T 1814/12 - Decision according to the state of the file

Key points

• In this examination appeal, the applicant had requested a decision according to the state of the file. This was requested after the summons for oral proceedings and a telephone consultation. 
• The Board considers the decision to be insufficiently reasoned and finds this to be a substantial procedural violation.
• " [A] decision on the state of the file should be taken on the basis of facts and arguments already on the file in written form, which excludes the minutes of a telephone conversation unless the statements made orally in this telephone conversation were confirmed in a written communication. For this reason alone, the contested decision does not meet the requirements of Rule 111(2) EPC." 

EPO T 1814/12 - link

Reasons for the Decision

Admissibility of the appeal

1. As the appellant remedied the deficiency of the missing signature of an authorised person authenticating the statement of grounds of appeal in due time (Rule 50(3), second sentence, EPC), the appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Deficiencies of the contested decision

2. According to Rule 111(2) EPC decisions of the European Patent Office which are open to appeal (including decisions "according to the state of the file") must be reasoned. This provision has been interpreted by the boards of appeal as requiring a reasoning which enables the appellant and the board to examine whether or not the decision was justified. The grounds upon which the decision is based and all decisive considerations in respect of the factual and legal aspects of the case must therefore be contained in the decision.

3. The contested decision is a decision on the state of the file. It is in a standard form and does not itself specify the grounds on which it is based; it simply refers to preceding communications where corresponding objections were raised (see Guidelines for Examination in the EPO (November 2017), C-V, 15.2). According to well-established case law of the boards of appeal, a decision drafted using this standard form complies with the requirement that a decision be reasoned pursuant to Rule 111(2) EPC only if certain conditions are fulfilled. In particular, the examining division must have fully expressed and reasoned its objections in the cited preceding communication or communications, taking into account all relevant arguments put forward by the applicant.

4. Moreover, specific problems may arise when a decision on the state of the file refers to several preceding communications in which different objections were raised. Such a decision often causes at least some uncertainty about the reasons on which the refusal decision relies. The risk of uncertainty increases if the claim sets submitted by the applicant change between the communications referred to. It has therefore been held in several appeal decisions that a decision on the state of the file does not meet the requirements of Rule 111(2) EPC if it leaves it up to the applicant and the board of appeal to construe the applicable reasons by mosaicking various objections and arguments from several communications, or if it creates doubts as to which objections apply to which claim version (see the decisions cited in Case Law of the Boards of Appeal, 8th edition 2016, III.K.4.3.2). This case law is reflected in the following passage of the Guidelines for Examination in the EPO (November 2017), C-V, 15.2:

"Although it is possible by way of exception to refer to more than one communication in the standard form, the examiner should carefully consider the requirements of Rule 111(2). In particular, if the different communications deal with different sets of claims, such that it is not clear which of the reasons given by the Examining Division in its communications might be essential to the decision to refuse, a fully reasoned decision should be issued instead (see C-V, 15.3)."

5. The contested decision merely refers for its reasons to the communications dated 8 July 2011 and 2 February 2012, i.e. communications A and B. While communication A is a communication accompanying a summons to attend oral proceedings pursuant to Rule 115(1) EPC, communication B is a summary record of a telephone consultation, which is not stricto sensu a communication pursuant to Article 94(3) EPC. According to the established case law of the boards of appeal (see the decisions cited in Case Law of the Boards of Appeal of the EPO, 8th edition 2016, III.K.4.3.4; decision T 0583/04 of 6 June 2006, points 9 to 11 of the reasons), a decision on the state of the file should be taken on the basis of facts and arguments already on the file in written form, which excludes the minutes of a telephone conversation unless the statements made orally in this telephone conversation were confirmed in a written communication. For this reason alone, the contested decision does not meet the requirements of Rule 111(2) EPC.

6. Moreover, there are further deficiencies in the appealed decision. Between the two communications A and B, the appellant filed a new main request and new first and second auxiliary requests - see above, section VII. All the new requests differed substantially from the sole request with which communication A was concerned. Communication B does not contain a self-sufficient reasoning for any of these new requests; instead, it merely addresses the "new features of the filed sets of claims". This prima facie creates doubts as to the extent to which the objections raised in communication A are still relied on by the Examining Division in its refusal decision. The Board therefore assesses in the following whether the present case may be regarded as exceptional in that a combined reading of both communications would make it possible to determine with sufficient certainty the relevant facts and the logical chain of reasoning on which the decision is based.

