Monday, 16 September 2013

R 2/13 – Terra Incognita

This is a petition for review of the case T 1676/11 where Board of appeal (BoA) 3.3.10 dismissed an appeal against the refusal of an application by the Examining Division (ED).

I find the decision interesting because the Enlarged Board (EBA) had something to say on the role of the BoA in ex parte cases.

Allowability of the petition for review

The first fundamental violation of A 113

[2.1] The two aspects of this ground revolved, as became apparent during the oral proceedings (OPs) before the EBA, around the alleged new line of argumentation introduced by the BoA in its decision.

The petitioner’s complaint in this respect is based on the premise that in ex parte cases the BoA is under an obligation to make the appellant aware of the Board’s reasons and arguments (emphasis added by the EBA) and thereby perform the role usually incumbent upon the opposing party in inter partes cases.

For the reasons below the EBA does not agree with the petitioner.

[2.1.1] First of all the EBA cannot find in the file any factual support for the assertion that the petitioner had always argued in line with the same understanding of the skilled person as the ED and that, by distinguishing between the skilled person defined as the manufacturer of medical devices, and the authors of D3 who were surgeons, the Board, all of a sudden, brought an unpredictable change of the case. Even though the Board did not take the same approach as the department of first instance, as may happen in any appeal proceedings, nothing in the decision of the ED or in the petitioner’s submissions points to an implicit consensus about the skilled person being the authors of D3. On the contrary, the ED’s combination of D3 and D5, which belongs to a different classification (containers), when considering the Group c) features of the claimed invention, which precisely address the problem of contamination, rather points to a broader notion of the skilled person than the surgeon […].

As to the petitioner, he never made clear when mentioning the authors of D3 that they were to be considered the skilled person; he referred to the skilled person in general as well and did not specify that the authors of D3 were to be regarded as the skilled person with a view to disqualifying D5 as the closest prior art […].

[2.1.2] Against this background of the undefined skilled person the BoA had to consider the assertion that, because D3 itself solved the problem of contamination raised by its first embodiment, it would preclude any further consideration of this first embodiment by the skilled person. To that end, the Board […] evaluated the teaching of D3 against its general background, namely its origin and its purpose, and, in order to assess inventive step, through the eyes of the relevant skilled person; this being the case the EBA does not accept the alleged contradiction with the established case law, regarding the pointer in the closest prior art […].

In fact in the current case, where neither the ED nor the petitioner had specifically identified the skilled person, the Board did so, this definition being the missing intellectual link required to properly deal with the contention that D3 would deter the relevant skilled person from taking D3 [I guess this shiould read D5] into account. In this respect the petitioner acknowledged during the hearing before the EBA that it was not the definition of the skilled person (the manufacturer of medical devices in the field of manufacturing the medical devices) which was odd, but the teaching drawn by the Board from D3.

Thus, by defining the skilled person the Board merely dealt with the argumentation that D3 taught away from the first embodiment the petitioner had put forward without however giving any further explanation as to who the skilled person was and why he/she was taught away.

Under such circumstances, defining who was, and who was not the skilled person was merely an intellectual sequence in the articulation of the reasoning only based on an interpretation of D3 at variance with the petitioner’s own interpretation, which was discussed at length, and on the notion of the skilled person inherent in the debate of inventive step. The petitioner who had not elaborated on this point, cannot now claim that it was unpredictable that the Board took the further step of identifying the skilled person when assessing inventive step.

It follows from the above that it is the petitioner’s personal and subjective view that the Board put forward an unpredictable line of argumentation or entered “uncharted territory” or that, by merely defining the skilled person the Board suddenly deviated from the facts, grounds or evidence discussed as part of the debate or that this definition was so creative that it would objectively amount to bringing in a new fact.

To require that the Board should have made the petitioner aware of the particular steps in its reasoning goes too far, as has been reiterated many times in the case law (see, for examples R 18/09 [14,15 and 18]; R 10/10 [2.4]).

[2.1.3] Coming now to the alleged obligation of the Boards to make the parties aware of the “reasons and arguments” crucial for the decision, the EBA considers that in fact the present petitioner’s complaints lie on a confusion in the terminology (between the meaning of “arguments” or “reasons”, “grounds, facts and evidence”), and on a debatable conception of the role of the BoA in ex parte cases proceedings, which is anyway of no assistance regarding the definition of the respect of the right to be heard (see infra).

Reasons and Arguments

(a) Even though the term “arguments” is not the appropriate terminology when talking about the reasons for decisions, and even though the principles set out in G 4/92  as to the distinction between “arguments” “grounds” and “reasons” are rather concerned with the parties’ obligations, these principles nevertheless apply mutatis mutandis in the present case. In G 4/92 [10], the EBA stated: “As regards new arguments, the requirements of A 113(1) have been satisfied even if a party who has chosen not to appear consequently did not have the opportunity to comment on them during OPs, insofar as such new arguments do not change the grounds on which the decision is based. In principle, new arguments do not constitute new grounds or evidence, but are reasons based on the facts and evidence which have already been put forward”.

(i) Without endorsing the petitioner’s stance upon the role of the BoA (see infra), the EBA observes that an analogy can be made between the definition given in G 4/92 of the arguments brought forward by a party and reasoning in the decisions of the BoA, which, like arguments, consist of logical steps such as analysis, comparison and deduction based on the legal grounds and factual evidence such as discussed.

(ii) In the case at hand the BoA dealt with the petitioner’s submissions regarding the issue of the skilled person and dismissed his interpretation of D3 in a way which did not introduce any change in the factual and legal framework of the debate, in the same way as “arguments” can be put forward by a party in the absence of the other party, as stated in G 4/92.

