Thursday, 22 December 2011

T 2375/10 – Empty Hands And Heavy Hearts

Sometimes Examining Divisions (ED) are too concise in their decisions refusing an application. This invariably leads to the a remittal, as in the present case.

The relevant part of the decision read:

Too short, says the Board:

[2] According to established jurisprudence of the Boards of Appeal, to satisfy the requirement of R 111(2) a decision should contain, in logical sequence supporting arguments. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the appellant and, in case of an appeal, also the Board of Appeal to examine whether the decision could be considered to be justified or not (see T 278/00; T 87/08 and T 1366/05).

In the present case the ED decided against the Appellant, that the subject-matter of claim 1 according to the sole then pending request did not involve an inventive step (A 56).

A 56 requires that the assessment of inventive step is made having regard to the state of the art. Accordingly, the logical chain of reasoning of the ED in the decision under appeal, to justify the above conclusions under A 56, has to contain a proper assessment of the question of obviousness in the light of the prior art.

The only part of the section “Reasons for the Decision” of the written decision under appeal dealing with the issue of inventive step is to be found in point 3, comprising two paragraphs.

Paragraph 3.1 merely summarizes the arguments of the Applicant and does not reflect the ED’s own considerations, this paragraph in fact should rather belong to the section “Facts and Submissions” of the written decision under appeal. The mere summary of a party’s submission is not per se a reasoning proper to the deciding body.

Consequently, paragraph 3.2 is the sole portion of the written decision under appeal which may reveal the reasoning of the Opposition Division (sic) on the issue of inventive step and, thus, is the sole portion of the decision which could justify the ED’s conclusion of lack of inventive step. However, there is no reference at all in this paragraph to any prior art, paragraph 3.2 merely stating that the claimed subject-matter did not comply with the requirements of A 56 since the technical effect of pressure reduction in a wellbore fluid was only demonstrated for graphite as the resilient material, but that this effect had not been shown for the other cited materials and therefore the selection of materials recited in claim 1 did not solve the technical problem in its entire breadth.

Therefore, the ED arrived in the appealed decision at the conclusion that the claimed subject-matter lacked inventive step merely by declaring that a purported effect has not been achieved by other cited materials, i.e. the technical problem as defined in the application as filed had not been solved in the entire breadth of the claims, without reformulating the problem in a less ambitious way and without assessing obviousness of the claimed solution to that reformulated problem in the light of the cited prior art.

Since, the requirement of inventive step defined in A 56 is based on the state of the art, the decision of the ED, by arriving at a conclusion of lack of inventive step without reference to prior art, is insufficiently reasoned in the sense of R 111(2).

[3] This failure amounts to a substantial procedural violation requiring that the decision under appeal is set aside and the case is remitted to the first instance (see T 278/00 [5]). The appeal is thus deemed to be allowable and the Board considers it to be equitable by reason of the substantial procedural violation to reimburse the appeal fee pursuant to R 103(1)(a).

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

The file wrapper can be found here.


Anonymous said...

Could it be that the real problem is that the ED should have raised non-enablement instead of non-inventiveness?

The claim required a fluid comprising the use of one or more of a number of materials (e.g. rubber), and requires that the resulting fluid reduces in volume.

The ED appears not to believe that one can make that to work. Or to put it in other words: if I tell a person skilled in the art to stick rubber in a fluid and make the result reduce in volume, the he wouldn't know how to do it.

If the person skilled in the art, on the basis of the application, would be able to do something deemed impossible up to now, clearly the claim would be very inventive!

It would have been different if the claim did not incorporate the effect. If the requirement of volume reduction was absent, then non-inventiveness would play a role. The ED would argue, sure, you can stick rubber in a fluid, that's enabled, but now what, nothing happens..

At least the applicant get a another shot to convince the ED of the effects of his fluid.

(I have no opinion whatsoever about the merits of this claim btw)