T 1053/08 20-02-2009
System and method for selecting physiological data from a plurality of physiological data sources
Decision under appeal unreasoned
Remittal to the first instance
Reimbursement of the appeal fee (procedural violation)
I. The appeal is directed against the decision of the examining division, notified on 25 January 2008, to refuse the European patent application No 02 254 543.8, relating to a "System and method for selecting physiological data from a plurality of physiological data sources".
II. The contested decision reads as follows:
"In the communication dated 10.09.2007 the applicant was informed that the application does not meet the requirements of the European Patent Convention.
The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 15.01.2008.
The European patent application is therefore refused on the basis of Article 97(2) EPC."
III. The appellant lodged an appeal against the decision on 20 March 2008 and paid the prescribed fee on the same day. A statement setting out the grounds of appeal was filed on 28 May 2008.
IV. The appellant requests that the contested decision be set aside and that a patent be granted on the basis of the claims currently on file or on the basis of amended claims to be submitted subsequently.
He also requests oral proceedings as an auxiliary request.
V. In its grounds of appeal the appellant argued on the merits of the invention regarding novelty and inventive step over D1 (US-A-4860759).
1. The appeal meets the requirements of Articles 106 to 108 and Rule 99 EPC and is therefore admissible.
2. The purpose of an appeal procedure is mainly to give a party adversely affected by a decision of the first instance the possibility of challenging this decision on its merits. In order for a party to be able to examine whether a decision is justified or not, decisions open to appeal shall be reasoned. This principle, stated in Rule 111(2) EPC, is of major importance for ensuring the fairness of the procedure.
Pursuant to the established jurisprudence of the Boards of Appeal, a reasoned decision must contain the grounds upon which the decision is based and all decisive considerations in respect of the legal and factual aspects of the case in file. (see T 278/00, OJ 2003 546, T 897/03, T 1356/05).
3. In the present case, the contested decision neither specifies the grounds upon which it is based nor contains any facts or arguments that justify the refusal of the patent application. The appealed decision contains solely a reference to reasons given in a previous communication issued in the course of the examination.
4. More specifically, the examining division based its decision on the fact that the appellant did not filed any comments in reply to the latest communication of 10 September 2007. This is not correct. The appellant actually replied by letter dated 17 December 2007 to the first instance's communication dated 10 September 2007, whereby a comparison between the features of claim 1 and the disclosure of D1 was presented and a new set of claims was filed as an auxiliary request.
5. Further, by letter dated 15 January 2008, the appellant withdrew its request for oral proceedings before the first instance, cancelled its auxiliary request and requested a decision according to the state of the file. This request cannot be interpreted as a waiver of the right to a reasoned decision from the examining division.
6. By ignoring the appellant's response of 17 December 2007 and in the absence in the contested decision of any reasoning, a substantial procedural violation has been committed which justifies reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC.
7. The decision under appeal must therefore be set aside due to the lack of reasoning required by Rule 111(2) EPC and the case remitted to the first instance for further prosecution.
8. Since the decision must be set aside, there is no need to hold oral proceedings before the Board.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance for further prosecution.
3. The appeal fee is to be reimbursed.