T 2434/09 – Post Mortem

This is an appeal against a decision of an Examining Division (ED) to refuse the application under consideration.

When summoning the applicant to oral proceedings (OPs), the ED expressed the view that the amended claims on file did not comply with A 123(2) and that the invention was not sufficiently disclosed under A 83. It also expressed doubts concerning the existence of an inventive step in view of documents D1 or D4 and common general knowledge (CGK).

On April 24, 2009, applicant filed amended claims but did not comment on the alleged lack of inventive step.

The OPs were held on May 26, 2009. The applicant filed a first auxiliary request against which the ED raised objections under R 43(2), A 123(2) and A 54(2). In response the applicant filed a second auxiliary request. The ED expressed its view that this request did not comply with the requirements of A 56 in view of document D2 and CGK. The latter was acknowledged in the application as filed. The applicant pointed out that this was only in-house knowledge, in response to which the ED introduced document D5 as evidence for the CGK.

The ED then proposed to adjourn the proceedings to give the applicant’s professional representative enough time to study document D5. The representative waived this right but requested to continue the procedure in writing because he wanted to present the document to the applicant’s technical experts. The ED expressed its opinion that the objection of lack of inventive step was still based on the skilled person’s CGK as acknowledged in the application, whereas document D5 was merely used to refute the applicant’s argument that the background art of the description merely reflected in-house knowledge.

At the end of the OPs the chairman announced the decision of the ED to refuse the request for continuing the proceedings in writing and to refuse the European patent application under A 97(2).

Point 8.5 of the reasons of the written decision reads:

“The representative at the OPs disagreed with the objection of inventive step (A 56) raised by the ED. He considered that the use of an aberration correction mechanism was not well known and commonly used in the art for solving the problem of how to reduce the spherical surface aberration accompanying the thickness error of the light transmission layer due to the enhancement of NA [(numerical aperture), added by the board] in the next-generation optical systems. He also contested that the description only reflects in-house knowledge which was not public at the priority date of the application.

In response to that argument, the ED, introduced a new document into the proceedings: D5 [....].

This document was published before the priority date of the application and introduced as an example that the problem of the increase of the spherical aberration with the increase of the NA was well-known in the art and the solution of adding a spherical aberration correction mechanism proposed in independent claim 1 was known too. As evidence, document D5 discloses the same problem (see paragraphs 4-7) and proposes a relay lens system (see for example figure 10, reference number 21 and paragraphs 53 and 63) in a recording and reproducing apparatus for a BluRay disk for correction spherical aberration due to differences in the cover layer thickness. Hence, the description of the application does not reflect in-house knowledge but mechanisms for correcting spherical aberration which were generally known to the skilled person at the priority date of the application.”

The applicant then filed an appeal. The grounds of appeal read as follows:

“During the OPs of May 26, 2009 the ED introduced a new document, i.e. document D5 (EP-A1-1043615).

This state of the art document is essential for the decision refusing the present application.

The representative requested to continue the examining procedure in written so as to give the applicant time to study document D5 and so as to have the opportunity to provide the representative with corresponding instructions how to argue against this state of the art.

However, the ED refused this request and instead decided to refuse the present application.

It is believed that this represents a procedural violation which justifies the appeal and the refund of the appeal fee.

In this connection reference is made inter alia to the decision T 951/97, where it is explicitly stated that the subject of the proceedings is changed within the meaning of R 71a(1) and (2)1979 [sic] inter alia where the ED itself introduces a new document (...) for the first time during the OPs.”

By communication dated 25 November 2010, the EPO noted a loss of rights pursuant to R 112(1) and informed the appellant that the application was deemed to be withdrawn under A 86(1) since the renewal fee for the 9th year and the additional fee had not been paid in due time. No means of redress against this finding have been made use of by the appellant.  

The appellant informed the board as follows:

“Regarding the fact that the present application has lapsed due to the non-payment of the renewal fees, the applicant is strongly interested in receiving a decision setting aside the decision of the ED and refunding the Appeal fee.”

What would the Board do?

[3] A 110 […] provides that, if the appeal is admissible, the board has to examine whether the appeal is allowable.

[4] In the present case, however, the European patent application in respect of which the first-instance examination under A 94 was carried out and which is the subject of the appealed decision was finally deemed to be withdrawn after the appeal had been filed due to the non-payment of the renewal fee and the additional fee and no means of redress against this finding had been made use of […].

