T 1710/11 - Not the required constructive approach

Key points

• In this examination appeal, the application was refused for lack of clarity, with obiter comments that claim 1 did not involve an inventive step.
• The Board notes that "this approach  [not basing the refusal on lack of inventive step, but only on clarity] does not appear to be in line with the "constructive and helpful" attitude that the Guidelines require the examiner to adopt ". The Board observes that it could have remitted the case after finding that the clarity issues were resolved. " Such potential ping-ponging of the application would of course negatively impact the overall procedural economy of the application and may be avoided if all reasons for refusal were to be included in the contested decision." 

Summary of Facts and Submissions

I. The appeal lies against the decision of the Examining Division refusing the European application no. 06 727 684.0 for failure to comply with the requirements of Article 84 EPC 1973, Article 83 EPC 1973 and Article 123(2) EPC. In an obiter dictum the Examining Division indicated that, in its opinion, the subject-matter of claim 1 did not involve an inventive step. []

Reasons for the Decision

[] 2.11 For these reasons, the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC). []

4. The Board appreciates that only one reason is required to refuse an application and that, in the present case, the numerous clarity objections set out in the contested decision more than sufficed for this purpose. Nevertheless, the Board has some sympathy for the Appellant's view that the insistence of the Examining Division that the clarity issues should be dealt with before a definitive assessment of inventive step could be undertaken, led to a procedure which - at least for the Applicant - was rather inefficient.

As may be seen from the obiter dictum of the contested decision, the Examining Division understood the claimed subject-matter sufficiently to be "convinced that the idea of placing the A/D converter in the patient table does not comprise an inventive step". However, the Examining Division held that "a final decision on [novelty and inventive step] can properly be taken only after the scope of the claims has been clarified". In the knowledge that the subject-matter of the "unclear" claim was not inventive, it does indeed appear to be somewhat inefficient to issue a decision which gives lack of clarity - but not a lack of inventive step - as a reason for refusal, thus forcing the Appellant to address each of the clarity objections before being able to challenge the inevitable inventive step objection. This approach does not appear to be in line with the "constructive and helpful" attitude that the Guidelines require the examiner to adopt (C-I,2). In the present case, the Board decided to deal with the question of inventive step itself, thus concentrating on the issue which ultimately sealed the fate of the application. But it was equally possible that the Board, once satisfied that the claimed subject-matter would meet the requirements of Article 84 EPC 1973 and Article 123(2) EPC, could have chosen to remit the case to the Examining Division for a decision on this issue in order to give the Appellant the benefit of two instances. Such potential ping-ponging of the application would of course negatively impact the overall procedural economy of the application and may be avoided if all reasons for refusal were to be included in the contested decision.

Order

For these reasons it is decided that:

The appeal is dismissed.