Monday, 27 September 2010

T 1370/08 – Weighed And Found Too Light

The present decision deals with the refusal of an application by an Examining Division (ED), primarily for lack of support in the description (A 84), but there were also other deficiencies under A 56, A 83 and A 123(2).

The applicant then filed an appeal and sent the following statement of grounds of appeal (click to enlarge):

The Board saw an admissibility problem:

[2.1] A 108 in conjunction with R 99(2) requires that a statement setting out the grounds of appeal is filed which indicates the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.

In this respect, the jurisprudence of the boards of appeal has developed the general principle applicable to statements of grounds of appeal that the grounds of appeal should specify the legal or factual reasons on which the request for setting aside the decision is based (see for instance T 220/83). The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect.

[2.2] In the present case, the grounds given consist, on the one hand, of a reference to reasons presented in earlier letters […] and in a facsimile […] and, on the other hand, of the allegation that the examiner had not properly understood the invention and was not correct in his assessment of the value of the invention. This is followed by a brief explanation as to the merits of the invention […].

[2.2.1] Statements of grounds of appeal which merely refer generally to submissions made in the first instance proceedings are normally not considered to be adequately substantiated since they do not clearly indicate which grounds of the decision are regarded as mistaken, and why, and therefore make it impossible for a board to immediately consider and decide upon the merits of the appeal without making investigations of its own (see for instance decisions T 646/92, T 188/92, T 287/90 or T 349/00).

In the case at hand, the situation is even worse : the submissions referred to in the statement of grounds of appeal include an acknowledgement that one of the reasons presented in the decision is in fact correct. The facsimile of 11 February 2008 responded to a communication of the ED […] which directly preceded its decision and which had raised concrete objections under A 56, A 83 and A 84. The facsimile reproduces the text of an email with comments which one of the inventors had sent to the appellant’s representative. Insofar as these comments make reference to the said communication of 15 November 2007, they acknowledge that the mathematical expression “1 - hp(x,l)” which appears in claim 1 of what is still the appellant’s main request is erroneous. In other words, the most recent submission made in the first instance proceedings to which reference is made as substantiation of the grounds of appeal amounts to an admission that the decision is correct in this respect and, as far as the reasons for refusal under A 84 are concerned, does not even attempt to defend the request on which the contested decision is based and which is maintained as the main request for the appeal.

As a matter of fact, the objection of lack of support in the description for a “weight” of the claimed value of “1 - hp(xi,l)” was not addressed by the appellant in any of their responses.

[2.2.2] The remainder of the facsimile merely alleges a fundamental misunderstanding of the invention on the part of the ED. It constitutes in fact the only substantive submission in the grounds of appeal presented.

However, it does not address the question as to why the findings of the ED, in particular the finding of the said lack of support of the claimed subject-matter in the description of the application, were wrong but, instead, briefly explains why the appellant considers his invention to be of value and useful.

Besides, this brief explanation refers to technical items, ie “three portions of the final corpus of training entries” and “collection of utterances data”, which are not the subject of the independent claims of the requests made with the statement of grounds of appeal.

[2.2.3] It follows that the statement of grounds of appeal does not specify any legal or factual reason why the objection identified by the ED in paragraph 1 of the reasons for the decision may be regarded to be wrong and therefore lacks adequate substantiation.

[2.3.1] Exceptionally, an appeal may be considered admissible even if its grounds fail to deal with the reasoning of the contested decision. In decision T 934/02 [2] the board found that an appeal which does not state any substantive reasons as to why the contested decision is wrong may nevertheless be regarded as being substantiated merely by the fact that amended claims are filed which deprive the contested decision of its basis.

Similarly, in decision T 729/90 [1.3], the board held that the fact alone that the statement of grounds of appeal contained a set of claims forming an auxiliary request rendered the appeal admissible.

However, in each of these cases, the respective board required that a causal link between the amended claims and the reasons given in the contested decision must be apparent. This causal link was evident either in the fact that the amended claims corresponded to a proposal of the ED or in the fact that an explanation had been provided as to why certain amendments had been performed and why the decision was therefore no longer valid.

[2.3.3] In the present case an auxiliary request was filed on 28 June 2008 with the statement of the grounds of appeal. However, a causal link has not been demonstrated between the amended claims and the reasons set out in the contested decision. In particular, the appellant’s statement of grounds of appeal does not contain any explanation as to the significance of the amendments made in the auxiliary request nor as to why these amendments address the objections raised by the ED, in particular in sections 2 and 3 of the reasons for the decision. Consequently, the mere act of filing an auxiliary request together with the statement of grounds of appeal in the present case does not make up for the necessary substantiation.

[2.4] For the above reasons, the statement of grounds of appeal filed in the present case amounts to no more than a mere assertion that the contested decision is incorrect, without stating the legal or factual reasons why that decision should be set aside (see T 432/88 [2]), and thus does not satisfy the provisions of A 108 in conjunction with R 99(2).

[…] The appeal is rejected as inadmissible.

If you wish to download the whole decision, please click here.


Anonymous said...

While that statement is light indeed, one cannot but feel that the Applicant also didn't endear itself to the Board of Appeal by referring to it as "the Examiner" (third paragraph: "...for the Examiner's convenience"). DG3 sees itself several steps above the first-instance hoi polloi, and such familiarity was certain to be punished.

Also, from that fateful mistake and several typically American turns of phrase ("incorporating herein", "respectfully submit"), it's obvious that this was a textbook case of a US applicant dictating the terms of European patent prosecution without much knowledge of European practice, or regard to the advice of its European patent attorney.

Anonymous said...

Simple enough