Friday 2 December 2011

T 2377/09 – Alternative Grounds


In order to have the appeal fee reimbursed, the appellant has to convince the Board that the first instance proceedings were affected by a substantial procedural violation (unless R 103(b) applies, that is), but the existence of such a violation will not always make the reimbursement equitable within the meaning of R 103(a), as the present decision reminds us.

Claim 1 of the Euro-PCT under consideration read (in English translation):
A method for measuring the shape of a reflective surface with a system which comprises at least one pattern for reflection at the reflective surface and at least one camera for viewing, pixel by pixel, the pattern which is reflected at the surface , wherein the position and the orientation of the camera and of the pattern as well as the viewing direction of the camera for each pixel are known, wherein, from the viewing directions of the camera, which are known for the pixels, and the positions of the pattern, which correspond to the mapping of the reflected pattern on pixels of the camera, the surface angle and the surface height are determined for the purpose of measuring of the shape, wherein for the accurate determination of the surface height a linear object of known shape is arranged in front of the pattern such that at least one point of the linear object covers a point of the pattern, the spatial position of the object being known, wherein subsequently a plane is determined from the known viewing direction of the pixel which maps the point of the pattern, and the point of the pattern, and [wherein] the point is established as the point of intersection of the thin object with the plane, and the basis point [is established] as the point of intersection of the known viewing direction of the pixel which maps the point of the pattern with the straight line passing through the point of the pattern and the point.

The ED objected to this claim, which led the applicant to amend the claim by replacing the two occurrences of “linear object” by “thin object of known shape” and “thin object”, respectively.

The ED then rejected the application because
(1) claim 1 was unclear (A 84) because it is impossible to determine the point of intersection of a thin object, which can also be a sheet, with a plane;
(2) the description referred to alternative embodiments that were contradictory to the claimed subject-matter (A 84), which were irrelevant for the understanding of the invention or even made it more difficult (R 48(1)(c)); and
(3) the description had not been adapted to the claims (R 42(1)(c)).

The applicant filed amended claims and an amended description and requested reimbursement of the appeal fee. He pointed out that the ED had not exercised its discretion under A 94(3) as it should have (“.. as often as necessary …”). The Guidelines (C-VI 4.6) stipulated that the DE had to contact the applicant if there were further deficiencies.

The ED granted interlocutory revision but did not grant the request for reimbursement, which was transmitted to the Board.

Here is the provisional opinion of the Board, which has become definitive because the applicant did not comment on it and had withdrawn his request for oral proceedings:

*** Translation of the German original ***

[1] First it is to be noted, with respect to the repeated submissions of the appellant concerning the Guidelines, that the ED has a certain discretion to depart from the general directives in a particular case, as long as it remains within the bounds defined by the EPC. Therefore, the question that is decisive here is whether the ED has acted in accordance with the provisions of the EPC, and not whether it has correctly applied the Guidelines (see e.g. T 162/82 [9]).

The […] submissions of the appellant all converge to the question to be examined here, i.e. whether the refusal of the application was a violation of the provisions of A 113(1) EPC 1973 and/or those of A 94(3).

[2] In its first objection the ED objected, inter alia, that the subject-matter of claim 1 then on file was unclear (A 84 EPC 1973) because the claim was directed at a method comprising, inter alia, the determination of the point of intersection of a linear object with a certain plane, without specifying that the spatial position of the object was known, so that the determination of the point of intersection was impossible (Notification dated February 19, 2009, point 2.2).

When responding to this notification of the ED, the appellant filed an amended set of claims, on which the decision to refuse the application is based. Inter alia, claim 1 was amended such that the feature “the spatial position of the object being known” was incorporated. However, the claim was also amended by replacing the expression “linear object” by the expression “thin object”.

In the reasons for its decision, the ED noted that claim 1 as amended was unclear because the point of intersection of a thin object, which could, for instance, have the shape of a sheet, with a plane cannot be determined because the intersection of a sheet with a plane is a line rather than a point. The ED came to the conclusion that the objection raised in its notification had not been completely overcome because it was still impossible to determine the point of intersection ([…] point 1 of the reasons).

First, the Board notes that the objection raised in the notification (indefiniteness of the point of intersection of a plane with a linear object of unknown position) and the objection raised in the decision (indefiniteness of the point of intersection of a plane with a thin object) are based on the same legal basis (i.e. the requirement of clarity enshrined in A 84 EPC 1973) and on the same conclusion (i.e. the impossibility of determining the point of intersection within the framework of the respective claimed method) but also on different facts (a linear object of unknown position vs. a thin object of known position) and on different technical considerations (the indefiniteness of the point of intersection due to the unknown position vs. the indefiniteness of the point of intersection as such, because the form of the intersection of a thin object of known position with a plane depends on the cross-sectional shape of the object and, as a rule, does not correspond to, or allow to determine, a point.

