Friday, October 26, 2018 T 658/12 - Faulty reasoning does not qualify as insufficient reasoning

In this appeal, the Board agrees with the appellant's argument that the subject-matter of claim 1 involves at least some technical features which are not regarded as notorious knowledge of the skilled person. Apart from business related aspects of order processing the claimed subject-matter also involves aspects concerning authentication and identification of users at different entities of the claimed system. The Board considers the latter to contribute to the technical character of claim 1 so that they cannot be regarded as being part of the non-technical requirement merely to be implemented by the technical skilled person. Further, the examining division interpreted technical features of the claim to be in the administrative, i.e. non-technical domain. The Board in contrast considers those features (related to authentication and identification) to be technical. In the Board's view this was an incorrect application of the COMVIK approach. 
In reason 4.1, the Board indicated that "an insufficiently reasoned decision has to be distinguished from a decision that has faulty or unpersuasive reasoning. The decision under appeal is not based on mere allegations, nor does it lack a clear comprehensive argumentation. The Board agrees with T 690/06 (see reasons, point 13) that notorious prior art, i.e. prior art which cannot reasonably be contested to have been generally known and which is cited without proof, is allowable by the jurisprudence. The COMVIK-approach may have been incorrectly applied, but this is a substantive issue, only involving judgement. Thus, the decision is reasoned in the sense of Rule 111(2) EPC." 
The decision leaves some unsatisfactory feelings... a wrong decision that is -as the Board indicates multiple times- clearly faulty reasoned in several aspects forces the applicant to appeal at the cost of an appeal fee as he would otherwise loose the application, and he will need to pay for the errors made by the first instance division. Some patent attorneys and other stakeholders further expressed their worries that the focus on speed in substantive examination, with only one written round as a main rule, as well as in opposition may lead to more erroneous decisions - which another round of discussion may have prevented. An appeal case like the one below may lead one to consider that also a reimbursement of the appeal fee due to clearly faulty reasoning by the first instance division would be fair, and  not only if there was a substantial procedural violation. 

Keywords:
Remittal - examination of novelty and inventive step (yes - technical features not assessed)
Substantial procedural violation - (no, features incorrectly assessed as non-technical, error of judgement)

Tuesday, April 26, 2016 T 651/12 - To display information in an ergonomically improved manner is a technical purpose

The Examining Division considered the subject-matter of claim 1 according to the main request to lack an inventive step and refused an application. The Examining Division reasoned that the claim was made up of technical and non-technical features, the technical features merely defining a commonplace map display apparatus and the non-technical features defining a method defining an abstract calculation on the basis of modelled map data. The applicant appealed, arguing that the claim features were technical as was the problem solved.
According to the Board's opinion, a map display apparatus and method explicitly comprising, after the calculation of the three-dimensional bird's eye view map, displaying this map on the screen, would provide a more realistic view of the road to the user and support the user in better orienting himself. This would be considered to be a technical solution to a technical problem: the outcome of the calculation is used for a technical purpose, namely to display information in an ergonomically improved manner (r.3.2). Also the calculation as such has in the board's judgement clear technical aspects (r 3.3).

Friday, May 22, 2015 T 359/11 - Notoriously known - not searched, not allowing request

This appeal lies from a decision of the examining divisions to refuse the application.
The searcher in the international phase apparently considered the claimed invention to make no technical contribution. In line with the EPO policy of OJ 2007, 592, a search report was issued, but no prior art was cited - "the technical aspects identified in the present application (Art. 15 PCT) are considered part of common general knowledge. Due to their notoriety no documentary evidence is found to be required" (instead of the former approach of giving a "no search" declaration).

In the regional phase, the applicant disagreed with the lack of inventive step reasoning of the examiner. In an effort to overcome the objection, new claims were filed. The EPO rejected those as having added subject-matter (Art.123(2)).
The applicant reformulated the claims in a main and auxiliary request close to the original wording. The examining division used its discretion under R.137(3) to not admit these requests as "not addressing prima facie any objections under Art.56 EPC".
The refusal was thus based on "there being no text on file which has been agreed by the applicant"

The Board concludes that the Examining Division wrongly applied its discretion: "By refusing its consent to the main request, the Examining Division effectively took the position that any admissible request had to incorporate amendments aimed at overcoming its objections under Article 56 EPC. This unreasonably deprived the applicant of the opportunity of simply disagreeing with the Examining Division and obtaining a decision based on a set of claims, duly admitted into the procedure, reflecting what had been its fundamental position throughout."

The Board then had a look at whether or not the invention should have been searched. the Board reviews the case law and produced the following 

Catchword:

"Where the relevant search authority has stated, either in a search report or in a declaration that no search report will be established, that it is not necessary to cite any documentary evidence of the prior art on the grounds that all of the technical features of the claimed invention are notorious, it is always incumbent upon the examining division to consider whether an additional search is necessary. The criterion to be applied is that if the invention as claimed contains at least one technical feature which is not notorious, the application should normally not be refused for lack of inventive step without performing an additional search (see Reasons, point 3.9, and T 690/06, Reasons, point 8)".