T 1446/06 – That’s What It’s All About

This appeal is against the decision of the Examining Division (ED) to refuse the patent application.

The appellant requested the refund of the appeal fee. It argued that the ED’s procedure with regard to this case constituted a substantial procedural violation, as any communication notifying the applicant that the application did not meet the requirements for grant of a patent should contain a reasoned statement covering all the grounds against the grant of a patent. The “grounds” were the essential reasoning, both legally and factually, which led to refusal of the application. If the applicant was not given enough time to provide a reply to such grounds then there was a substantial procedure violation of A 113(1).

During examination of this application, the applicant had been informed in communications that the invention defined in the claims lacked novelty and/or an inventive step over D1. The applicant had responded in writing pointing out to the examiner that D1 did not disclose certain features. On being summoned to oral proceedings (OPs), the representative telephoned the examiner, as neither the representative nor the applicant understood how the examiner could maintain his objection when, clearly, there was no explicit disclosure of this feature in D1. During the telephone call, the examiner simply reiterated the reasoning given in the written communications and at no point embellished or provided further reasoning for his objections. It was only on attending OPs that the applicant was told that the ED believed the feature of the mapping to be implicitly taught in D1. This reasoning was completely different to that given in the written communications and in the telephone conversation. Clearly, the ED had plenty of opportunity to present these arguments to the applicant before the OPs and was even prompted to do so by the applicant, but failed to take these opportunities. The applicant therefore felt “ambushed” by the ED, not having had sufficient time to consider these arguments and formulate a considered and substantive response. Providing the grounds for refusal of the application for the first time during OPs constituted a substantial procedural violation under A 113(1) that warranted a refund of the appeal fee.

The Board does not agree:

[16] Since the appellant’s appeal is not allowable, the request for reimbursement of the appeal fee must also be rejected (R 67 EPC 1973) and the issue of the alleged procedural violation need not be considered. 

Nevertheless, the Board cannot see how providing new arguments at the OPs, even if they differ from ones previously used, could be seen as a procedural violation.  

The applicant had the chance to discuss fully these arguments at the OPs and could have asked for more time to study any parts of D1 not previously referred to. Thus the decision is not based on any grounds or evidence on which the parties concerned did not have had an opportunity to present their comments that would have been contrary to A 113(1). 

Moreover, if no new arguments are to be given at the OPs, the Board wonders what the purpose of OPs is.

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