Tuesday, 8 June 2010

T 760/08 – Too Short On Substance

The present decision deals with an appeal against the decision of the Opposition Division (OD) to revoke the patent for lack of novelty of claim 1 with respect to documents D2 and D3. The patent proprietor filed a new set of claims and the following statement:
“New claim 1 according the main request has the features of claims 1 and 4 as granted, wherein the features of claims 1 and 4 as granted form the preamble of new claim 1 and the feature of claim 6 as granted forms the characterising part of new claim 1. New claim 1 is followed by new claims 2 to 12 which correspond to claims 2, 3, 5 and 7 to 14 as granted, only the references to preceding claims having been adapted.

As the prior art does not contain a heating with all the features of claim 1, in particular with the characterising feature of new claim 1, the subject-matter of claim 1 according to the main request is novel over the prior art.

Moreover, [its] subject-matter also involves an inventive step because the prior art does not disclose the feature of the characterising part of new claim 1, so that combinations of two documents of the prior art cannot lead to the subject-matter of the main request in an obvious way. Therefore, the request to set aside the decision dated February 12, 2008 and to maintain the patent in amended form is fully justified.”
The Board deals with the question of whether the appeal is admissible:

** Translation from the German **

[2] In conformity with the case law the Board assumes that a statement of grounds of appeal can be considered to be sufficiently substantiated if a new factual situation (Tatbestand) which deprives the contested decision of its basis (T 252/95) is presented, in particular via the filing of new sets of claims (T 934/02). The Board is of the opinion that the appellant has two options as regards the statement of grounds of appeal. Either it attacks the decision of the OD by claiming that an error has been made and that this error would oblige the Board to completely set aside the decision if the Board followed the statement of facts (Sachvortrag) made by the appellant. This requires a conclusive statement of facts concerning all the grounds on which the decision is based on behalf of the appellant. Or the appellant makes it possible for the Board to redress its situation by filing amended sets of claims, which the appellant believes to be suitable for remedying the deficiencies that have been objected in the decision.

[3] However, in the latter situation it is not sufficient to simply file a new set of claims without any comment. Rather the appellant has to justify why and to what extent the amended set of claims takes into consideration the factual and legal appreciations on which the OD has based its decision and overcomes them to the extent that the decision is to be set aside. (T 220/83 and T 145/88) What matters is not the length (Umfang) of the statement of grounds of appeal but its factual content:
The requirement of A 108 is for a statement which sets out the substance of the Appellant’s case; that is, the reasons why the appeal should be allowed and the decision under appeal should be set aside. […] a well-drafted Statement of Grounds of Appeal should contain reasoning that is full but concise. And, in general, it is obvious that the less reasoning that a Statement contains, the greater will be the risk that the appeal will be rejected as inadmissible for non-compliance with A 108. (J 22/86 [2])
[4] These considerations are reflected in Article 12(2) of the Rules of Procedure of the Boards of appeal (RPBA):
The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed […] and should specify expressly all the facts, arguments and evidence […] (emphasis by the Board)
[5] One may expect from a statement of grounds of appeal which contains the complete case (Sachvortrag) of the appellant within the meaning of Article 12(2) RPBA that it is self-consistent (widerspruchsfrei), unambiguous and sufficient.

[6] In the present case the patent has been revoked for lack of novelty of the subject-matter of claim 1. When filing the statement of grounds of appeal, the appellant has presented a new main request and has explained it as cited above. The first paragraph of the statement refers to the amendments that have been made, the second paragraph deals with novelty and the third with inventive step.

[7] Paragraph 1 of the statement of grounds of appeal first indicates that as far as the newly filed main request is concerned, “the features of claims 1 and 4 as granted form the preamble of new claim 1”. Claim 4 of the patent as granted refers to an electrical resistance heating. However, this feature is not in the preamble but in the characterising part of new claim 1, which now has two new features, i.e. the electrical resistance heating from claim 4 as granted and the thick-layer heating body from claim 6 as granted. Therefore, the justification is to some extent contradictory.

