T 0171/85 (Inconsistent documents for grant) of 30.7.1986

Summary of Facts and Submissions

I. According to the title of the invention, European patent application No. 80 103 208.7 (publication No. 00 21 244), filed on 10 June 1980, concerns a "Hair treating device with a catalytic heating system in the curling zone". The characterizing portion of its original Claim 1 contained several constructional features of such a device, also referred to as a hair curler.

II. The Examining Division's communication of 1 October 1981 informed the applicants that given one of the citations (DE-A-2 346 435 - L'Oréal) all these features but one ("valve mechanism ... for regulating the fuel-air mixture") should also be included in the preamble of Claim 1, because they were known in combination with the features already listed therein (Rule 29(1)(a) and (b) EPC). The applicants' reply, received on 19 January 1982, disputed this only to the extent of asserting that while the citation did indeed disclose a hair curler with an ignition device the latter was separate from the former. In the interest of clear delimitation the applicants therefore proposed the feature given in second place in the characterizing portion of Claim 1 reproduced below.

III. With this reply the applicants filed new documents, including a Claim 1 reading as follows: Hair treating device with ... (there follows a number of constructional features) ... characterized by a valve mechanism ... with an actuator ... for regulating the fuel-air mixture ..., as well as an ignition device (52-72) arranged in fixed manner on the free end of the hair curling zone with an operating member (13) for initiating the combustion process. There then follow 21 dependent claims, including Claim 12 reading as follows: Hair treating device according to one or more of the preceding claims, characterized in that an actuator (13) for actuating an ignition device is arranged on the end of the curling member remote from the handle, the ignition device being located between the catalyst (30, 33) and the actuator (13) and serves to initiate the oxidation process on catalyst (30).* According to the new description, which however, as regards the "ignition device", is the same as the old one, the problem the invention seeks to solve is primarily that of rendering hair treating equipment - curling irons, for example - completely independent of the electricity supply, thus enabling users to treat their hair wherever they like without requiring additional devices (page 2, line 35 et seq.). As regards the "ignition device", it is stated on page 6 (line 24 et seq.) that the curling iron illustrated in the drawings has the fuel container at one end and the ignition system at the other, but that these two elements may equally well be arranged adjacent to each other, whilst on page 10 (lines 16 and 17) it is mentioned that the ignition system is conveniently located on the free end of the curling iron. *The English text of these claims is that of the translation supplied by the applicants.

IV. On 7 February 1983 the Examining Division informed the applicants under Rule 51(4) EPC of the text in which it intended to grant the European patent and which contains the above claims and description parts. On 12 March 1983 the applicants communicated their approval of that text, paid the fees due and filed the translations of the claims.

V. The file records two telephone conversations conducted on 6 June 1983 by the formalities officer and the examiner respectively, to the effect that the applicants were withdrawing their approval, would like to make a further change to the protection sought and would be filing a new submission, and that the grant proceedings were interrupted pending receipt of the applicants' written comments. In oral proceedings before the Board the applicants' representative submitted a memo of the same date recording a telephone conversation between himself and the primary examiner.

VI. By letter of 26 September 1983 and making reference to the above telephone conversations the applicants withdrew their approval and submitted new documents containing the following amendments substantiated in the letter:

1. As regards the (second) feature ("ignition device"), replacement of the words "... as well as an ignition device arranged in fixed manner on the free end of the hair curling zone" with "... as well as an ignition device integrated into the hair treating device (11) as a fixed component of the latter ...".

2. As regards the (first) feature ("valve mechanism") replacement of the words "with an actuator for regulating ..." with "with a regulating device". The applicants further requested the correction of three typing errors.

VII. In the subsequent proceedings discussions between the Examining Division and applicants revolved around the principle of allowing such amendments at this stage, and in particular whether examination proceedings could be resumed following a withdrawal of the approval given under Rule 51(4) EPC. The applicants also attempted to arrive at the desired amendments by means of an application for re- establishment of rights and by requesting that the amended text (cf. Section VI above) be allowed as a divisional application.

VIII. By interlocutory decision of 8 November 1984, posted on 22 January 1985, the Examining Division, enlarged by the addition of a legally qualified examiner under Article 18(2), 4th sentence, EPC, refused the applicants' main request - that the examination proceedings be resumed following their withdrawal of approval of the text communicated to them - and three subsidiary requests. It deferred any decision on their further subsidiary request that the patent be granted on the basis of the text communicated under Rule 51(4) EPC. As the appeal contests only part of the interlocutory decision, and because new aspects have arisen, there is no need to go into the reasons for that decision here.

IX. On 1 February 1985 the applicants filed an appeal against the above interlocutory decision, paying the fee for appeal at the same time and filing the statement of grounds on 22 May 1985. The appeal contests only that part of the interlocutory decision refusing the applicants' main request by not allowing the amendments sought (cf. Section VI above). Failing that, the applicants seek to secure grant of the patent without those amendments.

X. Both the written statement of grounds and a communication from the rapporteur of the Board of Appeal concentrate more on the strictly legal question of whether the applicants were bound by their approval of the text communicated under Rule 51(4) EPC. However, the oral proceedings conducted on 28 May 1986 threw up certain new aspects.

XI. The applicants began by limiting the amendment sought by dropping their request to be allowed to generalise ("with a regulating device") the first feature ("valve mechanism") (cf. Section VI.2 above) and seeking only deletion of the words "on the free end of the hair curling zone" in the second feature.

