T 0679/14 - Postponing oral proceedings by examiner

Key point

• This is the second examination appeal of a patent application having entered the European phase in 2001. 
• After the first appeal, summons for oral proceedings were issued, and the oral proceedings were postponed eight times, five times at the instigation of the Examining Division. The Board: " The eight postponements of oral proceedings caused an extra delay of almost one and a half years after more than ten years of examination (including the first appeal). Two postponements were at the instigation of the Examining Division and not based on serious reasons. The same can be assumed to apply to the other three postponements for which no request by the applicant and no other ground for postponement can be found in the file. In the opinion of the Board, the first member's attendance at a meeting does not in principle qualify as a serious reason. Repeated fixing of new dates for oral proceedings could have been avoided by replacing one or more members of the Examining Division, as indicated in the Guidelines. " This constitutes a procedural violation, but the Board does not decide on whether it is a substantial violation because the applicant did not protest against the postponements.
•  The Board also finds that the ED did not apply Rule 137(3) correctly. "  In the opinion of the Board, the reasoning with respect to the auxiliary requests, including non-admission of the fourth and sixth auxiliary requests under Rule 137(3) EPC, is also incomplete and unclear. With regard to the fourth auxiliary request, the reasoning given in the contested decision was that the independent claims no longer defined that the interleaving was done according to linear recursive sequences. For the sixth auxiliary request it was essentially explained that claim 1 was related to details of Figure 2, but that the generalisation to an interleaver controller as opposed to an interleaver was not admitted under Rule 137(3) EPC. Without further reasons, these are not valid arguments for not admitting those claim sets into the proceedings under Rule 137(3) EPC."

• The ED also, incorrectly, argued that because the application as filed did not acknowledge D2 as the closest prior art, the technical effect over that document was not clear and could not be recognized. The ED  hence misapplied Rule 42(1)(c) ECP, according to the Board.

EPO T 0679/14 - link

Reasons for the Decision

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

Appeal - procedural aspects

2. Decision T 17/07 of the first appeal in the present case established that the claims then on file satisfied the requirements of Articles 84 and 123(2) EPC.

The claims now on file differ from those on which that first appeal decision was based in that "for a turbo coder (10)" has been added to the text of independent claims 1 and 21. Since that amendment does not prejudice clarity and finds direct and unambiguous support in the application as originally filed (see e.g. the title or the brief description of Figure 2 on page 4, lines 33 and 34, of the present application), it does not affect the conclusion of the first appeal decision with regard to clarity and added subject-matter.

The finding of that first appeal decision being res judicata (see decision T 153/93 of 21 February 1994, reasons 2 and 3, Case Law of the Boards of Appeal, 8th edition 2016, IV.E.7.7 and 7.7.4, and T 449/15 of 25 February 2016, reasons 2), the Board confirms that the claims satisfy the requirements of Articles 84 and 123(2) EPC.

3. At the oral proceedings the appellant expressed its dissatisfaction with the way the case had been handled in the first-instance proceedings and said that it found the reasoning of the Examining Division unclear. Nevertheless, it was not in favour of remittal to the department of first instance for assessment of inventive step and accordingly requested further prosecution by the Board.

4. This is the second appeal in the present application, which entered the European phase in June 2001. In the Board's view, the long duration of the proceedings thus far and the fact that this is the second appeal constitute special reasons under Article 11 RPBA for not remitting the case in reaction to fundamental deficiencies in the first-instance proceedings. The Board therefore considers that, irrespective of its conclusions on the deficiencies found, it should further examine the claims with regard to inventive step.

[] 

9. The Board is therefore satisfied that the cited prior-art documents, either individually or in combination, do not render obvious the subject-matter of claim 1, the same applying for corresponding independent claims 10, 21 and 30. The application therefore fulfils the requirements of Articles 52(1) and 56 EPC.

Remittal

10. From the above the Board concludes that the claims comply with Articles 84, 123(2), 52(1) and 56 EPC. The description has been adapted to the present claims. No other deficiencies can be identified with regard to the application documents on file. The Board therefore decides to set aside the decision under appeal and to remit the case to the department of first instance with the order to grant a patent on the basis of the sole request on file.

Reimbursement of the appeal fee

11. The appellant's request for reimbursement of the appeal fee can be granted only if such reimbursement is equitable by reason of a substantial procedural violation (Rule 103(1)(a) EPC).

