T 2227/14 (Polynucleotide arrays/ILLUMINA) 31-01-2018

Article 113(1) EPC

1. At the oral proceedings before the board, the parties discussed the admissibility of the main request (filed as auxiliary request 3 in reply to the board's communication) and of a new objection raised by the appellant under Rule 80 EPC against the main request. For all other issues, the parties referred to, and relied on, their written submissions, without making any further comments.

2. None of the parties provided any substantive comments or arguments in reply to the board's communication pursuant to Article 15(1) RPBA (cf. point VIII supra). Thus, the parties have not availed themselves of the opportunity to address or comment, and there are no arguments on file, on some of the issues raised by the board in its communication, in particular concerning the admission into the appeal proceedings of the objections raised by the appellant under Articles 123(2), 76(1) and 100(b) EPC. For those issues, the present decision is therefore based on the same grounds, arguments and evidence on which the provisional opinion of the board was based.

Main request

Admission into the appeal proceedings

3. The main request was filed as auxiliary request 3 in reply to the board's communication (cf. point VIII supra). It is identical to auxiliary request 2 filed by the respondent in reply to the statement of grounds of appeal (cf. point V supra), except for the deletion of claim 14. This claim was objected under Rule 80 EPC in the board's communication. Thus, the deletion of claim 14 is a direct reply to said communication, it does not raise any new issue and only simplifies the appeal proceedings.

4. The main request is also identical to the request upheld by the opposition division, except for the introduction of an amendment in claim 1 and the above mentioned deletion of claim 14. The amendment introduced in claim 1 reverts the term "fluorescently labelled nucleosides", as in the request upheld by the opposition division, to "fluorescently labelled nucleotides" as in granted claim 1 (cf. point X supra), and directly addresses the objections raised by the appellant under Articles 123(2),(3) and 76(1) EPC in its statement of grounds of appeal. It is a direct, straightforward amendment that could not surprise the appellant.

5. None of these objections had been raised in the proceedings at first instance and none of them had thus been considered by the opposition division. In fact, even though the replacement of the term "nucleotides" by the term "nucleosides" was already introduced into the auxiliary requests 1 to 6 filed by the patent proprietor before the oral proceedings at first instance and further maintained in the auxiliary requests filed during these oral proceedings, there is no reference to any objection being raised against this replacement either in the minutes of these oral proceedings or in the decision under appeal. These objections were raised in the statement of grounds of appeal for the first time in the whole procedure. In view thereof, the board agrees with the respondent that the first opportunity to address these objections was in the reply to the statement of grounds of appeal and that this was done by filing auxiliary request 2.

6. The board, in the exercise of its discretion according to Article 114(2) EPC, governed by the principles laid down in Articles 13(1) and (3) RPBA, decides to admit the main request into the appeal proceedings.

Admission of the objection raised under Rule 80 EPC

7. The objection under Rule 80 EPC against claim 11 was raised at oral proceedings before the board and thus, at the latest possible stage of the appeal proceedings. Claim 11 had not been objected to under Rule 80 EPC in the statement of grounds of appeal nor in the reply to the board's communication. The objection is late filed, represents an amendment of appellant's case in the sense of Article 13(1) RPBA, and may be admitted and considered at the board's discretion.

8. The objection relates to the deletion of the feature "wherein the relatively short molecules are in excess" in claim 11 (cf. points I and III supra). This feature was replaced by a specific density range ("wherein the relatively short molecules are at a density of greater than 10**(12) molecules/cm**(2)") in auxiliary requests 1 to 6 filed before the oral proceedings at first instance and in all requests filed during those proceedings. The objection does thus not arise from an amendment to any of the claim requests filed in appeal. The objection could, and should, therefore have been raised at the first instance proceedings.

9. Thus, the board, in the exercise of its discretion according to Article 114(2) EPC, governed by the principles laid down in Articles 13(1) RPBA, decides not to admit the objection raised under Rule 80 EPC into the appeal proceedings.

