T 0068/16 05-03-2018

1. Violation of the appellant's right to be heard

The appellant argued that the opposition division had violated its right to be heard on three counts:

1.1 Document D17 not taken into account

Having received the summons to the oral proceedings before the opposition division, the opponent filed written submissions comprising two new documents, D16 and D17. It argued that the subject-matter of claim 1 was not inventive over document D16 and "not inventive over D17, but at least not inventive over a combination of documents D17 and D16 or D17 and D1" (see page 15 of the submissions of 7 October 2015).

The opposition division admitted the new documents into the proceedings because it found them to be prima facie relevant (see point 3.1.3 of the decision under appeal).

The division discussed the inventive step of claim 1 with document D16 as closest prior art (point 3.2 of the decision) and then explained why the inventive step attacks based on D1+D14 and D10+D11 had to fail (see point 3.3). Document D17 is not mentioned in this context.

A reference of the opponent to Figure 4 of document D17 is, however, mentioned once when the inventive step involved in the subject-matter of claim 20 is discussed. However, the opposition division did not base its reasoning on this reference but referred to its discussion of claim 1, which is silent on document D17 (see point 3.4 of the decision).

Once the opposition division had found the subject-matter of claim 1 to be inventive with respect to the teaching of document D16, it should have discussed inventiveness in respect of document D17. This discussion appears not to have taken place.

According to the established jurisprudence of the boards of appeal, the mere presence of information somewhere in the file does not relieve a party of its duty to draw attention to it when necessary or to present arguments relying on such information at the appropriate time (see, for instance, R 2/08 of 11 September 2008, Reasons, points 8.5 and 9.10). It is not clear from the minutes of the oral proceedings, whether, after the discussion of inventive step over document D16, the opposition division has offered the appellant an opportunity to make further comments on inventive step, and if so, whether the appellant has drawn the attention of the opposition division to the fact that it had not yet taken account of its arguments based on document D17. The minutes do not provide details on what happened between 13:20 and 14:23. The statement of the minutes according to which "there were no further substantiated objections raised by the opponent against the subject-matter of claim 20" (sheet 5, fifth paragraph) appears to indicate that the opponent has had the opportunity to comment and, therefore, to draw the division's attention to document D17.

Considering all the above, the board has reached the conclusion that it has not been established that the failure to take into account an inventive step argument based on document D17 constitutes a substantial procedural violation.

1.2 No reasoning for the alleged effect of thermoset amount

Claim 1 requires the coating of the first gasket layer to contain thermosets to less than 5 % (see point III.; this feature has been referred to as feature M1.8). The description of the opposed patent mentions thermosets only in its paragraph [0019].

In the summons to oral proceedings the opposition division stated that "[i]t appears clearly from paragraphs [0011] to [0019] that the flowing properties of the coating is [sic] influenced by the proportion of thermoset" (sheet 4, second paragraph).

This statement was challenged by the appellant in point II of its written submission dated 7 October 2015. The appellant argued that there was no technical effect over the whole claimed range.

In its discussion of sufficiency of disclosure (see point 2.2 of the grounds for the decision, fourth paragraph), the opposition division repeated the statement of the summons and explained that the skilled person would be able to determine the appropriate thermoset, and the proportion of thermoset, by trial and error, thus arriving at a material fulfilling the requirements of feature M1.8.

In the discussion of inventive step (see point 3.2.3 of the grounds for the decision), the opposition division found that document D16 did not disclose feature M1.8 and then continued:

"However it is assumed that the presence of thermoset has an effect on the flowability of the coating and the opposition division follows the argumentation of PR and considers that the skilled person would have no incentive to add thermoset to the coating disclosed in D16.

Thus claim 1 is inventive (art. 56 EPC) in view of D16."

By reasoning in this way, the opposition division appears not to have taken account of the assertion of the appellant that the "assumed" technical effect was not obtained over the whole claimed range and in particular at low amounts of thermoset, although the technical effect of the distinguishing features clearly is of crucial importance when inventive step is to be assessed.

