Tuesday, 18 September 2012

T 435/07 – Where Exactly?

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

The search division (SD) had found the application to contain three distinct inventions: (1) a catalyst carrier (ii) comprising a fibre paper impregnated with a particular slurry (i) (claims 1 to 11); (2) the slurry (i) itself (claim 12); and (iii) a catalyst (iii) comprising the carrier (ii) (claims 13 to 17). Therefore, the SD raised an objection of lack of unity.

The applicant paid a second search fee for claims 13 to 17.

In its  communication pursuant to A 96(2) EPC 1973, dated November 3, 2005, the ED reiterated the objection:

The applicant filed a reply explaining why the slurry of claim 12 was both novel and inventive over the prior art cited and constituted the common inventive concept linking all claims of the application. The applicant requested that the ED grant a patent based on the claims as originally filed and refund the extra search fee.

The ED then issued its decision refusing the application.

The Board came to the conclusion that the ED had committed a substantial procedural violation:

[2.1] According to A 113(1), the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. The grounds are to be understood as meaning the essential legal and factual reasoning on which the decision is based (Case Law, 6th edition 2010, VI.B.1.1). The grounds must be communicated to the applicants in such a way that they are put in the position to defend their rights. It is not sufficient to raise an objection without giving the factual details on which this objection is based and then leave it to the applicants to formulate the counterarguments. An objection against the grant of a patent must be raised in such a way that the applicants are able to understand its factual basis and to react accordingly without having to guess first what the ED might have had in mind.

[2.2] In the present case, the application was refused based on a single ground, namely lack of unity. Thus it needs to be decided whether or not that ground had been properly communicated to the applicants in advance and whether the applicants were given an opportunity to overcome it.

[2.3] Lack of unity was based on the fact that the common concept linking the intermediate products (i), (ii) and catalyst product (iii), namely the slurry (i) defined in claim 12, is known from D8 and the common concept linking the intermediate product (ii) and catalyst product (iii), namely the support (ii) of claim 1, is foreshadowed by D1 in combination with technical encyclopedia excerpts D2-D4. The basis for lack of unity was therefore lack of novelty of the slurry of claim 12 over D8 and lack of inventive step of the support of claim 1 over D1 in combination with D2-D4.

[2.4] Lack of novelty of the slurry over D8 was communicated to the applicants in the single communication of the ED by a single sentence, stating only that the slurries are “known from D8 for the same purpose, additionally relying on the computer translation of this document”.

[2.4.1] Such a statement without any indication of where in the document the features of the slurry are to be found individually and in combination results in simply raising the objection without communicating to the applicants the reasoning on which that objection is based, since there is no correlation between specific passages of the document and corresponding features of the claim and there are no arguments to support the objection. It is left to the applicants to find out about the relevant features in D8 themselves.

[2.4.2] A generic statement at the beginning of the communication that “the respective passages cited with the individual documents in the search report apply in assessing these documents” cannot support a different conclusion, since it only restricts somewhat the parts of the documents which may be relevant, but does not put the applicants in the position of understanding where each feature is to found according to the ED and which reasoning of the division stays at the basis of the raised objection.

[2.5] The lack of inventive step objection for the support of claim 1 is developed in the single communication by the ED in a few more sentences in which it is said that the support is “foreshadowed by D1 in combination with technical encyclopedia excerpts D2-D4. D1 clearly teaches that adding either a gelation agent or the fibres defined in present claim 4-5, dependent upon claim 1, to an impregnation slurry for fibre papers comprising silica sol will lead to a strong and durable carrier as presently sought (cf. application page 1, lines 21-23), the carrier (ii) claimed in present claim 1 thus being an obvious alternative to that of Dl. Particularly attapulgite (identical with palygorskite, cf. present claim 5) and sepiolite, referred to in Dl, are known from D2 as typically falling within the particle size range claimed in present claim 1. The explicitly mentioned fillers in Dl (e.g. kaolin, mica and talc) are known from D3 and D4 to prescribe to the presently defined particle sizes in claim 1.”

[2.5.1] Here again no single citation of specific passages of any of D1 or D2-D4 is given, let alone in combination with specific features of the claims. In particular, no indication is to be found of where in the document apparently considered as the closest state of the art (D1) the features of the support are to be found individually and in combination. Moreover, no clear indication is given of which are the distinguishing features with respect to D1 and where these features are to be found in the cited prior art together with a hint that they are meant to solve the posed problem. Without these pieces of information the applicants are not put in the position of understanding the objection of lack of inventive step raised by the ED and reacting appropriately in order to overcome it.

[2.5.2] Also in this case the generic reference at the beginning of the communication to all passages cited in the search report is of no help, for the same reasons as outlined above (point [2.4.2]).

[2.6] For these reasons, it is concluded that, while the ground of lack of unity was formally communicated to the applicants in the single communication of the ED, its factual basis was not sufficiently given therein, so that the appellants had to speculate about the ED’s assessment and thus were not put in the position to properly defend their rights. Under such circumstances the requirements of A 113(1) EPC cannot be considered to be met.

[2.7] Coming to a final decision after such a single deficient communication with the result that the application is refused results therefore in a substantial procedural violation.

[2.8] Moreover, the decisions cited in the decision under appeal to support the fact that the issue of a decision was permissible under A 113(1) are not pertinent, since they refer to different factual situations. In the case dealt with in T 162/82 the primary examiner took a reasoned stand concerning the patentability of the application in his first communication ([10, 1st sentence]) and in the case underlying T 300/89 the relevant objection (lack of novelty) was clearly raised and explained in the first communication ([9.1, last paragraph]). The conclusion of the Boards in those cases that no procedural violation took place when a decision was directly taken after the first communication in the absence of a request for oral proceedings was based on the presence of a properly raised objection in the first communication which is not the case here. Decision G 4/92 deals with a decision taken against a duly summoned party who fails to appear at oral proceedings and is not relevant for that reason only.

The Board then remitted the case to the ED and ordered reimbursement of the appeal fee.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.