T 1182/05 19-02-2008

1. The appeal is admissible.

2. The first question to be decided in this appeal is whether the first instance decision was sufficiently reasoned. Therefore the board has to establish whether the impugned decision complies with the relevant provisions of EPC 1973, in force at the date of said decision.

Compliance with Rule 68(2) EPC 1973

3. According to Rule 68(2) EPC 1973 the decisions of the European Patent Office open to appeal shall be reasoned. The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision taken by a first instance department (see inter alia T 34/90 (OJ EPO 1992, 454) and G 9/91 (OJ EPO 1993, 408)). A reasoned decision issued by the first instance department meeting the requirements of Rule 68(2) EPC 1973 is accordingly a prerequisite for the examination of the appeal.

4. In the present case the Examining Division, in response to the appellant's request "to render a decision on the record", refused the application using EPO form 2061 for a so-called "decision on the state of the file". The Guidelines for Examination in the EPO (June 2005) E-X 4.4, state: "Applicants may request a decision 'on the file as it stands' or 'according to the state of the file', e.g. when all arguments have been sufficiently put forward in the proceedings and the applicant is interested in a speedy appealable decision. In such a case, the decision will be of a standard form, simply referring to the previous communication(s) for its grounds and to the request of the applicant for such a decision."

This standard form is entirely appropriate in the special case where the Examining Division fully expressed and reasoned its objections to the current application text in the preceding communication(s) taking into account the applicant's submissions, and the applicant has not presented further counter-arguments in the reply in which it requests a decision according to the state of the file.

A number of decisions of the EPO Boards of Appeal have

pointed out however that a decision form which refers

to several communications, leaving it to the board of

appeal and the appellant to speculate as to which of the reasons given by the Examining Division in its communications might be essential to the decision to refuse the application does not meet the 'reasoned' requirement of Rule 68(2) EPC 1973 (see T 861/02, T 897/03, T 276/04 and T 1309/05).

5. In its letter of 14 October 2004, the appellant limited the claimed subject-matter by further adding the feature of the "capacity of the upper bag segment being 20 to 40 liters" and explained why the subject-matter was inventive over a combination of D1 with D6 or D7. The appellant explained in particular that D1 did not disclose any capacity for the upper and lower bag segments and that D6 and D7 although disclosing capacities, did so only for airbags having one bag segment, so that these documents could not render obvious the particular capacities as claimed which allow to reliably inflate both segments at a high speed even with a low-output inflator.

6. In the annex to the summons the Examining Division raised for the first time an objection of lack of clarity in respect of the terms "capacity of lower bag segment" and "capacity of upper bag segment". These terms were considered to be unusual parameters in the sense of Guidelines C-III, 4.7a since no comparison with the prior art could be made. These parameters thus would disguise a lack of novelty as per Guidelines C-IV 7.5. However no further explanation was given as to why these specific terms would fall under the concept mentioned in the Guidelines. This was probably meant to be discussed at the oral proceedings. The same is true for the conditional objection of lack of inventive step since it was simply stated that the capacities given would be common values.

7. With its reply of 31 January 2005 the appellant filed amended pages of the description as replacement pages for description pages 4 to 6 then on file. The appellant explained why in its opinion the subject-matter of claim 1 on file was novel and inventive and why the clarity objection raised in the annex to the summons was not justified. In particular the appellant explained that the capacities could be clearly and reliably determined by objective procedures which are usual in the art and that the skilled man would not unavoidably arrive at these values when carrying out the invention of D1.

8. The decision of the Examining Division however does not contain any specific reasons, but merely refers to the communications (including the annex to the summons) which had been issued before the appellant's reply of 31 January 2005. By not commenting on the amended pages of the description and/or on any of the counterarguments brought forward by the appellant in its last reply it is left to the board and to the appellant to speculate as to which were the decisive reasons for the refusal. As a matter of fact several options could be possible: it could well be that the Examining Division no longer upheld the lack of clarity objection but considered the lack of inventive step detrimental or that clarity and novelty of the subject-matter of claim 1 was at stake, or even that only the amended description was not considered allowable.

9. This is at odds with the established jurisprudence of the boards of appeal that for the requirements of Rule 68(2) EPC 1973 to be fulfilled the decision must include, in logical sequence, the arguments justifying the order. The grounds upon which the decision is based and all decisive considerations in respect of the factual and legal aspects of the case must be discussed in detail in the decision (see T 278/00 (OJ EPO 2003, 546)). The applicant's request "to render a decision on the record" is not to be construed as a waiver of the right to a fully reasoned first instance decision, even in the light of the suggested procedure in the Guidelines (see T 1309/05, T 583/04). The applicant even expressly requested that "the subject-matter of the present claims be re-examined taking into account the following explanations". In view of this and of the fact that amended pages of the description were filed the board is of the opinion that a decision of a standard form, simply referring to the previous communications for its grounds and to the request of the applicant for such a decision was not appropriate in the present case. Instead, in its decision, the Examining Division should have explained the very reason or reasons for its decision and why the counterarguments of the applicant were not considered convincing. By failing to do so the Examining Division did not issue a reasoned decision within the meaning of Rule 68(2) EPC 1973 and committed, therefore, a substantial procedural violation.

Right to be heard (Article 113(1) EPC 1973)

In the communication annexed to the summons to the oral proceedings, the Examining Division raised a clarity objection. In the absence of any indication to the contrary, the board and the party must assume that this was part of the reasons for the refusal.

10. Article 113(1) EPC 1973 requires that a decision be based on grounds on which a party has had an opportunity to present its comments. The right to be heard also guarantees that grounds put forward are taken into consideration (see T 94/84 (OJ EPO 1986, 337)). In the present case the Examining Division neglected arguments which have been stated in a clear fashion. This has the same effect as if the applicant had not been allowed to put them forward at all. The impugned decision does not deal with the counterarguments of the appellant concerning the objection of lack of clarity. There is also no reasoning as to why the Examining Division cannot accept the arguments of the appellant submitted in its last reply in favour of inventive step.

11. In addition it is clear that the statement of the Examining Division in the appealed decision that no comments or amendments had been filed by the appellant in reply to the last communication is not correct and clearly indicates that the Examining Division considered neither the amended pages of the description nor the appellant's arguments filed with its last reply, in particular in relation to the objection of lack of clarity made for the first time in the preceding Examining Division's communication.

The absence of any indication of the consideration of the amended pages of the description or the appellant's arguments put forward in its last reply constitutes a violation of Article 113(1) EPC 1973.

Remittal to the first instance

12. Pursuant to Article 11 of the Rules of Procedure of the Boards of Appeal in the version which entered into force on 13 December 2007 (OJ EPO 2007, 536), when fundamental deficiencies are apparent in the first instance proceedings, the case is remitted to the first instance for further prosecution.

In the present case the first instance proceedings infringed Article 113(1) EPC 1973 and Rule 68(2) EPC 1973, and no special reasons being present in the file or having been mentioned by the appellant for doing otherwise, the remittal is justified.

Reimbursement of the appeal fee (Rule 67 EPC 1973)

13. The appeal is allowed insofar as the decision under appeal is set aside. Since the decision of the first instance clearly contravened Rule 68(2) EPC 1973 and Article 113(1) EPC 1973, and the appellant had to appeal in order to obtain a fully reasoned decision considering its amended description and its counterarguments it is equitable to reimburse the appeal fee pursuant to Rule 67 EPC 1973.