Wednesday 15 December 2010

T 1442/09 - Mere Allegations


In the present decision the Board examines in detail the correspondence between an Examining Division (ED) and an applicant. The Board finds too many allegations and too little reasoning in the ED’s communications leading to the impugned decision.

The story is long, but the moral is short. If you are happy with a short take-away, here is the headnote of the decision: “A decision as referred to in R 111(2) should in principle be complete and self-contained and be comprehensible.” So be it.

[1.1] The first substantive communication of the ED dated 14 December 2005 and referred to in the impugned decision was based on claims 1-10 as originally filed.

[1.1.1] The single independent claim 1 as originally filed reads:
1. A method for preparing an article having a thermal-spray coating (46) thereon, comprising the steps of providing a substrate article (44) having a surface (42);
forming a coated article (40), the step of forming including the step of thermally spraying a coating material (41) onto the surface (42) of the substrate article (44), wherein a surface of contact between the coating material (41) and the substrate article (44) is a bondline (48); and
nondestructively testing the coated article (40), wherein the step of nondestructively testing includes the steps of
directing a transmitted ultrasonic signal (68) into the coated article (40), receiving a received ultrasonic signal (72) from the coated article (40), and
evaluating a near-bondline region (50) of the coated article (40) located adjacent to the bondline (48) using the received ultrasonic signal (72).
[1.1.2] In point 2 of this communication the ED raised a novelty objection with respect to the subject-matter of claim 1 in view of D1 by stating
D1 discloses an adhesion measuring method for thermal spray deposit by measuring the intensity of the reflected wave generated when a specific ultrasonic wave is fed to the interface between the the [sic] thermal spray deposit and the substrate. The frequency of the ultrasonic wave is set to 5-20 MHz. (emphasis added by the Board).
In points 3 and 4 of this communication only a short description of the disclosures of D2 and D3 was given:
“D2 discloses a nondestructive method for determining the thickness of a metallic protective layer on a metallic base material (e.g. turbine blade) by detection of a different type of intervening layer wich [sic] is situated between the metallic protective layer and the metallic base material, by e.g. ultrasound thermography ( see abstract).” and
“D3 discloses a nondestructive method for measuring the thickness of a metallic layer on a substrate by directing an ultrasonic signal on the substrate, receiving and evaluating the received ultrasonic signal from the coated substrate ( see claims 1,2; fig.1).”.
In point 5 of this communication it further considered that 
Dependent claims 2-10 do not appear to contain any additional features which, in combination with the features of claim1 to which they refer, meet the requirements of the EPC with respect to novelty and/or inventive step, the reasons being as follows: the features are known from D1, D2 and/or D3.(emphasis added by the Board).
[1.1.3] It is thus apparent from a comparison of the wording of claim 1 as originally filed […] with the statement made in point 2 of the first communication […] that this communication neither contains an explanation as to why the adhesion measuring method according to D1 fulfils all the requirements as set out by the features of said claim 1, nor does it indicate why the subject-matter of dependent claims 2-10 as originally filed would either be anticipated by D1 - the English abstract of D1 is silent with respect to a method step of “evaluating a near-bondline region of the coated article located adjacent the bondline” as well as to any “delamination” of the coating - or would be rendered obvious by the cited prior art.

Points 2 and 5 of the first communication contain only allegations without giving any reasoning for the lack of novelty or lack of inventive step, e.g. as to why the person skilled in the art would combine the adhesion measuring method of D1 with the thickness measuring methods of either D2 or D3, i.e. which objective technical problem should be solved by the person skilled in the art. The allegation additionally made in point 5 further does not give any references in the cited documents D1 to D3 for the features of the dependent claims allegedly known therefrom.

