T 2193/09 13-07-2010

1. Admissibility of the appeal (Article 108 EPC and Rule 101(1) EPC)

1.1 Pursuant to Article 108, third sentence, EPC, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations within four months of notification of the decision. An appeal which does not comply with this requirement shall be rejected as inadmissible (see Rule 101(1) EPC).

1.2 According to established case law the statement setting out the grounds of appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases his arguments, without first having to make investigations of its own (see Case Law of the Boards of Appeal, 5th edition 2006, VII.D.7.5.1).

1.3 In the present case, the applicant had requested the grant of a patent on the basis of a set of claims to which the examining division did not give its consent under Rule 137(3) EPC. The application was refused on the ground that the examining division, pursuant to Article 113(2) EPC 1973, was bound to decide on a text submitted to it. Thus the decision under appeal was based on the ground that there was no admitted set of claims. Implicitly this meant that a patent could not be granted (Article 97(1) EPC in conjunction with Article 78(1)(c) EPC 1973), and had to result in the refusal of the application (Article 97(2) EPC).

1.3.1 In this context the relevant legal question is whether the statement of grounds of appeal sets out why, according to the appellant, the examining division was not correct in basing its decision on the ground that there was no set of claims admitted under Rule 137(3) EPC.

1.3.2 The text of Rule 137(3) EPC which is applicable to the present case reads as follows: "After receipt of the first communication from the Examining Division, the applicant may, of his own volition, amend once the description, claims and drawings, provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the Examining Division" (emphasis by the board).

1.4 The statement of grounds of appeal in the present case does not give any reasons why the decision is alleged to be incorrect. The lack of claims underlying the decision under appeal is not discussed in the statement of grounds of appeal. The appellant does not contest that there was no admitted set of claims and that the examining division was entitled to refuse the application as a consequence. Nor does the appellant contest that the examining division was entitled to exercise its discretion under Rule 137(3) EPC or that it had exercised this discretion in accordance with the right principles. Instead the statement of grounds of appeal gives arguments as to why the subject-matter of the (amended) main request filed with the statement of grounds of appeal is both new and inventive in view of the references cited in the decision under appeal and states that the appellant's arguments as to novelty and inventive step "have not been duly considered by the contested decision". Regarding the auxiliary request, the appellant merely submitted that these claims specified the amendment that had been required by the examining division, but did not provide arguments as to why the re-filing of the claims (with an additional feature) overcame the objection of a lack of claims admitted under Rule 137(3) EPC, or why the claims should be admissible on appeal. Thus the submissions in the statement of grounds of appeal do not set out the relevant reasons why the decision of the examining division not to give its consent to the amendments under Rule 137(3) EPC and to refuse the application for lack of admissible claims is alleged to be incorrect or not to have been taken in accordance with the right principles.

1.5 It is established case law that, in exceptional circumstances, claims filed with the statement of grounds of appeal may suffice for the appeal to be admissible even if the statement of grounds of appeal does not explicitly set out why the decision under appeal is alleged to be incorrect. This may, for instance, be the case if from the decision under appeal and the statement of grounds of appeal it is clear that the claims of an auxiliary request filed with the statement of grounds of appeal overcome all the objections raised in the decision under appeal (see Case Law of the Boards of Appeal, 5th edition 2006, VII.D.7.5.2(d)).

1.5.1 In the present case, however, there are no such exceptional circumstances as far as the main request is concerned. The wording of the amended claims according to the main request filed with the statement of grounds of appeal does not enable the board to immediately understand why the examining division should have exercised its discretion under Rule 137(3) EPC in a different manner. In particular, the additional feature is not concerned with re-introducing a feature ("a 7 pole, 2 zero, equiripple filter") the removal of which had led the examining division to refuse its consent.

1.5.2 The statement of grounds of appeal, in conjunction with the wording of the amended claims according to the auxiliary request filed with the statement of grounds of appeal, makes clear that the claims of the auxiliary request are an attempt to re-introduce the feature the removal of which had been indicated in the decision under appeal as a reason for not giving consent to the amendment. However, the appellant did not set out legal or factual reasons why the filing of these claims with the statement of grounds of appeal removed the deficiency of a lack of a set of admitted claims. Also, the board fails to see how the mere filing of these claims in separate appeal proceedings addressed the issue of the examining division's not having given consent to different claims in examination proceedings. Furthermore, the appellant did not set out reasons why the examining division should have rectified its decision (Article 109(1) EPC 1973) or why the board should set it aside. Moreover, the appellant did not argue, and there is no indication in the file, that the claims of the auxiliary request overcome objections under Article 84 EPC 1973 which had been raised by the examining division (see point II above).

2. The admissibility of the appeal is a prerequisite for the examination and decision as to the allowability of the appeal (see Articles 110 EPC and 111 EPC 1973). If the board finds that that the appeal is inadmissible, examination and decision as to its allowability are not possible. Hence, in section 1 of this decision concerning the admissibility of the appeal, the board has considered the appellant's arguments submitted after the time limit for filing the statement of grounds of appeal (see Article 108 EPC) only to the extent that they may be relevant for the assessment of whether the statement of grounds of appeal suffices to render the present appeal admissible. In the present case this means that the board has examined whether the arguments presented in the letter dated 14 June 2010 and in the oral proceedings have an impact on the board's understanding of the statement of grounds of appeal or the decision under appeal.

2.1 In the letter dated 14 June 2010 the appellant submitted the argument that, at least implicitly, the reason for not admitting the set of claims submitted to the examining division was lack of novelty or lack of inventive step of the subject-matter claimed; but the appellant did not indicate any particular statement in the decision under appeal supporting that argument. The decision under appeal, however, discusses inventive step only in a hypothetical context of non-admitted claims in a paragraph headed "The following is not part of this decision".

2.2 The appellant's argument in the letter dated 14 June 2010 that, under Article 125 EPC, it should be sufficient to explain the facts of the case since the board could be assumed to know the legal framework is not convincing, as the facts of the present case which led to the refusal of the application were not the facts given in the statement of grounds of appeal (see in particular points 1.3 and 1.4 above).