T 0603/04 25-09-2006

I. The examining division refused European patent application No. 96305828.4 (publication No. 0762078) by a (first) decision dated 24 February 2003. The decision was issued after the applicant had submitted an amended set of claims in reply to the summons to oral proceedings, which were cancelled after the applicant announced that he would not attend the oral proceedings and requested a decision according to the state of the file. The grounds given in the decision consisted of a reference to the previous communications issued by the examining division. These communications referred to documents

D1: "Simultaneous thickness and group index measurement using optical low-coherence reflectometry", W. V. Sorin et al., IEEE Photonics Technology Letters (US), Vol. 4 (1992), No. 1; pages 105 to 107 (XP000244587),

D2: US-A-4647205,

D3: US-A-5341205, and

D4: "White-light interferometric thickness gauge", P. A. Flournoy et al., Applied Optics, Vol. 11 (1972), No. 9; pages 1907 to 1915 (XP002027922),

and contained, among other objections, a series of objections of lack of novelty and of lack of inventive step (Articles 52(1), 54 and 56 EPC) raised by the examining division with regard to previous sets of claims.

The applicant lodged an appeal against this decision. In the statement of grounds of appeal the applicant alleged that the decision "was not based on the state of the file at that time but upon a former version of the application which the applicant had abandoned" and submitted that for this reason the decision "contravenes the provisions of Article 113(2) EPC, representing a substantial procedural violation in accordance with the provisions of Rule 67 EPC". The applicant also submitted arguments in support of the patentability of the set of claims then on file, and requested the grant of a patent and the reimbursement of the appeal fee.

In reply to the appeal filed by the applicant, the examining division ordered interlocutory revision under Article 109 EPC on the grounds that the decision was tainted by a procedural violation, reimbursed the appeal fee pursuant to Rule 67 EPC, and reopened the first-instance examination proceedings.

The examining division subsequently summoned the applicant to attend oral proceedings in order to discuss the substantive merits of the case. In reply to the summons, the applicant submitted that the examining division failed to grant a patent following rectification of the decision and that the examining division did not have the jurisdiction to refuse to allow the entirety of the appeal nor to rectify only a part of the decision; in addition, by reiterating objections forming the grounds of the decision following rectification of that decision, the examining division failed to apply correctly the provisions of Article 109(1) EPC. The applicant submitted that the course of action followed by the examining division amounted to a substantial procedural violation, and requested cancellation of the oral proceedings and the grant of a patent.

The examining division informed the applicant that the oral proceedings were maintained. In reply, the applicant addressed a letter to the Legal Division of the EPO contesting the jurisdiction of the examining division to continue with the proceedings, informed the examining division that he would not attend oral proceedings and requested that the proceedings be continued in writing or that a decision according to the state of the file be reached.

Oral proceedings were held before the examining division in the absence of the applicant. Subsequently, the examining division refused the application by a decision dated 16 December 2003 on the grounds that the invention defined in the then valid set of claims did not involve an inventive step (Articles 52(1) and 56 EPC) with regard to the disclosure of documents D1 and D2.

The present appeal is against this second decision.

II. In the notice of appeal the appellant (applicant) requests that the decision under appeal be set aside in its entirety and a patent be granted. The appellant also requests the reimbursement of the appeal fee under Rule 67 EPC on the grounds that the examining division committed a substantial procedural violation in issuing the decision under appeal and that the proceedings had not been conducted with impartiality by the examining division.

The appellant also requested oral proceedings in the event that the Board would consider disposing of the appeal other than by setting aside the decision under appeal.

III. In a communication pursuant to Article 110(2) EPC the Board expressed its preliminary view on the appellant's case.

As regards the allowability of the request for grant, the Board noted some deficiencies in the then valid application documents and commented on the issue of inventive step of the claimed invention.

As regards the request for reimbursement of the appeal fee, the Board commented as follows:

"a) According to the established case law, an appeal is considered "well founded" under Article 109 EPC when amendments overcoming the reasons for the refusal of the application have been filed (T 139/87 (OJ EPO 1990, 68), point 4, T 47/90 (OJ EPO 1991, 486), point 6, and T 219/93, points 2.3 and 4 to 4.3), but also when the decision under appeal is tainted by a procedural violation affecting the decision itself (T 677/97, points 2.3, 2.4, 2.7 and 3 to 5, T 16/96, points 2 and 3, T 1203/02, points 2 to 4, T 808/94, points 4 to 7, T 685/98 (OJ EPO 1999, 346), points 5.1 to 5.3 and 6, and T 861/03, points 5 and 5.1), and in particular when the decision is not based on the then valid requests, in contravention of Article 113(2) EPC (T 647/93 (OJ EPO 1995, 132), point 2.6).

