Thursday, 28 March 2013

T 395/12 – Simply Wrong

This is an examination appeal.

The statement of grounds of appeal was rather minimalist with regard to the impugned decision of the Examining Division (ED):

The following pages of the statement of grounds of appeal essentially reproduced a letter dated June 15, 2007, which had been filed during the examination proceedings.

The Board found this appeal to be inadmissible:

[1.1] In the present case, the applicant’s only statement that directly addresses the decision under appeal was that the ED was “wrong” […]. There is no explanation why it should have been wrong, though.

[1.2] This as such is not contested by the appellant. Yet the appellant invites the board to look at the grounds of appeal as a document in its own right, without a comparison with statements previously made in examination. Both the nature of the appeal proceedings and previous case law speak against such an approach. Decisions T 213/85 and T 95/10 clarify that the appeal procedure is not a mere continuation of the examination procedure (in accordance with decisions G 10/91, G 9/92 and G 4/93, but separate therefrom. Where the applicant in the grounds of appeal repeats its arguments set out during the examination phase without taking into account the decision under appeal, it mistakes the function of the boards of appeal, as the boards of appeal are not a second go of the examination procedure, but are meant to review decisions made by the EDs. Such a review is carried out based on the objections raised against the decision in the grounds of appeal. The grounds of appeal must therefore by definition relate to the reasons on which the decision under appeal is based and cannot be looked at in isolation from the appealed decision and the procedure leading to such decision. According to the decision T 1045/02 [1], “grounds sufficient to make an appeal admissible must therefore at least implicitly deal with the fundamental reasons in the decision under appeal and must explain in an objective manner why the decision under appeal is considered wrong.” (translation by the board).

[1.3] As a fallback position, the appellant has argued that the case at issue cannot be likened to cases where the grounds of appeal merely made reference to statements presented in earlier phases of the procedure. It is true that the inadmissibility of an appeal in decisions such as T 220/83 and T 1045/02 was also based on the fact that a mere reference was made to previous statements. The grounds of appeal in this case do not merely make reference to the letter of 15 June 2007, but cite this letter almost in its entirety. Rather than “grounds by reference”, one could call this “grounds by cut-and-paste”, and the board fails to see how this mechanical exercise adds more to the case than a phrase such as “reference is made to the letter of 15 June 2007 in its entirety” would have done. It has not been argued that the cited passages represent a creative selection that would give these statements a new meaning and could thereby be regarded as a response to the decision under appeal. As far as the arguments on A 56 are concerned, there is an almost literal identity between the grounds of appeal and the letter of 15 June 2007. Decision T 65/96 does not help the appellant’s position, because in addition to the reference to previous statements, three specific points made in the decision under appeal were contested.

[1.4] A further argument advanced by the appellant rests upon a passage in the decision T 644/97 [1] according to which an appellant cannot be compelled to come up with new arguments (“Indeed, a requirement that new arguments must be submitted to render an appeal admissible would imply that the appealed decision, as issued, had necessarily been correct”). In this decision, the board based the admissibility of the appeal on a number of reasons. Apart from the one mentioned above, the admissibility was for the first time contested in oral proceedings, and “a relevant objection [had] already [been] substantiated in the Statement of Grounds of Appeal” […]. Apart from that, the fact that the appellant is not required to come up with new arguments does not mean that the decision under appeal should not be addressed at all.

[1.5] Decision T 934/02 [2] found an appeal to be sufficiently substantiated even in the absence of arguments dealing with the contested decision if two criteria were met:
“(i) The subject of the proceedings has changed e.g. due to the filing of a new set of amended claims together with the statement of grounds, and

(ii) The reasons for the decision are no longer relevant in view of the change in the subject of the proceedings, (cf. in particular J xx/87 [1.4] and T 105/87).”

This rather broad statement is qualified in two further decisions. According to decision T 1045/02, merely filing new claims makes the appeal admissible only in exceptional cases, and according to decision T 1276/05, new claims filed in lieu of any other grounds must be accompanied by an explanation why these requests overcome the objections raised in the decision under appeal, unless this is obvious.

In the present case, six auxiliary requests with new claims have been filed with the grounds of appeal. According to the appellant, this was sufficient to change the case and make the appeal admissible.

[1.6] All six auxiliary requests are combinations of independent and dependent claims, and all these combinations were addressed in the appealed decision and held to lack inventive step. Thus, the decision under appeal still remains relevant for these auxiliary requests. In addition, while the appellant has indicated the basis for the new auxiliary requests, there is no explanation why the ED was wrong in considering these combinations not inventive. The appeal thus does not become admissible by the filing of the auxiliary requests.

[1.7] Finally, the appeal must also be considered inadmissible because the grounds fail to deal with all the reasons the ED has advanced for refusing the application. According to the decisions T 213/85 [4] and T 1045/02, the grounds of appeal must deal with all those reasons on which the decision under appeal is based:
“According to the Board, the minimum requirements for an admissible appeal have not been met if only one of several reasons for refusal are addressed ...” (T 1045/02 [4]; translation by the board).
This position is consistent with the requirement of Article 12(2) RPBA according to which
“The statement of grounds of appeal and the reply shall contain a party’s complete case”.
In the case at issue, the summons of 1 June 2011 which served as the reasoning for the decision according to the state of the file, raised new objections with respect to A 84 for the newly added passages in claim 1 […]. Since these objections were not pertinent and therefore not raised for the previous versions of the claim, the letter of 15 June 2007 and the grounds of appeal that are an almost verbatim copy of this letter do not deal with this objection. As the decision under appeal held that claims 1 and 10 were not clear, A 84 must be considered as one of the reasons the refusal of the application is based upon. Already the failure to address this ground of refusal makes the appeal insufficiently reasoned and inadmissible.

[1.8] Summarising, the grounds of appeal consist of an almost verbatim copy of the appellant’s letter of 15 June 2007 that predates the summons and cannot take into account the division’s subsequent arguments and objections to the amended claims, be it for grounds that have already been raised (lack of inventive step), be it for grounds that became relevant only for the amended claims (lack of clarity). Nor can the above letter furnish arguments to the ED’s comments regarding the amended claims filed with that letter. The auxiliary requests filed with the grounds of appeal are combinations of dependent and independent claims, all of which were addressed in the decision under appeal and can therefore not be considered to be a change of case vis-à-vis the decision under appeal. The appeal is therefore insufficiently reasoned and does not comply with the requirements of A 108. It must therefore be dismissed as inadmissible.

So make sure your statement of grounds of appeal contains at least a reasoned statement or two why the impugned decision was wrong.

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

The file wrapper can be found here.


Anonymous said...

It seems that some parties want the boards of appeal to do their work for them. That is unlikely to be successful in view of the enormous workload of the boards.

Sander van Rijnswou said...

It may be relevant that the applicant asked for a decision according to the state of the file, even though new objections were on the table which had not been addressed by the applicant.

With the current strictness of the Boards, it looks like you're taking a real risk if you shortcut the normal procedure.