T 1985/16 - Number of inventive step attacks

Key points

• In this opposition appeal, the opponent complains that the OD's decision contains no reasoning "as to why the [inventive step attack] submitted in writing [before the OD] and based on the combination of document D1 as closest state of the art with document D7 was not convincing." 
• The Board agrees that the "decision contains no reasoning in respect of the line of argument of lack of inventive step presented in writing and based on the combination of [D1 with D7].
• However, the decision contains a reasoning why the claims are not obvious over D13 with D7, and the opponent had acknowledged that D13 was more relevant than D1.
• " Therefore, [the inventive step attack based on] D1 with [ D7]  can be considered to have been implicitly refuted in the decision under appeal in view of the reasoning concerning the combination of document D13 with document D7. The board also notes that during the oral proceedings the [opponent] did not identify the [inventive step attack based on D1] as the closest state of the art among the relevant ones, and in particular as going beyond the line of argument based on the combination of document D13 with document D7." 
• "In view of the above considerations, the board is of the opinion that the lack of reasoning in the decision under appeal in respect of the combination [D1 with D7] did not amount to a procedural violation, at least not to a substantial procedural violation that would justify for reasons of equity the reimbursement of the appeal fee under Rule 103(1)(a) EPC." 

EPO T 1985/16 - link

7. Alleged procedural violations - Request for reimbursement of the appeal fee, and question of remittal of the case to the department of first instance

7.1 The appellant has requested the reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC and, in support of this request, has alleged a series of violations of the right to be heard (Article 113(1) EPC 1973 and Rule 111(2) EPC). The board has considered whether the alleged procedural violations would have justified the reimbursement of the appeal fee under Rule 103(1)(a) EPC and/or the remittal of the case under Article 111(1), second sentence, EPC together with Article 11 RPBA.

7.2 The procedural violations alleged by the appellant can be summarised as follows:

a) The appellant was not allowed to present during the first-instance oral proceedings arguments in support of the line of argument of lack of inventive step previously presented in writing and based on document D1 as the closest state of the art.
b) The decision contained no reasoning (Rule 111(2) EPC) as to why the line of argument submitted in writing and based on the combination of document D1 as closest state of the art with document D7 was not convincing.
c) During the first-instance oral proceedings the appellant was not allowed to present arguments in support of the admissibility of documents D3a to D3c, D8a to D8d, D9, D11, D12, and D14 to D24.
d) The sole reason given in the decision for the non-admission of documents D3a to D3c, D8a to D8d, D9, D11, D12 and D14 to D24 into the proceedings was that these documents did not appear to be more relevant than documents D1, D7 and D13, and therefore the decision was not properly reasoned (Rule 111(2) EPC).

7.2.1 According to the minutes of the first-instance proceedings (see page 3, first paragraph), the opposition division referred to the large number of lines of arguments of lack of inventive step presented in writing by the appellant and, after inviting the appellant "to argue only the strongest case", the opposition division acceded to the appellant's intention "to present at least two such attacks", as it subsequently did. The board notes in this respect that the attempt by the opposition division to focus the appellant's case on the most relevant lines of argument was in conformity with the principle of economy and efficiency of the proceedings, especially in a case as the present one in which a big number (sixteen, see communication dated 21 October 2015, page 7) of lines of argument based on different combinations of documents had been submitted by the appellant in writing.

Furthermore, during the oral proceedings, after a discussion on the admissibility of document D13, on the status as prior art of document D7, and on the issue of inventive step over a combination of document D13 with document D7, the appellant "requested a possibility to present two further lines of argumentation" on the issue of inventive step, and the opposition division also acceded to this request (see minutes, last paragraph on page 5, and first paragraph on page 6). In addition, there is no indication in the minutes of the oral proceedings that the appellant was not allowed to address any further specific issue that the appellant considered pertinent and, more particularly, to present comments on the line of argument based on document D1 as the closest state of the art. The board also notes that according to the decision under appeal (see reasons for the decision, point 5, second paragraph) the appellant had submitted - presumably during the discussion on the admissibility of document D13 - that document D13 "appeared to be more relevant than D1" and "it was more detailed than D1".

In view of these considerations, the board sees no procedural violation in the allegation under paragraph a) of point 7.2 above.

