Tuesday, 28 August 2012

T 294/11 – Tell Me Why

The present decision reminds us that it is dangerous to draft statements of grounds of appeal (SGA) containing sweeping assertions rather than dealing in detail with the objections raised by the first instance department.

The appeal was directed against the refusal of an application by the Examining Division (ED) for lack of clarity (A 84) and non-compliance with A 123(2).

The SGA contained the following statement regarding the ED’s finding on lack of clarity:

The Board found the appeal to be inadmissible:

[2.1] A 108 in conjunction with R 99(2) requires that a SGA is filed which indicates the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.

In this respect, the jurisprudence of the boards of appeal has developed the general principle that the SGA should specify the legal or factual reasons on which the request for setting aside the decision is based (see for instance T 220/83). The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect.

[2.2] The contested decision does not contain reasons but only a reference to grounds given in the communication of 14 July 2010 of the ED. This form of decision is allowed if it is quite clear from the grounds in a previous communication which considerations played a crucial role for the responsible division when it took its decision (see for example T 234/86 [5.10]). It should not be left up to the party concerned and a board to construct the applicable reasons (see for instance T 1709/06 and T 1309/05).

In the present case, it is clear from the communication dated 14 July 2010 that lack of clarity and the contravention of A 123(2) were major deficiencies of the application and that these were the reasons for the refusal.

In particular, the ED’s reasoning as to lack of clarity was very elaborated. In fact, the ED identified for claim 1 on file eighteen separate aspects of lack of clarity. Although some of these aspects may be of minor importance, others apparently concern serious problems.

Thus, the appellant should have explained in its statement setting out the grounds for appeal and within the time limit provided for in A 108 why the reasoning of the ED was wrong.

[2.3] As far as the appellant’s SGA of 28 January 2011 addresses the ground for refusal of lack of clarity, it provides two brief observations.

The first observation is an assertion that the claims on file were clear to the skilled man. They defined the subject-matter for which protection was sought whilst simultaneously being clear, concise and supported by the description. The assertion is supported by only one concrete argument which refutes the ED’s objection that it was not clear whether the steps in claim 1 were to be carried out in the order in which they are mentioned. In this respect, it is stated that it would be clearly understood by the skilled man that the steps as claimed were interdependent and had necessarily to follow since the results of one process step were essential for the operation of a subsequent process step.

The second observation does not add any concrete reason why the findings in the contested decision would be wrong but constitutes a submission on the part of the appellant that, in violation of the principles of the Protocol to A 69, the ED’s comments were directed towards encouraging the applicant to narrow the claims to explicit embodiments of the present invention, without necessarily defining the present invention in a way that would provide a fair degree of protection with a reasonable degree of certainty for third parties.

Thus, with the exception of one aspect, the SGA fails to explain why any of the other seventeen reasons for lack of clarity contained in the contested decision would be wrong. Consequently, it does not meet the standard for adequate substantiation.

[2.4] The appellant argued in the oral proceedings that the rulings in the contested decision concerning lack of clarity were fundamentally flawed because the ED relied on the wrong test for judging clarity. Instead of properly interpreting the claims in the light of the description, as called for by the Protocol to Article 69 EPC, the division started from non-sensible interpretations of the claim definitions and arrived, on the basis of these free interpretations, at its findings of lack of clarity. In pointing to this key deficiency of the contested decision, the SGA was sufficiently reasoned.

[2.5] The appellant’s submission is not convincing because it constitutes an argument in support of clarity which was not given in due time, i.e. in the SGA (R 101(1)). Besides, it is doubtful whether it could have been regarded as a sufficient reasoning because it does not address the majority of the clarity objections, which do not rely on any interpretation but directly question the meaning of the claimed definitions.

[2.6] Furthermore, as far as the contravention of A 123(2) is concerned, the statement of grounds contains only the assertion that this article was not contravened.

Apart from a statement concerning the claimed step of determining the velocity of the moving table, which addresses point 2.1.1 of the communication of 14 July 2010, none of the other detailed objections of the ED was dealt with.

[2.7] It follows from the above considerations that the SGA filed in the present case amounts to no more than a mere assertion that the contested decision is incorrect, without stating the legal or factual reasons why that decision should be set aside, and thus does not satisfy the provisions of A 108 in conjunction with R 99(2).

The appeal is therefore not admissible.

To download the whole decision, click here.

The file wrapper can be found here.