9.3.6 Incomplete search
In T 97/14 the appellant had consistently argued that, since the claimed invention related to web services, the closest prior art for the purpose of assessing inventive step should be in that field. Consequently, the documents cited in the supplementary European search report and during examination (D1 and D2), relating to remote procedure calls, were argued to be unsuitable as a starting point for inventive step. The board agreed with the appellant that the closest prior art should be in the field of web services. The board remitted the case for further prosecution because the search was not complete.
In T 565/17 the reasoning in the written decision was erroneous and the decision under appeal could not be upheld. The board was not convinced that inventive step could be denied on the basis of document D1 alone. Since the examining division had misinterpreted D1, there was a distinct possibility that the search into the state of the art had been stopped too early and was incomplete (see Guidelines for Examination, November 2019, B‑IV, 2.6).
In T 2496/17 the board stated that document D4, which had been cited by the USPTO in the proceedings for the related US patent application, might be a better starting point for assessing inventive step than any of the documents cited in the European search report. Since inventive step over documents D1 to D4 had not yet been assessed, and since the search into the state of the art might not yet be complete, special reasons for remittal presented themselves.