12. The deficiencies apparent in the first-instance proceedings in the present case, which were discussed in the Board's communication and at the oral proceedings, concern, on the one hand, the multiple postponements of oral proceedings by the Examining Division and, on the other hand, the written decision.

13. Postponements of oral proceedings by the Division

13.1 It is contrary to the principles of procedural efficiency and legal certainty to repeatedly adjourn oral proceedings. According to the Guidelines for Examination in the EPO, E-II, 7 and the case law cited there, a request for postponement of oral proceedings is allowable only if the party concerned can advance serious reasons which justify the fixing of a new date. Regarding postponements at the instigation of the Division, the Guidelines, E-II, 7.1, state that in exceptional cases the Division might have to postpone oral proceedings for reasons similar to those mentioned for the parties but only if a suitable replacement cannot be found.

13.2 The Board finds, in line with the Guidelines, that it is unacceptable to repeatedly postpone oral proceedings without serious reasons, especially if it is done several times in the same examination proceedings after long delays have already occurred. Fixing a new date for oral proceedings almost inevitably causes unnecessary work and additional costs, also for the attorney and/or applicant, for example due to re-planning, cancelling a booked business trip, making new travel arrangements, or repeated preparation of the case. Furthermore, the negative consequences of repeated delays are not limited to the applicant because legal certainty is necessary to protect the interests not only of the applicant but also those of the general public or third parties.

13.3 In the present case, the application entered the European phase in June 2001. The eight postponements of oral proceedings (see section IV above) caused an extra delay of almost one and a half years after more than ten years of examination (including the first appeal). Two postponements were at the instigation of the Examining Division and not based on serious reasons. The same can be assumed to apply to the other three postponements for which no request by the applicant and no other ground for postponement can be found in the file. In the opinion of the Board, the first member's attendance at a meeting does not in principle qualify as a serious reason. Repeated fixing of new dates for oral proceedings could have been avoided by replacing one or more members of the Examining Division, as indicated in the Guidelines.

The Board finds that in the present case, although the individual delays caused by the postponements were short, the Examining Division acted against the interests of procedural efficiency, at the same time ignoring clear rules given in the Guidelines to avoid such delays.

At the oral proceedings before the Board, the appellant explained that during the first-instance proceedings the applicant had expressed its disagreement with the repeated rescheduling of oral proceedings, and that the postponements had caused additional overheads and expenses. It is however not apparent from the file to which extent the applicant made such submissions and firmly objected to the postponements during the first-instance proceedings.

13.4 Taking the above into account, the Board concludes that the postponement of oral proceedings on those five occasions at the instigation of the Examining Division without serious reasons, as far as apparent from the file, constitute a procedural deficiency in the circumstances of the present case. The Board nevertheless refrains from deciding whether it amounts to a substantial procedural violation making the reimbursement of the appeal fee equitable within the meaning of Rule 103(1)(a) EPC.

14. Written decision

14.1 According to Rule 111(2) EPC, decisions of the EPO open to appeal must be reasoned. The case law of the Boards of Appeal establishes criteria for substantiating those decisions (see e.g. Case Law of the Boards of Appeal, 8th edition 2016, III.K.4.2.1), for instance:

"The reasoning given in a decision open to appeal has to enable the appellants and the board of appeal to examine whether the decision was justified or not. A decision therefore should discuss the facts, evidence and arguments which are essential to the decision in detail. It has to contain the logical chain of reasoning which led to the relevant conclusion".

The reasoning and grounds should "be comprehensible to those conducting a later judicial review". According to decision T 1123/04 of 25 August 2006, "it should not be necessary for a board of appeal to have to reconstruct or even speculate as to the possible reasons for a negative decision in the first instance proceedings." A decision should be complete and self-contained (see reasons 3.3).

14.2 Even though the decision under appeal does not properly identify at least some of the claims on which the decision was based, after an analysis of its grounds it can be concluded that the reasoning applies to the requests on which the decision should have been based, namely the main request considered in decision T 17/07, and the first to sixth auxiliary requests filed with letter dated 16 December 2011.