Article 123(3) EPC

10. No objection has been raised under this article nor does the board raise any on its own motion.

Admission of objections under Articles 123(2) and 76(1) EPC

11. In the communication pursuant to Article 15(1) RPBA, the board noted that appellant's arguments relating to these articles in the statement of grounds of appeal repeated verbatim those given in the Notice of opposition and that, in the statement of grounds of appeal, there was no reference to the reasons given by the opposition division in the decision under appeal nor any argument why these reasons were wrong. In view thereof, the parties' attention was drawn to the case law concerning the substantiation of grounds of appeal, namely "Case Law of the Boards of Appeal of the EPO", 8th edition 2016, IV.E.3.2.1.h) and IV.E.3.2.1.i), 1122; and related IV.E.2.6.3.b), 1098; IV.E.2.6.4.a), 1102; and IV.E.2.6.6, 1107, on admissibility of the appeal. The parties were informed of the board's provisional, non-binding opinion that the grounds of appeal on Articles 123(2) and 76(1) EPC were not substantiated and that the board was minded not to admit them.

12. In its communication, the board further indicated that, if a discussion of these objections arose at the oral proceedings, the first issue to be discussed would be their admissibility into the appeal. At the oral proceedings before the board, all parties referred to their written submissions and did not provide any argument or reason that could have led the board to deviate from its provisional, non-binding opinion on this issue. Thus, the grounds of appeal under Articles 123(2) and 76(1) EPC are considered not to be substantiated and therefore, not admitted into the appeal proceedings.

Admission of objections raised under Article 100(b) EPC

13. It is not contested that the ground of opposition based on Article 100(b) EPC was not substantiated in the original Notice of opposition and that it was substantiated only in reply to the patent proprietor's response to the Notice of opposition (cf. page 3, point 2 of the decision under appeal).

14. In the "Summons to attend oral proceedings", the opposition division did not address the opponent's arguments on Article 83 EPC but stated only that the opponent had failed to provide "facts which would prima facie cause the methods of the invention not to be reproducible without undue burden for the skilled person" and that document (1), considered by the opponent to anticipate the claimed subject-matter, had "a similar level of disclosure with respect to the sequencing techniques" (cf. page 3, point 2.3 of the "Summons to attend oral proceedings"). Therefore, the opposition division considered the late substantiation of the objections raised under Article 100(b) EPC to represent a fresh ground of opposition. With reference to decision G 10/91 (OJ EPO 1993, 420), it stated that this ground of opposition could only be introduced into the opposition proceedings with the consent of the patent proprietor (cf. page 3, point 2.3.2 of the "Summons to attend oral proceedings").

15. The board observes that the opponent did not address the opposition division's comments in its letter filed in preparation of the oral proceedings at first instance. Moreover, according to the "Minutes of the oral proceedings before the opposition division", the opponent "did not provide any further arguments" as regards the admissibility of the fresh ground of opposition but "relied on his opposition writ with respect to lack of basis" (cf. page 1, points 2.1 and 2.2 of the Minutes).

16. The opposition division decided not to admit Article 100(b) EPC as a ground of opposition (cf. page 3, point 2 of the decision under appeal), and took no decision as to the substance of the objections raised under this article, in particular not on the issue concerning the "single molecule sequencing" (cf. point XII supra).

17. In view of this course of action and the fact that there is no decision of the opposition division on the objections raised under Article 100(b) EPC, the board informed the parties in its communication that, in its provisional opinion, the admission of this ground of opposition into the appeal proceedings would not be in line with the function of an appeal as defined in the case law, namely to give a judicial decision upon the correctness of a separate earlier decision taken by a department of first instance (cf. "Case Law", supra, IV.E.1, 1065, and IV.E.4, 1127), and that Article 100(b) EPC was thus not part of the appeal proceedings (cf. point 31 of the board's communication).

18. At the oral proceedings before the board, all parties referred to their written submissions and did not put forward any further arguments or reasons that could have led the board to deviate from its provisional, non-binding opinion as expressed in its communication. Therefore, objections on the ground of Article 100(b) EPC are not admitted into the appeal proceedings.

Article 84 EPC

19. Claims 1 and 11 of the main request differ from granted claims 1 and 11 by the introduction of the feature "greater than 10**(12) molecules/cm**(2)" defining the (higher) density of the "relatively short molecules", and the deletion of the feature "wherein the relatively short molecules are in excess" of granted claim 11. The feature introduced into claims 1 and 11 is not found in any of the granted claims and thus, the objection raised under Article 84 EPC is in line with the criteria set out in decision G 3/14 (OJ EPO 2015, A102) for allowing the examination of Article 84 EPC in appeal proceedings, namely "when, and then only to the extent that, the amendment introduces non-compliance with Article 84 EPC" (cf. Order of this decision).

