Thursday, 8 November 2012

T 1898/11 – Deal With It

In this decision the Board found the Examining Division (ED) to have violated the applicant’s right to be heard.

Claim 1 before the Board read:
1. A method of retrieving a spoken document, the method comprising: converting speech associated with a spoken document into a lattice representation; indexing the lattice representation of speech; and upon receiving a query from a user, wherein the query comprises a combination of speech and text processing the speech and text query to enable data associated with the speech and text query to be used to search the indexed lattice representation of speech and return audio segments from the spoken document that match the user query.|
[3.1] According to A 113(1), a decision by the EPO can only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.

[3.2] It is the consistent case law of the Boards of Appeal, that the “grounds and evidence” under A 113(1) are to be understood as meaning the essential legal and factual reasoning on which the EPO has based its decision (Case Law, 6th Edition, VI.B.1.1). It is a contravention of A 113(1) if legal or factual reasoning which, according to a party, is clearly central to its case and could present a challenge to the decision in question were completely disregarded in that decision (see for example T 76[3]/04).

[3.3] In R 19/10 [6.2] of the reasons, the Enlarged Board of Appeal agreed “in principle” with the petitioner in that case that A 113(1) guaranteed a party’s right to have the relevant grounds fully taken into account in the written decision, but added that this principle is not without any limitation … provided that the reasons given enable the parties concerned to understand whether the decision was justified or not, the deciding organ is under no obligation to address each and every argument presented by the party concerned. In R 17/11 [4] essentially the same statement is made.

[3.4] In the view of the Board, a “relevant ground” in this context is an argument by a party which raises reasonable doubts as to the legal or factual basis underlying the reasons for the decision. Such an argument must be dealt with, if the parties are to understand the justification of the decision.

[3.5] In the present case, the ED raised an objection under R 137(4) pre April 2010, and the appellant made a number of arguments […]. The question is what, if any, reasonable doubts these arguments created as to the legal or factual basis underlying the objection, and whether any such doubt which did arise was dealt with.

[3.6] The Board finds that at least the following reasonable doubts arose, but were not dealt with.

[3.6.1] [Argument (a)] [“Defining the subject-matter of original claim 1 as ‘the lattice representation of speech for the indexing of spoken documents’ neglected several features defined in the claim”] asserts that the ED’s formulation of the technical problem (for original claim 1) failed to take account of all the claimed features. That is an attack on the factual basis of the objection. Since the claim defined not only a lattice representation, but also features directed to making the representation searchable, the applicant’s argument did create a reasonable doubt as to whether the technical problem was properly formulated. In its written decision, the ED simply repeated the statement that the originally claimed subject-matter concerned lattice representation of speech for the indexation of spoken documents. The Board can see no explanation of how the claim features contribute to the formulation of the problem, and concludes that the decision did not deal with this relevant argument.

[3.6.2] According to [Argument (c)] [“There were two differences between the original and the amended versions of claim 1, and they were such that the subject matter of the amended claim was wholly contained in that of the original. The Guidelines, at C-VI, 5.2 (ii) stated that an objection under R 137(5) should not be raised when a feature was added to a claim in order to meet an objection such as lack of novelty or inventive step.”] the subject matter of the amended claim is wholly contained in that of the original claim, and the Guidelines state that an objection under R 137(5) should not be raised when a feature is added to a claim in order to meet an objection such as lack of novelty or inventive step. It is evident that the applicant was referring to the 2010 version of the Guidelines, but the 2007 version makes the same statement at C-III, 5.2 (ii) with reference to R 137(4) pre April 2010.

The argument attacks the legal basis of the objection: if the Guidelines apply in the way asserted, then R 137(4) pre April 2010 cannot debar the amendment. Unless that doubt is addressed, the applicability of the Rule is doubtful. The written decision explains neither why the objection would not go against the Guidelines, nor why it would be justified in this case to go against them. The Board finds this objection relevant, and that it was not dealt with.

[3.6.3] [Argument (e)] [“(e) The subject matter of amended claim 1 was wholly within that of original claim 1, and so, if it had been filed together with the original claims, the applicant would not have been invited to pay an additional search fee for it. Reasoning as in T 708/00, an objection under R 137(5) should not have been made. As that decision stated, it was generally permissible to add features to a claim. ”] is similar to V (c), except that it refers to T 708/00 rather than to the Guidelines. The Board’s conclusions are the same.

[3.7] In conclusion, the ED did not deal with relevant arguments, something which amounts to a substantial procedural violation. The decision under appeal should therefore be set aside and the appeal fee be reimbursed.

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

The file wrapper can be found here.