14.3 In the decision under appeal the Examining Division did not explicitly mention what it considered to be the starting point for its inventive-step argumentation. Since it compared the invention with the disclosure of Figure 8-11 and Equation (8-2) of document D2, the Board concludes that it considered document D2 to be the closest prior art. However, the contested decision referred only to Figure 8-11 and Equation (8-2) of document D2, without clearly explaining how they corresponded to claimed features or their relevance for the assessment of inventive step.

In particular, the Examining Division stated that "figure 8-11 of D2 implements a linear recursive sequence interleaving rule; see equation 8-2 of D2". However, Figure 8-11 and Equation (8-2) cannot be understood without a closer reading of text passages of the document. Furthermore, there is no reference in Figure 8-11 to Equation (8-2) or vice versa. It cannot be concluded from their content alone that they are disclosed in combination in document D2. In order to be understandable, the decision should therefore have explained how the Examining Division interpreted the cited figure and equation and should have cited text passages of document D2 supporting its interpretation.

14.4 A passage of section 2 of the decision relating to the assessment of inventive step of claim 1 of the main request reads as follows:

"Construing claim 1 of the main request as described above, i.e. following T17/07, the question is how the subject-matter of claim 1 differs from the interleaving method of D2, figure 8-11. Claim 1 allows that the frame length L is the same as in D2, which means that according to claim 1 this frame length is divided into plural segments, with then a LCS interleaving being applied to each segment. It is not clear what the effect of this difference should be on the interleaving properties such as interleaving distance. As claim 1 does not specify the number of segments, this number can be high, e.g. 16 segments for L=32, which means two symbols per segment. Obviously, in this case the interleaving is very small, as the symbols are then only permuted inside their own segment."

In this passage the Examining Division refers to "this difference" without clearly saying what the difference to the prior art is. The Board speculates that the difference is that "this frame length is divided into plural segments, with then a LCS interleaving being applied to each segment", but the claim mentions neither frames nor segments. It is not clear either what "frame length L" is with respect to the claimed interleaver. It seems from page 5, last paragraph, that the Examining Division considered the difference to reside in LCS interleaving being applied to segments instead of to the whole frame (whatever the frame and segments mean in the context of the claim), and it could be that segments were considered to correspond to rows. In any case, the reasoning for claim 1 of the main request does not further clarify those points and does not discuss the features related to permutations of rows, writing by rows and reading by columns.

14.5 In the opinion of the Board, the reasoning with respect to the auxiliary requests, including non-admission of the fourth and sixth auxiliary requests under Rule 137(3) EPC, is also incomplete and unclear. With regard to the fourth auxiliary request, the reasoning given in the contested decision was that the independent claims no longer defined that the interleaving was done according to linear recursive sequences. For the sixth auxiliary request it was essentially explained that claim 1 was related to details of Figure 2, but that the generalisation to an interleaver controller as opposed to an interleaver was not admitted under Rule 137(3) EPC. Without further reasons, these are not valid arguments for not admitting those claim sets into the proceedings under Rule 137(3) EPC.

14.6 In the grounds of appeal the appellant complained that the decision mischaracterised the features describing the indexing of rows and columns and reduced them to a metaphor for the sake of expediency.

In the Examining Division's communication accompanying the summons to oral proceedings the notion of rows and columns had been seen as being "only metaphorical". In the decision under appeal, the Examining Division no longer referred to these features as "metaphorical" but stated, with regard to the fifth auxiliary request and in section 9 (see page 7), that the language of the claim, in particular the description of interleaving in terms of a matrix having rows and columns with permutations being done inside the matrix, was merely a conceptual description, not a reference to real technical (i.e. structural or electronic) features of the interleaver.

It is not clear whether the Examining Division's view that the "matrix features" were merely conceptual also applied to the main request and first to third auxiliary requests.

Since some of the matrix features e.g. columns, writing by rows and reading by columns, have not been discussed in the assessment of inventive step, the Examining Division seems to have considered that those features lacked technical character and therefore did not have to be taken into account. On the other hand, assuming, as explained under point 14.414.4 above, that the Examining Division mapped rows of the claimed interleaver to segments in document D2, at least one of the matrix features was not ignored in the assessment of inventive step. Similarly, for the first auxiliary request the Examining Division referred to "the row permutations to increase data shuffling". It is then unclear why some but not all "merely conceptual" matrix features should be ignored.

