D 0049/21 09-02-2022

Admissibility of the appeal

1. The notice of appeal and the statement setting out the grounds of appeal were duly filed within the one-month time limit under Article 24(2) REE. The appeal fee was also paid on time. The appeal is therefore admissible.

Shorter notice period

2. Under Article 24(4), first sentence, REE and, mutatis mutandis, Article 13(2) RDR, Rule 115(1) EPC applies mutatis mutandis to the oral proceedings in the case at hand. Rule 115(1), second sentence, EPC provides that at least two months' notice of the summons must be given unless the appellant agrees to a shorter period.

The summons to attend oral proceedings specified a shorter notice period and therefore did not fulfil the requirement of an at least two-month period of notice. However, the appellant agreed to a shorter notice period by letter dated 6 January 2022.

Extent of the judicial review by the DBA

3. In accordance with Article 24(4) REE and the consistent case law of the DBA, which followed decisions D 1/92 (OJ EPO 1993, 357) and D 6/92 (OJ EPO 1993, 361), decisions of the Examination Board may, as a rule, only be reviewed for the purposes of establishing that they do not infringe the REE, the provisions relating to its application or higher-ranking law. It is not the function of the DBA to reconsider the entire examination procedure on the merits. This is because the Examination Committee and the Examination Board have some latitude of evaluation subject to only limited judicial review by the DBA. Accordingly, the Examination Board's value judgement on the number of marks that an examination paper deserves is not subject to review by the DBA. As held in decision D 6/13 (points 8 and 9 of the Reasons), the Examination Board not "perfectly" fulfilling its implied obligation to draw up an impeccable examination paper and corresponding impeccable marking scheme does not automatically qualify as an infringement of a provision of the REE or IPREE. Thus, a finding in the given case would require a value judgement, which is normally beyond the powers of the DBA. The marking of an examination paper in terms of how many marks an answer deserves is not subject to review by the DBA, and nor are the Examination Board's criteria for determining the weighting of the expected answers (see D 20/96, point 9 of the Reasons) to the examination questions (D 13/02, point 5 of the Reasons). Only if the appellant can show that the contested decision is based on serious and obvious mistakes can the board take this into account. The alleged mistake must be so obvious that it can be established without re-opening the entire marking procedure (see e.g. decision D 7/05, OJ EPO 2007, 378). This is, for instance, the case if an examiner is found to have based their evaluation on a technically or legally incorrect premise upon which the contested decision rests (D 2/14). Another example of an obvious mistake would be a question whose wording is ambiguous, inconsistent or incomprehensible (D 13/02). All other claims to the effect that the papers have been marked incorrectly are not the responsibility of the DBA. Value judgements are not, as a rule, subject to judicial review (see e.g. D 1/92, cited above, points 3 to 5 of the Reasons and D 11/07, point 3 of the Reasons; Case Law of the Boards of Appeal, 9th edition 2019, V.C.2.6.3, with further references).

The statement of grounds of appeal is primarily concerned with whether the appellant's solution is an equivalent or even better solution than the solution expected by the Examination Board. To answer this question, however, a factual review of the examination procedure by the board would be necessary. This would have to include both an in-depth analysis of (examination) Paper A and an evaluation of the solutions of the appellant and the Examination Board. This would, however, be tantamount to re-opening the entire marking procedure and to an evaluative reconsideration of the answer paper, which, in accordance with the principles set out above, is not the task of the board.

Nor is it the task of the board to review the discretion applied by the Examination Board in assessing the appellant's answer paper as to whether Examination Committee II or the Examination Board deducted too many marks or did not award enough marks for the answers in the respective parts of the appellant's answer paper. If the board were to follow the appellant's approach, it would ultimately have to reassess the answer paper by awarding its own marks. However, under the established case law of the DBA, the value judgement of the competent Examination Board or Examination Committee on the number of marks to be awarded for an answer to an examination question in an examination paper is not subject to review by the DBA (D 13/02, point 5 of the Reasons; D 7/05, cited above, point 20 of the Reasons). This must also apply to the criteria on the basis of which the Examination Board determines the value of the expected answers to the questions of the examination paper.

As explained above, the justification for this limited judicial review is to be seen in the discretionary power which the Examination Committees and the Examination Board are entitled to in the EQE.

