T 1840/13 - Refusal not reasoned and containing non-heard arguments

Key point

• Two serious procedural violations in refusal. In the refusal decision, the ED for the first time referred to the description of the present application in order to demonstrate an implicit disclosure of a specific feature in D4, without hearing the application. Moreover, the new arguments still do not provide a comprehensible reasoning regarding the implict disclosure of the feature, according to the Board.

T 1840/13 - 13.04.2015

Dated 16.03.2015 - Board 3.2.07 (Meinders, Hahn, Beckedorf) - for the decision, click here

Reasons for the Decision

1. Violation of the right to be heard (Article 113(1) EPC) - first substantial procedural violation

1.1 Claim 1 in question reads as follows (subdivision added by the Board):
A "1. A process for raising the tempering resistance of a steel work piece, which comprises the following steps:
B vacuum carburization (1) of the work piece,
carrying out a quenching process in a gaseous medium,
C characterized in that the quenching in the gaseous medium
|D is carried out with the heat transfer coefficient between the steel work piece and the gaseous medium being higher than 1500 W/m**(2)K,
E whereas the gaseous medium with said heat transfer coefficient is provided by means of high-pressure gas."

1.1.1 Taking account of all features A to E as comprised in the subject-matter of claim 1 (see above) it is already evident that the first communication of the Examining Division does not comply with Rule 71(2) EPC since it does not contain a reasoned statement as to lack of novelty in comparison with D4.

1.1.2 In fact, as regards D4, the communication states:

"Document D4 discloses (see passages cited in the European Search report):
a process for treating a steel work piece, which comprises the following steps:
- vacuum carburisation of the work piece,
- carrying out a quenching process in a gaseous medium".
The passages cited in the search report are paragraph [0040] and claim 1.

Paragraph [0040] [of D4] reads as follows:

Claim 1 [of D4]  reads as follows:

"1. Verfahren zum Aufkohlen und Härten von Werkstückchargen (20, 21, 24, 24') in einer Tunnelanlage (1), bei der an einen Transporttunnel (2) für die Werkstückchargen (20, 21, 24, 24') mindestens eine Chargierschleuse (3), mehrere Heizkammern (17, 18, 22, 23), mindestens eine Aufkohlungskammer (6, 7) und mindestens eine Abschreckkammer (14) angeschlossen sind und bei der zwischen den einzelnen Kammern und dem Transporttunnel (2) Absperreinrichtungen für die Einstellung der jeweiligen Behandlungsatmosphäre angeordnet sind, dadurch gekennzeichnet, daß in dem Transporttunnel (2) und in den Heizkammern (17, 18, 22, 23) ein Druck zwischen 0,9 und 2 bar, in der mindestens einen Aufkohlungskammer (6, 7) ein Druck eines Aufkohlgases zwischen 1 und 50 mbar und in der Abschreckkammer (14) beim Härten ein Druck eines über einen Wärmeaustauscher umgewälzten Abschreckgases zwischen 5 und 50 bar, vorzugsweise zwischen 10 und 30 bar, eingestellt wird."

1.1.3 This reasoning is not only incomprehensible, it requires the applicant to solve this problem for the Examining Division, by piecing together the information of these two references, to arrive at a proper novelty analysis.

1.1.4 The result is that this communication only contains allegations with respect to novelty and D4.

1.1.5 The above applies also to the novelty "objections" based on D1 and D3 for which neither a complete analysis along the claims features A to E is performed.

1.1.6 The applicant's reply (see point VI above) was not helpful either, dealing only with D1 and D3. It only added the further remark that the cited documents could not question novelty of claim 1. This remark is ambiguous since it could relate to the previously cited D1 and D3 or it could be the documents cited in the search report.

1.1.7 However, it can be left open whether the applicant actually dealt with D4 or not in that reply. The impugned decision to refuse the application for lack of novelty over D4 was namely based on the following new arguments in addition to what was mentioned in the first communication (compare points V and VII above):

"It is clear from the description that (see description p.4, l. 13-17):
"a heat transfer coefficient higher than 1500 W/m**(2)K can be achieved by a mixture of gases (...) but the gas should be injected under a pression [sic] of at least 2000 kPa (i.e. 20 bar). In addition to the pressure the gas should be at speed of at least 15 m/s for achieving the required coefficient of heat transfer, such speed and pressure can be reached with equipment designed for this purpose, for example circulation turbine."
Document D4 explicitly discloses quenching with a mixture of gases, at pressures of up to 50 bar (exemplarily 20 bar) and using circulation turbine ("Umwälzgebläse") (see document D4, p. 5, l. 54-59; p. l. 28-30[sic]).
The subject-matter of claim 1 can therefore not be considered as novel with regard to document D4 (Article 54(2) EPC)."

