T 1136/10 – One, Two, Three

Oh, when things go wrong, they really go wrong …

This decision deals with an appeal against a refusal of an application. The ground for the refusal was lack of clarity (absence of essential features) and insufficient support.

The Board found that the Examining Division (ED) had committed not less than three substantial procedural violations.

Request for oral proceedings (OPs) (A 116(1) and A 113(1))

[1.1] The ED states in point 3.5 of the facts and submissions of the impugned decision that

“The applicant explicitly did not request OPs” (emphasis added by the Board).

This statement is factually wrong for the following reasons.

[1.2] The applicant stated in its response dated 13 November 2007

“While it is believed that the above is fully responsive to the Examiner’s objections, should the Examiner feel disposed to reject the application at any time, we would request OPs, purely as a precautionary measure, so as to avoid such a rejection. However, this should not be taken as a request for OPs per se” (… ; emphasis added by the Board).

[1.3] According to point I of the reasons of the impugned decision the ED took the view that the last sentence “this should not be taken as a request for OPs per se” meant that “the applicant insists on the fact that no request for OPs is formulated” (emphasis added by the Board).

In doing this, the ED either ignores the first sentence (which makes a clear conditional request for OPs if a rejection is imminent), or interprets it exactly contrary to what it explicitly states. The first is a clear procedural violation, the second is contrary to common sense.

By considering both sentences together it is clear that the request for OPs is conditional only in case a refusal of the application is intended, but is not meant to indicate that the applicant wishes, as a next submission, to give any further argumentation only orally.

[1.4] In the impugned decision the ED cited decision T 433/87 in that a party’s right to OPs is subject to a clear and unconditional request to that effect.

[1.4.1] That decision concerns an opposition case wherein the patent proprietor asked to arrange for OPs as soon as possible in case that they would be necessary (“bei Erfordernis baldmöglichst die mündliche Verhandlung anzusetzen” …) and the Board stated therein that this statement did not represent an unconditional request for OPs so that the Opposition Division (OD), which did not arrange for OPs in the opposition procedure, was not only not wrong, but actually was correct in doing so since the OD did not consider such OPs to be necessary for issuing its decision (see point [2] of the reasons).

[1.4.2] The Board is not aware of any requirement in the EPC or by Case Law that only unconditional requests to OPs are admissible. It is absolutely normal practice to request OPs e.g. only for the eventuality of an imminent adverse decision. As discussed […] above, the Board further does not consider the present request for OPs to be lacking in clarity, or to be conditional on unclear circumstances.

[1.4.3] T 433/87 is further also not relevant since the request for OPs in the present case was not made dependent on whether the Examiner or ED considered it necessary.

[1.4.4] Since the ED came to the conclusion to refuse the application the condition involved by the applicant applied and it should therefore have arranged for OPs, in accordance with A 116(1).

By not granting the applicant’s clear conditional request for OPs the ED committed a first substantial procedural violation since the applicant was firstly deprived of its right for OPs according to A 116(1) and secondly of its right to be heard (A 113(1)) during such OPs.

[1.4.5] In any case, when interpreting a request out of its context or when a request is not clear to the ED it should have tried to clarify the situation, e.g. by a telephone conversation with the representative of the appellant. Such an action would have prevented it from committing this substantial procedural violation.

Ignoring the right to be heard (A 113(1))

[2.1] In point II of the reasons of the impugned decision the ED stated for the first time during the examination proceedings (which in fact comprised only the European search opinion as substantive communication)

“Furthermore, claim 1 does not meet the requirements of A 84 in that the matter for which protection is sought is not defined. The claim attempts to define the subject-matter in terms of the result to be achieved: “the coating having a transparency to incident radiation of less than about 50% below the coating glass transition temperature and greater than about 50% above the coating glass transition temperature” Such a definition is not allowable in the present case because it appears possible to define the subject-matter in more concrete terms, viz. in terms of how the effect is to be achieved, i.e. by the chemical and physical definition of the coating.”

[2.2] By introducing this new clarity objection with respect to claim 1, which bears no relationship with the prior lack of clarity objection in respect of which the applicant had no opportunity to comment or to submit any argument, the applicant was deprived of its right to be heard as guaranteed by A 113(1).

Thereby the ED committed its second substantial procedural violation since, as defined in A 113(1), the decisions of the EPO may only be based on grounds or evidence on which the party concerned has had an opportunity to presents its comments (see also the Guidelines for Examination in the European Patent Office, Part E, Chapter X, 1.1).

Lack of reasoning in the decision (R 111(2))

[3.1] The European search opinion of the Search Division sent with the communication dated 18 September 2006 raised in points 5 and 6 the following two objections:

“Clarity (A 84)

(5) It is clear from the description on page 16 that the following features are essential to the definition of the invention:

(1) the substrate comprises a superalloy selected from the group consisting of nickel-based, cobalt-based, iron-based and combination thereof, (2) the coating comprises a glass selected from the group consisting of borosilicate glass, lithium silicate glass, potassium germinate glass, barium germinate glass, arsenic germinate glass, and combinations thereof.

Since independent claim 1 does not contain these features it does not meet the requirement following from A 84 taken in combination with R 29(1) and (3) that any independent claim must contain all the technical features essential to the definition of the invention.

(6) Claim 3 is not fully supported by the description as required by A 84, as its scope is broader than justified by the description.

The reason the following: although the description mentions the possibility to use a coating comprising germinate glass, it seems clear from the example that the result is achieved using a silicate glass. It is not clear how a coating comprising germinate glass could obviously have the same properties as a coating comprising silicate glass, and no example is provided to support the optical behaviour of such a coating comprising germinate glass.”