Incidentally, the board wishes to point out that a finding of inventive step (or lack thereof) cannot be based on a mere assumption.

In view of the wording of the decision ("... it is assumed ..."), the board is unable to endorse the respondent's argument that the opposition did not base its decision on an assumed technical effect.

Having failed to consider an argument that might have led to a different conclusion, the opposition division has violated the appellant's right to be heard.

1.3 Problem-solution approach not applied

From the passage in point 3.2.3 of the grounds for the decision quoted above (see point 1.2) it is clear that the opposition division has not used the problem-solution approach.

This fact in itself does not constitute a substantial procedural violation. The problem-solution approach is not enshrined in the EPC and, as acknowledged by the appellant, its use is not mandatory.

The board agrees that, as a rule, a division that does not use the problem-solution approach should indicate its reasons for doing so, if only to dispel the impression that it acts arbitrarily. The appellant has argued that this is a requirement established by the jurisprudence. However, although an opposition division should indeed keep in line with the established jurisprudence, it should be noted that the jurisprudence of the boards as such is not formally binding on the departments of first instance. Only the department whose decision was appealed is bound by the ratio decidendi of the board (Article 111(2) EPC). The Guidelines for Examination, which are binding on the opposition division, only state that any "deviation from this approach should be exceptional" and do not require a justification (see point G-VII,5). Consequently, a division that, in an exceptional situation, chooses not to use the problem-solution approach and not to explain its choice does not commit a substantial procedural violation.

The statement of the opposition division in respect of inventive step is unsatisfactory on several counts, in particular because it is based on an unreasoned assumption and on the finding that there was no incentive to add thermosets, which is irrelevant if thermosets are an obvious alternative to the skilled person. Using the problem-solution approach might have prevented the opposition division from presenting a defective reasoning. However, the board is unable to see how the fact that the reasoning of the opposition is perfectible and its conclusion might be wrong could constitute a further violation of the appellant's right to be heard going beyond the denial of the right to be heard discussed under point 1.2.

2. Remittal to the department of first instance

According to the established jurisprudence of the boards of appeal, a violation of the right to be heard may constitute a fundamental deficiency within the meaning of Article 11 of the Rules of Procedure of the Boards of Appeal (RPBA), which stipulates that "a Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise" (see "Case Law of the Boards of Appeal of the EPO", 8th edition, 2016, III.B.1).

The deficiency established under point 1.2 above is fundamental insofar as the decision of the opposition division might have been different had it not occurred. Therefore, a remittal appears to be appropriate. The board is not aware of any special reasons for not remitting the case. Therefore, the board intends to set aside the decision and remit the case to the opposition division for further prosecution.

The board interprets the statement of the respondent in the second paragraph of its response to the communication of the board ("Grundsätzlich erklärt sich die Patentinhaberin ... mit der Zurückverweisung der Sache ohne vorherige mündliche Verhandlung an die Einspruchsabteilung ... einverstanden.") as a withdrawal of its request for oral proceedings before the board. Therefore, no oral proceedings need to be held and the decision can be taken in writing.

When resuming its examination of the case, the opposition division should:

- take due account of the arguments of the appellant based on document D17;

- apply the problem-solution approach or at least explain why the approach is not used;

- discuss the appellant's argument that the technical effect is not obtained over the whole claimed range;

- consider the respondent's arguments presented in its letter dated 21 June 2017;

- note the respondent's request for oral proceedings before the opposition division (cf. the respondent's letter of 21 June 2017).

3. Reimbursement of the appeal fee

According to the established jurisprudence of the boards of appeal, a violation of the right to be heard may also constitute a substantial procedural violation justifying a reimbursement of the appeal fee (see "Case Law of the Boards of Appeal of the EPO", 8th edition, 2016, III.B.1).

In the present case, the appellant's right to be heard was violated (see point 1.2 above).

Therefore, the board grants the appellant's request for a reimbursement of the appeal fee in application of Rule 103(1)(a) EPC.