[5] In such a case, the ex-parte appeal proceedings are usually closed without a substantive decision and the appellant is informed accordingly. Subsequently, the grant procedure in respect of the European patent application concerned is closed by the first-instance department.

The reason for taking this course of action is that if a European patent application is finally deemed to be withdrawn after an admissible appeal against a decision refusing it has been filed, the appeal can usually be considered disposed of, because there is no possibility of a European patent being granted for the application.

[6] However, in certain situations it may not be possible to take the above course of action. The board is faced with such a situation in the present case.

[7] The sole aim of the present appeal was clearly to obtain a finding by the board that a (substantial) procedural violation occurred in the first-instance proceedings which justifies the setting aside of the appealed decision and consequently the reimbursement of the appeal fee (see point VIII above). This means that the main issues to be decided by the board in the present appeal proceedings are whether a substantial procedural violation occurred during the first-instance examination proceedings which justifies in itself the setting aside of the appealed decision and whether the appeal fee has to be reimbursed to the appellant.

[8] It is also obvious from the appellant’s letters dated 2 May 2011 and 6 June 2011 […] that the appellant wished to pursue its appeal irrespective of the fact that a European patent could no longer be granted on the basis of the present application.

This is plausible in the board’s view because, according to the present appeal, which was filed before the non-payment of the renewal fee, the only reason why the appellant initiated the appeal proceedings was that, in its view, a procedural violation had occurred in the first-instance proceedings which in itself justified the setting aside of the appealed decision and the reimbursement of the appeal fee. Consequently, if the board had concurred with the appellant’s view as set out in the grounds of appeal and had allowed the appellant’s requests […], the appellant would have received the board’s declaratory judgement that the ED had committed a substantial procedural violation which justified the setting aside of the appealed decision and would have obtained a refund of the appeal fee. Subsequent to such a decision the grant procedure in respect of the European patent application concerned would be closed.

[9] It follows from the above that the appellant had a legitimate interest in receiving a decision on the merits of this case and that therefore the present appeal was not disposed of by the application being finally deemed to be withdrawn. Accordingly, an examination of the present appeal is necessary and the present appeal proceedings could not be closed without a substantive decision.

Concerning the alleged procedural violation, the Board added:

[18] The principle of the right to be heard is laid down in A 113(1) EPC 1973, which is the provision to be applied in the present case according to A 7(1), second sentence, of the Revision Act (loc. cit.), since A 113 is not indicated in A 1 of the decision of the Administrative Council of 28 June 2001 on the transitional provisions under A 7 of the Revision Act (loc. cit.).

[19] Taking into account the appellant’s statement of grounds of appeal, which comprises essentially the party’s case as well as the essential facts and arguments as to why it is requested that the decision under appeal be reversed, the board is of the view that no breach of A 113(1) EPC 1973 took place in the first-instance proceedings, for the following reasons.

[20] The applicant does not have a right in principle to continuation in writing if the department of first instance introduces a new document for the first time in OPs and thereby changes the subject of the proceedings. Where a new document is first introduced by the ED in OPs, the party’s right to be heard under A 113(1) EPC 1973 is observed if the applicant is given an adequate amount of time to study the document and present comments (see e.g. decision T 376/98 [4.3], which also refers to T 951/97). It is established jurisprudence that an adjournment of the OPs giving the party sufficient time for an adequate analysis ensures its right to be heard in accordance with A 113(1) EPC 1973 (see Case Law of the Boards of Appeal, 6th edition, 2010, VI.B.2.2.1). How much time is sufficient depends on the nature of the newly introduced document and the preceding procedure. This is also in line with decision T 951/97 [4.1], which was cited by the appellant.

[21] In the present case, in its communication annexed to the summons to OPs dated 21 January 2009, the ED already raised an objection (albeit a very general one) of lack of inventive step of all subject-matter contained in the present application in view of D4 and the CGK of a person skilled in the art of optical recording […]. The applicant did not comment on this general remark in its reply […]. In particular nothing was said about aberration correction mechanisms not being within the CGK of a person skilled in the art of optical recording at the relevant date, even though an aberration correction mechanism was referred to as a means which determined the allowable value of the aberration in the cover layer in claim 1 then on file (i.e. the main request underlying the decision under appeal).

[22] At the OPs before the ED the CGK of a person skilled in the art at the relevant date was not an issue until amended claims according to a second auxiliary request were filed (see point V above). With regard to these claims the ED took the view that the feature of a spherical surface aberration correction mechanism belonged to the CGK of the skilled person in the field of optical data storage at the date of priority, and that this CGK was already acknowledged in the description of the application, which clearly implied that a spherical surface aberration correction mechanism was known on the priority date and that the object of the application was to take into account this known mechanism when setting the allowed degree of margin for manufacturers of optical disks […].

