2.4. Consideration of the parties' arguments, submissions and evidence

In T 655/13 the board held that the examining division would need to provide the translation of at least the referenced larger section of document D1 on which it based its reasoning, or identify the relevant passage as clearly as possible, to enable the appellants (and if necessary the board) to understand and verify whether the examining division had taken their arguments into account, thereby respecting their right to be heard.

In T 448/16 the appellant (patent proprietor) raised an objection under R. 106 EPC, the core of which was that the board should have indicated to the appellant what features were missing in the various versions of the auxiliary requests. This would have allowed the appellant either to provide suitable arguments in favour of existing requests or formulate a new request that could have overcome the problem of added subject-matter. The board applied the established jurisprudence of the Enlarged Board of Appeal. It found that had it, after having discussed the issue exhaustively with the parties, then indicated to the appellant precisely which specific features were missing from claim 1 in any of its versions so that the appellant-proprietor could compose suitable counter-arguments or file a suitably adapted further request, this would have favoured the appellant's case over that of the respondents (opponents). The board stated that such a course of action would have compromised its duty to remain neutral, and thus the board saw itself as prohibited from so doing. The board thus dismissed the appellant's objection and considered that its right to be heard had not been violated.