T 2193/09 – Fatal Silence

The present appeal was filed after the Examining Division (ED) had refused the patent application.

In the proceedings before the ED, the applicant had several times filed amended claims in reply to communications. Following the filing of new claims with a letter dated 20 December 2005, the ED, in a communication dated 22 September 2006, set out new objections under both A 84 and A 56. In reply, the applicant filed a new set of claims with a letter dated 2 April 2007 and requested that examination should proceed on the basis of the new claims on file. In a communication accompanying the summons to oral proceedings (OPs) the ED informed the applicant that the claims were not acceptable under R 137(3). In its response the applicant withdrew the request for OPs but did not change the request to proceed on the basis of the claims filed with the letter dated 2 April 2007.

The grounds for the decision under appeal read as follows (click to enlarge):

The statement of grounds of appeal (11 pages) comprises a main request (pages 5 to 8) and an auxiliary request (pages 9 to 11) and statements as to their basis in the application as filed, their novelty and their inventive step (pages 1 to 4).

The Board raises an admissibility problem:

[1] Admissibility of the appeal (A 108 and R 101(1))

[1.1] Pursuant to A 108, third sentence, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations within four months of notification of the decision. An appeal which does not comply with this requirement shall be rejected as inadmissible (see R 101(1)).

[1.2] According to established case law the statement setting out the grounds of appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases his arguments, without first having to make investigations of its own (see Case Law of the Boards of Appeal, 5th edition 2006, VII.D.7.5.1).

[1.3] In the present case, the applicant had requested the grant of a patent on the basis of a set of claims to which the ED did not give its consent under R 137(3). The application was refused on the ground that the ED, pursuant to A 113(2) EPC 1973, was bound to decide on a text submitted to it. Thus the decision under appeal was based on the ground that there was no admitted set of claims. Implicitly this meant that a patent could not be granted (A 97(1) in conjunction with A 78(1)(c) EPC 1973), and had to result in the refusal of the application (A 97(2)).

[1.3.1] In this context the relevant legal question is whether the statement of grounds of appeal sets out why, according to the appellant, the ED was not correct in basing its decision on the ground that there was no set of claims admitted under R 137(3).

[1.3.2] The text of R 137(3) which is applicable to the present case reads as follows:

“After receipt of the first communication from the ED, the applicant may, of his own volition, amend once the description, claims and drawings, provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the ED” (emphasis by the board).

[1.4] The statement of grounds of appeal in the present case does not give any reasons why the decision is alleged to be incorrect. The lack of claims underlying the decision under appeal is not discussed in the statement of grounds of appeal. The appellant does not contest that there was no admitted set of claims and that the ED was entitled to refuse the application as a consequence. Nor does the appellant contest that the ED was entitled to exercise its discretion under R 137(3) or that it had exercised this discretion in accordance with the right principles.

Instead the statement of grounds of appeal gives arguments as to why the subject-matter of the (amended) main request filed with the statement of grounds of appeal is both new and inventive in view of the references cited in the decision under appeal and states that the appellant’s arguments as to novelty and inventive step “have not been duly considered by the contested decision”.

Regarding the auxiliary request, the appellant merely submitted that these claims specified the amendment that had been required by the ED, but did not provide arguments as to why the re-filing of the claims (with an additional feature) overcame the objection of a lack of claims admitted under R 137(3), or why the claims should be admissible on appeal.

Thus the submissions in the statement of grounds of appeal do not set out the relevant reasons why the decision of the ED not to give its consent to the amendments under R 137(3) and to refuse the application for lack of admissible claims is alleged to be incorrect or not to have been taken in accordance with the right principles.

[1.5] It is established case law that, in exceptional circumstances, claims filed with the statement of grounds of appeal may suffice for the appeal to be admissible even if the statement of grounds of appeal does not explicitly set out why the decision under appeal is alleged to be incorrect.

This may, for instance, be the case if from the decision under appeal and the statement of grounds of appeal it is clear that the claims of an auxiliary request filed with the statement of grounds of appeal overcome all the objections raised in the decision under appeal (see Case Law of the Boards of Appeal, 5th edition 2006, VII.D.7.5.2(d)).

[1.5.1] In the present case, however, there are no such exceptional circumstances as far as the main request is concerned. The wording of the amended claims according to the main request filed with the statement of grounds of appeal does not enable the board to immediately understand why the ED should have exercised its discretion under R 137(3) in a different manner. In particular, the additional feature is not concerned with re-introducing a feature (“a 7 pole, 2 zero, equiripple filter”) the removal of which had led the ED to refuse its consent.

[1.5.2] The statement of grounds of appeal, in conjunction with the wording of the amended claims according to the auxiliary request filed with the statement of grounds of appeal, makes clear that the claims of the auxiliary request are an attempt to re-introduce the feature the removal of which had been indicated in the decision under appeal as a reason for not giving consent to the amendment. However, the appellant did not set out legal or factual reasons why the filing of these claims with the statement of grounds of appeal removed the deficiency of a lack of a set of admitted claims. Also, the board fails to see how the mere filing of these claims in separate appeal proceedings addressed the issue of the ED’s not having given consent to different claims in examination proceedings. Furthermore, the appellant did not set out reasons why the ED should have rectified its decision (A 109(1) EPC 1973) or why the board should set it aside. Moreover, the appellant did not argue, and there is no indication in the file, that the claims of the auxiliary request overcome objections under A 84 EPC 1973 which had been raised by the ED […].

[2] The admissibility of the appeal is a prerequisite for the examination and decision as to the allowability of the appeal (see A 110 and A 111 EPC 1973). If the board finds that that the appeal is inadmissible, examination and decision as to its allowability are not possible.

Hence, in section [1] of this decision concerning the admissibility of the appeal, the board has considered the appellant’s arguments submitted after the time limit for filing the statement of grounds of appeal (see A 108) only to the extent that they may be relevant for the assessment of whether the statement of grounds of appeal suffices to render the present appeal admissible.

In the present case this means that the board has examined whether the arguments presented in the letter dated 14 June 2010 and in the OPs have an impact on the board’s understanding of the statement of grounds of appeal or the decision under appeal.

[2.1] In the letter dated 14 June 2010 the appellant submitted the argument that, at least implicitly, the reason for not admitting the set of claims submitted to the ED was lack of novelty or lack of inventive step of the subject-matter claimed; but the appellant did not indicate any particular statement in the decision under appeal supporting that argument. The decision under appeal, however, discusses inventive step only in a hypothetical context of non-admitted claims in a paragraph headed “The following is not part of this decision”.

[2.2] The appellant’s argument in the letter dated 14 June 2010 that, under A 125, it should be sufficient to explain the facts of the case since the board could be assumed to know the legal framework is not convincing, as the facts of the present case which led to the refusal of the application were not the facts given in the statement of grounds of appeal (see in particular points [1.3] and [1.4] above).

The appeal is rejected as inadmissible.

Although the applicant certainly was to blame for not having converged towards an acceptable set of claims in due time, I find this decision a little tough on the appellant. Perhaps the appeal would have been found admissible if the statement of grounds of appeal had not been silent on why the new claims should be accepted by the ED via interlocutory revision. 

All things considered, it seems more tricky to file an admissible appeal after a (justified) rejection following admissibility problems under R 137(3) than after a (justified) rejection for say lack of novelty, in particular when there are other issues (inventive step, clarity) under the surface of the contested decision.

Should you wish to download the whole decision, just click here.