T 0984/21 25-04-2023

1. The appeal is admissible.

2. Main request - Admittance - Article 12(6), second sentence, RPBA 2020

2.1 The present main request was filed with the statement of grounds of appeal, and the claims of this request have no counterpart in the claims of the requests considered during the first-instance proceedings and they differ, in particular, from the claims of the requests underlying the decision under appeal. More particularly, claim 1 of the main request differs from claim 1 of the main request underlying the decision under appeal in that the expressions "a conduit temperature sensor" and "a balance temperature sensor" have respectively been replaced by "a single conduit temperature sensor" and "a single balance temperature sensor".

2.2 According to Article 12(6), second sentence, RPBA 2020 "[t]he Board shall not admit requests [...] which should have been submitted [...] in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance".

2.3 With its letter dated 27 March 2023 and during the oral proceedings the appellant submitted that the term "single" in the features "single conduit temperature sensor" and "single balance temperature sensor" of claim 1 of the present main request was already present in the corresponding features of claim 1 of auxiliary requests 1 and 2 underlying the decision under appeal, and that the examining division had already assessed in its decision the impact of the two occurrences of the term "single" on the issues of novelty and inventive step over documents D2 and D4. The appellant submitted that, for these reasons, the board was not being presented with new subject-matter not addressed by the examining division.

2.4 The board notes, however, that the term "single" was present in claim 1 of the then first and second auxiliary requests in combination with other features absent in claim 1 of the present main request, so that already for this reason this claim is directed to subject-matter on which no decision was taken by the examining division.

In addition, the examining division's view on the patentability of claim 1 of the then first and second auxiliary requests over documents D2 and D4 does not constitute a justification for dissociating - as done by the appellant with claim 1 of the present main request - the term "single" from the remaining features of claim 1 of either one of the then first and second auxiliary requests and presenting the board with subject-matter containing the amendment relating to the term "single", without the mentioned remaining features.

In other words, present claim 1 was not "submitted [...] in the proceedings leading to the decision under appeal". The question is whether it should have been.

2.5 In the present case, the term "single" appears to have been inserted twice in independent claim 1 of the main request for the purpose of overcoming objections of lack of novelty and of inventive step raised by the examining division in respect of the independent claims of the main request underlying the decision under appeal, but the claims of the present main request could, and as a matter of fact should, have been submitted during the first-instance proceedings, and in particular during the first-instance oral proceedings, in reaction to the mentioned objections.

The board is also unable to identify in the present case any specific circumstance of the appeal case that would justify the admission of the main request into the appeal proceedings, against the negative presumption under Article 12(6), second sentence, RPBA 2020. On the contrary, by filing the claims of the main request for the first time with the statement of grounds of appeal the appellant presented the board with subject-matter on which no decision was taken by the department of first instance, so that the admission of this request into the proceedings would compel the board either to give a first ruling on several issues (in particular, under Articles 123(2), 84 and 52(1) EPC) - a task incompatible with its primary role, namely to review the decision under appeal in a judicial manner (cf. Article 12(2) RPBA 2020) -, or to remit the case to the department of first instance, which in the present case would be contrary to procedural economy.

2.6 In view of these considerations, the board decided not to admit the main request into the appeal proceedings (Article 12(6), second sentence, RPBA 2020).

3. First auxiliary request - Admittance - Article 12(6), second sentence, RPBA 2020

3.1 The first auxiliary request was filed with the statement of grounds of appeal and the claims of this request have no counterpart in the claims of the requests considered during the first-instance proceedings, and they differ, in particular, from the claims of the requests underlying the decision under appeal. More particularly, claim 1 of the auxiliary request differs from claim 1 of the main request underlying the decision under appeal in that

a) the expressions "a conduit temperature sensor" and "a balance temperature sensor" have respectively been replaced by "a single conduit temperature sensor" and "a single balance temperature sensor",

b) the temperature importance ratio referred to in the claim is the temperature importance ratio "between the flow conduit (210) and the balance structure (208)", and

c) the temperature importance ratio "comprises a relative importance of local temperatures of the flow conduit (210) and the balance structure (208) on the output data".

3.2 As regards feature a), the same considerations brought forward in points 2.2 to 2.5 above also apply to this amended feature. In addition, features b) and c) are directed - as submitted by the appellant during the oral proceedings - to overcome objections addressed by the examining division in the decision under appeal. However, the corresponding amendments could also have been submitted during the first-instance proceedings in reaction to the mentioned objections. Therefore, claim 1 of auxiliary request could, and as a matter of fact should, have been submitted during the first-instance proceedings.

3.3 In view of these considerations, the board decided not to admit the first auxiliary request into the appeal proceedings (Article 12(6), second sentence, RPBA 2020).

4. Second to fifth auxiliary requests - Admittance - Article 13(2) RPBA 2020

4.1 The second to fifth auxiliary requests were filed after the notification of the summons to oral proceedings and claim 1 of each of these requests contain amendments when compared with claim 1 of the main and the first auxiliary requests (see point VII above). Therefore, the claims of the second to fifth auxiliary requests constitute an amendment of the appellant's appeal case within the meaning of Article 13(2) RPBA 2020 and according to this article these requests "shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons" by the appellant.

4.2 The appellant submitted that the amended claims according to the second to fifth auxiliary requests were filed in reaction to the objections of lack of clarity raised by the board in the communication annexed to the summons to oral proceedings.

The board first notes that in the communication annexed to the summons the board expressed the preliminary opinion that the main request was not to be admitted into the appeal proceedings under Article 12(4) and (6) RPBA 2020 (point 1.1 of the communication). The board also expressed the view that the claims of the main request were not clear (Article 84 EPC) (see point 1.2 of the communication), but with the reservation that this view was expressed "in the event that the main request would, contrary to the preliminary opinion expressed [in point 1.1 of the communication], be admitted into the appeal proceedings" (point 1.2 of the communication, first paragraph) and "if at all admitted" (point 1.2.4). An analogous opinion was expressed in respect of the first auxiliary request (points 2.1 and 2.2 of the communication). Since neither the main request nor the first auxiliary request are admitted into the appeal proceedings (cf. points 2 and 3 above), the mere fact that the board in preparation for the oral proceedings raised objections of lack of clarity conditional on the main request and/or the first auxiliary request being, contrary to its preliminary opinion, admitted by the board during the oral proceedings does, in the board's view, not constitute exceptional circumstances within the meaning of Article 13(2) RPBA 2020 that would justify amending the appellant's appeal case (see in this respect decision T 2599/19, catchword and points 1.1.3 and 1.1.5 of the reasons).

In addition, the objections of lack of clarity addressed by the board in its communication essentially correspond - as mentioned in point 1.2, first paragraph, of the communication annexed to the summons, and as also acknowledged by the appellant during the oral proceedings - to the objections of lack of clarity already raised by the examining division in its decision. Therefore, they do not constitute new objections amounting to exceptional circumstances within the meaning of Article 13(2) EPC, but only a further elaboration of the arguments given by the examining division in support of the mentioned objections under consideration of the counter-arguments submitted by the appellant with the statement of grounds of appeal.

4.3 In the absence of exceptional circumstances let alone cogent reasons that would justify the amendments according to the second to fifth auxiliary requests, the board decided not to take into account the second to fifth auxiliary requests pursuant to Article 13(2) RPBA 2020.

5. In view of the above considerations and conclusions, and in particular in the absence of an admitted request, the appeal is to be dismissed.