T 1200/20 - Ex Div going rogue

Key points

•  A patent application of Apple is refused.
• " The annex to the summons to oral proceedings [before the Examining Division] which followed as the next official action is unusually short. In particular, it does not include a complete feature analysis for the version of claim 1 then on file. Regarding the aforementioned feature, it merely states (point 3) that: "However, the ESOP on point 2, identifies the input, the region and the handler. Again no reasons has been argued [sic]." To begin with, since this feature was not part of claim 1 at the time the ESOP was issued, it cannot have been dealt with in the ESOP. Furthermore, when an applicant adds a new feature to a claim and argues that this feature is novel, the onus lies on the examining division to argue that it is not. At the oral proceedings, when the applicant explicitly requested a more detailed feature mapping, the examining division rejected this request and referred to the feature mapping that had allegedly already been provided in writing" 
• " . At the oral proceedings, the appellant repeated this argument and requested counter-arguments. The examining division refused any discussion and referred again to its written arguments (see the minutes of the oral proceedings, page 1, "Main Request"). However, since the appellant had not argued in its previous written submissions specifically in favour of the novelty of this feature, the written arguments of the examining division in previous communications could not have addressed the appellant's argument. Therefore, the appellant was left to guess what the outstanding objections were with regard to each of these features."  
• On a further point: " At the oral proceedings, the appellant repeated this argument and requested counter-arguments. The examining division again refused any discussion and referred to its written arguments (see the minutes of the oral proceedings, page 1, "Main Request"), even though none of the written arguments of the examining division in previous communications had explained why the contested feature was considered to be implicit." 
• :" As for auxiliary request 1, at the oral proceedings the examining division raised an inventive-step objection based on the combination of D1 with D5. The appellant then requested a 30-minute interruption to study D5 and the combination thereof with D1. The examining division refused this reasonable request, alleging that "D5 was already present in the procedure" (see the contested decision, point 9.1, and the minutes of the oral proceedings, page 2). However, this is factually incorrect. D5 had never been cited in the examination proceedings before; it was merely one of the documents listed in the Search Report. Thus, the appellant faced an inventive-step objection based on new evidence, D5, for the first time at the oral proceedings and was forced to prepare its case without even an interruption of the oral proceedings (cf. T 951/97, point 4 of the Reasons). Basing the decision on new evidence on which the appellant had not had sufficient opportunity to comment was a further violation of the appellant's right to be heard (Article 113(1) EPC)." 
• "  These violations of the appellant's right to be heard amount to fundamental deficiencies constituting special reasons for remitting the case to the department of first instance under Article 11 RPBA 2020." 
• As a comment, when reading such a decision I wonder whether anyone in the EPO's management notices (and bothers) or whether the three examiners will just get full marks for productivity. 

EPO 

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/t201200eu1.html

Reasons for the Decision

1. In the case at hand, the examining division did not sufficiently communicate its novelty objections to claim 1 of the main request either before or during the oral proceedings, and therefore the appellant was unable to counter these objections. Moreover, the examining division failed to engage with the appellant's arguments in favour of the novelty of the claimed subject-matter. In particular:

1.1 In the version filed with the letter of 23 May 2017, the appellant added to claim 1, inter alia, the feature of "receiving the touch input at the web browser and determining, at the web browser, whether the touch input is associated with a region of the web page that includes a touch handler associated with the web page", which the appellant indicated in its letter to be one of the features which was not disclosed in D1 (see the letter of 23 May 2017, page 5, third paragraph). The annex to the summons to oral proceedings which followed as the next official action is unusually short. In particular, it does not include a complete feature analysis for the version of claim 1 then on file. Regarding the aforementioned feature, it merely states (point 3) that: "However, the ESOP on point 2, identifies the input, the region and the handler. Again no reasons has been argued [sic]." To begin with, since this feature was not part of claim 1 at the time the ESOP was issued, it cannot have been dealt with in the ESOP. Furthermore, when an applicant adds a new feature to a claim and argues that this feature is novel, the onus lies on the examining division to argue that it is not. At the oral proceedings, when the applicant explicitly requested a more detailed feature mapping, the examining division rejected this request and referred to the feature mapping that had allegedly already been provided in writing (see point 7.1 of the contested decision and page 1 of the minutes of the oral proceedings).

1.2 In its letter of reply to the summons, dated 25 October 2019, the appellant argued (see points 11 to 12) that the feature "in accordance with a determination, at the web browser, that the touch input is detected at a first region (102, 104) of the web page that includes a touch handler associated with the web page, providing one or more touch events that correspond to the touch input to the web page for processing" of claim 1 was also novel over D1. At the oral proceedings, the appellant repeated this argument and requested counter-arguments. The examining division refused any discussion and referred again to its written arguments (see the minutes of the oral proceedings, page 1, "Main Request"). However, since the appellant had not argued in its previous written submissions specifically in favour of the novelty of this feature, the written arguments of the examining division in previous communications could not have addressed the appellant's argument. Therefore, the appellant was left to guess what the outstanding objections were with regard to each of these features.

1.3 Finally, the appellant had contested in its letter of reply to the summons to oral proceedings dated 25 October 2019 (see points 13 to 21) the examining division's assertion that the final feature of claim 1, namely "in accordance with a determination, at the web browser, that the touch input is detected at a second region of the web page that is distinct from the first region and that does not include a touch handler associated with the web page, processing the touch input with a touch handler associated with the web browser without providing the one or more touch events that correspond to the touch input to the web page for processing", was implicitly disclosed in D1. At the oral proceedings, the appellant repeated this argument and requested counter-arguments. The examining division again refused any discussion and referred to its written arguments (see the minutes of the oral proceedings, page 1, "Main Request"), even though none of the written arguments of the examining division in previous communications had explained why the contested feature was considered to be implicit.

1.4 Thus, by basing the decision on grounds on which the appellant had not had an opportunity to present its comments, the examining division violated the appellant's right to be heard (Article 113(1) EPC).

2. As for auxiliary request 1, at the oral proceedings the examining division raised an inventive-step objection based on the combination of D1 with D5. The appellant then requested a 30-minute interruption to study D5 and the combination thereof with D1. The examining division refused this reasonable request, alleging that "D5 was already present in the procedure" (see the contested decision, point 9.1, and the minutes of the oral proceedings, page 2). However, this is factually incorrect. D5 had never been cited in the examination proceedings before; it was merely one of the documents listed in the Search Report. Thus, the appellant faced an inventive-step objection based on new evidence, D5, for the first time at the oral proceedings and was forced to prepare its case without even an interruption of the oral proceedings (cf. T 951/97, point 4 of the Reasons). Basing the decision on new evidence on which the appellant had not had sufficient opportunity to comment was a further violation of the appellant's right to be heard (Article 113(1) EPC).

3. These violations of the appellant's right to be heard amount to fundamental deficiencies constituting special reasons for remitting the case to the department of first instance under Article 11 RPBA 2020.

4. Since the fundamental deficiencies apparent in the examination proceedings amount to substantial procedural violations, reimbursement in full of the appeal fee is equitable (Rule 103(1)(a) EPC).

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 for further prosecution.

3. The appeal fee is to be reimbursed in full.