a) Ex parte cases 

In T 278/17 the contested decision dealt only with the requirements of Art. 76(1) EPC; patentability had not been discussed. Since the request was considerably different from the requests considered in the contested decision, the board's judicial review could cover only Art. 123(2) and 76(1) EPC.

In T 1534/18, all the grounds for refusal in the contested decision had been overcome by suitable amendments in the set of claims submitted on appeal. As a result, the contested decision was no longer valid and had to be set aside. Since the facts of the case had become fundamentally different from those on which the examination division had based its decision, the board exercised its discretion to remit the case to the department of first instance for further prosecution given the sheer amount of examination work required for the outstanding issues.

In T 1007/15, the amended claims overcame the objections under Art. 83 and 84 EPC on which the contested decision was based. However, the issues of novelty and inventive step had not been discussed in the first-instance examination proceedings, and so the board would have had to examine them for the first time. That would have gone far beyond the primary object of appeal proceedings, which is to review the contested decision in a judicial manner. Moreover, the appellant had agreed to the board's remitting the case and withdrawn its request for oral proceedings in the event that it did so.

In T 2453/16 the examining division had not assessed the inventive step of the subject-matter of the claims before the board, which differed significantly from the searched claims. The appellant's position was that the cited prior art and the state of the file allowed the board to continue with an assessment of novelty and inventive step. However, the board concluded that in order to decide on the questions of novelty and inventive step, it would have to consider those questions anew in proceedings forming both the first and last instance, thereby effectively replacing the examining division.

For further examples see T 1278/18 (the amendments to the claims clearly overcame all outstanding objections without introducing new issues; the question of whether or not the claimed invention was inventive had not been addressed in the appealed decision); T 901/16 (claim 1 of the amended main request overcame the objections which had led to the refusal of the application but it might also be necessary to consider prior-art documents other than those mentioned in the decision); T 2670/18 (the appellant filed amendments to the claims which overcame the objection under Art. 84 EPC); T 1028/19 (the sole reason given by the examining division for refusing the set of claims of the main request was not applicable to the subject-matter of the new set of claims).