T 0970/10 (Call routing/AT&T) 16-05-2012

1. Inventive step

The examining division based its reasoning on the disclosure of, inter alia, document D4. However, this document is dated September 2006 which is after the filing date of the present application (26 April 2006). Document D4 is consequently not prior art within the meaning of Article 54(2) EPC and hence not relevant to inventive step (Article 56 EPC); nor is there any suggestion that D4 discloses subject-matter well-known to the skilled person at the filing date of the application. The objection of lack of inventive step was therefore, prima facie, ill-founded. As this was the ground leading to refusal of the application, the decision under appeal has to be set aside.

2. Articles 123(2) and 84 EPC

In the impugned decision, these objections are given as "Remarks" rather than as reasons for refusing the application. The examining division took the view that the feature of claims 1 and 6 "[means for] re-routing said call to said dual mode wireless device via a preferred network during said call, wherein said preferred network is an encrypted packet-based network" extended beyond the content of the application as filed and was not clear. However, the board observes that claims 1 and 6 of the appellant's new main request do not include this feature. These objections therefore apparently no longer apply.

3. Remittal

The amended claims of each request have to be examined for compliance with the EPC, in particular Articles 123(2), 84 and 52(1) EPC.

With respect to inventive step (cf. Articles 52(1) and 56 EPC), the claims of each request have to be re-examined without taking into account the disclosure of document D4, or indeed of document D5, a further post-published document mentioned in the impugned decision (published 15 June 2006). As this is now a new situation ("fresh case"), the board considers that this re-examination should be undertaken by the examining division in order to accord the applicant two instances of jurisdiction.

With respect to Articles 123(2) and 84 EPC, the offending subject-matter apparently has been removed from the independent claims of the main request, and replaced by a new amendment. This new matter has to be examined for compliance with Articles 123(2) and 84 EPC for the first time, ie also relates to a "fresh case".

In this light, the board has no reason to continue examination of the case itself and deems it appropriate to remit the case to the examining division for further prosecution on the basis of the new main request and the first to fifth auxiliary requests (Article 111(1) EPC).

4. Reimbursement of the appeal fee

4.1 An incorrect assessment of a document with regard to its date of availability to the public relates to a factual error in respect of the substantive requirements to be met by the "state of the art" in accordance with Article 54(2) EPC (which is included in Part II of the EPC, "Substantive Patent Law"), and not to an error in respect of procedural law. Such an error therefore does not amount to a substantial procedural violation.

4.2 The appellant argued that the citing of documents which are not part of the state of the art under Article 54(2) EPC was a procedural violation, as it was contrary to the correct procedure for performing examination under Article 94 EPC, or for drawing up a search report under Rule 61 EPC.

4.3 However the board notes that the procedure followed by the examining division apparently fully complied with Article 94 EPC, or Article 96 EPC 1973, in that the examining division examined whether the European patent application met the requirements of the EPC, determined that the application or the invention to which it relates did not meet the requirements of the EPC, and invited the applicant to file his observations. One of the purposes of the procedure set out in Article 94 EPC is in fact to provide the applicant with the opportunity to point out exactly the kind of substantive error committed by the examining division.

4.4 With regard to Rule 61 EPC (cf. Rule 44 EPC 1973), this concerns the content of the European search report. If the search report putatively contained an error of fact regarding a document's date of availability to the public (although in the present case the content of the search report is not relevant as documents D4 and D5 were not mentioned in the European search report) this would also be a substantive rather than a procedural matter.

4.5 In accordance with Rule 103(1)(a) EPC, "the appeal fee shall be reimbursed ... if such reimbursement is equitable by reason of a substantial procedural violation". As there was no substantial procedural violation, this request is refused.

5. Oral proceedings

There is no need to hold oral proceedings before the board as these were only requested in the event of impending refusal of the application (ie, implicitly, dismissal of the appeal).