T 0162/82 (Classifying areas) vom 20.06.1987

The Guidelines for Examination are stated to be only general instructions intended to cover normal occurrences. Accordingly, an Examining Division has discretion to depart from them provided that it acts in accordance with the EPC. In reviewing the decision of the Examining Division, a Board of Appeal will judge whether the Division has acted in conformity with the EPC and not whether it has acted in accordance with the Guidelines.

2. There is no reason to refer to the Enlarged Board of Appeal a question of law concerning the extent to which the Examining Division and Board of Appeal should have regard to the Guidelines in interpreting the provisions of the EPC, in order to ensure uniform application of the law. This general question already appears to be clearly answered by the General Introduction to the Guidelines, paragraph 1.2 as far as the Examining Division is concerned and by Article 23(3) EPC as far as the Board of Appeal is concerned.

Any further questions in this respect can only relate to specific cases which cannot be examined isolated from the facts. They can, therefore, not be submitted to the Enlarged Board of Appeal (Article 112(2) EPC).

3. The expression "as often as necessary" in Article 96(2) EPC indicates that the Examining Division has a discretion which has to be exercised objectively in the light of the circumstances of each case. This relieves the Examining Division of any obligation which on a reasonable objective basis could be considered superfluous. The interests of orderly and economic examining procedures may preclude the sending of more than one communication where this would not appear to be likely to lead to a positive result (following T 161/82, OJ EPO 1984, 551).

4. Rule 29(1) EPC requires the two-part form of a claim wherever appropriate. It has already been decided (T 13/84, OJ 8/1986, 253-260) that a claim in two-part form is appropriate if there exists a clearly defined state of the art from which the claimed subject- matter distinguishes itself by further technical features. The extent to which prior art is cited in the description is a matter governed by Rule 27 EPC and this cannot be a determinative factor in deciding the question whether the one-part or the two-part form of a claim is appropriate in a given case.