T 1291/13 - Merely an assertion

Key points

• The Board finds the refusal decision to lack sufficient reasoning.
• " With respect to the objection pursuant to Article 84 EPC, the reasoning consists merely of an assertion to the effect that it follows from the description at various cited passages that the additional feature of claim 3 is essential to the definition of the invention and that as claim 1 does not contain this feature, it does not meet the requirement following from Article 84 EPC taken in combination with Rule 43(1) and (3) EPC that any independent claim must contain all the technical features essential to the definition of the invention."
• The application was filed in 2007. The applicant had filed 11 letters during examination, 9 communications had been issued by the Examiner (including a Rule 71(3) EPC based on a proposal from the Examiner to combine claims 1 and 3).  

EPO T 1291/13 - link

Reasons for the Decision

2. Lack of a reasoned decision - Rule 111(2) EPC

2.1 It is established case law that a decision, in order to be reasoned within the meaning of Rule 111(2) EPC, must contain at least some reasoning on crucial points of dispute, i.e. deal with at least the main counter-arguments presented by the applicant (cf. e.g. T 70/02, point 7 of the reasons).

2.2 With respect to claim 1 of the main request, the impugned decision is based on, on the one hand, lack of compliance with Article 84 EPC and Rules 43(1) and (3) EPC for the reason that claim 1 does not comprise a feature "essential to the definition of the invention", and, on the other hand, lack of novelty of the subject-matter of claim 1 with respect to the disclosure of D1 (= EP 1 605 605 A).

2.3 With respect to the objection pursuant to Article 84 EPC, the reasoning consists merely of an assertion to the effect that it follows from the description at various cited passages that the additional feature of claim 3 is essential to the definition of the invention and that as claim 1 does not contain this feature, it does not meet the requirement following from Article 84 EPC taken in combination with Rule 43(1) and (3) EPC that any independent claim must contain all the technical features essential to the definition of the invention.

2.4 With respect to the objection of lack of novelty, the reasoning consists of reciting the wording of claim 1 together with a single global reference to paragraph 31 of D1, followed by a discussion which appears to concern the feature of claim 1 "determining a relative power offset ....", but does not refer to the final feature of claim 1, namely "transmitting (106) the relative power offset to the subscriber station in an Uplink Channel Descriptor, UCD, message, wherein the relative power offset is contained in a format of Type, Length and Value, TLV, in the UCD message".

2.5 In both cases, the applicant challenged this reasoning by providing detailed counter-arguments, cf. e.g. the letter dated 27 September 2011, last two paragraphs of page 1 and pages 2 and 3 (which is one of nine letters filed by the applicant during the substantive phase of the examination procedure). The decision however does not deal with crucial (and, on the face of it, plausible) counter-arguments presented by the applicant. In this respect, the applicant, inter alia, gives reasons why in its opinion the additional feature of claim 3 need not be incorporated into claim 1 (cf. page 2, second paragraph of the applicant's letter) and argues, with respect to novelty, that there is no disclosure in D1 of the final feature of claim 1 (cf. page 1, last paragraph, and page 2, first paragraph of the applicant's letter).

2.6 The board concludes that the decision is not reasoned in the sense of Rule 111(2) EPC. This amounts to a substantial procedural violation requiring the decision to be set aside.