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).
 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 ).
 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 ; T 1309/05 [3.7]). It simply means that the party does not wish to further comment on the case.
 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]).
 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 […].
 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.
 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.
 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.
 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.
 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.
 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).
[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  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.