T 0591/17 - Decision state of the file

Key points

• Another "decision according to the state of the file", another substantial procedural violation. 
• The present application was filed in 2003, and is remitted back to the ED. The age of the case " does not constitute a special reason for not remitting the case", taking into account that the applicant is not in a hurry. 
• The refusal of the ED is a form referring to a Communication of 4 March 2016. That communication in turn "refers to the communication of 22 March 2005 and the telephone conversation of 27 July 2015. In each of these instances, a different set of claims was before the examining division. It is, thus, not clear to what extent the reasons in the earlier communication and telephone conversation still applied to the claims on file when the decision was taken and to what extent they were overcome by the appellant's arguments put forward in the meantime." 
• The refusal was based on lack of inventive step over D1 with D9. "As regards D9, the communication refers to three entire pages and a complete figure of D9 to show that all the "security" features of claim 1 were known from that document. The communication does not, however, define the " security features" [and therefore does neither] state which features the examining division considered to be disclosed in D9. [] Also the broad brush reference to large parts of D9 is an obstacle to determining which features of claim 1 the examining division considered to be known from D9 and why. " 
• The refusal is therefore insufficiently reasoned and this is a substantial procedural violation. 

EPO T 0591/17 -  link

Reasons for the Decision

1. Rule 111(2) EPC provides that decisions of the EPO which are open to appeal shall be reasoned. The decision must contain, in logical sequence, those arguments which justify the tenor. All facts, evidence and arguments which are essential to the decision must be discussed in detail (see, for instance, T 278/00, point 2 of the reasons, and T 897/03, points 2 and 3 of the reasons).

2. For its reasons, the decision under appeal refers to the communication dated 4 March 2016. It is established jurisprudence of the boards of appeal that such decisions are in principle accepted, but that a decision "by reference" is only reasoned within the meaning of Rule 111(2) EPC if the communication referred to itself contains the required reasons (see, for instance, T 963/02, point 2.1 of the reasons).

3. The communication referred to states that the then claims lacked inventive step both in view of D1 and D2 and in view of D9.

3.1 As regards D1 and D2, the communication itself refers to the communication of 22 March 2005 and the telephone conversation of 27 July 2015. In each of these instances, a different set of claims was before the examining division. It is, thus, not clear to what extent the reasons in the earlier communication and telephone conversation still applied to the claims on file when the decision was taken and to what extent they were overcome by the appellant's arguments put forward in the meantime. The examining division appears to concede this by stating in the communication of 4 March 2016 that only "similar" reasoning applied to the claims pending at the time, without however explaining to what extent the earlier reasoning still applied and to what extent it had to be adapted.

3.2 As regards D9, the communication refers to three entire pages and a complete figure of D9 to show that all the "security" features of claim 1 were known from that document. The communication does not, however, define the security features or, as a consequence, state which features the examining division considered to be disclosed in D9. In other words, the communication leaves open whether the feature said not to be explicitly disclosed in D9 is the only difference between claim 1 and D9, and thus whether showing a lack of inventive step of that feature would be sufficient to show a lack of inventive step of claim 1 as a whole. Also the broad brush reference to large parts of D9 is an obstacle to determining which features of claim 1 the examining division considered to be known from D9 and why. Moreover, in the reasons given as to why the difference feature was considered obvious over D9, the examining division seems to suggest that the interpretation of D9 depended, in an undefined way, on arguments given by the applicant.

3.3 In summary, the board considers that neither the reasons referring to D1 and D2 nor those referring to D9 show, in logical sequences, all the facts and arguments that justify the finding that claim 1 lacks inventive step, and that therefore the reference to the communication of 4 March 2016 is insufficient to provide the reasons required under Rule 111(2) EPC.

Article 11 RPBA and Rule 103(1)(a) EPC

4. An insufficiently reasoned decision constitutes a fundamental deficiency of the first instance proceedings, Article 11 RPBA, and a substantial procedural violation, Rule 103(1)(a) EPC.

4.1 According to Article 11 RPBA, the board shall remit the case to the department of first instance, unless special reasons present themselves for doing otherwise. The board has considered whether the age of the present application constitutes such a special reason. In this regard, the board notes that it took the examining division almost ten years to react to the appellant's letter of 4 October 2005, only a small part of which was due to the staying of examination proceedings.

4.2 However, taking into account that the appellant did not once, between 2005 and 2015, even enquire about the progress of examination proceedings, and did not address the overall length of the proceedings in its grounds of appeal, the board has decided that the age of the case does not constitute a special reason for not remitting the case.

4.3 However, when a decision is set aside and the case remitted to the examining division, without an assessment of the merits of the appeal, due to a substantial procedural violation, reimbursement of the appeal fee under Rule 103(1)(a) EPC is normally equitable. In the present case, the board has no reason to deviate from this practise.

Order

For these reasons it is decided that:

1. The decision is set aside.

2. The case is remitted to the examining division for further prosecution.

3. The appeal fee is to be reimbursed.