Thus the Examining Division added new reasons concerning D4 and referred to a more specific passage (namely page 5, lines 54 to 59) within the earlier discussed paragraph [0040], as mentioned in the Search Report.

Additionally, also for page 5 it referred to "p. l. 28-30", which most presumably should mean page 4, lines 28 to 30, since this passage deals with the quenching chamber, the quenching gases and the use of a circulation blower (or circulation turbine) for guiding the quenching gas over the hot work piece. In contrast to said new passage on page 4, paragraph [0040] only mentions the engine power of "a blower" but is likewise silent with respect to any heat transfer coefficient, let alone any gas speeds of the disclosed quenching gas mixture of He and N2, of which the mixing ratio is also not specified.

The same applies to the further reasoning in the impugned decision. It appears that the Examining Division for this reason, i.e. that D4 does not explicitly disclose the required heat transfer coefficient of "higher than 1500 W/m**(2)K", for the first time referred to the description of the present application in order to demonstrate an implicit disclosure of this feature in D4. In the present application it is described how a heat transfer coefficient of higher than 1500 W/m**(2)K can be achieved. This coefficient "can be achieved by using a mixture of gases such as, for example, helium gas and carbon dioxide, but the gas should be injected under a pressure of at least 2000 kPa. In addition to this pressure the gas should be at a speed of at least 15 m/s". Furthermore, it is stated that "Such speed and pressure can be reached with equipment designed for this purpose, for example circulation turbines" (see page 4, lines 13 to 18; emphasis added by the Board).

1.1.8 Already at this stage it should have been clear to the Examining Division that it was including additional reasoning into the proceedings, to which the applicant had not had the opportunity to react, i.e. that his right to be heard (Article 113(1) EPC) would not have been respected. Going ahead with such a decision therefore constitutes the first procedural violation.

2. Lack of reasoning in the decision (Rule 111(2) EPC) -second substantial procedural violation

Further, the Board considers that these new arguments still do not provide a comprehensible reasoning why the process of D4 including the quenching step with a circulation blower (circulation turbine) and a quenching gas consisting of an undefined mixture of He and N2 and a pressure of 20 bar inevitably results in a heat transfer coefficient of "higher than 1500 W/m**(2)K". This should apparently be analogous to the mixture He and CO2 at a pressure of at least 20 bar and a gas speed of at least 15 m/s disclosed in the present application.

Therefore the Examining Division committed a second substantial procedural violation in that the impugned decision is not fully reasoned as required by Rule 111(2) EPC.

3. Interlocutory revision (Article 109(1) EPC)

As already considered by the Board, it should have been clear to the Examining Division when drafting its impugned decision that it was including new reasoning in the proceedings, to which the applicant had not had the opportunity to react, and that this decision was lacking a comprehensible reasoning with respect to the appellant's submission (see points 1.1.8 and 2 and point VI above).

3.1 In its statement of grounds of appeal the appellant mentioned that its right to be heard has been violated on both these issues (see point VIII above).

3.2 A simple comparison of the appellant's statements in the grounds of appeal should have shown the Examining Division that it had failed to respect the right to be heard and that it might have failed to provide a complete reasoning. To avoid at least the first procedural violation the Examining Division should have rectified its decision and continued the examination proceedings, as required by the Guidelines for Examination 2012, E-X, 7.3.

4. Remittal to the Examining Division (Article 111(1) EPC)

In view of the substantial procedural violations the Board decides to remit the case to the Examining Division for further prosecution in accordance with Article 111(1) EPC.

As the request for oral proceedings was withdrawn with letter of 20 November 2014, the present decision could be taken in written proceedings.

5. Reimbursement of the appeal fee (Rule 103(1)(a) EPC)

In view of the two substantial procedural violations it is also equitable to reimburse the appeal fee pursuant Rule 103(1)(a) EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Examining Division for further prosecution.

3. The appeal fee is to be reimbursed.