Friday, 1 June 2012

T 1188/08 – A Statement Of Unhappiness

The present decision is an invitation not to draft appeals too quickly …

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse the application under consideration.

[1.1] Under current case law, an appeal by the applicant or patentee is deemed sufficiently reasoned if, either, the applicant files new claims (decision T 934/02) or takes up the arguments set out in the decision under appeal and argues that these were incorrect. It is insufficient to merely refer to the arguments brought forward during the examination procedure (decisions T 220/83 and T 213/85).

Decision T 95/10 identified three reasons for this. First, that the appeal procedure was no mere continuation of the examination procedure, but separate therefrom. Second, that in the same way as A 114 required the Patent Office to take into account the applicant’s submissions prior to rendering a decision, the applicant had to take into account the arguments set out in the appealed decision when filing an appeal. Third, that otherwise, it was not sufficiently clear why the decision under appeal was deemed incorrect.

Where the applicant in the grounds of appeal repeats its arguments set out during the examination phase without taking into account the decision under appeal, it mistakes the function of the boards of appeal. The boards of appeal are not a second go of the examination procedure, but are meant to review decisions from the ED. Such review requires the applicant to provide the board either with a new set of claims that deprives the decision under appeal of its basis, or to present an argumentative framework that, when adopted by the boards of appeal, would justify the decision under appeal to be set aside. The mere indication of an applicant that it considers the decision under appeal to be wrong and to invite the board to try again based on the same facts and arguments is insufficient.

The above considerations do not apply, however, where the decision under appeal itself does not or insufficiently take into account the arguments presented by the applicant in the examination procedure, as in such case the applicant can indeed only repeat what has been argued before.

[1.2] It is uncontested that no new claims have been filed with the grounds of appeal.

[1.3] Apart from the introductory paragraph […], the grounds of appeal are nearly literal copies of passages from the letter of reply to the ED dated 19 October 2007. Moreover, the grounds reiterate substantially all the arguments relating to inventive step in that letter. The board thus fails to see any selection of arguments previously presented that could be regarded as arguments against the decision under appeal. Already the wording of the grounds of appeal indicates that they address the “Examination Report” and the “Examiner”, and tellingly the last sentence reads: “Applicant submits that the amended claims overcome the Examiner’s objections …”. There is no passage in the grounds of appeal providing arguments against the appealed decision. Neither are there arguments in the grounds referring to section 3.4 of the refusal, i.e. as to why it would not be obvious to a skilled person to use the third-party file transfer of the form-based file upload function of the HTML standard. From the grounds of appeal, it is clear that the appellant is unhappy with the appealed decision, but that much is already clear from the notice of appeal.

[1.4] The appellant has argued that there was no need to address the decision under appeal because the decision under appeal was based on the same incorrect premise as the first examination report and the annex to the summons to which the appellant had responded with its letter of 19 October 2007. This would be relevant for the question of admissibility if indeed the ED had failed to take into account the arguments submitted by the appellant in its letter of 19 October 2007 when rendering its decision. This letter contained arguments that have been mentioned above, and a new set of claims. In its decision to refuse that patent application, the ED took into account the new set of claims, summarised the arguments brought forward by the appellant (section 3.5 of the decision under appeal) and explained over almost two pages why it found these arguments unconvincing (section 3.6). Thus, the decision under appeal indeed maintains the position set out in the examination report and in the annex to the summons, but is based on a set of claims different from the set of claims as filed, and further explains why the position taken by the applicant in its letter dated 19 October 2007 is deemed unconvincing. It would thus have been the task of the appellant in the grounds of appeal to take into account those grounds of the decision under appeal that deal with the applicant’s arguments, and provide reasons why the ED was wrong. No such arguments have been provided, though. The appellant’s argument that section 3.4 need not have been addressed may be true, but the point is that no section of the decision under appeal has been addressed at all.

[1.5] Decision T 644/97 cited by the appellant in order to support its position concerns the scope of appeal in terms of subject matter. In order to address the opposition division’s decision, the opponent on appeal had, inter alia argued that “the decision under appeal had applied different and inconsistent criteria to the assessment of one and the same document”, thereby clearly addressing the appealed decision rather than any previous report or communication. In the other decision cited by the appellant, T 382/96, (partial) admissibility of the appeal was discussed in light of some possibly inadmissible auxiliary requests filed with the appeal, while the main request was considered undoubtedly admissible.

[1.6] The board therefore comes to the conclusion that the appeal is not sufficiently reasoned, contrary to A 108, third sentence, in combination with R 101(1) and R 99(2), and is therefore inadmissible.

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