Not long ago, we have seen a decision where Board 3.2.07 found a “decision by reference” of the Examining Division (ED) to be insufficiently reasoned. Here is another example.
[3] The ED issued its decision, which was requested to be taken “according to the state of the file”, in a standardised form, replacing an explicit reasoning by a mere reference to the reasons contained in three preceding communications, as follows:
“In the communication(s) dated 12.04.2006, 24.11.2006, 17.04.2007 the applicant was informed that the application does not meet the requirements of the EPC. The applicant was informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 23.04.2007.
The application must therefore be refused.”
[4] R 68(2), first sentence, EPC 1973, states that decisions of the EPO which are open to appeal shall be reasoned. This means, according to established case law, that a decision must contain, in logical sequence, those arguments which justify the tenor and that all facts, evidence and arguments which are essential to the decision must be discussed in detail (T 278/00; T 963/02 [2]; T 897/03 [3 et seq.]).
Consequently, if a decision is merely reasoned by a reference to one or more preceding communications, the requirement of R 68(2), first sentence, EPC 1973 is only met if the referenced communications themselves fulfil the above defined requirements. The reasons for the refusal of the relevant requests must be clear from these communications both for the party concerned and for the board of appeal.
[5] In the present case, this condition is not met for several reasons.
[5.1] Doubts arise from the fact that the contested decision makes reference to three communications, each of which contains a plurality of different objections raised against different claim versions.
It would appear from the phrase “The applicant was informed of the reasons therein” that the grounds for the decision under appeal are constituted by all of the reasons which have been indicated in the respective communications. However, given the substantive amendments made to the application documents in the course of the examination proceedings, not all of the objections raised still apply to the latest set of documents filed. On the other hand, in view of the fact that the third communication contains explicit references to objections raised already in the two earlier communications, it would appear plausible that the decision is based only on those reasons which are mentioned in the third communication. In that case, however, the question arises why the decision makes reference to the first two communications at all.
For these reasons, it is not unambiguously clear which of the various objections comprised in the first and second communications still apply to the version of the application documents on which the contested decision is based.
[5.2] Another deficiency of the contested decision lies in the fact that the second and the third communications of the ED merely re-state objections as to lack of clarity and inventive step which had been raised in the respective preceding communication(s), but do not contain any indication as to why respective arguments and explanations submitted by the applicant had been found unconvincing.
Particular reference is made in this respect to the objection raised as to lack of inventive step. In its first communication […], the ED’s reasoning started from document D1. It was argued that the teaching of D1 left an obvious desire still to be met. Solutions to that desire were however considered to be suggested by the teaching of each of documents D2 and D3. Documents D4 and D5 were only mentioned in passing.
The second communication […] did not add any substantive matter to this reasoning, nor did it deal with the arguments put forward by the applicant in support of inventive step in its reply […].
Finally, the third communication […] noted that a combination of D1 with D2 or D3 was not the only line of reasoning that led to the conclusion of lack of inventive step and that it would appear that the subject-matter of the independent claims then on file lacked inventive step even with respect to each of documents D2, D3 and D5 taken in isolation. Again, no explanations were given as to why the arguments submitted by the applicant […] had not been found convincing.
Thus, since the communications do not deal with the applicant's arguments, neither does the standardised final decision.
[6] In the board’s judgment, the decision under appeal is not sufficiently reasoned in the sense of R 68(2) EPC 1973 and the above deficiencies in the reasoning amount to a substantial procedural violation which requires, in line with other decisions of the boards of appeal (see e.g. T 278/00 and T 897/03), that the decision under appeal be set aside.
Moreover, the procedural deficiency justifies, in application of A 111(1), the remittal of the case to the ED, as has been requested by the appellant.
In consequence, the appeal is deemed to be allowable and the board considers it to be equitable, by reason of the substantial procedural violation incurred, to reimburse the appeal fee (R 67 EPC 1973).
[7] For the avoidance of misunderstandings, the board notes that it does not generally object to a refusal of an application with reasons drafted in a standardised form by making reference to one or more preceding communications, in cases in which an applicant has requested a decision “according to the state of the file”. However, this form of decision should be chosen only exceptionally in clear-cut cases in which the reference to previous communication(s) amounts to a complete reasoning, avoiding any ambiguities as to the exact content and extent of the grounds for refusal and in which the communications have dealt with the applicant's arguments (if any).
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