[1.2] As a response to the first communication the appellant filed with its letter dated 22 June 2006 an amended set of claims 1-8. It stated that new claim 1 includes the features of claims 8 and 9 as originally filed and submitted arguments concerning novelty and inventive step:

D2 and D3 relating to measuring thickness were not believed to be concerned with the problem presented and solved by the claims of the present application which are directed to a method of preparing an article having a thermal spray coating thereon including, in part, non-destructively testing the coating article by the steps recited in new claim 1. Since the operating parameters may cause the coated article to have flaws in a near-bondline region which may cause the coating to perform in an unsatisfactory manner it is important to determine when such flaws are present and when the coated article is free of such flaws.

D1 is not concerned with the above problem but with determining adhesion. However, “delamination” is not the same as adhesion. Figure 4 of the application illustrates a structure having a bondline delamination wherein the thermal spray coating is physically separated from the surface, leaving a gap therebetween. Thus a delamination not only has zero adhesive strength, but also requires a physical separation. Nor does D1 give any disclosure or suggestion for a method for concluding the presence of a mechanical bond and appears to deal with a different ultrasonic parameter than that of the subject claims.

[1.2.1] Claim 1 of this set of claims reads as follows (amendments as compared to claim 1 as originally filed are in bold; emphasis added by the Board):
1. A method for preparing an article having a thermal-spray coating (46) thereon, comprising the steps of providing a substrate article (44) having a surface (42);
forming a coated article (40), the step of forming including the step of thermally spraying a coating material (41) onto the surface (42) of the substrate article (44), wherein a surface of contact between the coating material (41) and the substrate article (44) is a bondline (48); and
nondestructively testing the coated article (40), wherein the step of non-destructively testing includes the steps of
directing a transmitted ultrasonic signal (68) into the coated article (40), receiving a received ultrasonic signal (72) from the coated article (40), and
evaluating a near-bondline region (50) of the coated article (40) located adjacent to the bondline (48) using the received ultrasonic signal (72), wherein the step of evaluating includes the steps of concluding the presence of a delamination if there is a strong return in the received ultrasonic signal from the near-bondline region, and concluding the presence of a mechanical bond if there is a weak return in the received ultrasonic signal from the near-bondline region.
[1.2.2] The second substantive communication of the ED, of 16 July 2007, was based on these amended claims 1-8. Initially it stated Your arguments have been carefully considered by the ED, however following objections remain. Thereafter D1 and the new D4 were referred to.

In point 4 of this communication the ED maintained its objection of lack of novelty, in stating:
D1 discloses a non-destructive method for judging “the quality of adhesion” and the “level degree of adhesion” of a thermal-sprayed coating on a substrate by measuring the intensity of a reflected wave generated when a specific ultrasonic wave is fed to the interface between the thermal sprayed coating and the substrate. Apart from the fact [sic] the frequency of the ultrasonic wave is the same as in the application (5-20 MHz), it is clear that a possible delamination will be detected and registred [sic] by the method of D1”.
It further stated that “D4 discloses a non-destructive method to detect defects, such as exfoliation and cracks, of a spray deposit on a surface of a substrate by directing an ultrasonic signal in the coated substrate, by receiving the ultrasonic signal, evaluating the received ultrasonic signal and so detecting the presence of a possible delamination adjacent to the bondline of the spray deposit and the substrate (see fig. 1-5, page 1-3)” (emphasis added by the Board).

In point 5 it is concluded that
“At least some of the objections raised above are such that there appears to be no possibility of overcoming them by amendment. Refusal of the application under Article 97(1) EPC is therefore to be expected.”.
[1.2.3] This second communication clearly does not contain anything dealing with the arguments submitted by the appellant, particularly not as to why they cannot be accepted. Furthermore, also this second communication does not contain any comprehensible reasoning as to why the methods disclosed in documents D1 and D4 would fulfil the requirement of evaluating a near-bondline region as now more exclusively defined in the amended claim 1 […].

In this context the Board remarks that the English abstract of D4 is silent with respect to a method step of “evaluating a near-bondline region of the coated article located adjacent the bondline … concluding the presence of a delamination if there is a strong return in the received ultrasonic signal from the near-bondline-region, and concluding the presence of a mechanical bond if there is a weak return in the received ultrasonic signal from the near-bondline region”. Furthermore, this abstract only mentions “a spray deposit” and not a thermal-spray deposit.

