Wednesday, 21 July 2010

T 893/07 – Remittal? No Way

[3.1] The appellant’s representative reminded the Board that the summons to attend oral proceedings (OPs) before the examining division (ED) had been issued after a single communication of the ED and that, as a consequence, the appellant/applicant had had only limited opportunities to defend his case before the first instance department.

She further emphasized that the current request remedied all objections relied upon by the ED in its refusal and that the jurisprudence of the boards of appeal implied, in such situations, that the case be remitted back to the ED in order to ensure that the applicant had the benefit of two instances. In support of this view, reference was made inter alia to decisions of the boards of appeal T 180/95, T 47/90 and T 139/87.

Finally, the appellant stressed that the document reflecting the closest prior art had been introduced ex officio by the Board of appeal for the first time into the proceedings in the annex to the summons to attend OPs before the Board.

In conclusion, the appellant’s representative held that the balance between conflicting principles such as, on the one hand, the right of the appellant to be heard and, on the other hand, the right of the public to have a fair knowledge of the rights resulting from a patent application within a reasonable period of time was on the side of the appellant.

[3.2] The argument based on the fact that the ED issued just one communication before it summoned to OPs and thus deprived the applicant from further opportunities to defend its case is not convincing. Apart from the fact that the course of action followed by the ED is in line with common examination proceedings, it is noted that the applicant even did not seize the opportunity to defend its position before the ED and withdrew its request for OPs one month before they took place. As a consequence, OPs were held in the absence of the applicant.

The Board further observes that document D3 is a family member of a document cited in parallel proceedings before the US Patent Office and that its content was thus known to the appellant. In this context, the appellant could not be considered unprepared to the introduction of D3 into the appeal proceedings.

Furthermore, the Board notes that, contrary to the view defended by the appellant, the jurisprudence of the boards of appeal is not unanimous when deciding on the possible remittal of a case to the department of first instance. As for instance stressed in decision T 111/98, remittal depends on the circumstances of the case. In particular,
“Amendment of the claims in response to the citation of a new document during appeal proceedings is not as such a sufficient reason to remit the case to the department of first instance” (cf. T 111/98 [headnote; 1.2]).
In view of this decision, what actually appears to be essential when a board exercises its discretion to remit a case is whether the factual framework has substantially changed during the appeal proceedings.

In the Board’s judgement, the introduction of D3 into the present appeal proceedings does not, however, amount to a substantial change in the factual framework. As may be derived from the file wrapper, the problem-solution analysis carried out by the Board starting from document D3 is quite similar to the analysis made by the ED when starting from document D1. In particular, the distinguishing feature of the claimed invention still resides in the sole feature of the controller being adapted to variably control the reactance value. Similarly, the objective problem to be solved is still considered to be the desire to improve the degree of freedom in the control of the antenna configuration in order to control the antenna device, as established by the ED in its decision with regard to former dependent claim 5.

[3.3] The position of the ED with regard to current claim 1 can thus be reasonably estimated from the previous proceedings before the ED as may be appreciated from the file wrapper. A remittal to the ED would therefore appear to be a purely formalistic act and contrary to the principle of procedural economy. For these reasons, the request that the case be remitted to the ED for further prosecution is rejected.

To read the whole decision, click here.