XII. The applicants contended that this amendment was justified for two reasons. Firstly, they had been told on the telephone that amendments were possible (cf. Section V above). This was information on which they were entitled to be able to rely, and the amendment thereupon requested should not have been refused in the interlocutory decision. Secondly, the amendment sought was possible anyway as a correction under Rule 88, 2nd sentence, EPC. From the documents filed on 19 January 1982 (cf. Section III above) it was immediately evident that a localisation of the ignition device "on the free end of the hair curling zone" could not have been intended. Dependent Claim 12 and the description showed straight away that this was merely a preferred embodiment and not one essential to solving the problem. This - and delimitation as compared with DE-A-2 346 435 (L'Oréal) - required only the fixed integration of an ignition device in the hair curler, not its localisation "on the free end" of the latter. This mistake within the meaning of Rule 88 EPC could be corrected up to grant of the patent.

XIII. In the oral proceedings the applicants therefore requested:

1. as their main request, that point 1 of the contested decision be set aside and the matter remitted to the Examining Division with instructions to grant a European patent as per the documents in the communication under Rule 51(4) dated 7 February 1983, after correction of the three typing errors mentioned in the submission of 26 September 1983 and deletion of the words "on the free end of the hair curling zone" in Claim 1;

2. failing that, that the matter be remitted to the Examining Division with instructions to grant the European patent as per the documents referred to in the main request above, without deleting the words mentioned.

Reasons for the Decision

1.The appeal complies with Articles 106 to 108 and Rule 64 EPC. The interlocutory decision contested allows separate appeal under Article 106(3) EPC. The appeal is therefore admissible. Pursuant to Article 21(3)(b) EPC the Board of Appeal consists of three technically and two legally qualified members, because the decision contested was taken by an Examining Division consisting of four members.

2.No decision is required here on the principle of resuming examination proceedings once an applicant has communicated approval under Rule 51(4) EPC. Nor need the Board consider whether the applicants were informed by telephone that they could make an amendment and, if so, whether this was legally binding. The applicants now seek an amendment narrower in scope than that sought before the Examining Division, and the Board of Appeal need therefore decide only whether the amendment now sought is still possible at this stage in the proceedings, i.e. after approval by the applicants of the text communicated to them under Rule 51(4) EPC.

3.The applicants argue that the amendment requested is covered by Rule 88 EPC and can therefore be made even after communication of approval under Rule 51(4) EPC. It is true that in the generally-accepted view corrections under Rule 88, 2nd sentence, EPC may be made at any time prior to the decision to grant (see also Guidelines (March 1985), Part C-VI, 4.7), and that they are not confined to "linguistic errors and errors of transcription" correctable by the formalities officer; other "mistakes" within the meaning of this Rule and which are a matter solely for the examiner may also be corrected at this stage of the proceedings. However, the Board considers that in the present case the requirement of Rule 88, 2nd sentence, EPC is not met: it is not immediately evident that nothing else would have been intended than what is offered as the correction.

4.However, the documents filed on 19 January 1982 (cf. Section III above) are in themselves inconsistent. Claim 1 stipulates not only the presence of a fixed ignition device in the hair curler as a (necessary) feature of the latter but also its arrangement "on the free end" of the curler. Claim 12 and the description, on the other hand, indicate that this arrangement is merely a preferred embodiment. The localisation of the ignition device in Claim 1 might therefore be a drafting oversight, which possibility the problem as set out in the description tends to support. However, it is not fully clear from the file that this limitation of Claim 1 is not intentional; the applicants might genuinely have wished - perhaps in order to increase the inventive step as compared with citation DE-A-2 346 435 (L'Oréal) - to narrow the claim down to an embodiment which originally was merely preferred. The inconsistency would then have to be removed by deleting or amending Claim 12 and bringing the description into line with Claim 1.

5.The Board of Appeal thus takes the view that although correction under Rule 88, 2nd sentence, EPC is not possible, the documents nonetheless contain an inconsistency which should properly have been removed before the communication under Rule 51(4) EPC was issued. If this is not done the precondition for grant under Article 97(2) EPC that "the application ... meet the requirements of this Convention" appears not to be met; in their present form the documents do not comply with Article 84, 2nd sentence, and Rule 29(4) EPC.

6.The Board of Appeal sees no reason why an inconsistency between claims or between claims and the description should not be removed, in agreement between Examining Division and applicant, even if the latter has communicated approval of the (faulty) text under Rule 51(4) EPC. Nor as a rule would it seem necessary to set aside and replace the communication under Rule 51(4) EPC; this need be done only if in a Contracting State there might be a loss of rights under Article 65(3) EPC unacceptable to the applicant. Nor would the fees payable and the translations to be filed within the period stipulated in Rule 51(4) EPC appear to necessitate replacing the communication under that provision; assumption of approval presupposes payment of the fees in due time (cf. Guidelines (March 1985), C-VI, 15.4.4). As regards the translations of the claims under Article 97(5) EPC, which likewise have already been supplied, any amendment to the claims must of course be made simultaneously to the translations as well.

7.The Board of Appeal remits the case to the Examining Division for further examination in the light of the above considerations. For the Board of Appeal to take under Article 111(1), 2nd sentence, EPC a decision within the competence of the Examining Division would be inappropriate; the Examining Division itself must decide whether it considered the Claim 1 feature in question to be a prerequisite for patentability or whether it was included other than at its insistence. Point 1 of the Examining Division's decision is set aside in order to remove any procedural obstacle. The Board also assumes that the applicants are not now seeking to amend the first feature ("valve mechanism"; cf. Section VI.2 above). As regards the second feature, instead of deleting the words "on the free end of the hair curling zone" they could opt for some other formulation (as per Section VI.1 above for example) tantamount to such deletion. Typing errors - and not only those already discovered - may be corrected.

ORDER

For these reasons, it is decided that:

1.Point 1 of the interlocutory decision of the Examining Division of the European Patent Office dated 22 January 1985 is set aside, and the case remitted to the Examining Division for further examination.

2.The appeal is otherwise dismissed.