[1.3] As a response to this second communication the appellant filed with its letter dated 17 January 2008 an amended set of claims 1-7 based on a combination of claims 1, 8, 9 and 10 as originally filed in combination with an adapted description. The amendments were again supported by arguments concerning novelty and inventive step. In particular it was argued that
“Claim 1 has been clarified to specify the evaluation steps in the method and also to specify more clearly the aspect of the received ultrasonic signal that is used to determine the nature of the bond in the near-bondline region. In D1 and D4 methods of evaluating adhesion of a coating to a substrate are disclosed which comprise transmitting an ultrasonic wave and receiving the reflected ultrasonic wave generated from the interface between the coating and the substrate. In D1 the intensity of the reflected wave is used and D4 a frequency analysis is performed. Neither D1 nor D4 disclose evaluating the nature of the bond using the return peak of the reflected wave. Nor do D1 or D4 disclose that the evaluation discriminates between a delamination, a mechanical bond and a metallurgical bond on the basis of the nature of the peak reflected wave”.
[1.3.1] Claim 1 of this amended set reads as follows (amendments as compared to claim 1 filed with letter of 22 June 2006 are in bold with deletions in brackets; emphasis added by the Board):
1. A method for preparing an article having a thermal-spray coating (46) thereon, comprising the steps of providing a substrate article (44) having a surface (42);
forming a coated article (40), the step of forming including the step of thermally spraying a coating material (41) onto the surface (42) of the substrate article (44), wherein a surface of contact between the coating material (41) and the substrate article (44) is a bondline (48); and
nondestructively testing the coated article (40), wherein the step of non-destructively testing includes the steps of
directing a transmitted ultrasonic signal (68) into the coated article (40), receiving a received ultrasonic signal (72) from the coated article (40), and evaluating a near-bondline region (50) of the coated article (40) located adjacent to the bondline (48) using the received ultrasonic signal (72), [wherein] characterisied [sic] in that the step of evaluating includes the steps of: concluding the presence of a delamination (80) if there is a strong return peak (86) in the received ultrasonic signal from the near-bondline region (50); [and] concluding the presence of a mechanical bond (88) if there is a weak return peak (90) in the received ultrasonic signal from the near-bondline region (50); and concluding the presence of a metallurgical bond if there is substantially no return in the received ultrasonic signal (72) peak from the near-bondline region (50).
[1.3.2] The third substantive communication of the ED dated 19 June 2008 was annexed to the summons to oral proceedings (OPs) before the ED scheduled for 26 November 2008. It was based on this amended set of claims 1-7.

Therein it was initially stated
The applicant’s explanations submitted with his letter of 17.01.2008 have been carefully considered. However it is the preliminary opinion of the ED that the new claims submitted on 17.01.2008 do not comply with the requirements of the EPC and the application should be refused (A 97 (1)). According to your request OPs are summoned. The reasons for the preliminary opinion are given below. (emphasis added by the Board).
Under point 3 of this communication it was then stated
As already mentioned in communication dated 16 July 2007, it is clear that D1 and D4 not only disclose the same non-destructive method of judging the interface between a substrate and a sprayed coating layer on the substrate, but also disclose the evaluation of the nature of this interface by detecting possible delaminations. It is implicit that the nature of the bond is being evaluated and that a possible delamination will be detected and registred [sic] by the method of D1. (emphasis added by the Board).
Subsequently, in point 4 the ED remarked In any event the claims as a whole lack an inventive step with respect to D1 and D4 and “the subject of the OPs will be whether the claimed subject-matter involves novelty in the sense of A 54(1) and (2).” (emphasis added by the Board).

