In its refusal decision the ED found that the subject-matter of claim 1 of the sole request before it was not new in view of a sole piece of prior art, D1.
In an obiter dictum the Examining Division further pointed out that the subject-matter of claim 1 represented an unallowable intermediate generalisation of the content of the application as originally filed.
For the board, the subject-matter of the MR filed when entering appeal did not go beyond the content of the application as originally filed.
Claim 1 of the MR includes the features of claim 13 which were not included in claim 1 of the request underlying the contested decision. It appears from the examination) that the ED considered the subject-matter of claim 13 to be new over D1 but not involving an inventive step when considering common general knowledge of the skilled person. The reasons are however unspecified in the communication and the objection to claim 13 does not form part of the grounds for refusal.
The board held that the sole ground for refusing the current patent application (novelty) was remedied by the new MR. Moreover, the view of the ED according to the obiter dictum of the decision regarding the inadmissible extension did no longer apply either.
Accordingly, the appeal was allowable and consequently, the decision under appeal was to be set aside.
It is established Case Law of the Boards of Appeal that, if the appeal is objectively to be considered as admissible and well founded, the first-instance department is obliged to grant interlocutory revision, without room for discretion. See e.g. T 1173/10, T 139/87, T 180/95, T 1060/13 or T 2294/13.
In the present case the ED should have therefore carried out an interlocutory revision and resumed examination proceedings because its sole ground for refusal did no longer apply.
The fact that the ED did not rectify the decision although it was obliged to do so constitutes a fundamental deficiency which according to Article 11 RPBA justifies a remittal of the case for further prosecution.
The fact that the ED in its above mentioned communication raised in a communication an inventive step objection (D1 together with common general knowledge) for the subject-matter of claim 13 as originally filed is irrelevant, since this objection was fully unsubstantiated and anyway does not form part of the grounds for refusal, let alone part of the obiter dictum.
A full reimbursement of the appeal fee under R 103(1,a) was nevertheless not justified because the above mentioned fundamental deficiency cannot have been causally linked with filing the appeal since it occurred thereafter.
If the objections leading to the refusal are overcome, granting interlocutory revision is an obligation without any room for discretion.
This is even more the case if further to the reasons for refusal those raised in an obiter dictum are overcome, interlocutory revision has to be granted here as well without any room for discretion.
A request for reimbursing the appeal fee in case of interlocutory revision can be granted if the ED committed a substantial procedural violation. In this situation only a BA can decide on the reimbursement of the appeal fee, cf. G 3/03, OJ 2005, 344.
It is rare that application of Art 109 leads itself to a substantial procedural violation (SPV).
In general, the appeal fee is not reimbursed after interlocutory revision if the ED did not commit a procedural violation or if it was not a SPV.
Not granting interlocutory revision is not a SPV, e.g. T 1173/10 or T 2528/12.
In T 2375/13, the ED should have granted interlocutory revision. Since the right to be heard had not been respected, the ED committed a substantial procedural violation and the BA ordered reimbursement of the appeal fee.
In T 928/18, the fact that the ED did not rectify its decision although it should have done so pursuant Art 109(1) constitutes a fundamental deficiency justifying remittal, but no reimbursement of the appeal fee was ordered.
In T 1362/13, the board considered that, if an admissible and clearly substantiated appeal does not lead to interlocutory revision, the ED infringed the principle of procedural economy.
There are two cases in which a BA considered that not granting interlocutory revision constitutes a SPV, cf. T 1765/13 and T 1766/13. In those cases, reimbursement of the appeal fee was ordered.