Independent product claim of Paper A 2021

4. The part of the appellant's answer paper on the independent product claim was awarded 8 out of 40 marks possible. The appellant accepted that 15 marks were deducted from the 40 marks possible since her product claim to an engine component in which an adhesion layer is present excludes the embodiment in which the coating is deposited directly on the superalloy (see also point 4.1.2 of the Examiners' Report - Paper A 2021 (Examiners' Report)) and that a further 10 marks were deducted because her product claim lacks the feature of the ceramic oxide layer having a minimum thickness (see also point 4.1.6 of the Examiners' Report). However, she found a further deduction of 7 marks unjustified and based her objection on two lines of argument (see point X(a) above).

5. According to the appellant's first line of argument, her product claim was not limited to components of the combustion zone but instead merely required that the coated engine component was suitable for engines with a combustion zone at a temperature of at least 1600 °C.

6. The board does not find it convincing that, based on the appellant's first line of argument, it can be established that a serious and obvious mistake was made without re-opening the entire marking procedure. According to point 4.1.2 of the Examiners' Report, limiting the component to components of the combustion zone (components of the exhaust zone can also be coated) is considered an unnecessary limitation and thus attracted a deduction of 7 marks. In the board's view, the appellant's entire argument is essentially directed at the fact that, in her opinion, the examiners did not award enough marks for her product claim because, with their legally incorrect interpretation, they considered that her claim was limited to combustion zones. As explained above, the value judgement of the competent Examination Board or Examination Committee on the number of marks to be awarded for an answer to an examination question in an examination paper is not subject to review by the board. If the board were to follow the appellant's approach, it would have to reassess the appellant's answer on the product claim by awarding its own marks. Furthermore, the appellant's arguments raise the question of whether her drafted claim is an equivalent or even better drafted claim than the claim expected by the Examination Board. To answer this question, a substantive review of the examination procedure by the board would be necessary. This would have to include an in-depth analysis of Paper A and an assessment of the solutions of the appellant and the Examination Board. This would amount to re-opening the entire evaluation procedure and an evaluative reconsideration of the examination work, this not being the task of the board under the principles set out above. Deciding on the issues raised by the appellant would therefore result in an exercise well beyond the powers of the board.

7. In the appellant's second line of argument on the composition of the adhesion layer, the appellant submitted, giving detailed reasons, that the presence of the composition of the adhesion layer in her independent product claim was required to achieve the technical effect of an improved lifetime for components comprising the adhesion layer and the columnar ceramic oxide.

8. The board does not find it convincing that, based on the appellant's second line of argument, it can be established that a serious and obvious mistake was made without re-opening the entire marking procedure. The appellant's entire submission is directed essentially at the alleged fact that the examiners awarded her answer paper an incorrect, and insufficient, number of marks.

The board notes that, according to point 4.1.2 of the Examiners' Report, the inclusion of an adhesive layer in the independent product claim, even without specifying its composition, already excludes the embodiment in which the coating is applied directly to the superalloy. Therefore, the mere inclusion of an adhesive layer already constitutes a limitation of the independent product claim, for which 15 marks were deducted. The Examiners' Report also indicates that if the composition of the adhesive layer is also included in the independent product claim, this claim is further limited. This is shown in point 4.3.3 of the Examiners' Report, where it is stated that a dependent product claim directed to the adhesion layer attracted 4 marks and a dependent product claim directed to the composition of adhesion layer attracted 2 marks. This is further illustrated in the "Annex - Example set of claims", where the adhesive layer is present in dependent claim 2 and its composition is present in a further dependent claim, namely dependent claim 3. Therefore, it cannot be excluded that this further limitation in the appellant's independent product claim was unnecessary and therefore led to a further deduction of 7 marks as indicated in point 4.1.3 of the Examiners' Report.

The examination of the appellant's submissions and arguments results in an exercise which obviously cannot be done without a value judgement. The appellant's arguments raise the question of whether her solution to include the composition of the adhesion layer in her independent product claim is an equivalent or even better solution than the solutions expected by the Examination Board. To answer this question, a substantive review of the examination procedure by the board would be necessary. This would have to include an in-depth analysis of Paper A and an assessment of the solutions of the appellant and the Examination Board. This would amount to re-opening the entire evaluation procedure and an evaluative reconsideration of the examination work, this not being the task of the board under the principles set out above. The assessment of the facts related to the composition of the adhesion layer and the legal conclusions of this assessment as well as the comparison of the example solutions with the appellant's answer paper would entail a value judgement. However, in accordance with consistent case law of the DBA, value judgements are not, as a rule, subject to judicial review. Deciding on the issues raised by the appellant would result in an exercise well beyond the powers of the board as this would in fact be tantamount to reviewing the substantive content of the examination material.

