Zusammenfassung von EPC2000 Art 125 für die Entscheidung T2907/19 vom 14.03.2023

T 2907/19 was an appeal against the decision of the examining division to refuse the European patent application. The invention concerned a method of manufacturing a semiconductor device on a silicon carbide substate. The application was a divisional application of a parent European application for which a European patent (the parent patent) was granted. The fifth auxiliary request was filed after notification of the summons to attend oral proceedings. It was admitted into the appeal proceedings as, in the board's opinion, it overcame all objections raised by the board in its communication under Art. 15(1) RPBA 2020 and those raised by the examining division in the impugned decision. The board concluded that the fifth auxiliary request did not contain unallowable added matter and that it met the requirements of clarity and inventive step. The board then considered whether the prohibition of double patenting was pertinent. It recalled that according to the headnotes of G 4/19, a European patent application could be refused under Art. 97(2) and 125 EPC if it claimed the same subject-matter as a European patent which had been granted to the same applicant and did not form part of the state of the art pursuant to Art. 54(2) and (3) EPC. The application could be refused on that legal basis, irrespective of whether it a) was filed on the same date as, or b) was an earlier application or a divisional application (Art. 76(1) EPC) in respect of, or c) claimed the same priority (Art. 88 EPC) as the European patent application leading to the European patent already granted. The board pointed out that the definition of the "same subject-matter" was not the subject of the referral and of decision G 4/19. In the board's opinion, claim 1 according to the fifth auxiliary request differed from claim 1 of the parent patent by the step of separating the epitaxial layer from the carrier substrate. Hence, independent claim 1 of the fifth auxiliary request was different from independent claim 1 of the granted parent application and thus did not define the same subject-matter. The prohibition of double patenting was therefore not pertinent to the claims of the fifth auxiliary request. This was not precluded by the fact that claim 1 of the fifth auxiliary request corresponded to dependent claim 2 of the granted parent application. The case was remitted to the examining division with the order to grant a patent based on the application in the version according to the appellant's fifth auxiliary request.