Zusammenfassung von Art 13(2) RPBA 2020 für die Entscheidung T1361/19 vom 11.01.2023

In T 1361/19 the board had to decide on the admittance of the new main request filed during the oral proceedings before the board. The new main request was limited to "a method of manufacturing a semiconductor device", the device claims having been deleted. The board noted that the question of whether the deletion of part of the claims in a pending request constituted an "amendment to a party's appeal case" within the meaning of Art. 13 RPBA 2020 was controversially discussed among the boards and answered differently (see e.g. T 2920/18 or T 1569/17). The board was of the opinion that, in the case in hand, the limitation was not an amendment to the party's appeal case, as the factual situation with respect to the remaining part, namely the claims related to a "method of manufacturing", did not change at all compared to all submissions related to the manufacturing method prior to this amendment. The claimed "method of manufacturing" was part of the discussion before the examining division and the examining division had dealt with identical claims in its decision. Moreover, the discussion on inventive step of the claims of the previous main request (filed with the statement setting out the grounds of appeal and identical to the first auxiliary request of the impugned decision), which contained the claims directed to the "method of manufacturing" in unchanged form, was dealt with in the statement setting out the grounds of appeal. Therefore, the subject-matter of the present main request was already part of the examining division's decision and was entirely addressed by the appellant in its statement setting out the grounds of appeal. Consequently, the deletion of the device claims resulted neither in a changed factual situation for the "method of manufacturing" nor in a different weighting of the remaining subject-matter due to the deletion of the device claims. The board further observed that the fact that the manufacturing method was considered differently in the new main request was not a consequence of the deletion of the device claims, but merely due to a different consideration of the manufacturing method itself after discussion during the oral proceedings before the board. In view of this, the new main request submitted at the oral proceedings before the board was not considered to be an amendment to the party's appeal case, as all of the appellant's arguments and submissions on this remaining part ("the method of manufacturing") remained unchanged. The board concluded that it had no discretion not to admit this new main request into the proceedings under Art. 13(2) RPBA 2020. Hence, the main request was admitted into the proceedings.