T 1546/19 - Ratio decidendi

Key points

• This is an appeal against a refusal. In fact, the second appeal, against a second refusal.
• " The main request is almost identical to the sole request underlying the impugned decision, the only difference being the correction of a typographic error in feature C), which now reads: "in releasing" instead of "is releasing". The request underlying the impugned decision is identical to the request considered in the first decision of the board (T 0883/15, dated 28 May 2018)." 
• " In the first decision of the board concerning the current application, it was decided that document Dl fails to disclose by explicit statement or unambiguous implication [feature X]" 
• " The appellant argues that the examining division was only bound by the "ratio decidendi" of the first decision of the board to the extent that the claims were novel over document D1 but not regarding whether document D1 also discloses [feature Y, a load detection unit]. Notably, in the context of inventive step, a different juridical appreciation of the facts was required." 
• The Board in the first decision stated: " Thus, the board concludes that D1 indeed teaches the detection of a pressure load exerted on the touch sensor." 
• " In view of the above, the board holds that the examining division was indeed bound by the first decision of the board not only to the extent that the claimed subject-matter was novel but also as to the distinguishing feature identified by the board. Hence, the examining division was correct in limiting the discussion during the second oral proceedings to the question of whether the distinguishing feature identified in the board's first decision was obvious. Since the issue of novelty over document D1 is res iudicata, even the board is bound by its previous decision. I.e. it cannot be re-discussed in these proceedings which of the claimed features are known from document D1 as far as these features were considered in the first decision of the board."
  
•  As a comment, "Pursuant to Article 111(2) EPC 1973 [] if a board remits the case for further prosecution to the department whose decision was appealed, that department shall be bound, in so far as the facts are the same, by the board's ratio decidendi."
• As a further comment, for the confluence of Art. 111 and res iudicata, see also T 0449/15.
• "In the statement setting out the grounds of the second appeal, the appellant further argued that the board violated its right to be heard by remitting, during the first appeal, the case to the examining division without holding oral proceedings. As a consequence, the appellant had no opportunity to discuss the disclosure of document D1 in oral proceedings before the board of appeal." 
• The Board finds that the request for oral proceedings in the first appeal was auxiliary to the request for remittal, which was granted.
• Moreover, "the first decision of the board was taken in accordance with the appellant's requests and based on grounds on which the appellant had had an opportunity to present its comments. Consequently, it meets the requirements of Article 113(1) EPC." 
• As a comment, the relevance of these observations is unclear to me: if it is res iudicata, even a clear violation of Art. 113(1) EPC does not permit setting it aside (as far as I know).
• 
  

EPO T 1546/19

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t191546eu1.html

2. Main request

The main request is almost identical to the sole request underlying the impugned decision, the only difference being the correction of a typographic error in feature C), which now reads: "in releasing" instead of "is releasing". The request underlying the impugned decision is identical to the request considered in the first decision of the board (T 0883/15, dated 28 May 2018).

2.1 Admissibility (Article 12(4) RPBA 2007)

The board asserts that this is an amended request which has not been presented in the proceedings before. However, as the amendment relates to a straightforward correction of a typographical error, which remained unnoticed in the proceedings so far, the board decides to admit the new main request into the proceedings.

2.2 Novelty (Article 54(1) EPC)

In the first decision of the board concerning the current application, it was decided that document Dl fails to disclose by explicit statement or unambiguous implication that the standard load (i.e. threshold) associated with the user's releasing operation is "lower than" the first standard load associated with the user's pressing operation.

In line with this decision and taking into account the recent minor amendment, the board holds that the subject-matter of claim 4 is novel over what is known from document D1.

2.3 Binding effect (Article 111(2) EPC)

The appellant argues that the examining division was only bound by the "ratio decidendi" of the first decision of the board to the extent that the claims were novel over document D1 but not regarding whether document D1 also discloses a load detection unit. Notably, in the context of inventive step, a different juridical appreciation of the facts was required.

The board considers that the facts underlying the board's first decision are the features defining the claimed subject-matter and the disclosure of prior-art document D1. Since novelty can only be acknowledged if a distinguishing feature is identified, the ratio decidendi comprises which of these features are disclosed in document D1.

In view of the above, the board holds that the examining division was indeed bound by the first decision of the board not only to the extent that the claimed subject-matter was novel but also as to the distinguishing feature identified by the board. Hence, the examining division was correct in limiting the discussion during the second oral proceedings to the question of whether the distinguishing feature identified in the board's first decision was obvious.

Since the issue of novelty over document D1 is res iudicata, even the board is bound by its previous decision. I.e. it cannot be re-discussed in these proceedings which of the claimed features are known from document D1 as far as these features were considered in the first decision of the board.

2.4 Right to be heard (Article 113(1) EPC)

In the statement setting out the grounds of the second appeal, the appellant further argued that the board violated its right to be heard by remitting, during the first appeal, the case to the examining division without holding oral proceedings. As a consequence, the appellant had no opportunity to discuss the disclosure of document D1 in oral proceedings before the board of appeal.

The board notes that the appellant, in its letter dated 16 May 2018 sent in reply to the board's communication pursuant to Rule 100(2) EPC, requested "to set aside the appealed decision and to remit the case back to the Examining Division for further prosecution on the basis of the claims filed on March 13, 2015. As an auxiliary request, oral proceedings are requested".

The board thus acted in accordance with the appellant's requests when remitting the case to the examining division without holding oral proceedings since these were not requested in this case. Furthermore, it was to be expected by the appellant that the board would take a decision on the issue of novelty since lack of novelty was the sole objection raised in the first appeal proceedings. Without deciding on novelty, the board would not have been in a position to decide on the appellant's request to set aside the appealed decision and remit the case. Furthermore, in a communication pursuant to Rule 100(2) EPC, the board provided its preliminary opinion to the appellant, which it maintained in its decision.

Hence, the first decision of the board was taken in accordance with the appellant's requests and based on grounds on which the appellant had had an opportunity to present its comments. Consequently, it meets the requirements of Article 113(1) EPC.