20. The Boards of Appeal have developed a large body of case law on the requirement set out in Article 84 EPC that the claims must be supported by the description (cf. "Case Law", supra, II.A.5, 284). In this case law, the boards have considered whether a purely formal support by the description, i.e. a verbatim repetition of a claimed feature, suffices to meet this requirement or whether the claims must reflect the actual contribution to the art in such a way that the skilled person is able to perform the invention across the entire range claimed (cf. inter alia, T 1020/03, OJ EPO 2007, 204, point 10 of the Reasons). These two approaches correspond to the so-called formal aspect and substantial aspect of Article 84 EPC, the latter requiring that the objection must be substantiated and not based on mere suppositions (cf. inter alia, T 297/05 of 2 February 2006, points 8 and 10 of the Reasons). The Boards of Appeal have also acknowledged that the requirements of the substantial aspect of Article 84 EPC are related to those of Article 83 EPC (cf. "Case Law", supra, II.C.7, 356).

21. It is not disputed that the formal aspect of Article 84 EPC is fulfilled. Indeed, the feature introduced into claims 1 and 11 is found verbatim in paragraph [0021] of the patent application. Appellant's objection under Article 84 EPC is directed only and exclusively to the substantive aspect of this article which, as stated above, is closely related to Article 83 EPC. In this context, the board considers the following points to be highly relevant:

21.1 Claim 1 as granted required the "relatively short molecules" to have a "higher density" than the single polynucleotides in the array which had to be present at a density of "from 10**(6) to 10**(9) single polynucleotides per cm**(2)". Likewise, granted claim 11 required the "relatively short molecules" to be "in excess" of the "relatively long polynucleotides" which were "at a density of 10**(6) to 10**(9) individually resolvable polynucleotides per cm**(2)".

21.2 The array's support, the short molecules and the functional groups used for binding these short molecules to the solid support, were defined neither in granted claim 1 nor in granted claim 11.

All this information is provided by the patent application which explicitly refers to suitable solid supports (cf. paragraph [0031]), small or short molecules (cf. paragraphs [0038] to [0047]), functional groups (cf. paragraph [0041]), etc. Moreover, it is important to note that the terms "higher" and "in excess" in granted claim 1 and claim 11, respectively, require densities of the "relatively short molecules" higher than "10**(9) molecules per cm**(2)". Indeed, according to the description of the patent application, this density is defined as being "from 10**(8) to 10**(14) molecules/cm**(2)" and "more preferably greater than 10**(12) molecules/cm**(2)" (cf. paragraph [0021] of the patent application). This latter density is in fact the feature introduced into claims 1 and 11 of the auxiliary request 2 filed in reply to the statement of grounds of appeal. Examples 1, 2 and 3 of the patent application exemplify the claimed subject-matter with glass slides as solid support, mixed silanes as short molecules and several DNA sequences as single or long polynucleotides.

21.3 In view of these considerations, the feature introduced into claims 1 and 11 of the main request is considered to merely limit or narrow the scope of the granted claims. In the board's view, it is clearly defined and "the steps that need to be taken to achieve that result" (i.e. this feature) do not differ from those that had to be already taken for the methods of the claims as granted (cf. T 818/03 of 6 July 2005, point 2.5 of the Reasons). In the board's view, this objection under Article 84 EPC is an attempt to introduce a new argument for a ground of opposition that had not been admitted into the opposition procedure, namely Article 83 EPC.

22. In view of these considerations, the board sees no reason to deviate from the findings of the opposition division and considers the main request to fulfil the requirements of Article 84 EPC.

Article 54 EPC

23. Document (1), originating from the inventors of the patent, discloses the advantages of "spatially addressable arrays of single polynucleotide molecules" over the high density arrays of the prior art (cf. inter alia, paragraph bridging pages 2 and 3; page 2, second paragraph; pages 4 and 6). The extent of separation between the individual molecules is stated to be determined "in part, by the particular technique used to resolve the individual molecule" (cf. page 6, lines 16 and 17). Preferred distances when using a (wide-field) sensitive 2-D image detector are explicitly disclosed (cf. page 6, lines 25 to 28) and the more preferred distance (1 molecule per 350 nm x 350 nm) falls, according to appellant's calculation (10**(7) molecules/cm**(2)), within the density range indicated in claims 1 and 11. For other techniques which are capable of smaller optical resolution, such as scanning near-field optical microscopy, more dense arrays are permitted and the distance may be "less than [one molecule per] 10 nm x 10 nm" (cf. page 6, last paragraph) which, according to appellant's calculation, equates to less than 10**(12) molecules/cm**(2).