Finally in point 6 it was considered 
Furthermore the application does not meet the requirements of Article 84 EPC in that the matter for which protection is sought is not clearly defined. It is clear from the description that a nondestructively testing of a sprayed coating on a substrate is claimed and not a method for preparing an article having a thermal-spray coating thereon”.
[1.3.3] From the above it is already clear that also this third communication contains only allegations. It neither deals with the appellant’s arguments in support of the amendments made to claim 1, nor does it contain any comprehensible reasoning as to why D1 and/or D4 would be novelty destroying for the subject-matter of amended claim 1. It further does not explain why its arguments still hold in the light of that amended claim 1, let alone does it give the required reasoning concerning inventive step.

[1.3.4] With respect to the alleged lack of clarity the Board further notes that the basic features of claim 1 as originally filed - which defines a method for preparing an article having a thermal-spray coating thereon comprising principally the steps of providing a substrate article having a surface and forming a coated article by thermally spraying a coating material on that surface, and then non-destructively testing the coated article […] - have only subsequently been amended in the later versions of claim 1 to more precisely define the non-destructive testing step of the coated article […].

Its original character as “a method for preparing an article having a thermal spray coating thereon”, however, has not changed in this final version. The ED’s allegation that “it is clear from the description that a nondestructively testing of a sprayed coating on a substrate is claimed and not a method for preparing an article having a thermal-spray coating thereon” and that for this reason the application contravenes A 84 therefore cannot hold since it is incorrect not only with respect to this claim 1 but also with respect to the whole specification of the present application which makes it clear that it is a method for preparing an article having a thermal spray coating thereon which is claimed […]. Furthermore, the ED has not quoted any passage in the application which would provide support to its allegation.

[1.4] The impugned decision according to the state of the file merely refers to “the communication(s) dated 14.12.2005, 16.07.2007, 19.06.2008” and states that “the applicant was informed that the application does not meet the requirements of the EPC. The applicant was also informed of the reasons therein” and that the applicant filed no comments or amendments in reply to the latest communication (emphasis added by the Board).

[1.4.1] From the above analysis of the content of these three substantive communications it is evident that the impugned decision falls short of revealing the reasons which led the first instance to conclude lack of novelty and/or lack of inventive step, or lack of clarity for that matter.

[1.4.2] Furthermore, contrary to what is stated in the second and third communication (“the applicant’s explanations … have been carefully considered”) it is apparent that the ED ignored all the appellant’s arguments since these communications and therefore the decision are silent in this respect. Consequently, the impugned decision is also not reasoned in that respect.

[1.4.3] It is evident that the ED, when issuing the impugned decision, did not follow the Guidelines […], according to which the reasoning must contain in logical sequence those arguments which justify the order. Furthermore, the reasoning should be complete and independently comprehensible and the reasoning should contain important facts and arguments which speak against the decision (see the Guidelines, chapter E-X, 5). The latter means that the decision should address the arguments of the losing party (not in the least to also comply with the right to be heard).

[1.4.4] Moreover, even though claim 1 of the three sets of claims has been amended twice by incorporating further features so that the subject-matter of claim 1 of the three different requests has been substantially restricted, the impugned decision refers to all three substantive communications. This means that it is left up to the Board to construct the applicable reasons by having to “mosaic” the various arguments from the file, or that it leaves the Board in doubt as to which arguments apply to which claim version. This does not meet the requirement of a “reasoned” decision in accordance with R 111(2) (see e.g. T 1309/05 [3-3.7]; T 1356/05 [15]; and T 1709/06 [1.2-1.2.5]).

To be able to benefit from a “decision on the state of the file as it stands” an ED should make sure that its communications are well-structured, deal sufficiently with the counterarguments put forward and provide reasoned support for what it alleges.

[1.5] The lack of reasoning in a decision is a substantial procedural violation since it results in the appellant being deprived of any reasoning which it can properly address in appeal and the Board being unable to properly examine the reasons why the ED came to the conclusions of lack of novelty and/or lack of inventive step, or lack of clarity.

