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).
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