T 1298/06 (Stratified phase-separated composite/KONINKLIJKE PHILIPS ELECTRONICS N.V.) 11-03-2010

Reasons for the Decision

1. The appeal is admissible.

2. Scope of examination on appeal

While Article 111(1) EPC gives the Boards of Appeal the power to raise new grounds in ex-parte proceedings where the application has been refused on other grounds, proceedings before the Boards of Appeal in ex-parte cases are primarily concerned with examining the contested decision (see decision G 10/93, OJ EPO 1995, 172, points 4 and 5 of the reasons), other objections normally being left to the Examining Division to consider after a referral back, so that the Appellant has the opportunity for these to be considered without loss of an instance.

In the present case the Board, thus, restricts itself to examining whether the amended claims meet the requirements of Article 123(2) EPC and whether the objections as to insufficient disclosure pursuant to Article 83 EPC and to lack of support pursuant to Article 84 EPC as formulated in the decision under appeal and forming the sole grounds for refusal of the application, can still be considered as applying to the amended claims.

3. Amendments (Article 123(2) EPC)

The amendments were based on original claims 1 to 13. The subject-matter of claim 1 is based on original claim 1 in combination with original claim 8 and page 2, lines 24 to 26 of the application as filed. Claims 7 and 10 to 13 were amended accordingly. Claims 2 to 6, 8 and 9 remained unchanged.

For these reasons, the Board concludes that that the present claims as amended comply with the requirements of Article 123(2) EPC.

4. Ground for refusal

The decision under appeal exclusively dealt with insufficient disclosure in the sense of Article 83 EPC and lack of support in the description in the sense of Article 84 EPC of the independent claim 1 of the then pending request to the extent that it was directed to a composite comprising a liquid layer composed of liquids other than liquid crystals. The amendments made to the claimed subject-matter in the fresh request, in particular by presenting a fresh independent claim 1 which was substantially restricted in scope by specifying liquid crystals to be used in the photo-polymerizable composition, have the effect that the reasons given in the contested decision for refusing the present application no longer apply, since the present claim 1 has never been challenged under Article 83 or 84 EPC.

Thus, the Board considers that the amendments made by the Appellant meet the objection as to insufficiency of disclosure and lack of support as formulated in the decision under appeal and are substantial in the sense that in the present case the examination has to be done on a new basis, with the consequence that the appeal is well founded.

This finding is in line with established jurisprudence of the Boards of Appeal that an appeal is to be considered well founded if the Appellant no longer seeks grant of the patent with a text as refused by the Examining Division and if substantial amendments are proposed which clearly meet the objections on which the decision relies (see decisions T 63/86, OJ EPO 1988, 224; T 139/87, OJ EPO 1990, 68 and T 47/90, OJ EPO 1991, 486).

5. Remittal

Having so decided, the Board has not, however, taken a decision on the whole matter, since as set out above substantial amendments to the subject-matter claimed have been made by submitting fresh claim 1 which was only presented at the oral proceedings before the Board. The decision under appeal did not consider fresh claim 1 in the form of the present request, as such request was never submitted to the first instance. It is only before the Board that the Appellant has restricted the claimed invention that the Examining Division considered to be insufficiently disclosed and unsupported by the description, in order to overcome the objections raised. Thus, fresh claim 1 generates a fresh case not yet addressed in examination proceedings.

Under these circumstances, the examination not having been concluded, the Board considers it appropriate to exercise its power conferred on it by Article 111(1), second sentence, second alternative, EPC to remit the case to the Examining Division for further prosecution.

6. The Board also considers the following issues outlined below as meriting consideration when resuming examination proceedings:

Due to the amendments made to claim 1 claim 8 appears to be redundant. The wording of the amended claims appears to need further editorial amendments as regards the syntax.