9. In view of the above, the board fails to see any infringement of law or unreasonable exercise of discretion in the marking of the independent product claim of Paper A.

Independent method claims of Paper A 2021

10. The appellant presented in her answer paper independent method claims 9 and 12. The part of the appellant's answer paper on the independent method claims was awarded 10 out of 20 marks possible. The appellant considered that the deduction of 10 marks was not justified and based her objection on several lines of argument (see point X(b) above).

11. The board shares the appellant's view that because of the statement in point 4.2.1 of the Examiners' Report, it can be assumed that no marks had been deducted for the presence of the adhesion layer in her independent method claims and that, therefore, she had not lost marks twice for the same mistake (see point X(b)(i) above). The board also agrees that if, however, marks were deducted for the presence of this feature in these claims, this would clearly be a serious and obvious mistake.

12. According to the appellant (see point X(b)(ii) above), it was clear from the facts of Paper A, specifically paragraph [009] of the letter from the applicant, that the proviso "when the ceramic oxide is zirconium oxide, the temperature is 950-1000°C" was required in independent method claim 9 for this independent method claim to be sufficiently disclosed. Therefore, it would have been a serious and obvious mistake to deduct marks for including this proviso in the independent claim. This could be established with reference to paragraph [009] of the letter from the applicant and did not require re-opening the entire marking procedure.

13. The board does not find this line of argument convincing. The appellant's entire submission is directed essentially at the alleged fact that the examiners awarded her answer paper an incorrect, and insufficient, number of marks. The examination of the appellant's submissions and arguments results in an exercise which obviously cannot be done without a value judgement. The appellant's arguments raise the question of whether her solution to include the proviso "when the ceramic oxide is zirconium oxide, the temperature is 950-1000°C" in independent method claim 9 is an equivalent or even better solution than the solutions expected by the Examination Board. To answer this question, a substantive review of the examination procedure by the board would be necessary. This would have to include an in-depth analysis of Paper A and an assessment of the solutions of the appellant and the Examination Board. This would amount to re-opening the entire evaluation procedure and an evaluative reconsideration of the examination work, this not being the task of the board under the principles set out above. The assessment of the facts related to the inclusion of the above proviso in claim 9 and the legal conclusions of this assessment as well as the comparison of the example solutions with the appellant's answer paper would entail a value judgement. However, in accordance with consistent case law of the DBA, value judgements are not, as a rule, subject to judicial review. Deciding on the issues raised by the appellant would result in an exercise well beyond the powers of the board as this would in fact be tantamount to reviewing the substantive content of the examination material.

14. According to the appellant's further line of argument (see point X(b)(iii) above), both her independent method claims clearly recited depositing a coating on a superalloy through use of the term "the substrate" and the antecedent basis by virtue of the dependency on claim 1, where the substrate was defined as being "made of a superalloy", and the deduction of 2 additional marks was a serious and obvious mistake.

15. The board finds this line of argument convincing. In section 4.2.5, the Examiners' Report stated that "both methods must deposit a coating on a superalloy, if this limitation is not present then 2 marks are lost". However, as the appellant convincingly argued, both method claims deposit a coating on a superalloy due to their wording and their dependency on claim 1.

16. According to the appellant's further line of argument (see point X(b)(iv) above), the deduction of 3 marks for including plasma spraying in claim 12 and 3 marks for an unnecessary limitation based on the dependency on claim 8 amounted to a double penalty which was the result of a serious and obvious mistake. She acknowledged that dependent product claim 8 was a mistake. However, because of the features of claim 8, it had been necessary to base independent method claim 12 on claim 8 and to include plasma spraying in claim 12. Hence, she had lost marks several times for the same mistake.

17. As held in decision D 13/17, due to the particular structure of Paper A, it might happen that an incorrect answer by a candidate to an element in one part of the paper affected the answer to another part of the paper and that this could lead to a loss of the marks that could be achieved twice for one and the same error. The appellant acknowledged that claim 8 was wrong and that she most probably lost marks for her dependent claim 8. The appellant convinced the board that the dependency of her claim 12 on her claim 8 was a logical result of the wording of incorrect claim 8 and that she therefore had lost marks twice for the same mistake. Consequently, the deduction of 3 marks for an unnecessary limitation of independent method claim 12 because of its dependency on claim 8 would amount to a double penalty, which would not be in keeping with the standards for fair marking set in the case law. It cannot, however, be determined by the board with sufficient certainty from the documents available whether the appellant lost marks for her dependent claim 8 and whether 3 marks were deducted for an unnecessary limitation of independent method claim 12.

