T 2467/09 - No search

Key points

• The ED refused the application (relating essentially to web shop technology) as lacking inventive step based on the technology being notoriously known. No prior art search was carried out. The Board finds that the decision lacks a logical chain of reasoning and involves a substantial procedural violation. 
• The Board also states that, about no search having been carried out, that "if an applicant contests an assertion that something was known at the effective filing date, the examining division must normally back up that assertion with evidence and can only exceptionally confine itself to giving cogent reasons. The argument that certain knowledge is notorious is only a sufficiently cogent reason if it satisfies any reasonable addressee, i.e. if, at the time the argument is to be assessed by the applicant and, in case of an appeal, by a board of appeal, it cannot be reasonably disputed that that knowledge formed part of the common general knowledge of the skilled person at the effective filing date. Such knowledge will almost necessarily be limited to generic features, defined in such a way that technical details are not significant (cf. decisions T 1411/08 of 6 June 2011, reasons 4.2, and T 359/11 of 13 May 2015, reasons 3.11)."
  
  
  EPO  T 2467/09 - link

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

2. Before considering the appellant's substantive requests, the Board will comment on the decision of the Examining Division.

3. The Examining Division refused the application for lack of inventive step without making reference to documentary evidence. In fact, no prior art search was carried out in either the international phase or the European phase.

4. According to the established case law of the boards of appeal, an application should normally not be refused for lack of inventive step as long as no search has been performed. An exception may however be made in cases where the objection is based on knowledge that is "notorious" or indisputably forms part of the common general knowledge (see decision T 1242/04, OJ EPO 2007, 421, reasons 9.2).

5. In point 2.2.3 of the reasons of the decision under appeal, the Examining Division argued that the technical content of the subject-matter of claim 1 of the then main request consisted in the following combination of features: "a server system, adapted to produce a web page, the server system comprising a database an and [sic] administrator computer adapted to provide (configuration) data to the database based on which the web page is produced".

It further remarked that the applicant acknowledged that server systems providing web pages were known at the priority date of the application, and noted that "technologies for the dynamic building of web pages were notoriously known and widely used at the priority date of the application".

The Examining Division then apparently concluded that the subject-matter of claim 1 lacked an inventive step over this prior art (see section XII. above).

6. In the Board's view, there are two issues with this reasoning.

The first issue is that, after describing the relevant prior art as "server systems providing web pages" and "technologies for the dynamic building of web pages", no reasons are given that explain either why this prior art would anticipate the combination of technical features of claim 1 previously identified, or why the skilled person, starting from this prior art, would arrive at that combination in an obvious manner. The Examining Division might have had in mind a certain specific technology, but the decision fails to properly identify it in the detail necessary for arguing lack of inventive step of the invention as claimed.

Since the decision lacks a logical chain of reasoning leading to the relevant conclusion, it does not comply with Rule 111(2) EPC, which requires that decisions open to appeal be reasoned (see decision T 278/00, OJ EPO 2003, 546, reasons 2). This constitutes a substantial procedural violation.

7. The second issue concerns the absence of documentary evidence. While it cannot be reasonably disputed that server systems providing web pages were known at the priority date of the present application, in the Board's view this is less evident for "technologies for the dynamic building of web pages". While such technologies were probably well-known in 2008, which is when the Examining Division for the first time explicitly relied on their existence, it must be kept in mind that the field of web technology evolved considerably in the eight years following the filing of the priority application in April 2000.

8. When an examining division raises an objection to the grant of a patent, it must also provide the applicant with the information necessary for understanding the objection and for verifying its validity. Only then is the applicant enabled to defend its case, for example by contesting the validity of the objection, by providing evidence for its factual assertions, or by amending the application. That is why, if an applicant contests an assertion that something was known at the effective filing date, the examining division must normally back up that assertion with evidence and can only exceptionally confine itself to giving cogent reasons. The argument that certain knowledge is notorious is only a sufficiently cogent reason if it satisfies any reasonable addressee, i.e. if, at the time the argument is to be assessed by the applicant and, in case of an appeal, by a board of appeal, it cannot be reasonably disputed that that knowledge formed part of the common general knowledge of the skilled person at the effective filing date. Such knowledge will almost necessarily be limited to generic features, defined in such a way that technical details are not significant (cf. decisions T 1411/08 of 6 June 2011, reasons 4.2, and T 359/11 of 13 May 2015, reasons 3.11).

9. In the present case the Board does not consider it to be indisputable that "technologies for the dynamic building of web pages", let alone specific technologies that could take away the novelty or inventive step of the invention as claimed, were generally known in April 2000. It follows that, without documentary evidence, the Examining Division's reasoning against the allowability of the then main request also fails to convince in this respect.

10. In several decisions, the boards of appeal have held that whether an examining division committed a substantial procedural violation by failing to carry out an "additional" search (i.e. a search carried out at the examination stage) before refusing an application for lack of inventive step turns on whether it acted despite realising that at least one technical claim feature was not notorious, or whether it erroneously regarded this feature as notorious and therefore made an error of judgment (see in particular decision T 1924/07 of 22 June 2012, reasons 11).

In the present case the Examining Division referred to what it considered to be the relevant prior art as being "notorious" for the first time in the minutes of the oral proceedings and the written decision. Earlier in the written proceedings, despite the appellant's request for documents representing the knowledge of the skilled person at the priority date, the Examining Division essentially stated that documentary evidence for its assertions was "not necessary". This arguably leaves open the possibility that, at least initially, the Examining Division considered an additional search to be unnecessary not because it judged that the existence of the relevant knowledge at the priority date could not be reasonably disputed, but only because the Examining Division itself did not need a document to know that such prior art existed.

It may further be noted that at least some of the dependent claims which were part of both the originally filed claims and the claims refused by the Examining Division contain features which evidently are neither non-technical nor notorious.

However, since the Board has already identified a substantial procedural violation which warrants reimbursement of the appeal fee (see point 13. below), it need not decide whether the Examining Division in the circumstances of the present case also committed a substantial procedural violation by refusing the application for lack of inventive step without first conducting an additional search.

11. The claims of the main request filed with the statement of grounds of appeal essentially correspond to claims 1 to 72 of the international publication, which were amended several times during the first-instance proceedings. Since original claim 1 does not differ substantially from claim 1 of the refused main request, it too cannot be objected to for lack of inventive step on the basis of undocumented prior art. In the circumstances of the present case, the Board considers it appropriate to permit the appellant to revert to its original claims. The Board therefore admits the main request into the proceedings.

12. The Board will hence remit the case to the department of first instance for further prosecution on the basis of the main request. The Examining Division will have to carry out an additional search on the basis of the claims, including the dependent claims, with due regard to the description and drawings (Article 92 EPC).

In these circumstances, there is no need to consider the auxiliary requests.

13. The decision under appeal was affected by a substantial procedural violation in respect of the refusal of the then main request, corresponding to the present first auxiliary request. The Board does not consider that the filing of the present main request takes away from the fact that the substantial procedural violation was causal for the appeal. Reimbursement of the appeal fee under Rule 103(1)(a) EPC is therefore equitable.

14. Since the appellant requested oral proceedings only in the event that none of its higher-ranking requests was allowed, the present decision can be taken without holding oral proceedings.

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.