T 301/10 – Once May Be Enough

In the present decision the Board reverses the finding of lack of inventive step by the Examining Division (ED). It then deals with the question of whether the appeal fee should be reimbursed because the ED had refused the application after one single exchange of letters. What does A 94(3) really say?

[5] The appellant has requested the reimbursement of the appeal fee on the grounds that the refusal of the application after one single official communication amounted to a procedural violation.

[5.1] The relevant facts can be summarised as follows:

a) In the official communication pursuant to A 94(3) dated 19.06.2008 the ED referred to the objections raised in the European search opinion accompanying the extended ESR dated 11.03.2008 and issued according to R 62(1). In this opinion it was held inter alia that the subject-matter of claim 1 did not involve an inventive step […].

b) In its reply dated 18.09.2008 the appellant filed amended application documents. In particular, claim 1 was amended by insertion of reference signs relating to the drawings and by the insertion of the expression “traversing back through the jet” in the resulting amended claimed feature “an ultrasonic transducer (68) for generating ultrasonic waves through the liquid jet and for detecting echoes traversing back through the jet of the ultrasonic waves [...]” (emphasis added). In its reply the appellant also submitted counterarguments in response to the view of the ED that the subject-matter of claim 1 did not involve an inventive step.

c) The ED then refused the application by the decision dated 26.11.2009 now under appeal. In its decision the ED

- held that the insertion in claim 1 of the expression “traversing back through the jet” constituted an amendment of a “purely linguistic nature” […]

- noted that no oral proceedings (OPs) were requested by the appellant […], and

- held that claim 1 did not involve an inventive step, gave reasons identical to those already given in the European search opinion, and found the counterarguments of the appellant insufficient to challenge its view on the issue of inventive step […].

5.2 The Board first notes the following:

i) The insertion of the expression “traversing back through the jet” in claim 1 subsequently rejected by the ED - although representing in the Board’s view more than just an amendment of “a purely linguistic nature” as held by the ED - appears to have the sole effect of specifying explicitly a feature that was implicit - or at least was considered by the ED as manifestly implicit - in the subject-matter of the unamended claim. Consequently, the amendment to claim 1 did not have any impact on the claimed subject-matter as construed by the ED by reference to the European search opinion, not at least to the extent of affecting the ED’s assessment of inventive step of the claimed invention. It follows that, contrary to the submissions of the appellant, there was no need for the ED to re-examine the amended claimed subject-matter as its previous assessment of inventive step was already based on a construction of the unamended subject-matter in which the transducer detected echoes traversing back through the liquid jet.

ii) As noted by the ED in its decision, the appellant did not request OPs.

iii) The reasons given by the ED for the refusal consisted of those previously notified to the appellant by reference to the European search opinion, and in its decision the ED also reasoned why the counterarguments submitted by the appellant were, in its opinion, not persuasive. Consequently the decision was sufficiently reasoned within the meaning of R 111(2) and, in addition, was based on grounds on which the appellant already had an opportunity to comment (A 113(1) EPC 1973).

[5.3] The appellant has submitted that the circumstances of the case did not justify a refusal after only one exchange of letters and that consequently the refusal constituted an abuse of process contrary to A 96(2).

The appellant appears to refer here to A 96(2) EPC 1973 and the Board understands these submissions as referring to the corresponding article of the EPC 2000 applicable in the present case (see Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, published in OJ EPO, Special edition No. 1 2007, 197), i.e. A 94(3) which, as far as the issues raised by the appellant are concerned, has the same text as the earlier article, i.e. that in case

“the examination […] reveals that the application or the invention to which it relates does not meet the requirements of this Convention, the ED shall invite the applicant, [...] as often as necessary, to file his observations” (emphasis added).

According to the established case law developed in relation to A 96(2) EPC 1973 and also applicable, as far as the issues raised by the appellant are concerned, to A 94(3), the expression “as often as necessary” in this article indicates that the ED has a discretion which has to be exercised objectively in the light of the circumstances of the case (see for instance decisions T 162/82 [12], T 300/89 [9.1], and T 726/04 [7]). Thus, as far as the alleged procedural violation is concerned, the question to be addressed by the Board is whether the ED, by not inviting the appellant again to comment on the same assessment previously communicated to it before contemplating the refusal of the application, exercised its discretion under A 94(3) in an incorrect way.

