Examining Division refused a request for further processing.

In a second communication, the Examining Division had in a very brief reasoning objected against the claims "While the larger part of the claims are considered now in unity ... it is not understandable how the present claim 12 could result in unity with all the preceding claims". 

The representatve did not respond in time and thus had to request further processing. In an also very brief response to the communication,  the following substantive remarks were made "...the Applicant respectfully disagrees, especially with regard to claim 12. It is believed that the invention as currently claimed is both novel and involves and (sic) inventive step in accordance with Articles 54 and 56 EPC, and the claims should be allowable. Reconsideration of the application is requested, and Oral Proceedings are requested in the event the Examiner is minded to refuse the application".

The Examining Division rejected the request for further processing and gave the following reasons for its decision "Under current EPO practice, as decided in the 50th PPC Meeting of 24-25 September 2009, a reply to a communication from the Examining Division without any substantive observations or amendments, does NOT constitute a reply to a communication under Article 94(3) EPC. The omitted act was not filed within the time limit set in Article 121 EPC. The request for further processing is therefore rejected".

An issue to be settled by the Board of Appeal was whether the request for oral proceedings was phrased in such a way that the Examining Division should have granted it. 

On a personal note from the blogger: to me the approach and argumentation of the Examining Division is highly surprising. A PPC meeting cannot be seen as any legal basis, let alone for a step with serious consequences. Had this response of the applicant been filed in time, no doubt the Examining Division would have gone for  a refusal/oral proceedings, thus accepting that a response was filed and that the applicant had now been heard. It seems unlikely that the Examining Division would have send out a R.112 'deemed withdrawal', which is the proper response of the EPO if no response is timely filed by the Applicant.  In a proper working legal system it cannot be left to the mood of the Examining Division to decide on how to deal with a response. Unfortunately, the Board did not get to the point to comment on this matter.
Catchwords:

An adverse decision issued without granting the aggrieved party's request for oral proceedings must be declared void ab initio and without legal effect. Silence on the part of the appellant cannot be interpreted as withdrawal of the request for oral proceedings - see points 7 and 8 of the Reasons.