Saturday, 5 January 2013

T 1034/11 – Some Critical Remarks

This is an examination appeal.

The Examining Division (ED) had found claim 1 on file to violate A 123(2) and had made “further remarks” according to which the subject-matter of claim 1 was not sufficiently disclosed (A 83), claims 8 and 18 violated A 123(2), claims 2 and 4 to 18 were not clear (A 84), claim 18 was not new over D3 (A 54) and claims 1 and 8 did not involve an inventive step with respect to D3 (A 56).

The appellant filed claims that overcame the A 123(2) objection, but the ED did not grant interlocutory revision.

The Board expressed its disagreement with the way in which the ED had proceeded:

[2.2] Claim 1 according to the appellant’s main request […] is […] clearly directed to overcoming the only objection raised in section II (“REASONS FOR THE DECISION”) of the decision for refusing the application. […]

[3.1] Under the heading “FURTHER REMARKS” in Section III. of the decision, the ED raised further objections under A 54, A 56, A 83 and A 84 against the patentability of the application.

[… C]laim 1 was found not to be allowable for lack of inventive step of its subject-matter (A 56).

[3.4] In summary, the ED arrived at the conclusion that the application as originally filed did not comply with A 83 because it did not disclose how to obtain the nonlinear coefficients referred to in claim 1. On the other hand, in its argumentation against inventive step, the ED considered that the same feature, which was regarded as not sufficiently disclosed in the application, belonged to the skilled person’s general knowledge. By combining D3 with this general knowledge, the skilled person would have arrived at the claimed subject-matter without involving an inventive step.

[4.1] Apart from the evident incongruity between the arguments given in the contested decision to support the lack of disclosure (A 83) and the lack of inventive step (A 56), the only objection that appears to have been raised at the oral proceedings after the applicant had submitted an amended claim 1 (“main request II”) related to the lack of disclosure of a particular feature of this claim […]. Indeed, the format of the decision appears to confirm that the only reason for refusing the application was the lack of compliance of the amended claim 1 with the requirements of A 123(2).

[4.2] As pointed out above, claim 1 according to the appellant’s main request no longer includes the offending feature and thus overcomes the A 123(2) objection given in the contested decision as ground for refusing the application.

[5.1] According to the case law of the boards of appeal, an appeal by an applicant of the European patent is to be considered well founded within the meaning of A 109(1) if the main request of the appeal includes amendments which clearly meet the objections on which the ED’s decision to refuse the application was based. In such a case the department that issued the contested decision must rectify the decision. Irregularities other than those that gave rise to the contested decision do not preclude rectification of the decision (cf. Case Law, VII.E.13.1).

[5.2] Despite the fact that the objection under A 123(2) given as reason for refusing the application had been overcome by claim 1 according to the main request, the ED decided not to grant the interlocutory revision under A 109(1). This appears to imply that the other objections raised in section III of the decision were regarded as being integral part of the reasons for refusing the application and that these objections had not been met by the appellant’s main request.

[5.3] However, when a decision is based on several grounds supported by respective arguments and evidence, it is of fundamental importance that the decision as a whole meets the requirements of A 113(1). The fact that the appellant had no opportunity to comment on all the grounds on which the decision appears to have been based constituted a substantial procedural violation within the meaning of A 113(1) and R 103.

[5.4] For these reasons the decision under appeal must be set aside and the case remitted to the department of first instance for further prosecution.

[5.5] In these circumstances, it is equitable to order the reimbursement of the appeal fee in accordance with R 103(1)(a).

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

The file wrapper can be found here.


Anonymous said...

The refund of the appeal fee appears to be unjustified, since the appeal was necessarily to be filed as the application did not comply with A123(2). This is true even for interlocutory revision.

oliver said...


Myshkin said...

In my view it is T 1034/11 that is deserving of critical remarks.

The ED's decision contains a reasoned ground for the refusal of the application, on which the applicant had had the right to be heard. There was therefore nothing wrong with the decision.

The decision also contains obiter dicta under the heading "further remarks". This is quite common.

The Board somehow deduces from the fact that the ED did not grant interlocutory revision, that the "further remarks" were not obiter dicta, but formed part of the reasons for the refusal. But clearly they were not.

The ED most likely did not grant interlocutory revision because it considered that some of the objections mentioned in the further remarks still applied. If I am not mistaken this is recommended practice. In any case, there is nothing wrong with it. It is certainly not a violation of Art. 113(1), because these reasons were not a ground for the refusal. Moreover, the appellant has had an opportunity to comment on the "further remarks" in the statement of grounds of the appeal (which comments would be taken into account by the ED when deciding whether to grant interlocutory revision).

GL E-IX, 5.5:
"It is in fact possible to cite further grounds on which the decision is not based, provided these appear not in the actual decision but only after the grounds under a separate heading such as "Additional comments". It is then clear that they are not actually part of the reasons for refusing the application."

GL E-X, 7.4.2 (on interlocutory revision):
"In making this decision, not only the grounds mentioned in the decision should be taken into account but also all previous objections to patentability to which the applicant has had an opportunity to respond (e.g. objections mentioned in an obiter dictum of the decision, or objections mentioned in previous communications, during personal consultation or at oral proceedings). This is in the interest of procedural efficiency and to the benefit of the applicant (no second appeal fee necessary)."

Anonymous said...

According to the order of the chairman dated 7/2/2012 Mr. Ungler was appointed as legally qualified member. However, the decision still cites Mr. Moufang as legally qualified member. Hence the question arises which was the real composition of the board that took the decision?

Manolis said...

There is also decision T1994/11 commented here in November 2012 where the ED refused the interlocutory revision before they had seen the grounds of appeal. The Board, acknowledged the substantive procedural violation and remitted the case, but did not return the fee:

"However, despite the presence of a substantial procedural violation the board considers that it would not be equitable to reimburse the appeal fee under R 103(1)(a). The established procedural violation cannot have been causative in filing the appeal since it occurred after the notice of appeal had been filed."

May be we need a third decision to clarify which is the correct way to go!