T 2245/12 - Why consult D2?

Key points

• In this examination appeal, the Board sets aside the refusal as being insufficiently reasoned.
• "Section 11 [of the decision of the ED] prima facie provides arguments why the subject-matter of claim 1 of the main request is not inventive, as required by Article 56 EPC. The board can however detect no logical chain in the reasoning." 
• " In section 11.5, [the ED] introduce document D2. The reasoning is apparently that the skilled person would consider [D2] because it "has already in the title an indication that a person should be included in the architecture" [] and because 'D1 and D2 are also both Philips patent applications'. There is however no explanation why a skilled person would look for prior art where a person is included in the architecture, nor why the fact that the applicant is the same for both D1 and D2 is relevant." 
• The lack of reasoning is a substantial procedural violation.

EPO T 2245/12 - link

Reasons for the Decision

1. The admissibility of the appeal

The appeal is admissible.

2. No reasoned decision; Rule 111(2) EPC

2.1 According to Rule 111(2) EPC, the decisions of the European Patent Office open to appeal shall be reasoned. The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision taken by a first instance department (see inter alia T 34/90 (OJ EPO 1992, 454), headnote I, and G 9/91 (OJ EPO 1993, 408), reasons 18, for the inter partes case). A reasoned decision issued by the first instance department meeting the requirements of Rule 111(2) EPC is accordingly a prerequisite for the examination of the appeal.

2.2 Section 11 of the grounds for the appealed decision prima facie provides arguments why the subject-matter of claim 1 of the main request is not inventive, as required by Article 56 EPC. The board can however detect no logical chain in the reasoning.

2.3 Section 11.2 lists the differences between the subject-matter of claim 1 and the disclosure of D1:

[....]

2.4 Section 11.3 states that these differences have the technical effect that when a user leaves a home-domain, the device is not able to use the user-licenses anymore.
ISection 11.4 then concludes that the problem to be solved is how to prevent a user from losing rights he or she paid for. Such would however be a problem caused by the listed differences, rather than one solved by it, as would be required in the context of the "problem and solution" approach, which should in principle be used for the assessment of inventive step at the European Patent Office.

2.5 In section 11.5, the grounds for the appealed decision introduce document D2. The reasoning is apparently that the skilled person would consider this document because it "has already in the title an indication that a person should be included in the architecture" (section 11.5 first sentence) and because "D1 and D2 are also both Philips patent applications". There is however no explanation why a skilled person would look for prior art where a person is included in the architecture, nor why the fact that the applicant is the same for both D1 and D2 is relevant.

2.6 It can also not be argued (and in fact it was not) that the statements made in section 11 of the appealed decision require no proof for lack of having been challenged. Indeed, several of those statements correspond to statements that were already made in the Written Opinion of the international Searching Authority (see Item V) and were subsequently challenged by the applicant; see for instance the reasoning in support of novelty and inventive step in the appellant's response dated 5 August 2009.

2.7 The arguments in section 11 of the reasons for the appealed decision therefore, contrary to appearances, constitute no reasoning as far as concerns the refusal of the appellant's main request for lack of inventive step. The board points out that an inventive step analysis should in principle apply the "problem and solution approach", which is the standard approach at the European Patent Office. However, neither this approach nor any other verifiable approach was used in the reasons for the appealed decision.

The reasoning in sections 12 to 14 of the appealed decision only deals with arguments that were made by the applicant. The board cannot identify any additional arguments in those sections that could be used to build a complete case against the presence of an inventive step.

The board concludes that the reasoning in the appealed decision is of such a nature that the decision is de facto unreasoned.

2.8 The requirements of Rule 111(2) EPC have consequently not been satisfied. This constitutes a fundamental deficiency within the meaning of Article 11 RPBA and, accordingly, the board considers it appropriate to remit the case to the department of first instance, since in the present case no special reasons are apparent for doing otherwise.

2.9 The appeal is allowed insofar as the decision under appeal is set aside. Since the decision of the first instance clearly contravened Rule 111(2) EPC, and the appellant had to appeal in order to obtain a fully reasoned decision, it is equitable to reimburse the appeal fee pursuant to Rule 67 EPC 1973.

Order

For these reasons it is decided that:

1. The appealed decision is set aside.

2. The case is remitted to the first instance for further prosecution.

3. The appeal fee is reimbursed.