T 0034/12 - Rule 164 and amendments of the claims

T 0034/12

For the decision, click here. 
Key points

• Rule 137(5) EPC is a powerful tool for the examiner, but recent case law demonstrates that it is difficult to handle. The present case is an example.
• The Examiner had found D1 anticipating an embodiment of claim 1. Interestingly, he issued a partial search report, alleging lack of unity of invention of claim 1 between the anticipated embodiment wherein a certain monomer is a " diquat" and all other embodiment of claim 1. The applicant did not pay a second search fee, and added a feature from the description to distinguish over D1. The ED refused the application as still relating to embodiment wherein the monomer is not a diquat. 
• The Board finds a substantial procedural violation since the decision is insufficiently reasoned.
• As a comment, note that Rule 164 and Rule 137(5) do not turn on lack of unity of the claims of the application as filed. As the Board states: "If [the] objection of lack of unity of claim 1 turned out to be unjustified in view of the amendment to the claims, the applicant would have been entitled to have the full claimed subject-matter searched." (emphasis added). This despite Rule 164(2) also covering the case that an invention is claimed which is " not covered by the international search report" . Apparently, this must be read in the same way as in Rule 137(5) EPC, namely: unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a singe general inventive concept. Hence, adding features from the description should probably be allowed in the same way as for Rule 137(5), as explained in GL H-II,6.2

Rule 164(2) (old: 01.04.2010 - 31.10.2014)
(2) Where the examining division finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the international search report or, as the case may be, by the supplementary international search report or supplementary European search report, it shall invite the applicant to limit the application to one invention covered by the international search report, the supplementary international search report or the supplementary European search report


Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division refusing the European patent application 06 821 491.5 under Article 97(2) EPC on the grounds of "lack of compliance with Rule 164(2) EPC by a repeated violation of Rule 137(5) EPC".

II. The application under appeal was filed under international application number PCT/IB2006/054324 and published as WO2007/057865. The European Patent Office acting as the International Searching Authority, issued an international search [...] report (ISR) and a Written Opinion of the International Searching Authority (WOISA), both covering all claims 1-25 on file.

X. A decision to refuse the European Patent application was issued on 1 July 2011. The decision reads:

"Facts and submissions
The WO-ISA and the search report dated 16.03.2007 have established a lack of unity. The separate inventions/groups of inventions were (reference is made to the claims in the international phase):
claims 1-25 (part)
The composition of claim 1 and use of it when the monomer of formula i in claim 1 is a diquat.
claims 1-25 (part)
The composition of claim 1 and use of it when the monomer of formula i in claim 1 is not a diquat.
The reason for the lack of unity is a posteriori, following a lack of novelty over document WO0157171 [blogger's note: for the case of a diquat].
The invention has been searched in the specific case of the comonomer of formula 1 being a diquat.
The applicant has not payed for the second group of invention.
The objection of lack of unity was repeated in the European phase in the communication of the examining division dated 13.11.2008 and during a consultation by telephone dated 10 February 2009
On 03.03.2009, the applicant filed an amended set of claims.
In response to those amendments, the examining division objected in the communication dated 02.07.2009 that the claims contain unsearched matter, contrary to R. 164(2) EPC.
The examining division stressed in the same letter that at this stage, refusal of the application is considered.
In the amended set of claims dated 17.12.2009 the same unsearched matter is present and the applicant argued with the same reasoning as in his previous communication to claim the unity of the new set of claims.
Reasons for the decision
The decision is based on the following application documents:
Description, Pages 2-50 as published 1 filed in electronic form on 03-03-2009
Claims, Numbers 1-13 filed with telefax on 17-12-2009
Considering that:
a) The applicant does not request oral proceedings and has had the opportunity to present his comments, moreover the applicant has been warned in the last communication dated 02.07.2009 that the refusal of the application is considered. Hence, the present decision complies with the right to be heard (Art. 113 EPC)
b) The applicant has not tried to overcome the objection of unsearched matter (R. 164(2) EPC), i.e., the comonomer of formula 1 in the sets of amended claims still has the option to be different from a diquat.
The examining division decides to refuse the present application according to Art. 97 (2) on the ground of lack of compliance with R. 164(2) EPC by a repeated violation of R. 137(5) EPC."

XI. A notice of appeal was filed on 15 July 2011 and the appeal fee was paid on the same day. With the statement of grounds of appeal filed on 26 October 2011 the applicant submitted arguments in favour of the unity of invention of the main request (claims filed on 17 December 2009) and provided two auxiliary requests.

