T 511/07 – No Harm Done

In its statement of grounds of appeal, the appellant, whose application had been refused by the Examining Division (ED), raised a certain number of “procedural aspects”:

(a) In the second A 96(2) communication the ED introduced new prior art as a result of a secondary search, some of which was not clearly pre-published.

(b) The applicant’s right to be heard was not respected as it did not have the chance to comment on the newly cited prior art. In particular, the ED gave the impression that its mind was already made up to refuse the application regardless of arguments brought forward by the applicant or whether oral proceedings(OPs) were held. Hence the applicant opted to request a decision according to the state of the file in order to obtain an appealable decision.

(c) The decision was unclear as regards the reasons for lack of inventive step. It was not clear whether the decision is based on a combination of D4 and D5 only, or whether also in combination with D1. The term “asserted inventive contribution”, which is unknown from the EPC, the Guidelines for Examination, or the case law further confused the situation. Further, the problem-solution approach has not been applied. Finally, document D6 was referred to without indicating its relevance.

The Board’s answer contains some noteworthy statements:

[2.1] The board has considered whether these comments, although raised in connection with a different request to that currently on file (and, moreover, not in connection with a request for reimbursement of the appeal fee, cf. R 67 EPC 1973), identify a substantial procedural violation committed by the ED that would justify in itself remittal of the case to the first instance.

Re (a):

[2.2] The appellant apparently disputes the publication dates of documents D4, D5 and D6. However, the board considers that the publication date of a document forms part of the factual framework of substantive examination. Hence, an error of publication date, even if it had occurred, would be an error of fact and not of procedure.

Nevertheless, the appellant appears to argue that the ED did not follow the correct procedure by not investigating properly the dates of publication.

In respect of Internet citations, (cf. OJ 8-9/2009, p. 456 ff., e.g. 3.3), as with other citations, it may be necessary that an examiner provide proof of a publication date, inter alia, if the applicant gives reasons for questioning the date of publication. However, in the present case, the appellant challenged the publication dates for the first time in these appeal proceedings. As regards D5, the appellant comments that it is impossible to judge without further investigation whether the original version of this document corresponds to that downloaded [from the Internet] by the ED.

However, in the board’s view, document D5 is not an Internet citation per se whose content might be open to doubt but is merely a downloaded version of a printed document with a high probability of authenticity (cf. T 1134/06 [4.2]). Given the date on the document of 1993, the board sees no reason why the ED needed to further verify that the document was available to the public at the priority date of the present application [i.e. March 18, 1999].

In the case of document D4, the appellant has plausibly argued in the statement of grounds that its content may have been published after the priority date of the application, despite the earlier date on the document.

Nevertheless, the applicant did not question the publication date of D4 during the examination procedure, but, following its introduction, merely requested a decision on the state of the file. Under these circumstances the board concludes that the ED, from a procedural point of view, was reasonably entitled to base its decision on this document.

As regards D6, although the board agrees that the ED should not have assumed that the content of this document was available to the public before the priority date, it is mentioned more as an aside and does not form part of the main argument with respect to inventive step, which relies on documents D1, D4 and D5.

Thus the publication date of D6, in a procedural sense, can be regarded as moot.

The board adds that, in the absence of an admissible set of claims […], there is no need for the board to investigate further the publication dates of the aforementioned documents.

Re (b):

[2.3] The second point raised by the appellant is that it was denied the right to be heard (cf. A 113(1)).

[2.3.1] In accordance with A 113(1), the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to comment.

In this respect, the board notes that the applicant, aware of the objections raised by the ED in its second communication dated 16 March 2006, requested a decision on the state of the file. In so doing, the applicant chose voluntarily to forgo the opportunity to respond to the ED’s objections either in writing or by maintaining its request for OPs, including those objections based on the documents newly cited in the ED’s second communication. Under these circumstances, the present decision according to the state of the file is based on grounds or evidence on which the applicant has had an opportunity to comment and therefore complies with A 113(1).

[2.3.2] The board infers from the appellant’s remarks that the applicant regarded it as futile to present comments either in writing or orally because the ED had already made up its mind to refuse the application.

The board however can find no evidence to support this point of view. Although the ED stated that a refusal was “to be expected” and that OPs would be held “before refusing the application”, in the board’s view this was to be seen only as an indication of the ED’s current assessment of the case and a confirmation that OPs would be held before any final decision was taken, and does not imply that the application would be refused in any event. The ED accordingly invited the applicant to file new claims and arguments in support […]. Hence the board finds the appellant’s argument unconvincing.

Re (c):

[2.4] The appellant has argued implicitly that the decision is not reasoned.

[2.4.1] In accordance with R 68(2) EPC 1973 all decisions issued by the EPO must be reasoned, i.e. the decision should contain a logical chain of argumentation explaining why the decision has been taken. In the present case, the appellant appears to argue mainly that the decision is incomprehensible because it is not clear whether claim 1 is attacked on the basis of D4 and D5 only, or in combination with D1.

[2.4.2] However, in the board’s view, the two communications referred to in the impugned “decision according to the state of the file”, seen in the context of the appellant’s reply dated 07 September 2004, form a logical and comprehensible argument.

[2.4.3] In this respect, in the communication of 19 May 2004, the ED argues that the subject-matter of claim 1 lacks novelty with respect to the disclosure of D1. In the applicant’s reply dated 07 September 2004, it is argued that certain features of claim 1 are missing from D1. In the second communication dated 16 March 2006, the ED cited documents D4 and D5 as disclosing the missing features and argued that the subject-matter of claim 1 lacked an inventive step. Reading the two communications referred to in the impugned decision and the appellant’s reply in the correct sequence, it is clear to the board that the inventive step argument starts out from the disclosure of D1 and is based on combining it with the disclosures of D4 and D5. The board finds this to be a logical chain of argumentation, and the decision is thus reasoned within the meaning of R 68(2) EPC 1973.

[2.4.4] The appellant argues that the problem-solution approach has not been used.

However, in accordance with the Guidelines, C-IV, 9.8 (June 2005 edition), “the examiner should normally apply the so-called “problem-and-solution approach””(board’s underlining). Thus the use of the problem-solution approach was not obligatory to meet the requirements of a reasoned decision.

The appellant also makes comments to the effect that it is not indicated where certain features are disclosed in the cited documents. However, the board notes that in the first communication at point 4 and in the second communication at point 3, specific passages of D1, D4 and D5 are referred to by the ED. In the present case the board considers these references to be sufficient in order to be able to understand the reasoning of the ED.

Further, the board sees no objection to the use of the term “asserted inventive contribution”, which appears to be merely an alternative expression for “alleged inventive contribution”.

Finally, as already stated above, the mentioning of D6 in the communication dated 16 March 2006 appears to be intended more as an aside and does not form part of the main argument based on D1, D4 and D5. Hence, its citing in this manner by the ED without a detailed explanation does not mean that the decision is not reasoned.

[2.5] In consequence, the board concludes that no substantial procedural violation was committed that would require the board to remit the case to the ED.

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