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T 1167/04 (Parts ordering system/CANON) of 18.11.2005

European Case Law Identifier: ECLI:EP:BA:2005:T116704.20051118
Date of decision: 18 November 2005
Case number: T 1167/04
Application number: 98114005.6
IPC class: G06F 17/60
Language of proceedings: EN
Distribution: C
Download and more information:
Decision text in EN (PDF, 57.737K)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished
Title of application: Parts ordering system, parts management system and apparatus for managing ordering and receipt of orders
Opponent name: -
Board: 3.5.01
Headnote: -
Relevant legal provisions:
European Patent Convention 1973 Art 111(1)
European Patent Convention 1973 Art 123(2)
Keywords: Extension beyond content as filed -after amendment (no)
Decision re appeals - remittal (yes)


Cited decisions:
Citing decisions:

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse European patent application No. 98 114 005.6.

II. According to the decision appealed, claim 1 had been amended in a number of ways which extended the subject-matter beyond the content of the application as originally filed, contrary to Article 123(2) EPC.

III. Together with the statement of grounds of appeal, dated 23 September 2004, the appellant filed a new set of claims. Claim 1 had been amended with a view to overcoming the objections having led to the refusal and moreover contained two newly added features. The appellant requested grant of a patent based on the amended set of claims.

IV. By communication dated 13 July 2005, the Board informed the appellant that it did not intend to examine the application with respect to all requirements of the EPC but only within the framework of the decision appealed. In this context, the Board noted that one of the features which the examining division had objected to under Article 123(2) EPC was still present in claim 1, and that this feature indeed appeared not to have been disclosed in the application as initially filed.

V. By letter of 28 October 2005 the appellant filed an amended set of claims.

Claim 1 read:

"1. A parts ordering system including a plurality of domains constituted by a first domain (101), a second domain (102; 4102), a third domain (103) to a Nth domain connected to a network, each domain being capable of a processing for parts ordering using a computer, said second domain (102; 4102) comprising:

receiving means (4105-1) for receiving a production information of a product generated by the first domain;

machining plan means (4105-2) for devising a machining plan based on the production information received by said receiving means (4105-1);

expanding means (4105-3) for expanding the received production information into component parts information based on the machining plan devised by said machining plan means (4105-2);

order planning means (4105-4) for referring to inventory data stored in a database based on the component parts information expanded by said expanding means (4105-3) and a pre-determined minimum order number of each component part to be required to produce the product stored in the database, and generating parts order information based on the minimum order number of each component part, the inventory data and the production information; and

communication means (4105-5) for transmitting the

parts order information generated by said order planning means (4105-4) to at least one domain in the third domain to the Nth domain;

display means (1806) for displaying data which are numbers of processed transmitted parts order

information/received production information corresponding to icons (1901, 1909); and

display control means (1809) for displaying of the icons for identifying receipt of production information or transmission of parts order information represented by the icons, and displaying a combination of a plurality of items of 'expected' (1902), 'orders determined' (1903, 1910), 'delayed' (1904, 1911), 'divided orders' (1905, 1912), 'inspection in progress' (1907, 1914) and 'acceptance' (1908, 1915) and a number of cases corresponding to each of the items."

Independent claim 6 was directed to a parts ordering method.

VI. The appellant requested that a patent be granted on the basis of the attached claims. Oral proceedings were requested in case the Board should still consider conduction of such oral proceedings to be necessary.

Reasons for the Decision

1. Added subject-matter

1.1 The examining division refused the present patent application on the sole ground that claim 1 in the version before it contained subject-matter which extended beyond the content of the application as filed (Article 123(2) EPC).

1.2 The following three extensions in claim 1 were identified in the decision (paragraphs 1.3 to 1.5):

(a) the omission of "machining means";

(b) the introduction of the word "data";

(c) the introduction of a "production processing status".

1.3 In the present version of claim 1 the feature "machining plan means" has been included, and the expressions "data" and "production processing status" have been deleted. Corresponding amendments were made to independent claim 6. It follows that the objections which led to the refusal of the application do not apply to the present claims.

2. Remittal

Since the reasons for the refusal no longer apply, the decision under appeal is set aside. The appellant has requested that a patent be granted. The Board however in accordance with Article 111(1) EPC prefers to remit the case for further prosecution since the examining division has not yet had an opportunity to consider the claims in their present form.

Since the case is remitted to the department of first instance for further prosecution, the applicant's auxiliary request for oral proceedings before the Board need not be considered.


For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of the first instance for further prosecution.

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