XII. The applicant requests that the decision of the examining division be set aside and that the case be remitted to the examining division for further prosecution on the basis of the claims of the main request.

Reasons for the Decision

The appeal is admissible.

1. According to established jurisprudence of the Boards of Appeal, in order to satisfy the requirement of Rule 68(2) EPC 1973 (Rule 111(2) EPC 2000), a decision should contain, in logical sequence, those arguments which justify its tenor (Case Law of the Boards of Appeal of the EPO, III.K.4.2). The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments that are essential to the decision must be discussed in detail in the decision, including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the appellants and, in case of an appeal, also the Board of Appeal, to examine whether the decision could be considered to be justified or not (see T 278/00, OJ EPO, 2003, 546; T 1366/05 not published in OJ EPO).

2. In the present case, the decision by the Examining Division refusing the application is based on Rule 164(2) EPC and Rule 137(5) EPC, the reasons being that the amended set of claims as filed on 17 December 2009 (main request), i.e. "the composition of claim 1 and use of it when the monomer of formula i is not a diquat", sought protection for an invention not covered by the international search report. 


That subject-matter had originally neither been searched by the ISA nor by the EPO after entry in the European phase on the grounds that it had been identified as the second invention of a group of two non-unitary inventions in view of D1 which disclosed the use of a composition with copolymers comprising diquat for laundry applications. As a result, according to the Examining Division, the use of the composition according to claim 1 when the monomer of formula i was a diquat (first invention) lacked novelty over D1 and was not linked so as to form a single general inventive concept with the use of the composition of claim 1 when the monomer of formula i was not a diquat (second invention). Furthermore, only that invention identified as the first invention had been searched because the applicant had not paid the required additional search fee for the second invention.

3. In order to justify the above conclusions under Rule 164(2) EPC and Rule 137(5) EPC against claim 1 as filed on 17 December 2009, the logical chain of reasoning of the examining division in the decision under appeal has to contain a proper assessment of the question of lack of unity (Article 82 EPC) in view of D1 because that lack of unity was the reason why the second invention had not been searched.

The decision of the Examining Division does however not contain any reasoning concerning the lack of unity of claim 1 as filed on 17 December 2009. The part of the decision summarizing the facts and submissions of the file mentions an objection of lack of unity a posteriori of claim 1 as originally filed but acknowledges that an amended set of claims was provided by the applicant by letter of 17 December 2009. In that set of claims, claim 1 was limited to the use of the composition and corresponding kit for hard surface cleaning. Point 2 of the applicant's letter contains the argument that that limitation established unity of invention in view of D1 as that document did not disclose hard surface cleaning operations.

If that objection of lack of unity of claim 1 turned out to be unjustified in view of the amendment to the claims, the applicant would have been entitled to have the full claimed subject-matter searched. If necessary, an additional search would have had to be performed, regardless of whether or not this might involve an additional effort (J 3/09, Reasons, points 3.5.6 and 5.2).

With the amended set of claims provided by letter of 17 December 2009, the applicant has tried to overcome the objection relating to Rule 164(2) EPC by trying to reconcile the subject-matter of claim 1 with the criteria of unity of invention according to Article 82 EPC. The decision of the Examining Division does not contain any reasoning why that amendment failed to establish unity of invention within claim 1 in view of D1.

4. Therefore, in the appealed decision the Examining Division arrived at the conclusion that the main request contained unsearched subject-matter as a result of a lack of unity of claim 1 without addressing the limitation of claim 1 to hard surfaces. Since the requirements defined in Rule 164(2) EPC and Rule 137(5) EPC are based on lack of unity, the decision of the examining division, by arriving at a conclusion of lack of compliance with those rules without dealing with the lack of unity of the set of claims filed on 17 December 2009, is insufficiently reasoned in the sense of Rule 68(2) EPC 1973 (Rule 111(2) EPC 2000).

5. Due to the deficiencies in the reasons for refusing the application, the appellant and the Board are left in the dark as to how the first instance came to its conclusions. Hence, the appellant and the Board were not able to examine whether the decision could be considered to be justified or not. This failure amounts to a substantial procedural violation requiring that the decision under appeal to be set aside and the case be remitted to the first instance (see T 278/00, loc. cit. point 5, supra).

By reason of that substantial procedural violation the Board considers it to be equitable to reimburse the appeal fees pursuant to Rule 67 EPC 1973 (Rule 103(1)(a) EPC 2000).

Order

For these reasons it is decided that:

1. The decision of the examining division is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of claims 1 to 13 of the main request filed on 25 October 2011.

3. The appeal fee is reimbursed.