T 1232/16 - No reasoned decision

Key points

• In this examination appeal, the application was refused on the ground of lack of inventive step.
• The appealed decision stated, in relevant part that “Claim 40 refers to "a predetermined condition". The following method steps in this claim depend on this first step to identify a predetermined condition. As this predetermined condition seems to comprise any possible condition it is not clear what the technical purpose would be of identifying and using this condition. (Article 56 EPC)”.
• The Board: “However, this statement at most deals with the contribution to inventive step of a single feature of the claim. That is however not a sufficient reason for concluding that the subject-matter of the entire claim lacks an inventive step. The board thus agrees with the appellant that the examining division failed to provide a detailed feature-by-feature analysis in the decision to reject claim 40 of the main and auxiliary requests, such that it is impossible to understand how and why the subject-matter was rejected based on the disclosure of document D2.”
• This is a substantial procedural violation. Nevertheless, the appeal fee is not reimbursed, because the ED had refused the application on the additional ground of lack of clarity, which ground was correctly raised and was addressed by amendments in appeal (by deleting the feature "via a network" ).
•  The Board furthermore indicates that, contrary to the appealed decision, a claim for a system "configured to ..." "is a standard way of defining apparatus features in functional terms" and is clear. 

EPO T 1232/16 -  link

Reasons for the Decision

1. Right to be heard - decision not reasoned

1.1 Rule 111(2) EPC EPC stipulates that a decision which is open to appeal must be reasoned, i.e. comprise a logical chain of argumentation explaining how the examining division came to its decision (cf. e.g. T 278/00, OJ EPO 2003, 546, point 2 of the reasons).

1.2 One of the grounds for refusing the application is that the subject-matter of claim 40 of the main request and of each of the auxiliary requests does not involve an inventive step within the meaning of Article 56 EPC. However, each part of the decision expressly dealing with this matter consists merely of a recital of the claim of the respective request (cf. points 1.2, 2.2, 3.2, 4.2, 5.2 and 6.2 of the reasons).

1.3 In an introductory section of the decision (cf. the top of page 5), the following is stated:

"Claim 40 refers to "a predetermined condition". The following method steps in this claim depend on this first step to identify a predetermined condition. As this predetermined condition seems to comprise any possible condition it is not clear what the technical purpose would be of identifying and using this condition. (Article 56 EPC)".

1.4 However, this statement at most deals with the contribution to inventive step of a single feature of the claim. That is however not a sufficient reason for concluding that the subject-matter of the entire claim lacks an inventive step.

1.5 The board thus agrees with the appellant that the examining division failed to provide a detailed feature-by-feature analysis in the decision to reject claim 40 of the main and auxiliary requests, such that it is impossible to understand how and why the subject-matter was rejected based on the disclosure of document D2.

1.6 The board concludes that this part of the decision dealing with claim 40 is insufficiently reasoned, which is a violation of Rule 111(2) EPC and therefore, in accordance with the established case law, a substantial procedural violation.

[...]

2. Other grounds for refusing the application

Notwithstanding point 1 above, the board will consider below the other grounds for refusing the application.

3. Main request - claim 1 - clarity

3.1 The expression "via a network" was objected to by the examining division as being unclear within the meaning of Article 84 EPC, because it was not clear whether or not the network was part of the claimed system. The board agrees. However, the expression "via the network" has been removed from claim 1 of at least the present main request. Hence, this objection no longer applies to the pending main request.

3.2 The board observes that claim 1 is a claim for a system but is formulated partly in terms of the steps of a method ("a performance manager communicates ...", "where the performance manager further generates ...", etc.). Consequently, the matter for which protection is sought is not clearly defined, contrary to Article 84 EPC. In this respect, the board notes that in claim 1 as originally filed, the expression "configured to ..." was used, which is a standard way of defining apparatus features in functional terms. This expression was subsequently objected to by the examining division in the communication dated 26 March 2015, leading to the present unclear formulation. The board however does not agree that the expression "configured to ..." was unclear, and its reintroduction would apparently overcome the present objection. However, in view of the board's decision to remit the case (see below), this matter is best dealt with by the examining division.

5. Main request - claim 1 - inventive step

5.1 The examining division has not yet properly considered the question of inventive step as regards claim 1, except, albeit in connection with novelty, to refer to claim 1 of document D3 as disclosing the "subscribing" feature. D3 is however an extensive document. A possible combination of D3 with D2 would require a proper analysis of D3 and the development of a chain of argumentation, e.g. based on the problem and solution approach. If inventive step were denied, the appellant would have to be given the opportunity to respond with counter-arguments and/or amendments. However, for the board to perform this examination would run counter to the purpose of appeal proceedings, which are primarily concerned with examining the correctness of the appealed decision (cf. G 10/93, point 4 of the reasons), all the more so as the appellant would then be only able to defend its case before one instance of jurisdiction.

6. Remittal

In view of the need for examination of claims 1 and 40 with respect to inventive step, and considering the substantial procedural violation referred to above, the case is remitted to the examining division for further prosecution (Article 111(1) EPC).

7. Reimbursement of the appeal fee

Although the board normally orders reimbursement of the appeal fee on account of a substantial procedural violation, this would not be equitable in the present case in view of the refusal additionally being based on other grounds not tainted by the procedural violation.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.