14.7 With regard to the inventive-step reasoning for the first auxiliary request, the Examining Division first briefly referred to the interpretation of the feature "bit reversal rule" of claim 1. It afterwards stated the following:

"Also in this case it is not clear what the technical effect should be compared to D2, in which one LCS permutation is applied to the whole input data frame. It is understood that according to the application this row permutation is to increase the data shuffling compared to not having this row permutation. However, the LCS interleaving of D2 was not acknowledged in the application as filed, so that it is not clear what the technical effect of the interleaver of claim 1 - interpreted according to T 17/07 - compared to that of D2 should be" (see paragraph bridging pages 5 and 6 of the contested decision).

The Examining Division then concluded that a technical inventive concept could therefore not be recognised, contrary to Article 56 EPC.

Stating that it is not clear what the technical effect is because document D2 was not acknowledged in the application as filed seems to imply that in order to have the technical effect of its invention recognised over the closest prior art the applicant would have to acknowledge the closest prior art in the original application. This contradicts the case law regarding acknowledgement of prior art in patent applications as originally filed. In particular, according to decision T 2321/08 of 11 May 2009 (followed by T 1123/09 of 17 December 2009, which was cited in the communication accompanying the summons to oral proceedings), "Rule 27(1)(b) EPC 1973 does not put a stringent obligation on the applicant to cite documents reflecting prior art known to him already at the time of filing the application" (see reasons 7.3) and the applicant may amend the application to acknowledge prior art during examination (reasons 8). Logically, the applicant is not obliged to acknowledge prior art unknown to it either. Similarly, as explained in decision T 105/11 of 10 March 2016, "Rule 42(1)(c) EPC merely requires the invention to be presented in such terms that the technical problem and its solution can be understood" (see reasons 4.9 and 4.10).

Furthermore, from the reasoning above it is not clear whether the Examining Division conceded that the "data shuffling" was considered to be increased and why. If it accepted increased "data shuffling", it is unclear why it could not recognise any associated technical problem in the context of interleaving.

In the Board's view, it is the duty of the Examining Division to identify the objective technical problem and technical effect of the distinguishing features with regard to the closest prior art or, alternatively, to clearly explain why the distinguishing features do not solve a technical problem, e.g. because they do not have a technical effect. The above reasoning does not fulfil either of those prerequisites.

14.8 In the grounds of appeal, the appellant argued that the Examining Division appeared not to have taken into account the advantageous aspects of the invention, in particular reduced implementation complexity and better performance of the interleaver. The Board finds that the decision under appeal discusses the first alleged advantage of implementation simplicity but agrees with the appellant that it does not address the second advantage mentioned by the appellant.

Indeed, the Board could not find in the contested decision a discussion of the applicant's argument that the claimed interleaver resulted in a good error rate performance. This argument was invoked in the applicant's letter of 11 May 2012 (page 2, first three lines), was repeated in the oral proceedings (see minutes, page 2, paragraph 8), and seems to correspond to the "coding gain" advantage mentioned on page 3, lines 19 to 33 of the application. Furthermore, good error rate performance could be considered to be related to the increased "data shuffling" mentioned but not further discussed in the appealed decision. That argument of the applicant was therefore relevant for the decision and should have been addressed.

14.9 For the reasons given above, the Board shares the appellant's view that the reasoning of the contested decision is unclear.

The decision under appeal does not deal with all the features of claim 1 of the main request and of the other refused claims (see e.g. points 14.414.4 and 14.614.6 above), does not provide a logical sequence of arguments that justify its tenor (see points 14.314.3 to Error: Unable to retrieve cross-reference value!Error: Unable to retrieve cross-reference value! ), fails to address an essential argument of the applicant (see 14.8 above) and does not discuss in detail some of the facts, evidence and arguments which are essential to the decision (e.g. other relevant passages of document D2, see point 14.314.3 above).

Consequently, the appealed decision is insufficiently reasoned and does not meet the requirements of Rule 111(2) EPC, which constitutes a substantial procedural violation. As the appeal is deemed to be allowable and reimbursement of the appeal fee is equitable by reason of a substantial procedural violation, the request for reimbursement of the appeal fee is to be granted in accordance with Rule 103(1)(a) EPC.

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 with the order to grant a patent on the basis of the following documents: