Friday, 29 January 2010

T 570/07 – How to Respond to Overkill

In this case the application was refused on several grounds: lack of clarity, inadmissible extension, and lack of inventive step. The applicant filed an appeal. The notice of appeal only dealt with the ‘main objection’ (inventive step) and declared that thereby the clarification problems and the A 123 problem were resolved.

[…] The appeal complies with A 106 and 107 and also with A 108, first and second sentence, and R 64 EPC 1973. Its admissibility therefore depends solely on whether the appellant’s statement of grounds of appeal is a statement setting out the grounds of appeal within the meaning of A 108, third sentence, EPC 1973. [2.2]

It is established case law that the grounds of appeal must specify the legal or factual reasons why the impugned decision should be set aside. The arguments must be clearly and concisely presented to enable the board (and the other party or parties) to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases its arguments, without first having to make investigations of their own. [2.3]

Moreover it is also established case law that grounds sufficient for the admissibility of an appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision (see T 213/85; T 169/89; T 45/92). It is not a matter of whether the arguments put forward are actually effective, but rather that these arguments may in principle be considered to upset the reasons for the contested decision. [2.4]

In the present case, [there are] three points at issue, namely lack of clarity (A 84), added subject-matter (A 123(2)) and lack of inventive step. [2.5]

In the statement of grounds of appeal the appellant alleges in substance that the examining division was incorrect because of a mistake in the interpretation of documents D2 and D3. These documents did not relate to an adaptive projection filtering scheme as specified in claim 1. Therefore the argumentation given in the decision under appeal as to why the method of claim 1 did not involve an inventive step was in the appellant’s opinion incorrect. [2.6]

Hence, as far as the admissibility of the present appeal is concerned, the only question at issue is whether the statement of grounds of appeal contains a sufficient reasoning as to why the decision under appeal should be set aside with regard to the two other legal reasons for refusal, namely lack of clarity and added subject-matter, to thereby fulfil the requirements of A 108, third sentence. [2.7]

With respect to the first of these other legal reasons for refusal, namely lack of clarity, the “clarification of the difference between projection data and image data” given in the statement of grounds of appeal has, in the board’s view, no connection with the clarity problems discussed in the [decision refusing the application]. [2.7.1]

With respect to added subject-matter, the clarification submitted by the appellant has, in the board’s view, no connection with the objection raised in [decision refusing the application]. [2.7.2]

The appellant’s argument that the main objection related to inventive step has no basis in the facts of the case. In the present case the third reason for refusal (lack of inventive step) is not a single main reason on which the other two depend. Instead any one of the three reasons individually constituted a reason for the refusal of the application.

For instance, the reason based on A 123(2) related to an allegedly undisclosed generalisation. Even if the appellant’s assessment that the claimed subject-matter involved an inventive step (in the whole scope of the claim) was correct, an infringement of A 123(2) caused by an undisclosed generalisation nevertheless would result in the application having to be refused. Also in this case the board’s opinion on the issue of inventive step would be without any effect on the other issues. Thus in the present case the main reasons given for the contested decision are not analysed in detail in the statement of grounds of appeal. [2.8]

Consequently the appellant effectively leaves it to the board to ascertain any facts substantiating the appellant’s assertion that the decision under appeal was incorrect also in respect of the first and second reasons for refusing the application. This in effect amounts to a request that the patentability of the subject-matter denied by the department of first instance be reconsidered without giving any reasons as to why the decision of the first instance should be set aside as far as the first and second reasons for refusing the application are concerned. The appeal is thus not substantiated. [2.9]

For these reasons it is decided that the appeal is rejected as inadmissible. 

Recent decision T 844/05 comes to the same conclusion in a situation where an application was refused on the grounds of lack of novelty and inventive step as well as unallowable amendments and where the appellant’s statement of grounds of appeal only contained arguments in respect of A 123(2).

To read the whole decision, click here.