T 1802/17 - Applicant's relevant comments must not be ingored

Key points

• The Examining Division refused the application for lack of inventive step. The Board finds the claims to be inventive. The Board turns to the alleged substantial procedural violation.
• “the appellant argued that the examining division had not taken into account his arguments explaining the technical features of the claims, in particular the distinction between sensors and switches, and the definition of the technical problem to be solved.”
• “Summarising, the examining division never commented on the applicant's arguments regarding the definition of the technical problem to be solved but kept repeating its own formulation of the technical problem. The examining division was of course not obliged to accept the applicant's definition of the technical problem, but it should have at least explained why it regarded its own definition more appropriate. ... In addition, the examining division never discussed the issue of switches and sensors despite the applicant's repeated arguments on the differences between them.”
• “the examining division did not address the applicant's comments but kept repeating its own reasoning without taking into account the applicant's objections to it. 
• The Board here adds: “Moreover, the applicant's comments, which related to the interpretation of technical features in the claims and the closest prior art, as well as to the formulation of the objective technical problem (a fundamental step in the assessment of inventive step according to the problem-solution approach) were touching upon crucial points of the inventive step assessment and were thus relevant for the decision to refuse the application.”
• “By ignoring these comments which could have had an influence on the final decision, the examining division did not respect the applicant's right to be heard according to Article 113(1) EPC and committed a substantial procedural violation.”

T 1802/17

https://www.epo.org/law-practice/case-law-appeals/recent/t171802eu1.html

3.3 The board is thus persuaded that the application according to the Main Request and the invention to which it relates meet the requirements of the EPC and a European patent is to be granted (Article 97(1) EPC).

4. Reimbursement of the appeal fee

4.1 The appellant requested reimbursement of appeal fee on the ground that the examining division had committed a series of substantial procedural violations. The appellant argued that the examining division, among others, had made up its mind to refuse the application before (or without) giving due consideration to the technical features of the claims (see points [76] to [108] of the statement of the grounds of the appeal).

More specifically, the appellant argued that the examining division had not taken into account his arguments explaining the technical features of the claims, in particular the distinction between sensors and switches, and the definition of the technical problem to be solved.

4.2 The procedure in the first instance can be summarised as follows:

[...]

4.3 Summarising, the examining division never commented on the applicant's arguments regarding the definition of the technical problem to be solved but kept repeating its own formulation of the technical problem. The examining division was of course not obliged to accept the applicant's definition of the technical problem, but it should have at least explained why it regarded its own definition more appropriate.

In addition, the examining division never discussed the issue of switches and sensors despite the applicant's repeated arguments on the differences between them. The examining division never explained why it considered that the sensor in D1 was the same as the switch of the claim and why, on the basis of D1, it would be obvious to add more sensors. It simply repeatedly cited a passage of D1 and made reference to the abstracts of D4 and D5 without any further comments or reasoning.

4.4 According to Article 113(1) EPC, the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. It is also established that the right to be heard also requires that the comments presented are considered, that is, reviewed with respect to their relevance for the decision on the matter (see e.g. T 0763/04, point 4 of the reasons, and in general, Case Law of the Boards of Appeal of the EPO, 9th Edition, July 2019, III.B.2.4.1 and 2.4.2).

4.5 In the present case, the examining division did not address the applicant's comments but kept repeating its own reasoning without taking into account the applicant's objections to it. Moreover, the applicant's comments, which related to the interpretation of technical features in the claims and the closest prior art, as well as to the formulation of the objective technical problem (a fundamental step in the assessment of inventive step according to the problem-solution approach) were touching upon crucial points of the inventive step assessment and were thus relevant for the decision to refuse the application.

By ignoring these comments which could have had an influence on the final decision, the examining division did not respect the applicant's right to be heard according to Article 113(1) EPC and committed a substantial procedural violation.

4.6 According to Rule 103(1)(a) EPC, the appeal fee is to be reimbursed where the Board of Appeal deems an appeal to be allowable, if such a reimbursement is equitable by reason of a substantial procedural violation.

In view of the circumstances described above, the board considers that the substantive procedural violation committed by the examining division had a causal link with the impugned decision. In other words, had the examining division taken the applicant's comments into consideration, its final decision may have been different.

Since the appeal is deemed allowable, the board, in view of the above considerations, regards a reimbursement of the appeal to be equitable.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division with the order to grant a patent in the following version:

- Description, pages 1 to 28, filed with letter of 5 May 2021;

- Claims 1 to 13 titled "AMENDED MAIN REQUEST", filed with letter of 5 May 2021;

- Drawings, Sheets 1/11 to 11/11 as published.

3. The appeal fee is to be reimbursed.