b) It is also established case law that when a decision is tainted by a procedural violation, the examining division has no discretion, but must rectify the decision pursuant to Article 109 EPC. Not granting interlocutory revision in such circumstances may even amount to a further procedural violation (see T 677/97 (supra), point 3, T 16/96 (supra), point 2.3, T 808/94 (supra), point 5, T 685/98 (supra), point 6.2, T 647/93 (supra), point 2.6).

c) As alleged by the appellant and as acknowledged by the examining division, the first decision was tainted by a procedural violation under Article 113(2) EPC. The Board does not dispute this finding, it even has doubts as to whether the decision was sufficiently reasoned within the meaning of Rule 68(2) EPC and whether the examining division took duly into account pursuant to Article 113(1) EPC the appellant's arguments in the reply letter preceding the decision, both of which may have amounted to two further procedural violations (T 1356/05, points 6, 17 and 18). In such circumstances, the examining division had no choice but to rectify the decision pursuant to Article 109 EPC, see paragraph b) above.

d) The arguments of the appellant and the case law cited by the appellant (in particular T 142/96, T 139/87 (supra), T 219/93 (supra) and T 939/95) are not considered pertinent in the present case. Firstly, they concern interlocutory revision, not in the case in which the decision is tainted by a procedural violation, but under the circumstances of the first alternative mentioned in paragraph a) above (see points 5.3 and 5.5 of T 142/96, point 3 of T 139/87, point 2.3 of T 219/93 and point 3.2.1 of T 939/95). Secondly, contrary to the appellant's contentions, interlocutory revision does not presuppose or require that the application is subsequently granted (see T 139/87, point 4, J 32/95 (OJ EPO 1999, 733), point 2.2.4, T 219/93 (supra), point 4.4, and T 919/95, point 2). This is in particular the case when the decision is rectified only by reason of a procedural violation since a fundamental procedural right - in particular that enshrined in Article 113(2) EPC - must be safeguarded irrespective of the substantive merits of the case (T 685/98 (OJ EPO 1999, 346), point 6.2). The Board also notes that decision T 691/91 also cited by the appellant recommends a practice (see point 10 of the reasons) that precisely corresponds with the procedure followed by the examining division in the present case.

In view of the above, the Board is of the preliminary opinion that the examining division proceeded correctly when rectifying the first decision under Article 109 EPC, and that the division was then entitled to reopen proceedings and had the competence to continue with the examination of the substantive merits of the case and to issue the (second) decision. It was certainly regrettable for the appellant that a procedural violation on the part of the examining division led to rectification of the decision and to reopening of proceedings in which the examining division maintained in essence its previous view on the substantive merits of the case, but the latter situation could hardly have been avoided if the procedural rights of the appellant were to be preserved; in any case, the procedural costs of the appellant were appropriately compensated by the reimbursement of the appeal fee ordered by the examining division.

The appellant has also questioned the impartiality and fairness of the examining division. However, the observations and allegations made by the appellant in this regard only concern the evaluation of facts by the examining division and in the preliminary view of the Board they are not sufficient to cast doubt on the impartiality of the examining division.

It follows that no procedural violation can be identified as affecting the decision under appeal in the present appeal proceedings. In particular, none of the circumstances referred to by the appellant would allow the conclusion that the examining division acted ultra vires in issuing the decision presently under appeal. In these circumstances, in the event that the Board finds the present appeal allowable, there would be no reason for reimbursing the (second) appeal fee under Rule 67 EPC as requested by the appellant."

IV. In reply to the Board's communication and to a telephone consultation with the rapporteur, the appellant filed by letter dated 5 July 2006 amended description pages 1 to 3, 3B, 4, 5 and 8 and by letter dated 13 July 2006 an amended set of claims 1 to 8, which together with description pages 6 and 7 and drawing sheets 1/5 to 5/5 as originally filed and pages 3A and 9 as filed with the letter dated 24 August 2001 constitute the present request of the appellant for the grant of a patent.

In the letter dated 5 July 2006 the appellant stated that he did not wish to have oral proceedings on the question of the alleged substantial procedural violation and that, as long as the Board was prepared to allow the appeal on the basis of the proposed amendments, no oral proceedings were necessary nor were requested under such circumstances.

