T 309/09 – Excessive?

This appeal was against the refusal of an application by the Examining Division (ED).

In its summons to oral proceedings (OPs), the ED fixed the time limit for making written submissions to September 16, 2008.

On September 15, 2008, the applicant filed six auxiliary requests.

The ED told the applicant on the phone that it intended not to admit those requests under R 137(3).

The OPs were held in the absence of the applicant.

The ED found claim 1 of the main request to lack inventive step and refused to admit the auxiliary request. It justified this course of action as follows (English translation):

“a) There are unjustifiably many auxiliary requests and those requests do not converge towards patentable subject-matter. Each auxiliary request differs from the main request by a different feature. The features concern completely different aspects (use of the final device, way in which the data are transmitted, server properties, conditions of reproduction, biometrical measurements).

b) Former objections appear not to have been overcome.

The additional features cannot establish an inventive step. They correspond to details of implementation that are well known to the skilled person and that do not obtain any additional technical effect going beyond their well-known purpose in connection with the other features of the claim.”

The Board won’t have it that way:

*** Translation of the German original ***

[7] The refusal articulates the reasons for the discretionary decision of the ED not to admit auxiliary requests 1 to 6 as follows […]:

There are unjustifiably many auxiliary requests and those requests do not converge towards patentable subject-matter.

Former objections appear not to have been overcome.

[7.1] According to its wording, point (a) presents the number of auxiliary requests and their lack of convergence as two independent reasons. This is also reflected in the summons to OPs […] which presents both reasons – independently from each other – as possible criteria for not admitting auxiliary requests. However, it is also possible that the ED considers the number of auxiliary requests as a single reason in view of the lack of convergence. Both possibilities are treated in the following.

Unjustifiably many auxiliary requests

[7.2] The Board doubts that, as a rule, the number of auxiliary requests is a suitable criterion for a sweeping (pauschal) refusal of requests pursuant to R 137(3). The Board does not want to exclude that in particular cases a great number of auxiliary requests may provide sufficient justification for refusing all of them. However, this question may be left open because in any case [the number of] six auxiliary requests cannot be considered to be excessive just like that (ohne Weiteres). It may also be left open whether in the present case those six auxiliary requests may be considered to be unjustifiably many and whether their lack of convergence is relevant, because the impugned decision does not contain any considerations concerning the particular cases which could support this conclusion.

Lack of convergence of the auxiliary requests

[7.3] The Board agrees with the appellant that “there is no provision in the EPC according to which auxiliary requests may not cover entirely different aspects”.

However, the Board is of the opinion that under particular circumstances it may be justified to take into consideration, when exercising discretion as to whether admit an auxiliary request, weighting the interests of the applicant and the EPO […], whether its subject-matter converges with the subject-matter of previous requests or requests of higher rank. Whether there are such circumstances or not has to be examined in each particular case and reasons have to be given, R 111(2).

It may be left open whether there are such particular circumstances in the present case, for instance in view of the fact that the auxiliary requests were filed within the time limit fixed pursuant to R 116 and that the independent claims of at least some of the auxiliary requests (1, 2, and 4) are supported by dependent claims as originally filed.

This is because a criterion of convergence has to be examined separately for each individual request. In the present case, the independent claims of all auxiliary requests are limited with respect to the independent claims of the main request. The independent claims of the main request had been amended only once in the preceding examining proceedings, in response to an objection of [lack of] clarity by the ED […]. Thus, at least the first auxiliary request is convergent with the main request and the convergence criterion cannot possibly justify the refusal to admit the first auxiliary request.

Former objections not overcome

[7.4.1] There have been objections of lack of novelty and lack of inventive step, respectively, against the independent claims. Moreover, there have been objections of [lack of] clarity against some of the dependent claims […]. However, the ED appears to have dropped the latter in view of the amended claims […]. In any case the summons to OPs of April 23, 2008, does not contain any objection of [lack of] clarity.

[7.4.2] Regarding the novelty and inventive step of the dependent claims, the written statements of the ED are limited to cursory objections […] as well as sweeping references to prior art documents […]. These explanations cannot be considered to be reasoned objections within the meaning of R 111(2).

[7.4.3] The independent claims of all auxiliary requests are limited with respect to the independent claims of the main request: in auxiliary requests 1, 2, and 4, features taken from former dependent claims have been added; in auxiliary requests 5 and 6 features taken from the description have been added; and in auxiliary request 3 one previously claimed alternative has been deleted. In view of these amendments, the appellant could expect to have overcome the objections of lack of novelty and inventive step, or at least to have appropriately responded to the reasons given in writing. Therefore, the Board agrees with the appellant that the sweeping reference to “former objections” that had not been overcome does not allow to understand which former objections were meant.

[8] Summing up, the Board comes to the conclusion that, in the absence of the appellant, the ED indeed was entitled to exercise its discretion and that in principle it has exercised its discretion according to correct criteria within the meaning of G 7/93, but that it has not provided sufficient reasons in the impugned decision, which is contrary to R 111(2). Even a lack of reasons is a substantial procedural violation justifying a remittal to the first instance in application of Article 11 RPBA and a reimbursement of the appeal fee for the sake of equity, R 103(1)(a).

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