R 13/10 – The End Of An Error

The present petition for review was filed after the Board 3.2.05 had issued decision T 678/08 revoking the opposed patent.

In support of this ground the petitioner put forward that:

“an immediately obviously erroneous statement going to the root of the invention is made in the Decision by the Appeal Board and, because the serious error by the Board could not have been known by the Petitioners’ Representative at the Oral Proceedings, the Petitioner had no opportunity of pointing out the error to the Board at the Oral Proceedings.”

According to the petitioner, a vital feature of the invention of Claim 1 was that the heat-storing thermoplastic portion of the article is heated to a temperature no higher than the melting point of the thermoplastic of that portion. The Board, in its assessment of inventive step, referred to document D4, which includes the statement that “[t]he surface temperature of the element is above the fusion temperature of the plastic material so as to quickly heat this circular area 35 above its melting point”, but nevertheless drew the conclusion that “there is no suggestion that the material of the article should be heated to a temperature above its melting point”.

The Enlarged Board (EBA) finds the petition to be admissible and then deals with its allowability:

[3] The following documents, the relevance of which had already been stressed in the Board of Appeal's communication dated 23 September 2009, are referred to in the decision under review:

D1: US-A-4,507,168

D4: US-A-3,498,868.

The Board of Appeal as to the teaching of Document 4, concluded as follows:

“Whilst document D4 refers at column 2, line 70 to column 3, line 6 and at column 4, lines 2 to 6, to temperatures above the melting point of polyethylene, these passages relate to the temperature of the heating element itself and teach that the contact of the element with the plastic should only be of a short duration. Thus, there is no suggestion that the material of the article should be heated to a temperature above its melting point. Rather, as set out in claim 1, the heat of the article is such that heat of less than the fusion temperature of the film is applied to the film.”

This finding indeed corresponds to the line of argumentation followed by the appellant […] and it cannot for this very reason be disputed that the petitioner was given the opportunity to reply to this argument.

Therefore in the absence of any reaction from the petitioner, who neglected to attend the oral proceedings (OPs) held before it, the EBA sees no reason to depart from its provisional opinion set out in its communication that the content of Document D4 has been thoroughly discussed in writing as well as during the OPs held on 29 June 2010 before the Board of Appeal and that the right to be heard of the petitioner in this respect has not been in any way violated.

[4] On the other hand the petition relies on the contention that the decision under review contains a contradiction in its reasoning in the form of an “obviously erroneous statement”.

It is established case law of the Enlarged Board of Appeal that under the provisions of A 112a it has no jurisdiction and competence whatsoever to enter into the merits of the case. (See R 1/08 to R 22/10).

Therefore, even if assuming for the sake of argument that the petitioner were right, this could not alter the fact, that an erroneous statement in the reasons for the decision of a Board of Appeal does not, as a matter of principle, qualify as a ground in the exhaustive list of grounds for review pursuant to A 112a.

[5] Hence the present petition for review is clearly unallowable and must be rejected as such.

To download the whole decision, click here. 

The impugned decision can be found here, the file wrapper here.

NB: Laurent Teyssèdre has commented this decision here.