18. However, the board cannot accept the argument that it should have been necessary to include the plasma spraying feature in independent method claim 12 because of the features of claim 8. Therefore, in the board's view, there was no double penalty if 3 marks were deducted for including plasma spraying in claim 12.

Dependent claims of Paper A 2021

19. The appellant presented in her answer paper dependent product claims 2 to 8 and dependent method claims 10 to 14. The part of the appellant's answer paper on the dependent claims was awarded 12 out of 25 marks possible. The appellant essentially argued that serious and obvious mistakes had been made in the marking of her dependent claims and that these claims should have been awarded more than 12 out of 25 marks.

20. Point 4.3.1 of the Examiners' Report reads:

"Up to 25 marks were available for the dependent claims. No marks were awarded for any claims going beyond the 15th claim. When more than 15 claims were present only the first 15 claims were marked. This rule was applied irrespective of how the claims were numbered. The claims are marked as a whole and if appropriate up to 2 marks are deducted for unclear claims or for incorrect dependencies from the total number of marks awarded. The marks for dependent claims are awarded independently of the marks awarded for the independent claims (thus marks are awarded for claims dependent upon a product claim that is not novel)."

Point 4.3.2 of the Examiners' Report, inter alia, states: "Full marks are not awarded if the dependent claim is more limited than necessary (e.g. a claim to an adhesion layer with the preferred range of thicknesses would be marked as a claim to an adhesion layer, but would not receive all 4 of the marks available for such a claim, as the claim is more limited than necessary)."

21. From the above passage 4.3.1 of the Examiners' Report, the board first concludes that all the appellant's dependent claims had been marked as there were less than 15 claims in total.

22. According to the appellant, marks for her dependent claims were lost as a result of a double penalty (see point X(c)(i) above).

Under decisions D 13/17 and D 16/17, an approach according to which a candidate's wrong answer to an element in one part of the examination paper affects the answer to another part of the examination task and that there is thus a double loss of the marks that could be awarded for one and the same mistake (a double penalty) was not in keeping with the standards for fair marking set in the case law. The board agrees with the appellant that such an approach should also be avoided for the marking of dependent claims in Paper A.

23. With regard to dependent claim 2 in the appellant's answer paper, it cannot be excluded that the incorrect answer for independent claim 1, i.e. the absence of the feature of the ceramic oxide layer with a thickness of "at least 25 micrometres", and the deduction of 10 marks already for this mistake, was not taken into account in the marking of this dependent claim.

According to point 4.3.1 of the Examiners' Report, the dependent claims were marked as a whole and if appropriate, up to 2 marks were deducted for unclear claims or for incorrect dependencies from the total number of marks awarded (emphasis by the board). Since an "at least 25 micrometre" thick ceramic oxide layer was expected by the examiners in independent claim 1, it could be argued that claiming this thickness in dependent claim 2 was an incorrect dependency which could have caused a deduction of a maximum of 2 marks. However, it also says in the same passage of the Examiners' Report that "the marks for dependent claims are awarded independently of the marks awarded for the independent claims (thus marks are awarded for claims dependent upon a product claim that is not novel)". The board therefore assumes that marks for dependent claims were awarded independently of the marks for the independent product and process claims and that only an example was given in brackets in this statement. This means that the candidate's dependent claim 2, which defines that the ceramic oxide layer has a thickness of at least 25 micrometres, should have been evaluated independently of independent claim 1, even if this feature in claim 1 had already been required to satisfy the requirements of Article 84 EPC. In this assessment, there should also not be a deduction of up to 2 marks for a wrong dependency if the feature which according to the Examiners' Report should have been present in independent claim 1 and for the absence of which 10 marks have already been deducted is now claimed in dependent claim 2. Such an approach would amount to a double penalty, which would not be in keeping with the standards for fair marking set in the case law.

The appellant argued that it appeared that no marks had been awarded for her claim 2, which recited that the ceramic oxide layer had a thickness of at least 25 micrometres. It is very likely that no marks were awarded for claim 2 for the reasons given above. This would amount to a double penalty, although it may be that no or fewer marks were awarded for claim 2 for other reasons. This, however, cannot be determined by the board with sufficient certainty from the documents available. It is not clear from the Examiners' Report how many marks were available for each of the dependent claims expected by the examiners. For example, the Examiners' Report does not indicate how many marks were given for a "laser" claim dependent on the second method claim.

