Key points
- The Board essentially finds the refusal decision to be an unallowable surprise decision.
- The ED cited D6, fig. 3-8 as anticipating claim 1 in a Communication under Art. 94(3). In the summons to the oral proceedings, again Fig. 3-8 of D6 were cited. Oral proceedings were held in the absence of the applicant who had announced that they would not attend.
- In the refusal decision, Fig. 1 and 2 of D6 were cited as anticipating claim 1 of the main request. These figures are described as "conventional art" in D6.
- The Board: "As the appellant had decided not to be present at the oral proceedings, it had relied solely on its written arguments. In such a case, the appellant's right to be heard is not violated if the examining division raises new foreseeable objections against new subject-matter submitted before the oral proceedings, including citing different passages of a document for newly-introduced features. However, in the present case the board cannot recognise such a reason for changing the closest prior art to the disclosure of Figure 1 of document D6. The main request considered in the decision under appeal did not differ significantly from the previous sole request on file (only the expression [feature omitted] had been added at the end of claim 1), and in its reasoning the examining division did not justify why it had relied on a different part of document D6."
- " the board concludes that neither the annex to the summons nor any of the previous communications of the examining division contained the essential legal and factual reasons leading to the finding in the appealed decision that claim 1 of the main request lacked novelty over the prior art cited for the first time to refuse the application."
- As a comment, although the Board seems to have a point, I find it confusing that the Board refers to "changing the closest prior art to the disclosure of Figure 1 of document D6" even though the rejection of the main request was for lack of novelty.
- The Board: "Moreover, it is not possible to establish from the decision under appeal whether or why the amendments made in advance of the oral proceedings held in absentia justified the change to a new closest prior art. The decision was therefore issued in violation of Article 113(1) EPC."
- The basic thrust seems correct, but again it is unfortunate to refer to "new closest prior art" when talking about novelty. On the other hand, I'm not sure if there is established terminology for the "equivalent" of "the closest prior art" under novelty.
- As a further comment, provided that amendments made just before the oral proceedings were the normal kind of narrowing claim amendments, the Examining Division could have cited figures 1 and 2 as novelty-destroying in addition to the alleged novelty destroying figures 3-8. In other words, for novelty, it's not so much a matter of "changing the closest prior art", but adding new novelty objections (based on Figures 1 and 2) possibly in combination with abandoning earlier novelty objections (based on Figures 3-8).
- G 4/92 does not apply to ex parte cases. The EPO's current practice regarding applicants staying away from oral proceedings before the Examining Division is described in OJ 2020 A124. Whether the present decision puts a gloss on that Notice, can be left as an exercise for the reader. I also note that the present decision does not cite Rule 115(2) EPC.
EPO Headnote
Since neither the annex to the summons nor any of the previous communications of the examining division contained the essential legal and factual reasons leading to the finding in the appealed decision that claim 1 of the main request lacked novelty over the prior-art device considered for the first time in the novelty assessment of the refusal, and since no reason was given why the amendments made in advance of the oral proceedings held in absentia justified the change to this new closest prior art, the decision was issued in violation of the right to be heard even though the prior-art device on which the refusal was based was disclosed in the same document as a closest prior art considered previously in the examination procedure.
source http://justpatentlaw.blogspot.com/2022/04/t-156418-oral-proceedings-ex-div-in.html