[2] In view of the aforesaid substantial procedural violation the Board considers that it is appropriate to set aside the decision under appeal for this reason alone and to remit the case to the department of first instance for further prosecution in accordance with A 111(1). […]

[3] For the above reasons it is also equitable to reimburse the appeal fee pursuant to R 103(1)a).

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

To have a look at the file wrapper, click here.

12 comments:

Anonymous said...

The BoAs are rarely fond of decisions taken according to the state of the file, as they cannot always easily recognise the reasoning for the decision from the multiplicity of letters which are referred to, in the present case, three.

What examiners don't realize is that they still have the option of writing a full fledged decision on the standard refusal form. There is AFAIK no real obligation to use the special form offered in their software , they can instead draft a full fledged decision (Form 2916) arguing in a single document the grounds for the decision, address the applicant's arguments, and for good measure, identify when and where the grounds were invoked for the first time, for the comfort of the DG3 people, and to show that Article 113 was respected.

However, this option was not available, as a proper water-tight reasoning was clearly lacking even for the independent claim, which is a pity as the overall number of claims to be assessed was fairly limited, even at the outset of the procedure. In the real world, an examiner may often give some dependent claims a more superficial treatment if he feels that they couldn't really represent a feasible fallback option, but he should normally give the independent claims and those that appear to be central to the invention the full treatment.

This illustrates the problem I mentioned in my earlier comments of the other day: what happens if the applicant not show up at the oral proceeding? I suppose the division may have believed that all problems would be discussed and possibly solved at the OP, but it didn't work out that way. Had it realized the problem it could have resumed the procedure in writing, I'm not sure that the division is bound by the applicant's request to take an immediate decision, but I could be wrong. From memory, the Guidelines don't foresee that possibility.

Looking at the ultimate set of claims I think I wouldn't have shown too much enthusiasm about them either.

The examiner introduced D4 with his first communication, but Form 2001 (the cover page) does not mention that a copy of this document was enclosed with the communication. Another (minor) procedural problem?

pat-agoni-a said...

There is no reason not to continue with the proceedings even after the applicant's request for an immediate decision. Only the withdrawal of the application brings the proceedings to an immediate end. This is however not a request but a procedural step taken by the applicant.

In fact A. 94(3) states that the ED shall invite the applicant "as often as necessary" to file observations and to amend the application. Although it remains debatable "necessary for what?" I believe that it can be argued that the need for sufficient reasoning is a necessity for a reasoned decision.

Although the applicant may not be happy having to reply to a further communication, since a lack of reply triggers the fiction of deemed to be withdrawn, he may reply by stating that he has nothing else to say.

pat-agoni-a said...

In decision T 1536/05 the board explained how "decisions according to the state of the file" came about (points 4 & 5) and suggested that they be renamed "decisions by reference" to reduce misunderstandings.

However, it seems that nothing has been changed and that the misunderstanding on their nature persists.

Anonymous said...

T1536/05 does not seem to be the right number.

manolis said...

I agree with the first comment, in that the ED can actually refuse the request for a decision on the state of the file. If it is judged that the file as it stands is not ripe for such a step, the ED is free to proceed in any other way. The temptation to finish the file with simply filling in a form is great, however.
Another point is not to reference many communications, like in this case. A reference to the last communication only would also avoid the usual objection of the Boards that they had to "mosaic" the communications to find the arguments of the ED.
And the most common pitfall is that after the last communication there is a reaction from the applicant (arguments and/or amendments). This is a death sentence for the decision since the form states explicitly that the applicant has not replied to the last communication of the ED. The Boards get really upset about this!

oliver said...

T 1356/05 appears to be the correct reference.

pat-agoni-a said...

Thanks Oliver for correcting my mistake.

By the way, I would again like to congratulate you for your excellent blog, wish you the best and a nice continuation in 2011.

Anonymous said...

Merci à vous deux!

The wrapper associated with decision T1536/05 is interesting in its own right.