In the present case, nothing in the appellant’s response to the first communication brought the ED to change its mind in respect of the issue of inventive step since, apart from the amendment referred to above which had no effect on the ED’s assessment of the claimed subject-matter (paragraph [5.2]-i) above), the counterarguments put forward by the appellant failed to convince the ED that the claimed subject-matter did involve an inventive step. In these specific circumstances - and irrespective of the fact that the substantive assessment of the case by the ED is not being followed by the present Board […] - it became legitimate for the ED to reject the application without issuing a further communication.

In addition, contrary to the appellant’s submissions, neither A 94(3) alone nor this article in conjunction with the remaining procedural requirements of the EPC (and in particular with those of A 113(1) EPC 1973) require that the applicant be given a repeated opportunity to comment on the argumentation of the ED so long as the decisive objections against the grant of a patent remain the same insofar as the grounds for these objections have been presented to the applicant, completely and in due time (see for instance T 162/82 [13] and T 726/04 [7]).

The Board also does not agree that because the expression “as often as necessary” is synonymous with “as many times as necessary”, the word “often” itself implies more than once; rather, “as many times” also includes one single instance.

The further argument of the appellant that there was still a possibility of restricting the claimed invention and that one can hardly maintain that the possibility for amendment has been exhausted during the examination procedure cannot be followed by the Board. The Boards sees no legal basis in the EPC and no general procedural principle that would support the view that a rejection cannot be issued if there are still ways of restricting the claimed subject-matter or before all possibilities for amendment have been “exhausted” as appears to be the position of the appellant. On the contrary, it is incumbent upon the appellant to maintain unamended or to amend - optionally on an auxiliary basis - the application documents upon which examination is to be carried out and a decision eventually to be reached (A 94 and A 97 together with A 113(2) EPC 1973) (see T 300/89 [9.1]), and not upon the ED to prolong the examination procedure beyond the procedural framework set out in the EPC (see in this respect A 123(1) together with R 86(3) EPC 1973) until the applicant opts for amending the application and eventually “exhausts” all possibilities for amendment, as this would seriously undermine the principle of procedural economy.

As regards the submissions of the appellant that it was necessary for the ED to issue a further communication in order to acquire a full understanding of the invention, the Board notes that the ED manifestly found itself in a position to form an opinion on the substantive issues under consideration and in particular on the counterarguments presented by the appellant. In these circumstances, the question of whether the ED was objectively right in believing that it did in fact have a full and correct understanding of the invention and the further question of whether or not the ED’s understanding of the substantive matters of the case was correct or is shared by the appellant or by the present Board constitute by their very nature a matter of judgment on substantive issues and, contrary to the appellant’s submissions, they are immaterial to the procedural question of whether a further communication was necessary within the meaning of A 94(3).

The Board acknowledges that the amendments made to the application documents in response to the first communication overcome other objections raised by the ED by reference to the European search opinion (claims excluded from patentability by A 53(c) EPC 1973 and inconsistent use of reference signs in the description and drawings) and can certainly be qualified, as submitted by the appellant, as a serious attempt to overcome the corresponding objections raised by the ED. However, none of these amendments had an impact on the subject-matter of claim 1 or on the ED’s assessment of inventive step (paragraph [5.2]-i) above), and therefore the appellant’s submissions in this respect have no effect on the issues under consideration.

As regards the appellant’s submission that no OPs were requested because it was “felt that the application was in order for grant”, the Board notes that this is no excuse for having failed to request OPs because, first, unless otherwise expressly stated, it is generally assumed that the application documents on file at each stage of the examination procedure are from the point of view of the applicant in order for grant (see A 97(1) EPC together with A 113(2) EPC 1973) and, second, pursuant to A 116(1) EPC 1973 it is incumbent upon the appellant to request or not OPs - possibly only on an auxiliary basis - in accordance with the circumstances (see T 300/89 [9.2]).

In these circumstances, the Board is unable to identify any reason to conclude that the ED had exercised its discretion under A 94(3) in an incorrect way.

[5.4] In view of the above considerations, the Board does not see any reason to consider that in the circumstances of the present case the refusal of the application immediately after the reply to the first and sole official communication of the ED constituted a violation of A 94(3) or of any other procedural principle enshrined in the EPC.

In addition, the Board is unable to identify any other procedural violation in the first-instance proceedings (point [5.2] above, last paragraph), let alone a substantial procedural violation that would justify the reimbursement of the appeal fee under R 67 EPC 1973 as requested by the appellant.

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NB: This decision has also been discussed on Le blog du droit européen des brevets.