24. In the board's view, these bits of technical information cannot be directly combined because they are based on different techniques used to resolve or interrogate the single individual molecules (relatively long polynucleotides). Whilst the density of single molecules in the more dense arrays used with near-field techniques may be outside the range indicated in the claims of the main request, this is not the case for the arrays used with wide-field techniques. However, there is no explicit reference in the description of document (1) to the specific relationship between the density of the relatively long polynucleotides and the relatively short molecules in the disclosed "spatially addressable array", nor to the possible advantages associated with such a relationship.

25. Example 2 of document (1) refers to the treatment of a support material (glass slides) with the same silane product (relatively short molecule) as used in Example 3 of the patent before immobilization of the (relatively long) polynucleotides (cf. page 16, line 1 to 13). According to the appellant, the same or a higher density of small molecules is achieved and the product is thus identical to the claimed product; this is however contested by the respondent (cf. points XII and XIII supra). In the communication pursuant to Article 15(1) RPBA, the board noted that although the same silane product was used in the Examples of the patent and in Example 2 of document (1), the solvent used for applying it to the support was different (water in document (1) and acidified 95% EtOH in the patent), and that no information was on file to show whether this affected the immobilisation of the compound. None of the parties replied in substance to the board's comment, neither in writing nor at the oral proceedings before the board, but relied on their written submissions (supra).

26. In view of the actual information provided in Example 2 of document (1), it cannot be unambiguously asserted that the array obtained in that example is an array of polynucleotides having a density of relatively short molecules falling within the range given in claims 1 and 11 of the main request. In the board's view, there is no unambiguous disclosure in document (1) of a density of relatively small molecules that falls within the range given in claims 1 and 11 of the main request, nor is the attention of a skilled person clearly drawn to the relationship between the densities of both the "relatively small molecules" and the "single or relatively long polynucleotides", let alone to its relevance.

27. Thus, the main request fulfils the requirements of Article 54 EPC.

Article 56 EPC

28. Document (1), the closest state of the art, discloses arrays of single (polynucleotide) molecules having a surface density that allows each (polynucleotide) molecule to be individually resolved and interrogated, such as by optical means (cf. page 2, line 22 to page 3, line 5; page 5, lines 8 to 31). Polynucleotide arrays may include the attachment of other molecules to a solid surface, these molecules having an attached polynucleotide that can be interrogated (cf. page 6, lines 9 to 13). As examples of other molecules, document (1) refers to protein molecules (streptavidin, avidin), a primer polynucleotide and a (silane) epoxide (cf. page 6, lines 13 to 15; page 8, lines 1 to 28; page 16, lines 1 to 6 of Example 2). The extent of separation between individual (polynucleotide) molecules on the array is determined by the technique used to resolve the individual molecule, and examples are given for wide and near-field optical techniques (supra). Document (1) refers to known techniques for ensuring adequate separation of the individual molecules, such as "dispensing small volumes of a sample containing a mixture of molecules onto a suitably prepared solid surface" or "applying a dilute solution to the solid surface to generate a random array", so as to obtain "a mixture of different molecules [that] may be arrayed by simple means" (cf. page 7, lines 9 to 16). The immobilisation must result "in well separated single molecules" so as to advantageously prevent "interaction between neighbouring molecules on the array, which may hinder the interrogation of the array" (cf. page 7, lines 29 to 31). Example 2 of document (1) describes the production of an epoxide coated (glass slide) surface and the immobilisation of a relatively long polynucleotide (21 nucleotides) (cf. page 16, lines 1 to 9; see also point 25 supra). The disclosed polynucleotide arrays may be used for sequencing purposes (cf. page 3, lines 19 to 21 et seq.; claims 22 to 24).

29. Starting from document (1), the decision under appeal refers to the objective technical problem as formulated in the patent (cf. page 17, point 20.3.1.2), namely the provision of "flexible means to control the density of the single polynucleotides and optionally to prevent non-specific binding of reagents to the solid support" (cf. paragraph [0014] of the patent). Whilst appellant's formulation bears a close relationship with the first part of this problem but for providing only an "alternative" method (cf. point XII supra), respondent's formulation corresponds to the second part of said problem, namely "the prevention of reagent sticking" (cf. point XIII supra). In view of the disclosure of document (1), the board agrees with appellant's formulation of the technical problem as the provision of an alternative way to control the density of (single) polynucleotides. In the decision under appeal, the opposition division considered this problem to be solved (cf. page 16, points 20.3.1 and 20.3.1.1), and there is no evidence on file that could lead the board to a different conclusion. It is however disputed whether, in the light of document (1), in combination with document (2) or document (3), the solution proposed by the methods of claims 1 and 11 is obvious.

