Friday, July 31, 2015 T 1929/12: decision deficient enough for a remittal to the first division?

"The decision of the Examining Division is incomplete and, thus, this is a fundamental deficiency in the first instance proceedings" according to the Appellant. The Board of Appeal is requested to remit this case back to the first division. In this appeal, which lies from a decision of the Examining Division, the decision of the Board op Appeal starts with a reasoning whether the case has to be remitted to the Examining Division in view of the objections of the Appellant and in view of all documents in the file of the case. For the interested reader: the full text of the decision also discusses substantive aspects of the case.

Summary of Facts and Submissions 

[...] 

Reasons for the Decision

The alleged procedural violations, Article 11 RPBA

1. According to Article 11 RPBA, the board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance procee­dings, unless special reasons present themselves for doing otherwise.

2. The appellant argued that the decision had to be set aside because it was not reasoned and thus did not com­ply with Rule 111(2) EPC. In particular, the appellant argued as follows.

2.1 Section II of the material annexed to the decision was entitled "Provisional Opinion of the Examining Division" which, by definition of "provisional", could not contain the reasons for the decision. Section III, en­titled "Additional Comments", did not relate to Ar­ticle 123(2) EPC under which the application was re­fused, and thus could not represent the rea­sons for the deci­sion either. Since, therefore, the de­cision did not provide reasons for refusing the application, the decision had to be overturned (see the grounds of appeal, points 2 to 2.2).

2.2 The "Provisional Opinion of the Examining Division" did not refer "to the actual wording (and hence subject-matter) of the claims" and thus failed to "identify any particular claim wording that is considered to represent added subject matter" (see the grounds of appeal, points 3.2 and 3.3; appellant's emphasis).

2.3 The decision made it "extremely difficult for the Appli­cant to properly respond to the objec­tion" because, so the argument, "it is not realis­tic [...] for the Appli­cant to detail support for every one of the very large number of combinations of [added] claim fea­tures" (see the grounds of appeal, points 3.4 and 3.5; appellant's emphasis).

3. It was further noted that section I, entitled "Summary of Facts and Submissions", made no mention of the oral procee­dings, and that section II of the decision did not explicitly address the appli­cant's submissions.

4. The board takes the following position on the circum­stan­ces referred to.

4.1 While the material annexed to the decision does not men­tion the oral proceedings, the summons to oral procee­dings and the applicant's reply to the summons are men­tioned (see section I, points 9 and 10), and the oral proceedings them­selves are referred to on the front sheet of the decision (Form 2007).

4.2 That the decision contains a section entitled "Provi­sional Opinion" rather than one entitled, say, "Reasons" appears to suggest that the examining division based its final decision on text copied from its summons to oral proceedings ("cut and paste") and failed to edit the copied text sufficiently. The board disagrees with the appellant who argued that copying and pasting from the provisional opinion is in itself to be criticised in that it prejudged any argument made at the oral pro­cee­dings (letter of 8 June 2015, section 3, point 6). More­over, the board considers that the wrong section title, undesirable as it may be, does not imply that the de­cision can - let alone must - be considered to contain no reasons at all. Rather, in the context of the deci­sion as a whole and the pro­ce­dural context in which it was issued it is evident that the examining division meant the "Provi­sio­nal Opinion" to contain the reasons for the decision.

4.3 While the decision does not explicitly address and re­fute the appellant's arguments in the decision under appeal, it is further evident from the minutes that these argu­ments were heard, understood and exhaustively discussed during the oral proceedings. This establishes to the board's satisfaction that the examining division took its de­ci­sion in knowledge and appreciation of the appellant's arguments.

4.4 The board agrees with the appellant that an ob­jection under Article 123(2) EPC requires an indication of which particular feature or combination of features of the claim in question goes beyond the content of the appli­cation as originally filed.