[3.2] The first substantive communication of the ED dated 4 July 2007 merely referred to the reasons given by the Search Division in the European search opinion and therefore does not contain any further explanations or reasoning concerning these two objections.

[3.3] In the impugned decision in point II of the reasons it is stated (differences compared to the reasons given in the European search opinion are in bold; emphasis added by the Board):

“II. It is clear from the description on pages 12, 13 16 [sic] that the following features are essential to the definition of the invention:

(1) the substrate comprises a superalloy selected from the group consisting of nickel-based, cobalt-based, iron-based and combination thereof,

(2) the coating comprises a glass selected from the group consisting of borosilicate glass, lithium silicate glass, potassium germinate glass, barium germinate glass, arsenic germinate glass, and combinations thereof.

Since independent claim 1 does not contain these features it does not meet the requirement following from A 84 taken in combination with R 43(1) and (3) that any independent claim must contain all the technical features essential to the definition of the invention.”

[3.3.1] Apart from the fact that pages 12 and 13 were not mentioned in the European search opinion they as well as page 16 of the description as originally filed were quoted by the ED as a basis for its objection of the essential features missing in claim 1 without specifying a relevant paragraph or relevant passage therein:

Page 12 discusses preferred properties of the coating 110 and describes the effect of incident radiation reflected or absorbed by components “particularly in high stress, high temperature environments such as gas turbine engines”. It is, however, entirely silent with respect to the composition of superalloys or glass materials.

Page 13 mentions amongst others that “gas turbine components are typically constructed of high temperature superalloys based on nickel, cobalt, iron or combinations thereof” and that it is desired to avoid precious metals in the coating 110 and that “the use of an optical coating that is transparent at high temperatures will not result in a major increase in reflectivity to incident radiation if the underlying substrate does not have a reflective surface, for example, when ceramic materials are used to form the substrate”.

Page 16 concerns the description of the single example of the application relating to an aluminium mirror coated with a layer of sodium silicate glass doped with iron.

[3.3.2] Therefore, none of the three quoted pages 12, 13 and 16 supports the allegation of the ED that

a) the substrate of the component must be a superalloy selected from the group consisting of nickel-based, cobalt-based, iron-based and combinations thereof; b) the coating comprises a glass selected from the group consisting of borosilicate glass, lithium silicate glass, potassium germinate glass, barium germinate glass, arsenic germinate glass, and combinations thereof,

since it is derivable from said quoted pages that the substrate may be a component such as a gas turbine component, that it may be a ceramic material or that it even may be made from aluminium. Further, the coating material according to the single example, namely sodium silicate glass, is not comprised in the aforementioned list b).

[3.3.3] The same conclusion holds true when considering the rest of the specification as originally filed from which it can be derived that e.g. “the invention will now be described in greater detail, by way of example, with reference to the drawings …” (see page 4, third paragraph); that “… superalloys are believed to be suitable materials for the present invention;” that “Also ceramic materials may be employed … Such ceramic materials are specifically contemplated for use in the present invention …” (see page 7, fourth paragraph); that “substrate materials are preferably high temperature superalloys based on nickel, cobalt, iron or combinations thereof;” that “The substrate materials are not so limited and may be a ceramic matrix composite (CMC) material, for example.” (see page 10, third paragraph); that “the coating 110 of the present invention is any material that has a transparency to incident radiation that is different at different temperatures” and finally that “Exemplary materials include borosilicate glass … lithium silicate glass … potassium germinate glass, barium gallium germinate glass, and arsenic sulfide glass, by way of example only.” (see page 10, fourth paragraph to page 11, first paragraph).

[3.3.4] The Board can only conclude from the application as originally filed that the ED’s objections concerning claim 1 and its missing essential features remain allegations as they are not reasoned since no explanation is given as to why these features should be considered to be essential.

[3.4] In the impugned decision in point III of the reasons it is stated:

“III. Claim 3 is not fully supported by the description as required by A 84, as its scope is broader than justified by the description.

The reason the following: although the description mentions the possibility to use a coating comprising germinate glass, it seems clear from the example that the result is achieved using a silicate glass. It is not clear how a coating comprising germinate glass could obviously have the same properties as a coating comprising silicate glass, and no example is provided to support the optical behaviour of such a coating comprising germinate glass.”

[3.4.1] Taking account of the disclosure of the description with respect to the exemplary glass materials for the coating 110 […] it is likewise evident that the objection with respect to claim 3 based on the example using a silicate glass not providing a basis for the claimed germinate glasses also remains an allegation as it is not derivable from the application as originally filed that germinate glasses when applied as said coating are expected to behave significantly different from the silicate glasses. To the contrary, they are mentioned in the description as alternative to each other.

In case that the ED was aware of further evidence or documents supporting its allegation then it should have introduced this evidence before issuing the impugned decision.

[3.4.2] The impugned decision clearly does not contain anything dealing with the arguments submitted by the appellant in this respect (see point IV above), particularly not as to why they cannot be accepted. Consequently, the impugned decision is also not reasoned in that respect.

The Board therefore concludes that the impugned decision falls short of revealing the reasons which led the department of first instance to conclude lack of support for claim 3.

[3.5] The Board thus has to establish that the ED, when issuing the impugned decision, did not follow the Guidelines for Examination in the EPO, 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 the 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) and should make sure that it deals sufficiently with the counterarguments put forward and provide reasoned support for what it concludes.

The lack of reasoning in the impugned decision is the third 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 conclusion of lack of clarity and support.

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