V. Independent claims 1 and 5 according to the present request of the appellant read as follows:

"1. Apparatus (10) for measuring the thickness of the layers of a multi-layer transparent film (15; 216) having top and bottom surfaces and one or more internal layer interfaces, comprising means for generating a probe light signal from a low coherence light source (12) and for applying said probe light signal to the film; a partial reflector (25; 26) positioned on one side of the film so as to reflect a portion of said probe light signal; means (14, 16; 210, 212) for collecting light reflected by said reflector and the film; and a receiver (18) that receives said collected reflected light and that determines from only said collected reflected light the respective difference in optical path between light reflected by said partial reflector and light reflected by said top surface, by said bottom surface and by each of said internal layer interfaces of the film, the reflectivity of said partial reflector being greater than that of said internal layer interface or interfaces."

"5. A method of measuring the thickness of the layers of a multi-layer transparent film (15; 216) having top and bottom surfaces and one or more internal layer interfaces, comprising the steps of generating a probe light signal from a low coherence light source (12) and applying said probe light signal to the film (15); providing a partial reflector (25; 26) to reflect a portion of said probe light signal; collecting light reflected by the film (15) and said reflector; and determining from only said collected reflected light the respective difference in optical path between light reflected by said partial reflector and light reflected by said top surface, by said bottom surface and by each of said internal layer interfaces of the film (15)."

The request of the appellant includes dependent claims 2 to 4 and 6 to 8 referring back to claims 1 and 5, respectively.

VI. The arguments of the appellant in support of its requests are essentially the following:

Substantive matters

The measurement of the distances with reference to the partial reflector on the surface of the film provides a much simpler and more reliable determination of the thickness of the film and of its individual layers. In document D1 there is no disclosure of there being provided a partial reflector positioned on one side of the film so as to reflect a portion of the probe light signal and which is used in the determination of the thickness of a layer. Neither document D2 nor a combination of its teaching with that of document D1 would result in the claimed invention, and in particular in the specific operation of the partial reflector in the measurement of the thickness of the layers as claimed.

Reimbursement of the appeal fee

The examining division decided to rectify its earlier decision in accordance with the provisions of Article 109(1) EPC. However, instead of following the procedure of Article 109(1) EPC, the examining division issued a summons to attend oral proceedings raising objections against the claims that had been on file at that time and which had been the subject of the first appeal, the objections following the objections previously raised during the original examination proceedings. Article 109(1) EPC does not provide a department of first instance with the opportunity to revise its earlier decision and to correct any errors in it, while maintaining a substantial part of the objections raised in that earlier decision. This approach would undermine the appeal procedure and the appellant's right to have a decision of a first-instance department reviewed by a Board of Appeal, and would also unduly prolong the examination proceedings. Thus, in decision T 142/96 it was held that the practice of reopening examination after rectification was contrary to the principle of procedural economy underlying Article 109 EPC and so constituted a substantial procedural violation. The cited decision concurred with the earlier decision T 691/91 in that Article 109 EPC provides only two legally viable alternatives, to maintain or to annul the decision under appeal, and in that Article 109 EPC does not provide a third alternative of maintaining a previous decision, even if on the basis of another ground of objection. The fact that the rectified decision was incorrect by having been based upon an incorrect text (Article 113(2) EPC) does not detract from the fact that the only route provided for in Article 109(1) EPC is for rectification of the entirety of the decision under appeal. Consequently, the examining division, which chose to carry out re-examination of the application on exactly the same basis as it had prior to and for its first decision, was not entitled to reopen the proceedings as Article 109(1) EPC did not provide such route, with the consequence that the examining division did not have the authority to continue examination of the application as it had already come to a decision on this case on the basis of the same facts and grounds (T 139/87, T 219/93 and T 939/95).

The re-examination proceedings were not conducted by the examining division with an entirely open mind. In particular, there are serious concerns about the impartiality of an examining division which chooses to re-examine a case and an earlier decision it has reached since the division will be wary of criticising itself and is therefore more than likely to be tempted to seek to reassert its earlier decision rather than looking at the case with an open mind. In addition, the examining division did not demonstrate total impartiality to the applicant's case in view of statements such as "the receiver D1 is clearly adapted to ...", "not only could" in relation to what a skilled person might have done, and "when considering the successful teachings of D2" made in the decision under appeal, and also in view of the attempts by the examining division to extend the disclosure of the prior art to try to make it fall within the scope of the claims.

For these reasons, the proceedings culminating in the decision under appeal were tainted by a procedural violation that justifies the reimbursement of the appeal fee pursuant to Rule 67 EPC.