Monday, 28 October 2013

T 2509/11 – It’s Up To The Director

This is another examination appeal where the Board found a decision “based on the current state of the file” to be insufficiently reasoned. There is an interesting final remark on the composition of the Examining Division (ED).

[3] It is established jurisprudence of the Boards of Appeal that for a decision to be reasoned it must contain a logical sequence of arguments and that all facts, evidence and arguments essential to the decision must be discussed in detail (see for instance T 278/00 [2-4]; T 1997/08 [4]).

[4] The Boards of Appeal have consistently decided further that a request for a decision based on the current state of the file does not mean that the party gives up its right to a reasoned decision (see T 1356/05 [15]; T 1309/05 [3.7]). It simply means that the party does not wish to further comment on the case.

[5] It follows from the above that, if a decision is to be reasoned by reference to one or more previous communications, the requirement of R 111(2) is only met if the referenced communications themselves fulfil the above mentioned requirements. The decisive reasons for refusal must be clear to the appellant and to the Board of Appeal from the reference. This applies, in particular, if reference is made to more than one preceding communication, dealing with different issues and/or having as basis different sets of claims. A complete chain of reasoning has to be directly derivable from the referenced communications and it must not be left to the Board and the appellant to speculate as to which part of an incomplete reasoning given in preceding communications might be essential to the decision to refuse the application (see T 963/02 [2.1]).

[6] With its fax of 8 November 2010 the applicant withdrew its auxiliary request for oral proceedings (OPs) and requested an appealable decision according to the state of the file […]. The decision to refuse the application is of a standard form and as such neither specifies the grounds upon which it is based, nor contains any facts, evidence or arguments that justify the refusal of the application. It contains solely a reference to three communications, namely those of 10 September 2008, 10 March 2009 and 28 July 2009 issued in the course of the examination of the application, each of these communications having as basis different sets of claims […].

[7] The above has the consequence that, in order for the Board to be in the position of reviewing the decision under appeal, it would have to examine each of the cited communications for the facts, evidence and arguments that might support the refusal of the application and would have to piece the relevant parts together to arrive at the reasoning applicable to the present main and first auxiliary requests.

[8] As far as it concerns independent claims 1 and 9 according to the main request refused by the ED the Board finds as follows.

[8.1] According to the second and third communication […] the subject-matters of independent claims 1 and 9 according to the main request distinguish themselves from the carton disclosed in D2 by the “gusset panel feature” and the “diamond corner panel feature”. The fourth communication merely confirms the previous two communications. Neither communication clearly sets out what feature it actually considers distinguishing as the “gusset panel feature”, nor which features constitute the “diamond corner panels feature” that is distinguishing.

[8.2] The Board notes that the Guidelines for Examination in the EPO applicable at that time (versions December 2007 and April 2009), see C-IV, 11.7, first paragraph state that “in order to assess inventive step in an objective and predictable manner, the examiner should normally apply the so-called “problem-and-solution approach””. In this approach it is required to establish the closest prior art, the difference(s) of the claimed invention over this closest prior art and the objective problem to be solved. The latter means the aim and the task of modifying or adapting the closest prior art to provide the technical effects that this (these) difference(s) provide(s) over the closest prior art. When several distinct differentiating features dealing eventually with different technical problems are recognised it has to be assessed whether a synergistic effect exists between said differentiating features. If this is not the case also that aspect should be reasoned.

[8.3] No such “problem-and-solution-approach” can be deduced from these two communications. They do not properly cite the distinguishing features, nor the effects obtained thereby. Further, as regards the “gusset panel feature” the ED does not provide any (documentary) basis for its allegation that the skilled person would obviously provide them for obtaining a liquid-tight bottom, nor does it refute the hindsight-argument of the appellant. As regards the “diamond corner panels feature” it only provides the information and the statement that the skilled person would provide such for a better contact between the container walls and the bottles. None of the communications discusses the possible relationship between these two features, none deals with the appellant’s argument that there is a combinatory (synergistic) effect of these two features.

[8.4] As a result the Board can only establish that what it can “piece together” from the communications falls definitely short of a proper reasoning on lack of inventive step where two distinguishing technical features are concerned.

[9] As far as it concerns the independent claims 1 and 8 according to the auxiliary request refused by the ED the Board finds as follows.

[9.1] Again, the distinguishing features are not properly defined, in particular the further feature that the “liquid-tight bottom receptacle is formed from a continuous section of folded material of a blank and comprises a portion of the carton having an upper border below which no glued seams are formed” is nowhere mentioned.

[9.2] Again, no “problem-and-solution-approach” is presented. This counts in particular for the additional feature of the absence of glued seams below an upper border in the liquid-tight bottom of the carton.

[9.3] As a result, also this falls short of a proper reasoning on lack of inventive step where two (or even three) distinguishing features are established.

[10] The impugned decision is therefore at odds with the well established principle that, for a decision to be reasoned within the meaning of R 111(2), it must be self-contained, i.e. it must include all and each of the facts, evidence and arguments that are essential to the decision, and provide a chain of reasoning that is complete.