[8] The second paragraph of the statement of grounds of appeal refers to the “characterising feature” (Merkmal des Kennzeichens), which feature is not unambiguous, for the reasons mentioned above. As a matter of fact two new features have been incorporated into the characterising part. Apparently only one of them is suitable for restoring novelty. Moreover, the second paragraph does not deal with the decision of the OD and the documents D2 and D3 cited by it but only mentions the “prior art” in general terms. As the OD has justified the objection of lack of novelty with documents D2 and D3, one might presume that the “prior art” designates those documents. However, this is not unambiguous because the third paragraph, which deals with inventive step, also mentions the “prior art” but arguably refers to other documents than only D2 and D3. Therefore, there is no unambiguous reference to the prior art from which the appellant wishes to distinguish itself.

[9] Because there is no unambiguous definition of the prior art and of the “characterising feature” (Merkmal des Kennzeichens) the last two paragraphs of the statement of grounds of appeal reads as if they were standard phrases which do not refer to the impugned decision in a concrete manner. If the term ‘heating’ was replaced by the term ‘device’, they could be found in submissions (Schriftsatz) in any patent case in the field of mechanics. Therefore, these paragraphs are not suitable for dealing with the impugned decision in a concrete manner. They do not point out which features justify novelty or why these features are novel over D2 or D3. The appellant leaves it to the Board to clarify the contradictions in the first paragraph, to define the prior art mentioned in paragraphs 2 and 3 and to consider which of the two features that have been incorporated into the characterising part, isolated or together, the appellant believes to make the claims novel or patentable.

[10] During the written proceedings and partly also during the oral proceedings, the appellant has cited the following decisions in order to support its submissions on the requirements for statements of grounds of appeal: J 2/87, T 563/91, T 729/90, T 105/87, T 162/97, T 833/00.

In J 2/87 the written approval to the grant of a patent was accepted as statement of grounds of appeal. This case is not comparable with the present case because there were no amendments requiring an explanation.

In T 105/87 it was stated that “by limiting the subject-matter of the claim and by submitting reasons for the patentability of such a claim the Appellant has sufficiently dealt with the ground of the decision of the first instance”. Therefore, in this case there were reasons for the patentability of the claim, which means that the case is not comparable with the present case.

In T 833/00 [1.2] the appellant had requested that the patent be maintained on the basis of the claims which the OD had considered allowable and had filed again all the arguments in favour of patentability of the remaining claims it had already presented. Therefore, this case is not comparable either.

On the other hand, T 563/91 [1.2], T 729/90 [1.2] and T 162/97 [1.1.2] are decisions that could support the position of the patent proprietor.

However, there are several other decisions that have not been cited by the patent proprietor which establish rather more strict requirements for statements of grounds of appeal. In particular, one may cite T 220/83 and T 1045/02 [5] where a similar factual situation triggered the following statement: “If an application is rejected on the ground of lack of novelty the statement of grounds of appeal should at least make it clear which feature of the claimed object the appellant believes not to have been disclosed in the relevant prior art (here D2). The duty of justification has not been complied with when the Board has to speculate for which reasons the appellant considers that the impugned decision is incorrect”.

[11] This Board has already made clear in decision T 922/05 that it considers that the principles underlying Article 12(2) RPBA appear to be a suitable standard (Maßstab) for the admissibility of an appeal that generalises the above case law which is not always uniform and which in most cases depends on the concrete circumstances of the individual cases. For the reasons given in points [7] to [9], the present statement of grounds of appeal does not comply with these principles.

[12] Therefore, the Board comes to the conclusion that the statement of grounds of appeal filed by the appellant is insufficient. Arguments filed after the time limit fixed in A 108 cannot be taken into consideration for assessing the admissibility of the appeal. Thus the appeal is to be rejected as inadmissible under R 101(1).

I find this decision very tough on the appellant. Maybe something happened during the proceedings which exasperated the Board? Be that as it may, the decision is a useful reminder that statements of grounds of appeal should be drafted very carefully.

To read the whole decision (in German), click here.