(iii) Furthermore this analysis is in line with the analysis made in T 1621/09 cited by the petitioner, despite the fact that the BoA there came to different findings due to the circumstances of that case: the introduction of a new “argument” by the party was in fact based on a different part of a document (slides six and thirteen referred to for the first time during the OPs) and thus amounted to putting forward an “alternative case” in the absence of the other party.

Role of the Boards in Appeal proceedings

(b) As to the role of the BoA, the analogy the petitioner seeks to draw between a board in ex parte cases and the opposing party in adversarial inter partes cases has no legal basis or legitimacy if only because the boards are the deciding body and it is a well-established principle that one cannot be judge and party.

(c) Anyway, this assertion and the parallel with the application of Article 13 RPBA in the event of an amendment of the case lead to a moot point because the EBA agrees with the petitioner on the principle that the parties have a right to comment upon the points which will be decisive for the decision. However, the view that this right also extends to all the sequences of reasoning (the “arguments” in the sense of G 4/92 see supra) is based on a misunderstanding of the terminology used (see 2.1.3 a) supra).

Analysis of the case law cited

[2.1.4] The petitioner contends that, in the present case, the BoA deviated from the standard of the right to be heard as applied in the case law of the BoA and cited in this respect several decisions.

(a) The EBA firstly notices that the cases cited by the petitioner underscore the fact that the departments of first instance are subject to specific obligations, under A 94(3) and R 71(2) for the ED, and A 101(1) and R 81(3) EPC for the opposition division, which result in the corresponding power of the boards to check whether these obligations were correctly performed.

(i) This is precisely what happened in T 951/92 cited by the petitioner: the Board found that the ED had not acted in compliance with A 96 and A 97, R 51(3) EPC 1973 (A 94(3); R 71(2) EPC 2000), which require that any communication under A 94(3) EPC shall contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent. The legal basis was the same in T 778/98, which was alleged to be similar to the case at hand, even though the Board there did not expressly quote the relevant provisions of the EPC mentioned above.

(ii) Of course, the fact that in the appeal procedure there is not the same obligation to send preliminary communications which gives the right to be heard at first instance a specific procedural framework, does not mean that less weight is attached to the right to be heard on appeal. The fact is that the decisions the petitioner cited do not give a comprehensive account of the whole case law about how the right to be heard is commonly applied and do not reflect the overall picture.

(iii) It would, therefore, serve no purpose to thoroughly analyse all the decisions cited. It is sufficient to note that the BoA, when checking whether the right to be heard has been infringed, do not restrict themselves to the application of the legal provisions mentioned above, but take an overview of the case. Decisions referring to R 116 (former R 71a) take a less formal approach to the right to be heard than those cited by the petitioner: for instance in T 462/06 [4.3 and 4.5, last §], the Board made clear that there was a point in time where the applicant no longer had a right to feedback before the OPs and that what was presented as new arguments was in fact the assessment by the ED of an example discussed during the OPs (similarly T 343/08 [4-5]). In T 682/89 which concerned opposition appeal proceedings, the Board came to the conclusion that the requirement of R 116 (former R 71a) does not mean that all lines of arguments or a detailed reasoning for the decision should already be set out in the communication. These decisions are in the same line as the decision under the present petition.

(b) The EBA will turn now to the differences in nature between an appeal procedure and a petition for review procedure.

The petition for review was established as a remedy for a fundamental violation of A 113 or fundamental procedural defects in decisions that had become res judicata, which is applicable only as defined in A 112a and R 104 (see, for instance R 18/11 [2]), unlike the appeal procedure, which empowers the BoA to review the merits of the decision under appeal.

Generally speaking, a simple flaw in the reasoning in a decision does not necessarily correspond to a violation of the right to be heard which can be challenged by a petition, while a BoA has full competence to review such a flaw. There are cases where the borderline between a purely substantive mistake in the reasoning and a violation of the right to be heard is difficult to define and the diversity of the factual circumstances of all the various cases dooms any attempt at general delimitation to failure.

Having said that, the right to petition on the ground of a fundamental procedural violation under A 112a (2)(c) does not cover cases where examining the alleged violation would amount to a review of the substantive merit of the reasoning: this is in fact what is left to the EBA in the present case now as it has confirmed that the reasoning was based only on facts which were part of the debate.

The cases where the petition for review was allowed

[2.1.5] The petitioner also made an analogy with the circumstances in cases R 23/10 [I guess this should read R 3/10] and R 21/11, these being cases where the petition was allowed.

[2.1.6] This argument fails for the reasons given above and it is not necessary to repeat them here: The BoA did consider the petitioner’s arguments and did not use in its decision anything other than the facts and evidence the petitioner had an opportunity to discuss.

The absence of reasons with respect to the process claim

[2.2] The petitioner submitted that he had argued that there were other conceivable ways of preparing the haemostatic paste, the argument that D3 “taught away” also being valid with respect to the claimed process. Instead of taking account of all these arguments the Board, in point 27 of the decision, stated that the process steps of claim 1 merely reflect the obvious steps for using the non-inventive device of the second auxiliary request.

The EBA, however, can only confirm that the BoA gave a reason why the process claim was not inventive over the prior art. That this reason is not sufficient is the petitioner’s subjective opinion. Apart from the fact that the sufficiency of reasoning is not on the list of fundamental defects (A 112a and R 104), it is established case law that, provided that the reasons given enable the parties concerned to understand whether the decision was justified (or not), the deciding body is under no obligation to address each and every argument presented by the party concerned (R 19/10 [6.2-3]; R 13/12 [2.2]; R 6/11 [11.3-4]). If the Board has found one line of reasoning that rendered the process obvious it no longer had to address all the other alternative lines of reasoning which might have supported inventive step.

[3] The upshot of the above is that the petition for review has to be rejected as clearly unallowable.

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

The file wrapper can be found here.