However, as the “grounds” within the meaning of A 113(1) EPC 1973 comprise, not only the legal, but also the essential factual grounds on which a decision is based (see e.g. T 187/95 [8] and T 105/93 [6]) and as the essential facts and the technical considerations on which the objection of lack of clarity raised in the decision, regarding the determination of the point of intersection is based, significantly differ from those on which the corresponding objection in the notification of the ED is based, the decision was based on grounds which the appellant had no opportunity to comment. De facto the notification of the ED invited [the appellant] to clarify claim 1 such that the spatial position of the object was known in order to overcome the objection of indefiniteness of the point of intersection (points 2.2 and 2.10 of the notification) and claim 1 was amended by the appellant as proposed by the ED […]. The fact that the application was refused on the same ground of indefiniteness of the point of intersection must have come as a surprise to the appellant because the objection is based both on new facts (the replacement of the expression “linear object” by “thin object” in claim 1) and on new technical considerations that had not been communicated to the appellant beforehand.

Therefore, the Board agrees with the appellant that the decision of the ED, insofar as it is based on the grounds mentioned above, was taken in violation of the right to be heard pursuant to A 113(1) EPC 1973 and, therefore, is flawed by a substantial procedural violation.

[3] However, it also has to be noted that the decision to refuse [the application] is also based on additional grounds […] that are independent from the grounds mentioned above and which do not give rise to a substantial procedural violation.

In particular, the ED had also raised objections pursuant to A 84 and R 71(1)(c) and R 34(1)(c) EPC 1973 in its sole notification and has substantiated them by referring to several passages of the description (point 2.9 of the notification) that these passages were contradictory to the claimed invention and did not contain claimed alternative embodiments, which resulted in these passages making the claims unclear (A 84 and R 27(1)(c) EPC 1973) or being irrelevant for understanding the claimed invention (R 34(1)(c)). These objections essentially correspond to the factual and legal grounds on which the alternative […] main grounds of the impugned decision are based.

When responding to the notification, the appellant has, inter alia, filed amended pages of the description and has pointed out that the amendments comprise an adaptation of the introduction of the description to the claims as well as clarifications “marking the parts of the description that do not belong to the invention” and that “the corresponding passages of the description […] were not deleted in order not to lose necessary connections which also belong to the disclosure and which make it easier to understand the invention”. However, the ED found those amendments and the arguments of the appellant insufficient for overcoming the above mentioned objections raised in the notification, as can be seen from points 2 and 3 of the reasons for the decision. The Board is of the opinion that these objections were sufficiently clear to allow the appellant to adapt the description accordingly.

Moreover, the appellant has not requested oral proceedings or other requests (e.g. amendments presented in the form of auxiliary requests) which could have safeguarded the appellant’s position.

It follows that
  • the appellant had been granted the right to be heard pursuant to A 113(1) EPC 1973 regarding the factual and legal grounds on which the alternative […] main grounds for the decision were based, and
  • the Board cannot see any circumstances – and the appellant has not made any concrete assertions – from which it would have to be concluded that the ED would have had to give the appellant a further opportunity to comment on the same […] objections mentioned above or that it has exercised its discretion arbitrarily or in a way that failed to comply with the requirements of the rules when taking its decision – as far as the [further] objections mentioned above are concerned – immediately after the response to the first notification (see T 161/82 [11]).
In this context it has to be noted that a further written notification of the ED pursuant to A 94(3) would have had to essentially repeat the objections raised in the first notification, which goes beyond the requirements of A 94(3). Therefore, it is irrelevant for the question that is dealt with here that the refusal of the application occurred after only one notification of the ED. The Board shares the opinion of the appellant according to which it would have been appropriate [for the ED] to call the appellant in order to inform him of the factual situation and to warn him that the application might be refused under those circumstances ; however, this course of action is not mandatory under the EPC and its absence cannot result in a substantial procedural violation pursuant to R 67 EPC 1973.

The further submissions of the appellant according to which several objections under A 84 and R 27(1)(c) raised by the ED were incorrect cannot support the appellant’s point of view because what matters in the assessment of whether there has been a procedural violation is whether the procedural requirements enshrined in the EPC were complied with, and not whether the objections raised by the ED were correct or convincing, as the case may be (see “Case Law of the Boards of appeal”, 6th edition, 2010, VII-E 17.4.5.

[4] In view of the above explanations the Board is of the opinion that a reimbursement of the appeal fee is not equitable pursuant to R 67 EPC 1973 based on the above mentioned procedural violation alone because the decision to refuse the application was also based on alternative grounds which […] do not give rise to any substantial procedural violation and which would in any case have required the appellant to file an appeal in order to obtain that the decision be set aside (see T 893/90 [5.3], T 219/93 [6], T 4/98 [13.3] and T 978/04 [4]).

To download the whole decision (in German), click here.

The file wrapper can be found here.

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