1. Admissibility of the appeal - Article 108 EPC and Rule 99 EPC
The appeal was filed and reasoned in due time and form and it was sufficiently substantiated. Therefore, the appeal is admissible.
2. Admittance of the sole request - Article 12(4),(6) RPBA
2.1 In the present case the appellant's sole request was filed for the first time with the statement setting out the grounds of appeal. Compared to the request the impugned decision is based upon, the new request includes new features in claims 1 and 9 and thus constitutes an amendment according to Article 12(4) RPBA.
According to Article 12(6) RPBA, the board shall not admit requests, facts, objections or evidence which should have been submitted in the proceedings leading to the decision under appeal, unless the circ*mstances of the appeal case justify their admittance.
2.2 Contrary to the appellant's arguments the board is not convinced that the circ*mstances presented by the appellant can justify the admittance of the sole request. Rather, the lack of novelty in the light of document D8 or D9 was already set out in the preliminary opinion of the examining division dated 4 December 2020.
The board is thus not aware of any obstacle that could have hindered the appellant from filing the present request already during the proceedings before the examining division. Indeed it is apparent from the minutes of the first-instance oral proceedings that, following an in-depth discussion of the objections of lack of novelty based on D8 and D9, the applicant was given the opportunity to file further requests, but chose not to do so.
In the reasons for the contested decision, the examining division did not deviate from its preliminary opinion that the subject-matter of claims 1 and 9 according to the sole request pending before it lacked novelty over the disclosure of document D8 or over the disclosure of document D9.
2.3 The fact that the examining division had discussed hypothetical subject-matter with the appellant after it had concluded that the appellant's sole request pending before it was not allowable cannot be interpreted as circ*mstances which would allow the appellant to file an amended request only in appeal proceedings, instead of during the oral proceedings before the examining division. Further, nothing seems to have hindered the appellant from requesting more time for the preparation of an additional request before the examining division, or from asking the examining division for further explanation of their opinion.
The board thus considers the discussion of such hypothetical subject-matter during the oral proceedings before the examining division to be irrelevant for the admittance of the appellant's sole request. It relates to subject-matter which had never been formulated as a request by the appellant in the first-instance proceedings.
2.4 The appellant's statement in their letter of 15 January 2024 that there was no time for this is further not justified, given that the oral proceedings before the examining division finished before 11:00 a.m. This is even more so since the appellant had replied to the examining division's preliminary opinion only after 7 months, thereby excluding the possibility for receiving a further written communication from the examining division instead of a telephone call four weeks before the oral proceedings.
2.5 Moreover, what was discussed with the examining division concerning the hypothetical subject-matter is not even reflected in the appellant's sole request filed with the statement setting out the grounds of appeal. It is not apparent to the board how the discussion according to point 8 of the minutes of whether a claim directed to the primary side only would involve an inventive step, but constitute a violation of Article 123(2) EPC, could be reflected in the amendment introduced in the appellant's sole request in the appeal proceedings, which defines that
"the first PWM signal and the second PWM signal are signals of two systems having ON-pulses at different times."
As is immediately apparent from its wording the amendment introduced in the appellant's sole request does not define a limitation to the primary side only.
The board therefore concludes that nothing was said during the first-instance oral proceedings which would have prevented the applicant from filing such a request during those oral proceedings.
2.6 The aspects that the appellant's representative was not sure about how to formulate a new request during the oral proceedings before the examining division and that the appellant became aware of a possible wording for a request overcoming the amendment objections discussed with respect to the hypothetical subject-matter only after the oral proceedings do not constitute circ*mstances which could justify the admittance of such a request only in the appeal proceedings either.
2.7 Contrary to the appellant's assertions, the filing of their sole request in the appeal proceedings also does not support procedural efficiency, because the primary aim of the appeal procedure is the judicial review of first-instance decisions. In the present case this would not be possible because the appellant's sole request was never filed before the department of first instance, such that the board could not be in a position to review the decision of the examining division relating to this request.
2.8 Consequently, the board exercised its discretion under Article 12(6) RPBA not to admit the appellant's sole request.
