T 0064/24 13-03-2025

Auxiliary request 6

Admissibility

1. Auxiliary request 6 was admitted by the board into the proceedings (Article 13(2) RPBA) for the following reasons:

1.1 During the examining procedure, the examining division considered auxiliary request E patentable and issued a communication under Rule 71(3) EPC based on this request. The appellant, however, did not approve the text proposed for grant.

With the decision under appeal the main request and auxiliary requests A to D were found to lack an inventive step and the application was refused.

1.2 Claims 1 to 9 of auxiliary request 6 are identical to claims 1 to 9 of auxiliary request 5 filed in appeal proceedings and correspond to auxiliary request E in examination procedure which included the deleted claims 10 and 11.

Auxiliary request 6 only differs in that the dependent claims 10 and 11 were omitted due to a lack of clarity objection of the Board (cf. section 2.2 below) and therefore the deficiency was remedied by the appellant.

1.3 Auxiliary request 6 does not amount to an amendment to the appellant's appeal case violating Article 13(2) RPBA.

1.3.1 Claim 1 is the same claim as claim 1 of auxiliary request 5 filed with the statement of grounds and auxiliary request E considered by the examining division during the examining procedure. There is hence no change in the appeal case and a discussion of new issues as such is not required.

1.3.2 Regarding the deletion of claims 10 and 11 in view of the circumstances of this case, it cannot be held to be an amendment of the appeal case either.

A point to consider when deciding when the deletion of a claim qualifies as an amendment is according to the Case Law of the Boards of Appeal (10th edition 2022, V-A-4.2.2 d)) whether this would entail a thorough re-evaluation of the matters at issue, alter the factual and legal scope of the proceedings and require a fresh discussion, or it merely eliminates one of the disputed matters. With the deletion of claims 10 and 11 the Board finds that the objection raised by the Board is overcome and no other issues result from the deletion that would require a new discussion.

Clarity

2. The Board raised in their communication under Article 15(1) RPBA doubts whether the set of claims of auxiliary request 5 complies with the requirements of Article 84 EPC.

2.1 The designation "barrier testing method" of the claims did not fit in the board's preliminary view the concrete method steps defined in independent claim 1. The Board considered the claimed method in their communication under Article 15(1) RPBA to be a method of installing a casing within a borehole with testing.

2.1.1 Claim 1 of auxiliary request 6 defines essentially the following steps:

(a) connecting a drill pipe with a first production casing having annular barriers in the form of sleeves;

(b) inserting the drill pipe and the first production casing into an intermediate casing such that the first production casing extends into the lower part of the borehole;

(c) sealing the lower end of the first production casing;

(d) pressurising the first production casing from within such that the sleeves expand and abut a wall of the borehole;

(e) pressurising the first production casing with a predetermined pressure;

(f) testing whether the pressure is kept constant during a predetermined time period;

(g) setting a first barrier packer between first production casing and intermediate casing;

(h) disconnecting the drill pipe;

(i) pressurising the first production casing and the intermediate casing from within with a second predetermined pressure;

(j) testing whether the second pressure is kept constant during a predetermined time period;

(k) inserting a second production casing (with a plug and a downhole safety valve) into the well;

(l) setting a second barrier packer in a first annular space between second production casing and intermediate casing;

(m) pressurising the first annular space from within to a third predetermined pressure; and

(n) testing whether the third pressure is kept constant during a predetermined time period.

2.1.2 Only steps (e), (f), (i), (j), (m) and (n) of the claimed method concern pressure testing. Nevertheless, it is clear that the appellant seeks protection for a method comprising all steps (a) - (n) mentioned in claim 1 and not just the steps referring to pressure testing. The mismatch between the claim's designation and the particular steps defined in the claim hence does not amount to a lack of clarity throwing doubts on what is claimed.

2.2 The Board had further noted in their communication under Article 15(1) RPBA that dependent claims 10 and 11 contradicted claim 1.

This deficiency was remedied by the appellant by deleting claims 10 and 11 in auxiliary request 6.

2.3 The set of claims pursuant to auxiliary request 6 hence is clear in the sense of Article 84 EPC.

Remittal

3. The Board decided the remittal of the case according to Article 111(1) EPC and the appellant agreed.

Since the communication according to Rule 71(3) EPC does not contain the reasons of the examining division for the proposal to grant with regard to novelty and inventive step of the subject-matter of claim 1 of auxiliary request E (corresponding to auxiliary request 6), the Board finds that this fact presents the required special reasons within the meaning of Article 11 RPBA to remit the case to the examining division for further prosecution, including the adaptation of the description.