4.4.1 The decision under appeal accepts that "all features de­fined in claim 1 seem to have a basis in the appli­ca­tion as originally filed" but states that "their combination goes [...] be­yond the application as originally filed" (p. 5, 3rd para.). It then explains why it was found "hard to determine what is the sequence of method steps defined in Figures 3A-3D" and that hence "clear and unambiguous basis for the amendments of claim 1" was lacking (see p. 5, 4th para. to p. 6, 4th para.). More­over, it is stated that "[c]laim 1 seems to combine fea­tures from [two different] embodiments" disclosed in the application and thus seemed to "creat[e] a comple­tely new embodiment" which was "not directly and unambigu­ous­ly disclosed in the present application" (p. 6, 5th para.).

4.4.2 The board notes that even if it were indeed difficult or even impossible to establish in complete detail how the me­thods depicted in figures 3A to 3D interacted with each other, that is insufficient to warrant the fin­ding that the specific claims on file did not comply with Article 123(2) EPC. The failure of a description to dis­close a particular combination of features such as a se­quence of steps is only relevant for the claims at stake if such a combination of features was actually claimed.

4.4.3 The decision under appeal does not identify specific fea­tures of then claim 1 which were considered, indi­vi­dually or in combination, to go beyond the application as originally filed. In this regard, the board therefore agrees with the appellant that the decision is insuffi­ciently reasoned, Rule 111(2) EPC. This constitutes a fundamental deficiency within the meaning of Article 11 RPBA.

5. However, it is clear from the minutes (points 1.2.1 and 1.2.2) that the appli­cant argued that the amended claim found basis in the combined features of the methods de­picted in figures 3A to 3D and that it identified, in com­bining these methods, step 331 in figure 3A with step 371 in figure 3B.

5.1 In the decision under appeal the examining division argues why, in its opinion, the original application did not disclose that, and how, the methods of figure 3A and figures 3B to 3D were to be combined and makes clear that the objection under Article 123(2) EPC rests on the com­bination of features from figure 3A and figures 3C to 3D, respectively (see p. 6, 5th para.). While no parti­cu­lar fea­tures were mentioned the board accepts as evi­dent that then claim 1 constitutes such a combination, for instance the step of "sending a player detection code" relating to figure 3A, the step of "send[ing ...] the user's computer to a Detection URL" to figure 3B and the remaining steps to figure 3D. Again, this corres­ponds to the minuted in­dication of original disclosure given by the applicant (see minutes, point 1.2.1).

5.2 Although the board agrees with the appellant that the mi­nutes reporting the discussion of contentious points between the examining division and the applicant cannot replace the decision (see appellant's letter of 8 June 2015, section 3, point 7), the minutes enabled the board to under­stand the reasons for the decision suffi­ciently well for it to deal with it.

5.3 The board also disagrees with the appellant's alle­gation that the deficiencies in the reasons given in the deci­sion were "prejudicial to its ability to contest the de­cision under appeal in an effective manner during the appeal procedure" (see grounds of appeal, point 3.5). Firstly, the appellant, when drafting its appeal, had at its disposal ­the minutes which contain a detailed expo­sition of the arguments exchanged before the decision was taken during the oral proceedings. And secondly, the onus of proof that amendments conform with Article 123(2) EPC is on the applicant. Therefore it must be required of the applicant - and cannot be con­si­dered unrealistic - to provide a basis in the application as originally filed for the amended claims as a whole. The board also cannot see a combina­to­rial problem here: starting from the minuted basis for the amendments (see minutes, point 1.2.1), all that is required of the appellant appears to be an indi­cation why and in what way the methods depicted in figures 3A-3D combine with each other to provide disclosure for the sequence of method steps according to then claim 1.

6. In summary, even though the board agrees with the appellant that the decision under appeal suffers from a fundamental deficiency within the meaning of Article 11 RPBA, no purpose would be served by remitting the case to the examining division, which would most likely have stood by its opinion and eventually issued another, better reasoned decision to the same effect. This con­si­deration, combined with the fact that both the board and the appellant were able to deal with the de­ci­sion under appeal in view of the minutes, constituted, in the board's view, special reasons for not remitting the case under Article 11 RPBA.

[...]

Order

For these reasons it is decided that:
The appeal is dismissed.

This decision T 1929/12 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2015:T192912.20150714. The file wrapper can be found here. Photo Paste Copy Paste Copy" by Chris Christian obtained via Flickr under CC BY-SA 2.0 license (no changes made).