T 2012/17 - Not addressing applicant's arguments

Key points

• In this examination appeal, “the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.” The appeal fee is reimbursed.
• The Board recalls that “The right to be heard under Article 113(1) EPC encompasses the right of a party to have its comments considered in the written decision (see decision T 763/04 []). Although a decision does not have to address each and every argument of a party in detail, it must comment on the crucial points of dispute to give the losing party a fair idea of why its arguments were not considered convincing (see decision T 1557/07 []).”
• The Board remits the case because, although “it is [...] questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request”, inventive step still has to be assessed with respect to documents D2 to D5.

EPO T 2012/17 -  link

3.3.2 In its decision, however, the Examining Division did not acknowledge the step of the application server creating the customised web application as one of the differences. Nor did it explain why it disagreed with the appellant on this point.

3.4 Hence, the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.

3.5 The inventive-step objection being the only ground for the refusal, this procedural violation was causal for the appeal. Reimbursement of the appeal fee under Rule 103(1)(a) EPC is therefore equitable.

4. Remittal

4.1 Given that in document D1 an "application template" is customised by a developer/user (or "an independent customization provider 120") who may essentially freely rewrite the template with the help of a development environment (see page 5, lines 11 to 15; page 16, line 18, to page 18, line 8; Figure 6), the templates of document D1 appear to be unsuitable for automated customisation. It is therefore questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request.

4.2 However, inventive step still has to be assessed with respect to documents D2 to D5.

Moreover, the precise technical meaning of, inter alia, the term "web application" and the feature "wherein execution of the web application requires a respective copy of the web application at the user terminal and an application server" may need further investigation in light of the technical explanations and examples given in the application and the common general knowledge of the skilled person.

4.3 Hence, it is appropriate to remit the case to the Examining Division for further prosecution on the basis of the main request. In addition, the appeal fee is to be reimbursed.

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.

3. The appeal fee is to be reimbursed.