T 1564/18 - Oral proceedings Ex Div in absence

 Key points

•  The Board essentially finds the refusal decision to be an unallowable surprise decision. 
• The ED cited D6, fig. 3-8 as anticipating claim 1 in a Communication under Art. 94(3). In the summons to the oral proceedings, again Fig. 3-8 of D6 were cited. Oral proceedings were held in the absence of the applicant who had announced that they would not attend.
• In the refusal decision, Fig. 1 and 2 of D6 were cited as anticipating claim 1 of the main request. These figures are described as "conventional art" in D6.
• The Board: "As the appellant had decided not to be present at the oral proceedings, it had relied solely on its written arguments. In such a case, the appellant's right to be heard is not violated if the examining division raises new foreseeable objections against new subject-matter submitted before the oral proceedings, including citing different passages of a document for newly-introduced features. However, in the present case the board cannot recognise such a reason for changing the closest prior art to the disclosure of Figure 1 of document D6. The main request considered  in the decision under appeal did not differ significantly from the previous sole request on file (only the expression [feature omitted] had been added at the end of claim 1), and in its reasoning the examining division did not justify why it had relied on a different part of document D6."
  
• " the board concludes that neither the annex to the summons nor any of the previous communications of the examining division contained the essential legal and factual reasons leading to the finding in the appealed decision that claim 1 of the main request lacked novelty over the prior art cited for the first time to refuse the application." 
• As a comment, although the Board seems to have a point, I find it confusing that the Board refers to "changing the closest prior art to the disclosure of Figure 1 of document D6" even though the rejection of the main request was for lack of novelty. 
• The Board: "Moreover, it is not possible to establish from the decision under appeal whether or why the amendments made in advance of the oral proceedings held in absentia justified the change to a new closest prior art. The decision was therefore issued in violation of Article 113(1) EPC." 
• The basic thrust seems correct, but again it is unfortunate to refer to "new closest prior art" when talking about novelty. On the other hand, I'm not sure if there is established terminology for the "equivalent" of "the closest prior art"  under novelty.
• As a further comment, provided that amendments made just before the oral proceedings were the normal kind of narrowing claim amendments, the Examining Division could have cited figures 1 and 2 as novelty-destroying in addition to the alleged novelty destroying figures 3-8. In other words, for novelty, it's not so much a matter of "changing the closest prior art", but adding new novelty objections (based on Figures 1 and 2) possibly in combination with abandoning earlier novelty objections (based on Figures 3-8). 
• G 4/92 does not apply to ex parte cases. The EPO's current practice regarding applicants staying away from oral proceedings before the Examining Division is described in  OJ 2020 A124. Whether the present decision puts a gloss on that Notice, can be left as an exercise for the reader. I also note that the present decision does not cite Rule 115(2) EPC.
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EPO Headnote

Since neither the annex to the summons nor any of the previous communications of the examining division contained the essential legal and factual reasons leading to the finding in the appealed decision that claim 1 of the main request lacked novelty over the prior-art device considered for the first time in the novelty assessment of the refusal, and since no reason was given why the amendments made in advance of the oral proceedings held in absentia justified the change to this new closest prior art, the decision was issued in violation of the right to be heard even though the prior-art device on which the refusal was based was disclosed in the same document as a closest prior art considered previously in the examination procedure.

T 1564/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t181564eu1.html

Reasons for the Decision

1. The appellant argued that the applicant's right to be heard had been violated in the first-instance proceedings, contrary to the provisions of Article 113(1) EPC (statement of grounds of appeal, pages 6 to 8, section II).

History of the use of document D6 by the examining division

2. Document D6 was cited for the first time by the examining division in a communication dated 4 December 2012. In this communication, the invention of document D6 as described in paragraphs [0060] to [0093] and illustrated by Figures 3 to 8 was considered to destroy the novelty of claim 1 then on file.

3. In a further communication dated 10 March 2015, the examining division replied to an argument of the applicant that document D6 did not disclose the feature "wherein the repair circuit (116) is configured to be programmable by another semiconductor device separate from the memory device (110) to recognize a malfunctioning address of the primary data storage elements (112)" (corresponding to a feature of claim 1 of the present main request). In this communication, the examining division again referred to Figure 3 and cited in particular paragraphs [0063] and [0087] to [0092] of document D6 to support its argument that claim 1 lacked novelty over document D6.

4. In the annex to the summons to attend oral proceedings, the examining division again cited paragraphs [0060] to [0093] and Figures 3 to 8 of document D6 to argue that the subject-matter of claim 1 then on file (filed in electronic form on 22 June 2015) lacked novelty over document D6.

