In this appeal case, the Boards emphasized again that a decision according to the state of the file must, as any other decision, be reasoned and arguments raised must be addressed. The standard form for referring only to an earlier communication can only be used under strict conditions spelled out in the Guidelines. It is only possible to use this form of decision where the previous communication addresses all the arguments raised by the applicant. Further, it is possible by way of exception to refer to more than one communication in the standard form, but then the examiner should carefully consider the requirements of Rule 111(2) EPC. Blanket statements --such as merely stated that the "arguments were carefully considered" but "no new evidence" was provided-- cannot be considered to address the arguments raised and does not comply with the requirement of Rule 111(2) EPC that the decision be reasoned. Also, in view of contradictory statements in the communications referred to in the present standard form decision, it is not clear which of the reasons given by the Examining Division under Articles 54 and 56 EPC, if any, might form part of the reasons for the decision to refuse. Lastly, comments submitted by the applicant after the last communication and before the request for a decision according to the state of the file were ignored.
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)
