T 0768/01 24-09-2001

Reasons for the Decision

1. The appeal meets the formal requirements of Article 106 to 108 and Rules 1(1) and 64 EPC. It is therefore admissible.

2. In accordance with the findings of decision J 32/95 (OJ EPO 1999, 713) the case has been forwarded to the Board to deal solely with the request for reimbursement of the appeal fee, interlocutory revision having been granted by the Examining Division

The appellants base their request for reimbursement on two complaints about the way the Examining Division operated. The first is that the application was refused after a single communication "without preliminary warning" thus allegedly not conforming with the practice set out in the Guidelines C-VI, 4.3. The second is that the decision was based on a document only briefly mentioned in the communication and on a passage of this document not mentioned in the communication at all.

Since the Boards have repeatedly stated that refusal after one communication is in order providing that the requirement of Article 113(1) EPC of the right to be heard is met, see for example T 162/82 (OJ EPO 1987, 533), it is only the second complaint which needs to be considered in any detail.

In the communication of the Examining Division posted on 24 June 1999 the objection of lack of novelty of the subject-matter of claim 1 as originally filed was raised with respect to both US-A-3 844 529 (D1) and document D2. The objection with respect to document D1 is fully argued, that with respect to document D2 less extensively, but in the opinion of the Board is nevertheless clear in its terms, particular reference being made to Figure 1 and page 4 of the description with certain features of the claimed subject-matter being correlated by means of the corresponding reference numerals to elements found in the prior art disclosure. It is to be noted in this context that document D2 is quite short, there is only one Figure and the description of it extends to little more than half a page.

In response to this communication the appellants filed an amended main claim which had been put into two-part form but otherwise corresponded in content to that originally filed. With respect to the document D2 it was argued that this did not disclose a passively acting relief valve as closure was by pressure of a spring and opening by vacuum.

In its decision refusing the application the Examining Division countered this argument of the appellants by referring to the last paragraph of page 4 of document D2. It is the contention of the appellants that the contents of this paragraph constitutes evidence on which they had no opportunity of presenting their comments. Given the nature of the cited prior art document as explained above and the way it was referred to in the communication of the Examining Division the Board cannot agree. The passage involved is not hidden away in a lengthy document, referred to only cursorily in the communication, but is instead an integral part of the short piece of text specifically cited therein ("page 4"). In the circumstances it cannot therefore be reasonably argued that the appellants were not previously made aware of the evidence on which the contested decision relied. The requirement of Article 113(1) EPC was accordingly met.