Saturday, 29 May 2010

R 19/09 – You Need A Causal Link

The present petition for review deals with decision T 1874/06 where the opposed patent was revoked.

[5] The discussion during the appeal proceedings mainly concerned inventive step pursuant to A 56 in view of document E2A and, in particular, the following question: Was it obvious for the skilled person aiming at further improving the performance of tools to increase the QI value of the layer system known from E2A to a value of at least 5?

It is in this context that the petitioner referred to measuring results disclosed in tables 1 and 2 of his patent. Together with the grounds of appeal he filed “sketch A” representing the values of these tables in the form of two characteristics showing the cutting performance versus the QI values. It was submitted that both characteristics showed an unexpected increase of the cutting performance of the tool at QI values of at least 5. This was one of the proprietor’s arguments in support of inventive step.

[6] Neither in the Board’s communication annexed to the summons to oral proceedings (OPs) nor anywhere else in the file is there any indication that the issue of an allegedly “wrong comparison” between the QI values of the top characteristic and those of the bottom characteristic in “sketch A” was raised. It therefore appears that this reason of the Board of Appeal for not acknowledging an unexpected effect […] was indeed never discussed in the appeal proceedings. Thus, it cannot be ruled out that the petitioner’s right to be heard was disregarded in this respect.

[7] In […] the petition and at the OPs before the Enlarged Board of Appeal […] the petitioner submitted that the violation of his right to be heard was fundamental as there was a causal link between this violation and the final decision (thereby implicitly applying the jurisprudence of the Enlarged Board of Appeal in case R 1/08). As conceded by the petitioner such a link can only be assumed to exist if the Board had refused to acknowledge an unexpected effect solely based on the “wrong comparison” argument (on which the petitioner was not heard). If, on the other hand, the Board had refused to acknowledge the unexpected effect also for other reasons on which the petitioner was heard it could not be argued that the procedural deficiency causally determined the final decision.

[8] The “wrong comparison” argument referred to above is discussed in point [5.5.1] of the decision under review. Point [5.5.1] is clearly devoted to a discussion of the arguments forwarded by the petitioner. These considerations are preceded, in point [5.5], by a comprehensive reasoning of the Board concerning inventive step having regard to document E2A. Based on the teaching of document E2A alone, in particular of its examples 1 and 7, the Board comes to the conclusion that “the application of a bias voltage of -50V in combination with the discharge current and the nitrogen pressure being held constant at those of examples 1 and 7 (...) would inevitably produce a QI value above 5. Therefore the person skilled in the art would inevitably arrive at the subject-matter of claim 1 of auxiliary request II without any inventive skill”(emphasis added). Whether this argumentation is correct in substance cannot be the subject of review proceedings (see R 2/08 [5]; R 9/08 [6.3]). In any case the line of reasoning in point 5.5 is independent of a possible unexpected effect of the claimed subject-matter and therefore independent of “sketch A”.

9. For this reason it is highly questionable whether the procedural deficiency referred to in point [6], supra, could have been causal for the final decision. However, this question can be left open since, as will be shown in the following, the “wrong comparison” argument was not the only reason of the Board for not acknowledging an unexpected effect.

[9.1] Point [5.5.1] of the reasons deals, in a first paragraph, with the appellant’s counter-arguments in respect of the teaching of document E2A. In a second paragraph the Board then analyses appellant’s “sketch A” in view of the alleged unexpected effect. Based on the “wrong comparison” argument the Board concludes that “it has not been shown that this effect has its origin in the distinguishing feature”. Then the Board goes on to state: “Furthermore, as evident from examples 1-7 a higher QI value does not imply an increased cutting distance”, followed by an analysis of the QI values and the corresponding cutting distances of various examples of table 1 of the patent.

Independently of whether or not this analysis is correct in substance, it shows that the Board considered the alleged effect of an increased cutting distance at higher QI values not only under the aspect of a supposedly “wrong comparison” between two different layer systems, but also based on an analysis of the QI values and the cutting distances belonging to one specific layer system. Even if it is true that the Board of Appeal did not explicitly refer to “sketch A” in this connection, its analysis refers to measuring values substantially as contained in the bottom characteristic of “sketch A” from which the petitioner derived the existence of an unexpected effect. The conclusion drawn by the Board from these measuring values that “a higher QI value does not imply an increased cutting distance” is to be considered as a direct answer to the appellant’s argumentation of an unexpected effect. The Board thus denied the existence of an unexpected effect for a second reason on the same factual basis as “sketch A” submitted and discussed by the appellant/petitioner during the appeal proceedings. The question whether or not this finding of the Board of Appeal was correct in substance cannot be the subject of the review proceedings.

[9.2] The Enlarged Board of Appeal therefore concludes that the “wrong comparison” argument was only one of two grounds for which the Board did not acknowledge the existence of an unexpected effect and that the second ground given in the decision under review was a reaction to the submissions of the appellant on this issue. Consequently, for this reason alone there is no causal link between the procedural deficiency as specified in [6], supra, and the decision under review. Due to such a lack of causal link the violation of A 113 is clearly not fundamental within the meaning of A 112a(2)(c).

To read the whole decision, click here.

NB : This decision has also been discussed on the Blog du droit européen.


Anonymous said...

Given that the reasoning in point 5.5 was independent of a possible unexpected effect, I do not think there was a "procedural deficiency" at all. Art. 113(1) EPC only requires that the appellant has been given the opportunity to present its comments on the grounds or evidence on which the decision is based. Point 5.5.1 only refuted a counterargument.

If it was procedurally required to give the appellant an opportunity to comment on the refutation of any counterargument, the appellant could easily create an endless loop. But in my view there is no such procedural requirement. The EBA seems to say there is, though (even though it does not consider such a violation "fundamental").

On the other hand, if the fact that there was no unexpected effect had been important for the reasoning of point 5.5 (e.g. if point 5.5 had implicitly relied on the absence of an unexpected effect without giving proper reasons), then the appellant in my view should have been given the opportunity to present its comments on both the (parallel) grounds for which the Board did not acknowledge the existence of that effect, unless one was clearly presented as an obiter. This would be similar to a case in which an application is refused both for lack of clarity and for lack of inventive step, without respecting the right to be heard for one of these grounds (resulting maybe not in a "fundamental" violation but in a violation nonetheless, and if I'm not mistaken most of the time a "substantial" violation).

Oliver G. Randl said...

Thanks. Your remark made me realize that I should have added a link to the decision under consideration (T 1874/06). I have repaired this deficiency.