24. In addition, the appellant argued that she should have been awarded marks for features which were not included in her dependent claims but were in her independent claims as marks had already been deducted for her independent claims because these features were not present in the independent claims expected in the Examiners' Report. Otherwise, she would lose marks twice for a single mistake, receiving a double penalty, which was not in keeping with the standards for fair marking set in the case law. She also noted that the Examiners' Report - Paper A 2017 explicitly stated that "candidates who had a feature missing from the independent claim could gain 3 marks for having that feature in a dependent claim" and submitted that a similar marking practice should be carried out for Paper A 2021 to avoid double penalties. According to the appellant, this logic should also apply to features for which marks had been deducted because they were present in her independent claims but which could have received marks if they had been present in a dependent claim. The appellant was of the following view.

(a) The composition of the adhesion layer featured in her independent product claim should be awarded the 2 marks available under the dependent claims.

(d) The source of the adhesion layer in her independent method claim 9 should be awarded 1 mark under the dependent claims.

(b) The adhesion layer and plasma spraying in her independent method claim 12 should be awarded 1 mark each (i.e. 2 marks) under the dependent claims.

(e) The temperature of zirconium oxide should also be awarded 1 mark.

The board does not accept this argument. Even if it would not have been logical for the appellant to have included these features in dependent claims (and therefore be awarded the dependent claim marks) when these features were already present in an independent claim (where they had resulted in a deduction of marks), marks cannot be awarded for features not comprised in the dependent claims. Candidates should not simply draft independent claims and hope that features that should not be in those claims will be awarded some marks in the dependent claims section, even if they are not mentioned in their dependent claims. Thus, there is no double loss of the marks that could have been awarded for one and the same mistake in the case at hand. The situation here is therefore different from that of Paper A 2017, where 3 marks were awarded for features present in a dependent claim although this feature was missing from the independent claim.

25. Furthermore, the appellant submitted that her dependent claims 10 and 11 should be awarded 1 mark each, despite not being mentioned in the Examiners' Report since they represented reasonable dependent claims and should be awarded marks in light of decision D 7/05 (see point X(c)(ii) above).

Decision D 7/05 recognises the need to allow for the fair marking of answers which, although deviating from the marking scheme, were nonetheless reasonable and competently substantiated. The board agrees with the appellant that the "competently substantiated" criterion does not apply to the claim drafting in Paper A, where marks were awarded for the claims irrespective of any substantiation. Therefore, her dependent claims 10 and 11, which were not mentioned in the Examiners' Report, should have been awarded marks if they represented reasonable dependent claims. Again, the board cannot determine with reasonable certainty from the documents available whether the examiners took this into account.

Remittal

26. If an appeal is admissible and well-founded, the DBA is, as a rule, under Article 24(4), second sentence, REE only authorised to annul the contested decision and refer the matter back to the Examining Board for a new decision. Within the framework of the appeal procedure, the DBA only has the task of reviewing the decision of the Examination Board for legal errors. If the Examination Board has made a discretionary decision, the DBA can only review whether a discretionary error has occurred. In matters of discretion, however, the DBA cannot replace the contested decision with its own decision. Therefore, requests for the award of additional marks or a certain grade cannot, as a rule, be dealt with in the appeal procedure before the DBA unless there are very special exceptional circumstances in which important reasons speak against a remittal. This would be conceivable, for example, if there is no longer any margin of discretion for the grade or if the Examination Board's margin of discretion for reassessing a paper on remittal is so small that the binding effect of a decision of the DBA would not be observed if the Examining Board did not change the grade (see e.g. D 1/86, OJ EPO 1987, 489, point 2 of the Reasons; D 3/14; D 14/17 and D 20/17). However, such exceptional reasons do not exist in the current case. As set out above, the board is not in a position to determine, on the basis of the available documents in the case at hand and without interfering with the discretion reserved to the Examination Board, what awarding of marks appears appropriate for the appellant's independent method claims and dependent claims. Thus, although it is likely that the appellant would receive a score close to the required 45 or more marks instead of the 38 marks previously awarded if she were to be reassessed, taking into account the considerations set out in points 11, 15 to 18 and 23 to 25 above, this cannot be determined by the board with sufficient certainty and without an evaluative reassessment of the appellant's whole examination Paper A.

Request for reimbursement of the appeal fee

27. With respect to the appellant's request for reimbursement of the appeal fee, reference is made to Article 24(4), third sentence, REE, which reads:

"If the Board of Appeal allows the appeal, or the appeal is withdrawn, it shall order reimbursement in full or in part of the fee appeal if this is equitable in the circumstances of the case."

The appeal is successful, and the board considers it equitable to order the reimbursement of the appeal fee in full.