7.2.2 As submitted by the appellant, the decision contains no reasoning in respect of the line of argument of lack of inventive step presented in writing and based on the combination of document D1 with document D7. However,

- the decision (see point 4 of the reasons) contains a detailed reasoning on the issue of novelty over document D1, and the opposition division identified the scanning across a region of the forehead as the sole distinguishing feature of the method of claim 1 over document D1 (see page 11, second paragraph of the decision) and also over document D13 (page 15 of the decision, third paragraph from the bottom);

- the decision contains a reasoning as to why the combination of document D13 with the teaching of document D7 did not render obvious the claimed method (point 7.1 of the reasons);

- the opposition division had already expressed in the communication dated 21 October 2015 (see page 7, last paragraph) its opinion that "D1 and D13 provide a similar disclosure of the closest prior art"; and

- the opponent had acknowledged that D13 was "more relevant than D1" and "more detailed than D1" (reasons for the decision, point 5).

In these circumstances, although the decision contains no explicit reasoning in respect of the combination of document D1 with document D7, document D1 was not considered to be more pertinent than document D13 and therefore the combination of document D1 with document D7 was implicitly considered less promising than the combination of document D13 with document D7. Therefore, the line of argument based on a combination of document D1 with document D7 can be considered to have been implicitly refuted in the decision under appeal in view of the reasoning concerning the combination of document D13 with document D7. The board also notes that during the oral proceedings the appellant did not identify the line of argument of lack of inventive step based on document D1 as the closest state of the art among the relevant ones, and in particular as going beyond the line of argument based on the combination of document D13 with document D7.

In view of the above considerations, the board is of the opinion that the lack of reasoning in the decision under appeal in respect of the combination of document D1 with document D7 (allegation b) in point 7.2 above) did not amount to a procedural violation, at least not to a substantial procedural violation that would justify for reasons of equity the reimbursement of the appeal fee under Rule 103(1)(a) EPC.

7.2.3 According to the minutes of the oral proceedings before the opposition division,

- after the opposition division had admitted document D13 into the proceedings (minutes, page 3, middle paragraphs), the appellant "requested a decision on the admissibility of the documents that had been late filed, which included documents D8-D12, and D14-D23" (minutes, page 5, fourth paragraph from the bottom);

- after the discussion on the admissibility of document D10 the opposition division decided not to admit document D10 into the proceedings (minutes, page 7, fourth paragraph); and

- subsequently, the opposition division informed the parties that documents "D3a-D3c, D8a-D8d, D9, D11, D12 and D14-D24 were not admitted into the proceedings since they seemed not to contain disclosures that would have allowed more relevant attacks against inventive step of claim 1" (minutes, page 7, third paragraph from the bottom).

There is no indication in the minutes of the oral proceedings in support of the appellant's allegation that it was not allowed to present arguments in support of the admissibility of documents D3a to D3c, D8a to D8d, D9, D11, D12 and D14 to D24. At least at the time the appellant requested a decision on the admissibility of the documents, and possibly also later on when the opposition division informed the parties of the non-admission of the documents, the appellant could have invoked the right to be heard in order to have the opportunity to comment on the decision that it was requesting, and there is no evidence that the opposition division denied such an opportunity. In addition, the opposition division already commented in its communication dated 21 October 2015 (see point 5.1.3) on the admissibility of these documents and the appellant already had an opportunity to react to these comments in writing, as it actually did in its letter dated 29 April 2016.

Therefore, the board sees no procedural violation in the allegations under paragraph c) of point 7.2 above.

7.2.4 As regards the allegations under paragraph d) in point 7.2 above, the board notes the following:

During the oral proceedings the opposition division mentioned the reason why documents D3a to D3c, D8a to D8d, D9, D11, D12 and D14 to D24 were not admitted into the proceedings (see point 8.1.3 above), and in the written decision the opposition division justified the non-admission of these documents on the grounds that "they were not submitted in due time and do not appear, prima facie, to be more relevant than the documents D1, D7/D7a and D13 which were chosen by the opponent as most suitable for preparing the strongest argumentation against the novelty and inventive step of the subject-matter of claim 1" (reasons for the decision, point 9). Therefore, the decision contained the corresponding reasons within the meaning of Rule 111(2) EPC. However, as submitted by the appellant, these reasons do not appear to constitute "a proper reasoning". More particularly, the mentioned reasoning contains no analysis of the submissions of the appellant relating to the content of the documents under consideration, and no details on the comparison of the content of the documents with the content of documents D1, D7 and D13.

