T 2445/11 - Interlocutory revision

Key points

• The application on the sole ground of multiple independent claims in the same category (Rule 43(2) EPC). The applicant addresses this in the appeal. No interlocutory revision is granted.
• As to the novelty objection mentioned as "Obiter dictum"  in the refusal, the Board notest that there is a "lack of maturity of the novelty objection" and notes that " the Examining Division has cited four more documents but has referred to them only sweepingly in its communication".
• " In view of this outcome, it would have been preferable for the Examining Division to have granted interlocutory revision under Article 109(1) EPC. The Board accepts in principle that there are cases where amended application documents presented on appeal as main request overcome the grounds for refusal yet do not warrant rectification of the decision because of other obvious deficiencies: deficiencies which are newly introduced and immediately apparent or deficiencies which are well explained by remarks or objections included as obiter dicta in the decision to refuse and on which the applicant has had an opportunity to comment. In this respect, the Board takes the view that the expression "considers the appeal to be ... well founded" in Article 109(1) EPC leaves the examining division room for exercising judgment while bearing in mind that the purpose of interlocutory revision is to speed up the procedure. But where, as here, the application was refused on grounds which have subsequently been overcome, and the more fundamental objections have not yet been well developed in the proceedings up to the refusal, there is little point in remitting the case to the boards of appeal."

EPO T 2445/11 - link

Reasons for the Decision

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

2. The application as amended with the statement of grounds of appeal contains one independent claim in the "apparatus" category and one independent claim in the "process" category and thus complies with Rule 43(2) EPC. Hence, the sole ground for refusal has been overcome.

3. As to the objections raised under "OBITER DICTUM", the deletion of claims 13 to 15 has removed the basis for the objections under Articles 82 and 84 EPC.

4. The objection under Article 123(2) EPC is directed against the substitution in independent claims 1 and 12 of "in direct response to personalization instructions by the user" for "in response to user inputs". The Examining Division reasoned this objection only by stating that the terms "direct response" and "personalization instructions" could not be found in the description as filed. This reasoning is incomplete, since Article 123(2) EPC does not turn on literal disclosure (cf. Guidelines for Examination, H-IV, 2.2).

5. The objection of lack of novelty over document D1 recites the previous wording of claim 1 rather than that of the version on which the decision is said to be based. The Board further notes that the reasoning given is best described as schematic. [] 

6. The objections raised under "OBITER DICTUM" are not formally part of the grounds for refusal and so cannot be criticised for failing to meet a procedural requirement of the EPC. The Board has analysed them to make up its mind on how best to deal with the case. Given the lack of maturity of the novelty objection in particular and the fact that the Examining Division has cited four more documents but has referred to them only sweepingly in its communication, the Board considers it justified to accede to the appellant's request to set the decision aside and remit the case to the Examining Division for further prosecution (Article 111(1) EPC).

7. In view of this outcome, it would have been preferable for the Examining Division to have granted interlocutory revision under Article 109(1) EPC. The Board accepts in principle that there are cases where amended application documents presented on appeal as main request overcome the grounds for refusal yet do not warrant rectification of the decision because of other obvious deficiencies: deficiencies which are newly introduced and immediately apparent or deficiencies which are well explained by remarks or objections included as obiter dicta in the decision to refuse and on which the applicant has had an opportunity to comment. In this respect, the Board takes the view that the expression "considers the appeal to be ... well founded" in Article 109(1) EPC leaves the examining division room for exercising judgment while bearing in mind that the purpose of interlocutory revision is to speed up the procedure. But where, as here, the application was refused on grounds which have subsequently been overcome, and the more fundamental objections have not yet been well developed in the proceedings up to the refusal, there is little point in remitting the case to the boards of appeal.

8. As an aside, the Board is aware that its interpretation of Article 109(1) EPC is not fully in line with the views expressed in decision T 1060/13 of 16 December 2013, reasons 4.1 to 4.3, although the outcome in the present case is the same. According to that decision, interlocutory revision must be allowed if the main request filed with the statement of grounds of appeal clearly overcomes the grounds for refusal, it being irrelevant whether amended claims give rise to new objections or suffer from deficiencies that are the subject of observations included by way of obiter dicta.

In the Board's view, this approach may sometimes be too rigid, as it leaves no room for a pragmatic assessment of the situation with a view to procedural efficiency and may result in a needless repetition of the first-instance proceedings, forcing the applicant to pay a second appeal fee. And in practice, when exercising their powers under Article 111 EPC, the boards of appeal often do take into account and benefit from obiter dicta, which in many instances cannot be included in the reasons for the contested decision - as would normally be preferable - for lack of a pending request to which they directly apply or because they were not dealt with during oral proceedings.

9. As for the Examining Division's decision not to issue a further communication, it is established case law that an application may be refused after a single substantive communication, provided that the decision to refuse complies with Article 113(1) EPC (see decision T 201/98 of 27 July 1999, reasons 1.4). For the reasons given below, the Board considers that it does not do so here.

10. In its communication, the Examining Division reasoned its objection of multiple independent claims in the same category essentially by stating that claims 1, 12 and 15 were drafted as separate independent claims and that none of the exceptional situations set out in paragraphs (a), (b) and (c) of Rule 43(2) EPC applied because the claims "merely seem to describe the same features in a different wording".

The appellant replied to this communication by observing that claim 1 was directed to "a computer system", claim 12 to "a method for generating a personalized dynamic presentation" and claim 15 to "a method for assisting salespersons in the presentation of products/services on offer". It argued that those claims corresponded to three different categories and could not be presented differently without rendering them unclear.

In the decision, the Examining Division then argued that claims 1 and 12 to 15 had been drafted as separate independent claims and that none of the exceptional situations applied because "claims 12 and 15 clearly fall into the category of process claims" and "claims 1 and 14 clearly fall into the category of apparatus claims using a different wording".

11. A reasoned objection under Rule 43(2) EPC should state which claims are considered to be independent claims in the same category; it is not sufficient to list three claims and state that they are "separate independent claims". Of the three claims mentioned in the Examining Division's communication, claim 1 was in fact not in the same category as claims 12 and 15. Also, claims 12 and 15 certainly did not "describe the same features in a different wording". As is apparent from the appellant's reply, the objection as presented in the communication failed to direct the appellant to the real issue.

The decision under appeal does reason the objection under Rule 43(2) EPC in so far as it identifies claims 12 and 15 as independent claims in the "process" category and claims 1 and 14 as independent claims in the "apparatus" category (but leaving claim 13 unmentioned). But this reasoned objection was communicated to the appellant for the first time in the decision, and so, contrary to Article 113(1) EPC, the appellant was not given an opportunity to comment on it.

12. Hence, the contested decision is affected by a substantial procedural violation in respect of the sole ground for refusal. Reimbursement of the appeal fee under Rule 103(1)(a) EPC is therefore equitable.

The appellant made an unconditional request for oral proceedings before the Board. Since the conclusions reached by the Board are in the appellant's favour, there is, however, nothing left to be discussed. Oral proceedings serving no purpose in the absence of a point of contention, the decision can be taken without arranging them (cf. decision T 494/92 of 13 June 1993, reasons 2).

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.