Here, the ED issued without any further ado the reasoned decision it ought to have drafted after getting the case back from the Board.

Thereupon, the applicant immediately filed a new appeal.

The OP summons issued by the board do not really discuss very much the grounds for the impugned decision or the applicant's reasoning, but rather examines anew the application on its own motion, formulating different objections than the ED (but still relying on D7), and introducing two late-published documents in support of its preliminary opinion: D8, an international application, and D9, a decision of the UK patent office concerning entitlement for the GB parent of D8, which also had to examine sufficiency of disclosure for concepts related to the application presently being appealed. Where did the board get that stuff from?

If the Board is capable of forming its own opinion without relying on the first instance's second decision, then in practice it did not really matter that much that the initial ED decision was botched... I note that the applicant had in neither appeals raised the issue of procedural error.

It gets odder. A third party filed observations, and offers an expert witness for making submissions at the scheduled public OP before the Board on the subject of sufficiency of disclosure, even though Art. 115 EPC disposes that [a third party] shall not be a party to the proceedings.

The applicant at that point formally withdrew his application. End of story? Not quite.

When I started reading the application in general and the claims in particular I then realized that it was very similarly worded to a later application which is still ongoing heavy litigation.

Two of the three members of the OD for the later application are the same as those involved in the ED for the earlier application, exchanging their roles. Only the first examiner was different.

This would probably explain why the ED in the earlier case introduced D7 shortly before or during the OP, and based its decision(s) on it. This would also give an explanation as to why the Board was aware of other related literature, (formally) introducing it in the procedure. All applications must be prosecuted independently, but one cannot be entirely blind to other ongoing cases.

I had wondered in a comment on the above IPKAT discussion about the meaning of the word "wavelength" used in the application.

I couldn't find any reference to the "wavelength" notion in any of the non-patent literature cited by the various parties in either procedure addressed this question. The applicant relied on patent document D7 for explaining what is meant by "wavelength" rather than on textbook type literature establishing general technical knowledge. D7's mathematical expression around col. 6, line 27 actually seems to define a skin or penetration depth. which is something quite different than a "wavelength", so the claims are misleading.

One of the submissions qualified the field of the application as something of a "fringe science". Considering the documents as a whole I would agree with that statement, even though paradoxically the applications apparently define something valuable enough for people to fight over.

pat-agoni-a said...

With respect to the third party making observations at the oral proceedings before the board, the board sent a communication on 24/7/07 stating that, not being a party, no entitlement of the third party to make any presentation at the oral proceedings existed.

Anonymous said...

I hadn't seen that note from the Board, but I'm by no means surprised by its conclusion. Tts thoroughness is admirable; if it had been an answer to a D1 paper question, it might probably receive top marks. ;-) By the end of the procedure the Board had mentioned all EPC articles from 113 to 117 individually.

My observation had more to do with the brazenness of third party's offer.

pat-agoni-a said...

By the way, I seem to remember a recent decision of Sir Robin Jacobs on a very similar patent, although I don´t remember if the parties were the same.
It also related to submarine prospection and the question adressed was whether the skilled person had the same skills for reading the patent as for making the invention. The issue was that at the priority date there were geologists skilled at oil prospection, but very few experts on applying radio waves to distinguish rock from oil strata.

Since for understanding the invention a geologist with knowledge of electromagnetic prospection was required, the question arose if such expert was forcibly also part of the expert team making the invention. If this was the case the invention was obvious. Very reasonably Sir Robin concluded that there was no pointer to include such an expert when looking for a solution to how to identify submarine strata.

May be a reader remembers this case and can post it here.

P said...

That case was mentioned and linked before I think,
Schlumberger v EMGS.
The related patent EP04721228 was revoked on request of the applicant in opposition.

The second appeal is now pending as T 1057/10. In the statement of grounds the applicant mentions a 1 bn per year turnover, so even it's fringe science, it may be worth a few appeals and oppositions.