It was only then that the applicant’s representative denied that the use of a spherical surface aberration correction mechanism was publicly known at the priority date. He declared that the description disclosed in-house knowledge of the applicant which was not public at that time (see also point V above). According to the jurisprudence of the boards of appeal, in-house knowledge, or matter which cannot be identified as forming part of the state of the art within the meaning of A 54(2) EPC 1973, has no relevance for assessing inventive step (see decisions T 1001/98 and T 654/92). Hence, in reaction to the representative’s declaration made for the first time at the OPs, the ED had to introduce a corresponding published document, confirming the CGK of the skilled person in the art which was at issue in the discussion on inventive step of the amended claims of the second auxiliary request, if it wished to use such prior art for assessing inventive step. The ED did so by introducing document D5. That this did not happen at an earlier stage of the examination proceedings but only at the OPs is comprehensible in view of the fact that, before the OPs, the applicant had not commented on or contested the CGK of a person skilled in the art of optical recording at the relevant date. The board also takes the view that, in principle, it does not matter that document D5 was not a copy of a text book since, in accordance with A 117(1), means for giving evidence on CGK of a person skilled in the art are not restricted to specific documents. The evidential weight as to what constituted CGK might be different, depending on the circumstances of the case. But it does not matter for the present appeal proceedings whether the ED’s assessment that the indicated specific text passages of document D5 reflected CGK was correct. Even if this assessment were incorrect, that would not amount to a procedural violation (see also T 367/91).

In view of the above the board concludes that the fact that, as the appellant submitted, D5 could have been cited earlier with regard to independent claim 14 is not decisive for the question at issue.

[23] The board turns now to the question whether the applicant’s representative was given an adequate amount of time to study document D5 and present comments in OPs before the ED. According to the minutes […], the ED proposed to adjourn the OPs to give the applicant enough time to study document D5. However, the applicant’s representative waived this offer of the ED. The appellant did not explain in the grounds of appeal why the appellant’s representative waived the offer of the ED to interrupt the OPs to give the applicant enough time to study document D5 and implicitly to give him the opportunity to prepare comments on the issue of CGK for assessing inventive step. The grounds of appeal are also silent on why document D5 is of such a nature that it would have been necessary to continue the proceedings before the ED in writing. Nor, in the OPs before the board, did the appellant give any explanation on this issue apart from new facts and arguments with regard to the assessment of novelty and the drafting of new claims, thereby delimiting the claimed subject-matter from the novelty-destroying disclosure of document D5. However, as set out above […] these facts and arguments were not admitted into the appeal proceedings. It is also not evident to the board why an adjournment of the OPs before the ED would not have provided the applicant’s representative with sufficient time to study the specific passages of document D5 which were indicated by the ED as being sufficient evidence of the CGK at issue.

[24] Finally the board turns to the argument of the appellant’s representative that it was not the first time that he had been surprisingly confronted with a new document in proceedings before an ED in The Hague. First, the board may only give a judgement on the basis of the facts of the present case and not on the course of proceedings of other examination proceedings which are not the subject of the present appeal proceedings. Second, it is the board’s view that it should not have come as a surprise to the representative in the present case that the ED introduced a new document at OPs since this was a reaction to the filing of amended claims according to a new second auxiliary request and the contesting of the CGK of the skilled person in the art at issue for the first time at the OPs.

[25] In view of the above it is not apparent to the board that a substantial procedural violation occurred in first-instance proceedings which would justify the setting aside of the appealed decision. Accordingly, the appeal is unallowable.

NB : The Board also provided a headnote :

If a European patent application is finally deemed to be withdrawn after an admissible appeal against a decision refusing it has been filed, the appeal can usually be considered disposed of, because there is no possibility of a European patent being granted for the application. (See points [4] and [5]).

However, where, as in the present case, the sole aim of the appeal is to obtain a finding by the board of appeal that a substantial procedural violation occurred in the first-instance proceedings, such that the appealed decision is to be set aside and the appeal fee reimbursed, the appeal cannot be dealt with in this way. In these circumstances the appellant has a legitimate interest in receiving a decision on the merits of the appeal. Therefore the appeal must be examined and the appeal proceedings cannot be closed without a substantive decision on the case. (See points [6] to [9]).

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