As regards documents D3a to D3c, D8a to D8d, D9, D11, D12, D14, D15, D17 to D20, D23 and D24, the deficiencies mentioned above would amount to a deficient or incomplete reasoning in the written decision, but in the board's opinion they do not amount, in the specific circumstances of the case, to a substantial procedural violation that would justify for reasons of equity the reimbursement of the appeal fee for the following reasons:

- The opposition division already presented in point 5.1.3 of the communication dated 21 October 2015 annexed to the summons to the oral proceedings a detailed analysis of the reasons why it considered that documents D3a to D3c, D8a to D8d, D9, D11, D12, D14, D15, D17 to D20, and D23 were not more relevant than the remaining documents on file.

- Document D24 was only cited by the appellant for the purpose of indicating the professional profile of Merton Bernfield, i.e. the addressee of the letter shown in document D8c, without the document itself having been identified during the proceedings as containing any substantive matter of relevance for the appellant's case (see appellant's letter dated 29 April 2016, second page, second paragraph).

As regards documents D16, D21 and D22, the board notes the following:

- On the one hand, there is no indication in the file as to the specific reasons of the opposition division for considering documents D16, D21 and D22 less relevant than the documents admitted into the proceedings and addressed in the opposition division's reasoning of lack of inventive step, and the fact that the decision is also silent as to such specific reasons constitutes a procedural violation.

- On the other hand, in point 5.1.3 of the communication dated 21 October 2015 the opposition division referred to document D16, and to document D21 together with document D22, as documents used in the plurality of lines of argument of the appellant (see items ii), vi), ix) and xv) on page 7, and point 5.2.2 of the communication), and none of the lines of argument involving either document D16 ("D1 + D16", and "D13 + D16"), or document D21 together with document D22 ("D1 + D21 + D22", and "D13 + D21 + D22") were subsequently identified by the appellant during the oral proceedings as being of a particular relevance over the lines of argument explicitly referred to by the appellant and discussed during the oral proceedings. In addition, during the oral proceedings the opposition division informed the parties that none of a series of documents, including documents D16, D21 and D22, appeared "to contain disclosures that would have allowed more relevant attacks" of inventive step (minutes of the oral proceedings, page 7, third paragraph from the bottom), and there is no record in the minutes that the appellant reacted to this announcement of the opposition division, for instance by identifying any specific fact in support of the relevance of documents D16, D21 and D21 over the remaining documents considered during the oral proceedings.

In these circumstances, and in the specific context under consideration (see points 7.2.1 and 7.2.3 above), the fact that the appellant omitted consideration of documents D16, D21 and D22 during the oral proceedings can be seen as an implicit indication from the part of the appellant that the corresponding lines of argument were less relevant than the lines of argument addressed and discussed during the oral proceedings, and in particular the line of argument based on the combination of document D13 with document D7. The board also notes that at no point during the first-instance proceedings the appellant submitted that the teaching of document D16, or of document D21 together with document D22, would go beyond that of document D7 in respect of the application of the teaching of these documents to either one of documents D1 and D13 (compare, in particular, sections "(2)" and "(6)" with section "(1)" of point 4.1 of the letter dated 16 March 2015, and the corresponding arguments in point 4.2 of the same letter).

In view of the above considerations, the reimbursement of the appeal fee would not be equitable in the circumstances of the case. More particularly, the appellant failed to contest the opposition division's view that documents D16, D21 and D22 would be of no particular pertinence for the outcome of the case and, in addition, the deficient reasoning in the decision in respect of the non-admission of these three documents into the proceedings was not the immediate and only cause of the need to appeal.

7.3 In addition, in view of the considerations in points 7.2.1 to 7.2.4 above, none of the allegations made by the appellant constitute a fundamental deficiency that would, in the circumstances of the case, justify the remittal of the case under Article 111(1), second sentence, EPC together with Article 11 RPBA. Moreover, apart from the fact that the patent (filing date of 10 September 1999) will expire in the near future, a remittal under Article 11 RPBA would have already been procedurally inappropriate because it would have compelled the opposition division to re-open examination of the same lines of argument identified by the appellant during the first-instance oral proceedings as the most relevant ones, these lines of argument having already been found not convincing in the decision under appeal and not being affected by the procedural violations alleged by the appellant.

7.4 The request for reimbursement of the appeal fee cannot be allowed under Rule 103(1)(a) EPC already because the appeal is not allowed - neither in substance (see point 6 above), nor in view of a procedural deficiency justifying the remittal of the case under Article 111(1), second sentence, EPC together with Article 11 RPBA (see point 7.3 above). In any case, even if the appeal had been allowed in substance, the reimbursement of the appeal fee would not have been justified in the circumstances of the case for the reasons given in points 7.2.1 to 7.2.4 above.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is refused.