7. The appellant's requests refused with the contested decision are the main request, and the first and second auxiliary requests filed with letter of 16 January 2012. As these requests were filed by the appellant between communications A and B, they were only considered in communication B. Claim 1 of the refused requests differs from claim 1 of the sole request considered in communication A in that the characterising part of claim 1 has been replaced. For example, the characterising part of claim 1 of the main request refused in the contested decision refers to a "unique message structure including an encrypted data block, a session ID, and a session encryption key, the encrypted data block being encrypted by the session encryption key, wherein the session ID and the session encryption key are generated by the server". This feature is not present in claim 1 of the sole request considered in communication A. It is also not examined in communication A in the context of the examination of the then pending further claims. The Board is aware of the fact that communication A does refer to "additional features" including encryption and the transmission of message data. The Examining Division argued that these additional features, which were not mentioned as part of the identified difference over the system known from D1, were merely "standard features of an encrypted communication", but provided no evidence for this allegation. As the wording of the relevant features has changed substantially in the refused requests, the reasoning given in communication A cannot apply to these refused requests.

Communication B merely summarises the telephone communication. This summary does not contain a detailed examination of the pending requests, nor does it comprise any specific analysis with respect to the unique message structure that is specified in the characterising part of claim 1 of all the refused requests. Communication B explains that document D2 mentions HTTPS (Hypertext Transfer Protocol Secure) and SSL (Secure Sockets Layer) in the same context and that therefore the skilled person "would implement all the different features of said protocols, even if not explicitly listed in document D2. For instance HTTPS is implemented using SSL, that anticipates the new features of the filed sets of claims". This reasoning neither considers the claimed features in detail nor provides any understandable mapping between the features disclosed in document D2 and the features in the characterising part of the new requests. It also does not explain in detail why the skilled person would arrive without the exercise of inventive skills at "all the different features of said protocols". For example, it neither explains why the new features would be anticipated by SSL nor does it cite any document describing SSL.

In the present case, it is impossible to construct the applicable reasons by mosaicking various arguments from the file, as the parts of the file referenced in the decision do not in any way discuss the amended features of the refused requests in sufficient detail. Consequently, the Examining Division's reasoning lacks a logical chain of reasoning and thus cannot be reviewed by the Board.

8. Moreover, the appellant's detailed arguments in favour of the refused requests submitted with letter dated 16 January 2012 discuss the amended features related to the unique message structure in detail, but were not addressed in communication B (and could not be addressed in communication A). Consequently, the contested decision fails to take into account the relevant arguments put forward by the applicant.

9. Finally, the contested decision relies on document D2 as prior art, but there is no evidence on file for the alleged publication date of document D2. The appellant contested the alleged publication date during the written proceedings, but the decision is silent on this point, which is crucial for the inventive step reasoning. While it is true that the appellant did not argue on this point in the later stage of the examination proceedings, it at no point agreed to the alleged publication date, so that this highly relevant issue remained contested in the proceedings before the Examining Division. Thus, the contested decision should have provided reasons why the Examining Division nevertheless considered the alleged publication date of document D2 as proven. Hence, there is a further insufficiency in the contested decision's reasoning.

10. As argued by the appellant during the written proceedings (see section III. above), D2 carries not only a date of 1 April 2002, but also a date of 3 March 2008 and indicates that additions to it were made after the filing date of 13 February 2006 of the present application. Hence, an alleged publication date before the filing date is prima facie doubtful for document D2 as a whole, and the appellant had good reason to contest the alleged publication date.

In the written proceedings (see section IV. above), the Examining Division replied by providing reasons concerning the modifications made to document D2 over time, but no evidence for the public availability of the part of document D2 describing the Proxytunnel at the alleged publication date of 1 April 2002 was introduced.

Document D2 contains a description of a program called Proxytunnel and refers in this context to the following information: "Version: 1.2 (Mon Apr 1 10:04:48 CEST 2002)". The document itself does not refer to this information as the publication date of its content related to Proxytunnel. This date could merely indicate the version of the Proxytunnel program being described, for example. There is no evidence that the relevant content of document D2 was publicly available at the alleged publication date, or in what form. Hence, the Board considers that the alleged publication date of document D2 has not yet been established with a sufficient degree of certainty (see also decision T 2227/11 of 18 February 2016, point 2 of the reasons; decision T 545/08 of 24 March 2017, points 18 and 19 of the reasons).

Consequently, evidence concerning the public availability of the relevant content of document D2 before the effective filing date of the application should be provided if the document is to be used as prior art.

Remittal and reimbursement of the appeal fee

11. In view of the procedural deficiencies mentioned above, the case is to be remitted to the department of first instance for further prosecution (Article 11 RPBA). The Board considers the reimbursement of the appeal fee to be equitable in a situation where, as here, the reasons given for the contested decision were so unclear and so incomplete that no final decision could be taken in the appeal proceedings (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 for further prosecution.

3. The appeal fee is to be reimbursed.