Tuesday, 11 September 2012

T 933/09 – Tell Us Why

It cannot be said often enough how important it is to draft statements of grounds of appeal that really explain why the first instance was wrong or why its reasons do not apply any more to the amended claims. There may be cases where it is sufficient to file amended claims, but clearly these cases are the exception rather than the rule.

The present appeal was filed after the Examining Division (ED) had refused the application under consideration on the grounds that claim 1 did not fulfil the requirements of A 123(2). The ED had objected, inter alia, that no basis for the “initial algorithm” and “subsequent algorithm” defined in the characterising portion of feature e)iii) of claim 1 could be established, particularly since the features of these algorithms seemed to be cherry-picked from the description, leading to an intermediate generalisation which went beyond the content of the original application.

The Board found the appeal to be inadmissible, for the following reasons:  

[1] A 108 in conjunction with R 99(2) requires that a statement setting out the grounds of appeal be 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.

[2] This requirement is reflected in Article 12(2) RPBA which states:
“The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on” [emphasis added].
[3] In the present case the appellant filed with the statement of grounds of appeal an extensively reworded claim 1. In particular, this claim contains a full page of newly formulated features in section e)iii), mainly replacing those features in claim 1 of the main request which had been objected to in the impugned decision. Beyond the general information given by the appellant in its statement of grounds of appeal that these newly formulated features included all the steps necessary to carry out the algorithm of the flow diagram of Figure 6, the only indication of any reasons why these new features might fulfil the requirements of A 123(2) is the appellant’s statement:
“support of this [sic] features can be easily found in the description from page 8, line 6 to page 34 line 13” (that is, amongst 26 pages).
[4] This statement merely conveys the information that the contents of 26 pages of the originally filed description (comprising a total of 34 pages) had been condensed into the newly formulated features in section e)iii). It does not enable the Board to immediately understand, without first having to make investigations of its own, if – and if so, where – there is a direct and unambiguous basis for each of the amendments made (in terms of both additions of features as well as omissions of other features belonging to the same context). Thus, the statement of grounds of appeal is not sufficient to allow to recognise the relevance of the amendments for remedying the raised objections of added subject-matter.

[5] The lack of self-evidence for such basis for more than a dozen added method steps becomes particularly apparent from inspection of the large list of citations of numerous passages scattered throughout the mentioned 26 description pages which the appellant filed before the oral proceedings in an attempt to provide a purported basis for the added features. However, contrary to the appellant’s view, additional arguments filed after the time limit fixed in A 108 cannot be taken into consideration for assessing the admissibility of the appeal.

[6] Consequently, the aforementioned statement cannot be considered to set out clearly the reasons for reversing the impugned decision and to specify expressly all the arguments relied on for establishing the appellant’s complete case as prescribed by Article 12(2) RPBA.

[7] It is not denied that in some cases an appeal may be found to be substantiated as a result of filing amended claims which self-evidently deprive the contested decision of its basis. In the case underlying decision T 934/02 cited by the appellant, the statement of grounds of appeal did in fact give detailed reasons why the subject-matter of the amended claims satisfied the requirements of novelty and inventive step vis-à-vis the documents cited in the impugned decision (point [2] of the Reasons), whereas in the present case the appellant has remained effectively silent as to why the amendments introduced into claim 1 now meet the requirements of A 123(2).

Thus, in the present case, contrary to the appellant’s view, the Board considers that the mere filing of amended claims does not exonerate the appellant from the task of expressly specifying in the statement of grounds of appeal the relevance of the amendments for overcoming the objections on which the decision under appeal was based.

[8] In view of the circumstances explained above, the Board also considers that the appellant’s acknowledged expectation of obtaining a continuation of the examination procedure before the ED by means of interlocutory revision under A 109 is irrelevant, since the ED did not rectify its decision and remitted the appeal to the Board.

[9] For the aforementioned reasons, the Board finds that the appeal does not comply with the requirements of R 99(2) and is therefore to be rejected as inadmissible under R 101(1).

In consequence, the allowability of the appellant’s request that the decision under appeal be set aside and that the case be remitted to the department of first instance for further prosecution is not examined (A 110).

T 23/03 had come to the same conclusion in a similar case:
[8] Therefore, the factual basis of the contested decision remained unchanged in the present case and the amendments made to the claims filed with the statement of grounds of appeal did not add anything which implicitly could clarify as to why the [patent proprietor] might be of the opinion that the contested decision [dismissing a request for lack of inventive step and violation of A 123(2)] no longer applies to the new dependent claims.

[9] This is corroborated by the fact that [the opponents], insofar as the factual situation was the same as in the first instance, simply repeated their arguments presented there. Doing so rather implies that there was nothing to add since the situation has not changed, but cannot be interpreted as an answer to grounds of appeal indicating why the first instance decision should be held to be incorrect or no longer apply. 

[10] Therefore, the [patent proprietor’s] document headed “written statement of grounds of appeal ...” does not deal with the reasons given in the decision under appeal and, thus, does not comply with the requirements according to the third sentence of A 108 [EPC 1973]. Consequently, the appeal has to be rejected as inadmissible in accordance with the provisions of R 65(1) [EPC 1973].
Should you wish to download the whole decision, just click here.

The file wrapper can be found here.