Tuesday, October 27, 2020 T 560/20 - Change from novelty objection to inventive step in decision to refuse

Does membrane thickness have a technical effect? Does it matter?

During prosecution the claim was objected to on the basis of novelty. In its decision to refuse, it was acknowledged that the thickness of a membrane was not disclosed in the prior art document. As said thickness had no technical effect, the Examining division turned the novelty objection into an inventive step objection. The appropriate thickness could be found from the common general knowledge. 

The board does not like this, and in fact, considers it to be a substantial procedural violation 

 Reasons for the Decision

1. Alleged violation of the right to be heard

1.1 The right of parties to a fair trial is a generally recognised procedural principle under Article 125 EPC, and is to be observed in all proceedings before the European Patent Office. The predictability and verifiability of all state actions are indispensable elements of the rule of law and the respect of fundamental procedural rights. The right to be heard under Article 113(1) EPC requires that the ratio decidendi of decisions by the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.

The right to be heard enshrined in Article 113(1) EPC requires that those involved be given an opportunity to present comments on the facts and considerations pertinent to the decision, and also to have those comments considered.

A decision which is based on a ground on which the party had no opportunity to present its comments, and/or which fails to take into account the arguments submitted by a party, contravenes Article 113(1) EPC and constitutes a substantial procedural violation (see Case Law of the Boards of Appeal of the European Patent Office, 9th edition 2019, III.B.2.3.1).

1.2 In the case in hand, the reasons for the impugned decision are limited to the finding of lack of inventive step of the subject-matter of claim 1 of the main request on file in view of document D5 in combination with the common general knowledge. In the decision, the examining division essentially held that the subject-matter of claim 1 differs from document D5 in the thickness of the first membrane layer. As this difference is not related to any particular effect, the objective technical problem to be solved is the selection of an appropriate thickness. The skilled person would prepare a membrane with the claimed thickness without technical difficulties. The subject-matter of claim 1 is therefore not based on an inventive step.

1.3 The board agrees with the appellant that the examining division had not raised this objection before. In its previous communications, document D5 had been cited as novelty-destroying, while the issue of inventive step had been discussed on the basis of document D1 or D2 in combination with document D3 or D4.

In consequence, the appellant had no opportunity to present its comments on the sole ground on which the impugned division is based. This contravened the appellant's right to be heard enshrined in Article 113(1) EPC and constitutes a substantial procedural violation.

2. Remittal of the case

2.1 Article 11 of the Rules of Procedure of the Boards of Appeal in the version of 2020 (RPBA 2020) provides that a case shall not be remitted to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons.

2.2 In the present case, the substantial procedural violation identified above constitutes a special reasons. In addition, the appellant as the party concerned by the procedural violation explicitly requests the remittal of the case.

The board thus exercises its discretion under Article 111(1) EPC and Article 11 RPBA 2020 to set the decision aside and remit the case to the examining division for further prosecution. In this regard, the board observes that it would appear appropriate for the examining division to consider the appellant's further arguments presented in its statement of grounds of appeal before drawing a conclusion concerning the question of inventive step.

3. Reimbursement of the appeal fee

Since the decision is set aside, and in view of the substantial procedural violation established in point 1. above, the appeal fee is to be reimbursed in accordance with 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 request for reimbursement of the appeal fee is allowed.

This decision T 0560/20 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2020:T056020.20201007. The file wrapper can be found here. Photo by  Manfred Richter obtained  via PixaBay under the Pixabay license (no changes made).