30. Document (2) discloses biochemical sensors based on coated supports having a very high surface density of monolayer groups covalently attached to a substrate and carrying at their distal ends functional reactive (thiol) groups that can be utilized to link (either permanently or reversibly) a biomolecule such as an oligonucleotide (cf. column 7, line 65 to column 8, line 41). The disclosed sensors may be used, inter alia, for amplification purposes (cf. column 11, lines 60 to 62). A preferred embodiment disclosed in document (2) comprises the use of two different alkylsilane groups bound to the surface, a first (long) alkylsilane group with a functional reactive (thiol) group (TTU alkylsilane; cf. column 9, lines 22 to 35) and a second "diluent" silane of alkyl group chain length shorter than the first alkylsilane and being inert at its distal end (cf. paragraph bridging columns 9 and 10). The purpose of the diluent silane is defined as "to further control the packing density of the thiol functionality on the surface, and to guard against excessive steric hindrance in the subsequent reactions with bio-molecules" (cf. column 9, lines 49 to 53). Example 5 and Figure 3 of document (2) describe this preferred embodiment and the TTU/diluent silane mixtures described therein are 30%/70% and 50%/50%, respectively (cf. column 17, line 57 to column 18, line 14). The ratios of these mixtures are far away from the ratio defined by the claims of the main request.

31. The teachings of document (2) concern "a process for preparing biochemical sensor element structures with very high surface density of bio-molecules chemically attached thereto" (cf. inter alia, column 8, lines 23 to 26). In the board's view, these structures are more related to the high density arrays of the prior art referred to in document (1) (cf. page 1, lines 11 to 19 et seq.; see paragraph [0003] of the patent) than to the "spatially addressable array single polynucleotide molecules" which allow "to resolve the individual polynucleotide" described in document (1) (see also page 17, point 20.4 of the decision under appeal). In any case, the combination of documents (1) and (2) would not lead a skilled person in an obvious manner to a method for the production of an array of polynucleotides having all the technical features required by claim 11 of the main request, even less so to the method of sequencing defined by claim 1.

32. Document (3) discloses supports having at the surface one compact layer of an organic compound having, outside the layer, an exposed group containing an ethylenic double bond (a vinyl group) having affinity for (i.e. being capable of anchoring) one type of molecule with biological activity, such as nucleic acids (cf. column 3, line 64 to column 4, line 34; column 7, lines 1 to 6). Silane derivatives are mentioned as preferred attachment groups for glass and silica supports (cf. column 5, lines 35 to 67 et seq.), and surfaces with multiple layers are also mentioned (cf. column 4, lines 46 to 49). The anchoring of DNA molecules at the surface, the production of elongated monolayer structures and their relevance for the signal/noise (S/N) ratio and for (reduced field) microscopic observation is also addressed (cf. column 10, lines 21 to 67; column 6, lines 57 to 67), as well as a reference to the attachment of a PCR product (cf. column 7, lines 65 to 67) and the "identification of one or more elements for sequencing of DNA or RNA" (cf. column 11, lines 33 to 40). Both a multilayer (silane derivatives-protein A that can react then with an antibody, such as an anti-DIG antibody) (cf. Figure 5, column 3, lines 50 to 55; column 13, line 62 to column 14, line 14) and a monolayer (silane derivatives-DNA) (cf. Figure 4, column 3, lines 43 to 49; column 14, lines 15 to 29) are exemplified. It is in this context that the sole reference to the density of the anchored DNA molecules is found in document (3). However, as stated by the opposition division (cf. page 18, point 20.5 of the decision under appeal), this density lies outside the range required by the claims of the main request and, as in document (2), there is no information at all in document (3) on the actual ratio between the long polynucleotides and the short molecules.

33. In view of these considerations, the board concludes that the skilled person trying to solve the above mentioned problem would not, unless with the benefit of hindsight, arrive at the claimed solution in an obvious way. Thus, the main request fulfils the requirements of Article 56 EPC.

Appellant's requests for apportionment of costs and refund of the appeal fee

34. A large body of case law has been developed by the Boards of Appeal on the apportionment of costs (cf. "Case Law", supra, IV.C.6, 981). In the board's view, however, this case law does not support the appellant's request, which is mainly based on the respondent's failure to indicate the replacement of the term "nucleotides" by the term "nucleosides" in all auxiliary requests filed in preparation of the oral proceedings before the opposition division (cf. point XII supra).

