4.3.4 Discretion under Article 12(4) RPBA 2020
(i) No reasons for not submitting the amendment until appeal – not admitted
In T 28/20 the appellant did not explain why a new inventive-step objection (based on a different closest prior art) was first raised on appeal. The board, considering that the requirements of Art. 12(4) RPBA 2020 were not fulfilled, made use of its discretion pursuant to Art. 12(4) RPBA 2020 not to admit this new objection into the proceedings.
(ii) Reasons provided as to why objections raised are overcome
In T 32/16 the board applied the requirement of Art. 12(4), fourth sentence, RPBA 2020 to the respondent's response to the board's preliminary opinion. In its response, which contained amended claim requests, the respondent had also stated from where the amendment was taken. The board noted that the introduced terminology was an explicit recitation of the language used in the application as filed. Demonstration of how these amendments overcame the objection in this particular case, where the lacking features as such had at least already been identified by the appellant, was thus self-evident in the amendments made.