[11] In the Board’s judgment, this de facto absence of reasoning in the appealed decision amounts to a substantial procedural violation. Such a procedural violation requires that the decision under appeal be set aside and the case remitted to the department of first instance in application of A 111(1) and Article 11 RPBA.

[12] Although the appellant has not requested reimbursement of the appeal fee, the Board considers it in the present case to be equitable that the appeal fee be reimbursed, R 103(1)(a).

Further prosecution

[13.1] The Board takes note of the appellant’s argument that the statement in the last sentence of the ED’s fourth communication that OPs are deemed to be time consuming while not leading to grant “makes the responsible examiner appear prejudiced with regard to arguments to be discussed during the hearing and thus suspected of partiality”.

[13.2] In the last sentence of its fifth communication the ED invites the applicant to file independent claims “with an independent claim distinguished from the prior art”. This invitation does not appear to be helpful in view of the fact that the appellant, by then, had filed independent claims which – as acknowledged by the ED – were already distinguished from the prior art by two, if not three, different features.

[13.3] In view of the above and with respect to the applicant’s request dated 3 December 2009 to exclude the primary examiner from the further proceedings the Board wishes to make reference to decision T 71/99. In point [4] of the reasons it is observed that it follows from A 10(2) (a) and (i) that the organisation of the (examining and opposition) divisions is under the responsibility of the President of the office, who in practice delegates this power to the director via the responsible vice-president and principal director. Therefore, it is the responsible director who should consider whether the appellant’s request for a change in composition may be justified in view of the procedural history of the present case and the remarks made in the communications with respect to the chances of success for the application when holding OPs: “The applicant has the choice of a decision according to the state of the file as an alternative to OPs, which are deemed to be time consuming on both sides while not leading to grant”.

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

The file wrapper can be found here.


Raoul said...

It is no surprise to me that once again a decision according to the state of the file is tantamount to a substantial procedural violation. This often the case.

What is disturbing here is that the director let a communication and a decision go out which were both highly open to criticism. I see the decision of the Board as well as a kind of clear reminder to the director to do his job properly.

About 15 years ago, there was a series of decisions from Boards of Appeal ordering a change in the composition of examining or opposition divisions when remitting to the first instance in case of procedural violation. There is however no legal basis in the EPC for such an order, and this way of doing was not pursued by the Boards. Later, a change of composition was suggested, but was never part of the order.

This Board has gone a different way, which is quite clever.

Anonymous said...

Raoul, the point in this case was that there was no (reasoned) decision by the opposition division. A proper decision on the basis of the state of the file is not tantamount to a procedural violation. A request of a party in that sense only means that they stop giving further arguments. It does not mean that they do not want a reasoned decision. The division is still obliged to give the reasons for whatever they decide.

Raoul said...

Dear anonymous,

That a decision on the state of the file needs to be flly reasoned goes without saying.
This means however that the communications issued contain all needed argumentation, and a logical chain of arguments can be derived. The grounds for refusing should also be clear, and a plurality of grounds might also be confusing, hence a violation.
Examiners are however often referring in decisions according to the state of the file to earlier communications which do not have the quality needed, or even simply ignore the arguments brought forward by the applicant. This ends up as well in a substantial procedural violation.
I fully agree with your conclusion. Experiences shows however that this is not always the case, and quite often.

Anonymous said...

Agreed, Raoul, well put. I also see more and more often first instance decisions that are not really fully reasoned. Apparently the pressure to issue decisions is very high.

Linda said...

In the case of examination proceedings, I am sympathetic to Examiners on this issue. Normally a request for a decision based on the file means the applicant is no longer interested, and probably no one else in the world is interested. However of course the applicant cannot say that to the EPO formally. So the truth is in this situation the work to produce a reasoned decision is wasted. The solution, perhaps, is for there to be a procedure where a Board can request a reasoned decision to be written by the Examiner if the case is appealed.

L.B.Z. said...

I would not assume that requesting a decision based on the state of the file means automatically that the applicant is no longer interested; if that were the case, simply withdrawing the application seems a more logical course of action.

In my mind, a request of a decision on the file as it stands may well mean that the applicant made the call that the examining division would not budge on a point which he considers clearly wrong (either legally or factually), so that it is both easier and faster to challenge that point directly in appeal proceedings.

As far as the examiners are concerned, in the current legal framework there are already three ways to avoid the situation that occurred in the above decision:
1) If they are used to mindlessly click "refuse" when such requests arrive irrespective of what was actually said in the previous communication(s), grant interlocutory revision in case an appeal is filed
2) Take the habit of writing communications that, in keeping with R 70(2) EPC, "cover all the grounds against the grant of the European patent", so that they don't have to refer to multiple communication in a decision according to the state of the file
3) If the grounds for refusal end up scattered throughout multiple communications, there is no obligation to use the standard form "Decision according to the state of the file" which only refers to previous communications; it is totally possible to compile together the relevant parts of said previous communications in a "standard" refusal, as long as no new grounds are introduced.

Anonymous said...

In response to LBZ, it's sometimes difficult to find a person in an applicant company willing to take responsibility for 'withdrawing a case'. That's just the culture in some places. Easier to have a decision and not file an appeal.