Tuesday, 14 April 2015

T 1724/10 - Contradictory conclusions not a reasoned statement


The present case concerns an appeal against the decision of the Opposition Division to revoke European patent no. 1 462 952.

The following citations from the decision show the Board dealing with an alleged substantial procedural violation. Namely, the patent proprietor argued that the Opposition Division failed to correctly apply the problem-solution approach, and had failed to consider the right of the patent proprietor to reformulate the objective technical problem in a less ambitious manner. This, according to the patent proprietor, amounted to a violation of the right to be heard and thus constituted a further substantial procedural violation justifying the reimbursement of the appeal fee.

Background / Summary of Facts and Submissions
I. The patent proprietor (appellant) appealed against the decision of the Opposition Division to revoke European patent no. 1 462 952.

II. The opposition had been based on Article 100(a) (lack of novelty and inventive step), Article 100(b) and Article 100(c) EPC.

III. In the contested decision the Opposition Division found, inter alia, that claim 1 of the patent did not have a valid basis in the application as filed (Articles 100(c) and 123(2) EPC), and that the subject-matter of claim 1 did not meet the requirements of Article 56 EPC because a technical problem solved by the method of claim 1 could not be identified. The same objections applied to claim 1 of the first and third auxiliary requests. The subject-matter of the second auxiliary request was found not to comply with Article 56 EPC and to extend the protection conferred by the patent.

(...)

VIII. On 27 January 2015, oral proceedings were held as scheduled before the Board. At the end of the oral proceedings the Chairman announced the Board's decision.

(...)

XI. The appellant's arguments may be summarised as follows:

(Main substantive argumentation omitted)

In summary, the subject-matter of claim 1 was not made obvious by any of the cited documents D6, D11 and D23, or their combinations.

The opposition division stated for the first time during the oral proceedings that the technical problem solved by the invention was speculative and not acceptable as a valid objective technical problem. The fact that the patent proprietor was taken by surprise by this objection and was not given the possibility to file amended claims in response to the Opposition Division's new and surprising argument constituted a substantial procedural violation. Furthermore, the Opposition Division failed to correctly apply the problem-solution approach and, in particular, failed to consider the right of the patent proprietor to reformulate the objective technical problem in a less ambitious manner, as it had been suggested. This amounted to a violation of the right to be heard and thus constituted a further substantial procedural violation justifying the reimbursement of the appeal fee.

Reasons for the Decision
1. The appeal is admissible.

(...)

Reimbursement of the appeal fee

9. The appellant has essentially argued that during the oral proceedings the Opposition Division raised a new argument under Article 100(a) EPC and, in particular, stated for the first time that the technical problem solved by the invention was speculative and not acceptable as a valid objective technical problem. The patent proprietor was allegedly taken by surprise. Furthermore, in the appellant's opinion, the right to be heard was violated because the patent proprietor was not given the possibility to file amended claims in response to the new argument.

9.1 The appellant has further submitted that the Opposition Division failed to correctly apply the problem-solution approach and to consider the patent proprietor's right to reformulate the objective technical problem in a "less ambitious" way.

9.2 In the first paragraph of the section of the contested decision relating to Article 56 EPC, the Opposition Division merely identified the aggregating step and hence also the indexing step based on the aggregating step as novel over an unspecified prior art. From the preceding section concerning Article 54 EPC, it can be assumed that either document D6 or D9 constituted the prior art the Opposition Division intended to refer to. In fact, the minutes (section 6.) of the oral proceedings show that the inventive step discussion had focused on D6.

9.2.1 According to paragraph 18 of the contested decision, the aggregating and indexing steps recited in claim 1 provided the technical effect of different aggregated documents and different search results. The Opposition Division appears to have acknowledged the presence of a technical effect in the form of "different aggregated documents" and "different search results".

9.2.2 Having identified the differences between the prior art and the claimed invention, the Opposition Division concluded that it was not possible to identify a technical problem solved by the method of the application, which could be the basis of an inventive step.

9.2.3 In paragraph 20 of the decision, the Opposition Division summarised the different attempts of the patent proprietor to define a technical problem starting from the closest prior art document and, in particular, the patent proprietor's view that if no other problem could be formulated, one had to define the problem as how to find an alternate solution to the prior art and ask whether the skilled person would arrive from there at the claimed invention.

9.2.4 In reply to the patent proprietor's arguments, the Opposition Division stated in paragraph 21 of the decision that these argumentations were not convincing because it was not possible to consider the proposed solution as an alternative solution to the one found in the prior art firstly because a technical problem could not be identified and secondly because the results provided by the method of the opposed patent and by the method of the prior art were different.

9.2.5 Finally, in paragraph 21 of the contested decision, the Opposition Division reiterated that claim 1 did not meet the requirements of Article 56 EPC because a technical problem solved by the method of claim 1 could not be identified.

9.3 The Board notes that all the above conclusions of the Opposition Division relating to the lack of inventive step are presented in the contested decision without any prior analysis of the allegedly closest prior art document (D6), or of the problem it addresses. It is also not explained why the technical differences between the claimed subject-matter and the closest prior art identified by the Opposition Division did not allow the definition of a technical problem to be solved according to the problem-solution approach (see also point 6.2 above).

9.3.1 Similarly, the Board finds that the Opposition Division did not explain in the contested decision why, in its opinion, a synonymous use of the terms "link" and "reference" was not plausible and consequently the statement "by use of links such as Uniform Resource Locators" in claim 1 offended against Article 123(2) EPC (see point 16 of the contested decision). In particular, the Opposition Division did not provide any reasons for refuting the patent proprietor's arguments.

9.3.2 In the Board's opinion, the juxtaposition of seemingly contradictory conclusions (e.g. acknowledgement of technical differences but no possibility to define a technical problem), presented in the contested decision as apodictically evident and without any factual support, does not constitute a "reasoned decision" within the meaning of Rule 111(2) EPC.

9.4 In accordance with the case law of the boards of appeal (see Case Law of the Boards of Appeal, Seventh Edition, September 2013, IV.E.8), the Board considers that in the present case the failure to provide adequate reasoning in a decision is to be regarded as a substantial procedural violation justifying the reimbursement of the appeal fee.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained as granted.

3. The appeal fee is to be reimbursed.

This decision has European Case Law Identifier: ECLI:EP:BA:2015:T172410.20150127. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "Whatever you say ...". by James Jordan obtained via Flickr under CC BY 2.0 license (no changes made).

1 comment :

  1. Juxtaposition of contradictory conclusions presented (each) as evident, and (each) without factual support does not constitute a "reasoned decision" within the meaning of Rule 111(2) EPC (and elementary logics)

    ReplyDelete

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