Summary of Facts and Submissions 
I. European patent application No. 83 400 619.9, filed on 24
March 1983 and published under No. 0 091 348, was refused by
decision of the Examining Division on 9 December 1986.
II. In its decision the Examining Division considered Claim 1
received on 28 May 1986 and ruled that it did not fulfil the
requirements of Article 123(2) EPC. In the statement of grounds
the Examining Division pointed out that the omission of the
features of the third slide, the third cavity and the third
throttle in Claim 1 amounted to an inadmissible amendment
(Article 123(2)), the original Claim 1 as published having
contained these features. For information it also referred to
the fact that it had not objected to the novelty and inventive
step and had found that a procedure according to Article 109
would thus be possible. On the question of delimitation from the
nearest prior art, the Examining Division had been of the
opinion that Claim 1 as originally filed would be acceptable
provided it were correctly delimited. However, the Examining
Division would not insist on Claim 1 being subdivided into two
parts.
III. The appellant filed an appeal against this decision on 10
February 1987, paying the fee for appeal and submitting a
statement of grounds in good time. In the statement of grounds
for appeal the appellant: (i) asked that a European patent be
granted on the basis of a new Claim 1 as contained in the
statement and corresponding exactly to that originally filed,
and (ii) expressed the view that under these circumstances the
decision refusing the application should be set aside.
Reasons for the Decision
1. The appeal is admissible.
2. The features mentioned in the present version of Claim 1 were
already the subject of the original Claim 1 and were supported
by the description (Article 84 EPC). The subject-matter of Claim
1 does not therefore extend beyond the content of the
application as originally filed (Article 123(2) EPC).
3. The appellant has therefore made amendments which fully meet
the only objection on which the refusal of the application is
based and notified by the Examining Division in the contested
decision.
4. Consequently the appeal is well founded and the Examining
Division ought to have rectified its decision pursuant to
Article 109(1) EPC. The Board is unable to agree with the
position expressed in the Guidelines for Examination in the
European Patent Office (Part E, Chapter XI, 7, final paragraph)
according to which interlocutory revision may take place only
where the application fulfils all (see English or German
version) the requirements of the EPC. Article 109(1) EPC clearly
states that the department whose decision is contested must
rectify its decision if the appeal is admissible and well
founded. The Board is of the opinion that an appeal is to be
considered well founded if the amendments submitted by the
applicant (appellant) clearly meet the objections on which the
decision relies. That there are other objections which have not
been removed but which were not the subject of the contested
decision cannot preclude the application of Article 109 EPC.
Nevertheless, despite the fact that the Examining Division had
actually referred in the contested decision to the possibility
of a procedure according to Article 109 EPC it did not rectify
that decision. The Examining Division did not have the
opportunity to explain why it did not rectify its decision but
the reason would appear to be that the claim was not correctly
delimited from the nearest prior art. However, the Examining
Division's contested decision did not rely on this ground and
the appellant did not comment on this matter in its statement.
Moreover, the Examining Division also pointed out that a claim 1
could be formally drafted in one part. Under these circumstances
the Board considers that it is neither necessary nor appropriate
to comment on this matter and that it should therefore remit the
application in accordance with Article 111(1) EPC to the
Examining Division for further prosecution.
ORDER
For these reasons, it is decided that:
1. The contested decision is set aside.
2. The case is remitted to the first instance for further
prosecution.
Remarks:
O.J. EPO issue: 1990,068
Case law reports: CLBA 1996