35. These requests were filed one month before the opposition division oral proceedings and thus, in the board's view, the opponent/appellant should have been aware of their contents when oral proceedings were held. It is not to be expected that an opponent/appellant considers and examines only those amendments indicated and/or highlighted by the patent proprietor/respondent. Rather, common practice is to expect him/her to carry out a complete examination of the full contents of all requests on file. The failure of a party to indicate or highlight an amendment does not relieve the other party from its responsibility to examine the full contents of these requests so as to present its case in a complete and clear manner.

36. As regards the reimbursement of the appeal fee, Rule 103(1)(a) states that the reimbursement of the appeal fee is allowable if it is "equitable by reason of a substantial procedural violation". The case law established by the Boards of Appeal defines several situations in which a substantial procedural violation occurs (cf. "Case Law", supra, IV.E.8.4, 1191), inter alia, in the drafting of the minutes of oral proceedings (cf. "Case Law", supra, IV.E.8.4.2.e),1194), in an error of judgement of the opposition division (cf. "Case Law", supra, IV.E.8.4.5, 1196), and in the auxiliary requests and the order of these requests (cf. "Case Law", supra, IV.E.8.4.6.e).(ii), 1201).

37. In the light of the evidence on file, the board considers that the oral proceedings before the opposition division could have been conducted in a more satisfactory and efficient manner, in particular, as regards a clear and unambiguous indication of the status and order of the requests on file; a conduct which is always highly recommendable. However, none of the specific situations and particular arguments put forward by the appellant in the present case qualifies as a substantial procedural violation as defined by the case law. In particular, appellant's request is mainly based on the fact that the patent proprietor/respondent did not highlight the amendment referred to in point 34 supra. Hence, the opposition division and the opponent/appellant overlooked it and, from this point on, the opposition division was allegedly no longer in control of the proceedings. In the appellant's view, a fair and orderly conduct of the proceedings was no longer possible, amounting to a clear procedural violation. The board, for the reasons given in point 35 supra, cannot follow the appellant's argument. Nor does the board share the appellant's view that the minutes of the oral proceedings before the opposition division are incomplete or wrong. In the board's view, the essential submissions are summarised and reflected in the minutes and, suffice to say here, there is no request on file for their correction.

38. Thus, the board considers that appellant's requests for the apportionment of costs and reimbursement of the appeal fee, is not justified.

Appellant's request for remittal to the first instance and respondent's request for apportionment of cost

39. At the oral proceedings before the board, the appellant initially requested that if one of the claim requests was considered to satisfy Article 123(3) EPC, then the case be remitted to the department of first instance for further prosecution (cf. page 2, second paragraph of the Minutes of the oral proceedings before the board).

40. According to Article 111(1) EPC, remittal to the department responsible for the decision under appeal is at the discretion of the board. The board may exercise any power within the competence of said department.

41. At the oral proceedings, after hearing the parties, the board decided to admit the main request. Next, the appellant confirmed that it had no objections against this request under Article 123(3) EPC. The board then, exercising its discretion under Article 111(1) EPC, asked the parties for their comments concerning all other objections raised. When asked whether it wished to add anything to the arguments submitted in writing in relation to objections under Articles 100(b), 84, 54 and 56 EPC, the appellant did not insist on a remittal of the case to the department of first instance but replied that it relied on its written submissions. The appellant did not repeat the request for a remittal of the case to the department of first instance, neither when asked for its final requests, nor when asked whether it had any further comments or remarks at the end of the proceedings (cf. page 4, fifth and seventh paragraphs of the Minutes of the oral proceedings before the board).

42. In view of the course of action at the oral proceedings, and since appellant's objections against the main request are based on the same arguments, grounds and Articles of the EPC that were dealt with in the decision under appeal, remittal to the division of first instance is not justified.

43. At the oral proceedings before the board, the respondent has requested an apportionment of costs in reply to the appellant's request for a remittal of the case to the department of first instance (cf. page 2, third paragraph of the Minutes of the oral proceedings before the board). The board understands this request as a precautionary measure in case that the board would have decided to remit the main request without carrying out an examination of the articles of the EPC other than Article 123(3) EPC. Since this is not case, and the remittal is only for adapting the description to the main request, the respondent's request for apportionment of costs is not justified.