5. In reply to the summons, the applicant submitted the main request and the first to third auxiliary requests on which the decision under appeal is based.

6. During a telephone consultation which took place on 12 January 2018, the applicant was informed that the oral proceedings scheduled for 22 January 2018 would take place and that none of the requests on file seemed to be allowable since the features of the claimed controller were "present in the tester of D6".

7. In a letter dated 18 January 2018, the applicant submitted the fourth auxiliary request and requested that the oral proceedings be cancelled and that the examination be continued in writing. As a further auxiliary request, it requested that the oral proceedings be postponed. The reason invoked was that "the instructing counsel at the side of the applicant" was seriously ill and could not provide instructions.

8. In a further letter, the requests to cancel or defer the oral proceedings were reiterated. Additionally, the applicant withdrew its "earlier" auxiliary request for oral proceedings and informed the examining division that it would not be represented "during any oral proceedings that would be held nonetheless".

9. Oral proceedings were held as scheduled in the absence of the applicant. The reasons for not cancelling nor postponing the oral proceedings are given in the written decision (decision, points 18 and 19; see also minutes).

10. The decision of the examining division is based on the "conventional art" illustrated by Figures 1 and 2 of document D6 and described in paragraphs [0006] to [0040]. The conventional semiconductor memory device of Figure 1 is presented in document D6 as corresponding to the one disclosed in Korean patent application No. 2000-57067 (see paragraph [0006]).

Procedural violation

11. The appellant objected that neither had this prior art disclosed in document D6 been used in the examining division's line of argument nor had said Korean patent application been cited by the examining division during the entire examination of the application.

12. In support of its objection that its right to be heard had been infringed, the appellant cited decisions T 1898/11, T 305/14, T 951/92, T 1198/97 and J 20/85.

13. For the reasons below, the board concurs with the appellant that the decision does not comply with the provisions of Article 113(1) EPC in accordance with the case law (see for example T 1898/11, reasons 3.2; T 305/14, reasons 2.3; T 951/92, reasons 3, points (v) and (vi)).

14. In the case at hand, the device chosen as closest prior art in the reasoning of the contested decision (the "conventional art" of paragraphs [0006] to [0040] and Figures 1 and 2 of D6) is similar to that chosen in previous communications (the device of paragraphs [0060] to [0093] and Figures 3 to 8 of D6). The devices illustrated in Figures 1 and 3 have a similar architecture and several common features. However, in its reasoning the examining division did not explain why it had changed to a different prior art nor whether it had relied only on features of the first device of Figure 1 also present in the second device of Figure 3.

15. As the appellant had decided not to be present at the oral proceedings, it had relied solely on its written arguments. In such a case, the appellant's right to be heard is not violated if the examining division raises new foreseeable objections against new subject-matter submitted before the oral proceedings, including citing different passages of a document for newly-introduced features. However, in the present case the board cannot recognise such a reason for changing the closest prior art to the disclosure of Figure 1 of document D6. The main request considered in the decision under appeal did not differ significantly from the previous sole request on file (only the expression "and after detecting a failure of one or more of the primary data storage elements (112)" had been added at the end of claim 1), and in its reasoning the examining division did not justify why it had relied on a different part of document D6.

16. In the telephone consultation in advance of the oral proceedings (see point 6. above), the examining division had had an opportunity to inform the appellant that different closest prior art would be used against the new claims. However, the reference to "the tester of D6" in the minutes of the telephone consultation is too vague to conclude whether the examining division had clearly indicated which passages of the document would be of relevance.

17. In view of the above, the board concludes that neither the annex to the summons nor any of the previous communications of the examining division contained the essential legal and factual reasons leading to the finding in the appealed decision that claim 1 of the main request lacked novelty over the prior art cited for the first time to refuse the application. Moreover, it is not possible to establish from the decision under appeal whether or why the amendments made in advance of the oral proceedings held in absentia justified the change to a new closest prior art. The decision was therefore issued in violation of Article 113(1) EPC.

Remittal and reimbursement of the appeal fee

18. In accordance with established case law, and with regard to the circumstances of this case, the violation of the right to be heard by the decision under appeal amounts to a fundamental procedural deficiency and to a special reason for remitting the case for further prosecution (Article 111(1) EPC and Article 11 RPBA 2020). It is also a substantial procedural violation within the meaning of Rule 103(1)(a) EPC for which full reimbursement of the appeal fee is equitable.

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 in full.