R 0019/09 (Fundamental violation of Article 113/UNAXIS) 24-03-2010

I. The petition for review concerns decision T 1874/06 of Board of Appeal 3.2.07 which dismissed the petitioner's appeal against the decision of the opposition division to revoke European patent No. 1 021 584. The petition of the appellant is based on the ground of Article 112a(2)(c) EPC, i.e. an alleged fundamental violation of Article 113 EPC.

II. The revoked patent of the appellant/petitioner relates to a tool with a tool body and a wear resistant layer system. The structure of the claimed layer system is defined inter alia by a parameter QI. Claim 1 of all requests considered by the Board differed from a prior art document E2A by the feature that the value of parameter QI was at least 5. According to the patent in suit "the QI values as specified lead to an astonishingly high improvement of wear resistance, and thus of lifetime of a tool, if such a tool is of the kind as specified" (page 4, lines 18 and 19 of the patent specification).

III. The opposition division had revoked the patent for lack of inventive step mainly based on the finding that the proprietor had not been able to show any special technical effect for the selection of a QI value over 5. With the statement of the grounds of appeal the appellant/petitioner submitted a "sketch A" with "bottom" and "top" characteristics, respectively representing the cutting performance vs. the QI values for layer systems as disclosed in table 1 and table 2 of the patent. In the appellant's submission "sketch A" showed that at QI values of at least 5 there was an unexpected increase of cutting performance. The claimed tool was therefore not obvious in view of E2A.

IV. The written decision of the Board of Appeal deals with the issue of inventive step based on the problem-solution approach. In point 5.5 the Board found that the skilled person, starting from the general teaching of document E2A and the examples disclosed in table 1 of this document and aiming to improve the wear resistance, "would inevitably arrive at the subject-matter of claim 1 of auxiliary request II without any inventive skill". Then, in point 5.5.1 the Board turned to the appellant's submissions and found inter alia that, based on "sketch A", no effect could be acknowledged at all, since the appellant had compared cutting performance values belonging to two different layer systems as represented by the two characteristics in "sketch A". "Consequently, it has not been shown that this effect has its origin in the distinguishing feature" as required by the established jurisprudence of the Boards of Appeal. At the end of point 5.5.1 the Board added: "Furthermore, as evident from examples 1-7 a higher QI value does not imply an increased cutting distance" and, in support of this statement, made its own comparisons of cutting performance values and QI values based on embodiments of table 1 of the patent.

V. In its petition for review the appellant/petitioner submits that the Board 3.2.07 based its written decision on a wrong understanding of the appellant's submissions in support of an unexpected effect, in particular of "sketch A", which had never been discussed. The Board was in error in assuming that the appellant had tried to derive an unexpected effect from a comparison between the two characteristics in "sketch A", i.e. the "top" characteristic belonging to the layer system of table 2 and the "bottom" characteristic belonging to the different layer system of table 1 of the patent. The appellant had never made such an obviously wrong comparison and the Board had never addressed this issue before. Thus, the Board had refused to acknowledge the unexpected effect to be shown by "sketch A" based on a ground on which the appellant never had an opportunity to present its comments.

VI. In a communication annexed to the summons to oral proceedings the Enlarged Board of Appeal indicated that the so-called "wrong comparison" argument indeed appeared not to have been raised by the Board of Appeal during the appeal proceedings. It could not be excluded that the petitioner's right to be heard was violated in this respect. It had therefore to be considered whether such a procedural defect amounted to a fundamental violation of Article 113 EPC. According to the jurisprudence of the Enlarged Board of Appeal this would only be the case if a causal link existed between the procedural defect and the final decision. However, there were doubts whether the "wrong comparison" argument indeed was the only reason for which the Board did not acknowledge an unexpected effect. In this connection it was pointed out that the decision under review also contained an analysis of the examples 1 to 7 of table 1 of the patent as represented by the bottom characteristic of "sketch A" and that the Board had concluded from this analysis that a higher QI value did not imply an increased cutting distance. Moreover, independently of the alleged unexpected effect, it appeared that the main ground for the dismissal of the appeal was based on the classical problem-solution approach starting from document E2A as closest prior art.

VII. At the oral proceedings before the Enlarged Board of Appeal, which took place on 24 March 2010, the petitioner disagreed with the communication of the Enlarged Board of Appeal in respect of lack of a causal link. In the petitioner's view there clearly existed a causal link between the denial of the petitioner's right to be heard on the "wrong comparison" argument and the Board's decision to dismiss the appeal.

(a) In this connection the first question to be answered was whether the Board had refused to acknowledge the unexpected effect solely based on the "wrong comparison" argument developed in connection with "sketch A". In the petitioner's submission this was indeed the case. The fact that the Board, in a passage following the "wrong comparison" argument, further analysed the cutting distances and the QI values of embodiments of the patent, had nothing to do with the previous interpretation of "sketch A". Had this interpretation been done correctly, as proposed by the petitioner, it would have led to the acknowledgement of an unexpected effect. On the other hand, the purpose of the additional analysis by the Board of the examples 1 to 7 was simply not clear. Even if the bottom characteristic of "sketch A" had partly been derived from table 1 of the patent, it could not simply be equated with the examples 1 to 7 of this table. In any case the Board did not, in this connection, refer to "sketch A". It therefore could not be concluded that the analysis by the Board of examples 1 to 7 was an additional reason for not acknowledging an unexpected effect.

(b) The second question to be considered was whether the submitted unexpected effect, had it been acknowledged by the Board, would have influenced the problem-solution approach on which the dismissal of the appeal was based. This question only needed to be answered if the Enlarged Board of Appeal agreed with the petitioner's arguments referred to in paragraph (a) above. In this case it had to be considered that the motivation of the skilled person to depart from the closest prior art, i.e. document E2A, was an important aspect of the could-would consideration within the framework of the problem-solution approach. In this connection "sketch A" was decisive because it showed that there was no motivation for the skilled person, starting from QI values in the range of 1.5 to 3 known from document E2A, to further raise the QI value as the unexpected increase of the cutting performance would not have occurred until a QI value of 5 was reached. Therefore, a correct interpretation of "sketch A" would have influenced the problem-solution approach and led to a different decision.

VIII. The petitioner requested that the decision of the Board of Appeal be set aside and proceedings before the Board of Appeal be re-opened.