T 0160/92 (Printing plate) 27-01-1994

1. The appeal is admissible.

2. Citability of the abstract

2.1 The appellant takes issue with the practice of the search divisions of the European Patent Office of citing published abstracts of articles if the original articles are not available to them, and - as in the present case - of published English abstracts of Japanese patent documents (in both cases citing the original document only for information after an ampersand sign ("&"), eg in order to avoid any possible error in the identification of the abstract, and not sending copies thereof to the applicant). He moreover objects to the fact that the examining division, in the present case, also based its judgment of inventive step of the claimed subject-matter on such an abstract of a Japanese patent document (D1) without introducing the original document and citing specific passages thereof.

2.2 Rule 44(1) EPC prescribes that the European search report shall mention those documents, available to the European Patent Office at the time of drawing up the report, which may be taken into consideration in deciding whether the invention to which the European patent application relates is new and involves an inventive step. Regarding the examination procedure, Rules 51(3) and 68(2) (first sentence) EPC require that the communications pursuant to Article 96, paragraph 2, and the decisions open to appeal shall be reasoned. Such requirement means that, if such objections are made, the cited documents must be suitable to provide reasons for considering the invention as forming part of the state of the art (Art. 54(1) EPC) or as being obvious to a person skilled in the art having regard to the state of the art (Art. 56 EPC). The state of the art shall be held to comprise everything made available to the public - among others by means of a written description - before the date of filing of the European patent application (Art. 54(2) EPC).

2.3 In the present case, the cited abstract (D1) is actually such a prepublished written description, so that any doubts concerning its validity as prior art can only relate to what has been made available to the public. Regarding the question whether citing this abstract (without the original document from which it is taken) is permissible or constitutes a procedural violation, it has to be considered whether or not a statement based on such an abstract alone can be regarded as reasoned in the sense of Rules 51(3) and 68(2) EPC.

In the judgment of the board, the abstract D1 provides a certain amount of technical information and there is no indication for the skilled reader that this information is invalid, which fact renders D1 suitable as a basis for reasons concerning novelty or inventive step. The line of reasoning of the examining division based on D1 is complete and understandable.

Therefore, as judged from the documents on file, the statements and the decision of the examining division, based on the above-mentioned abstract, were reasoned in the sense of Rules 51(3) and 68(2) EPC.

2.4 It lies in the nature of citing and reasoning that the state of the art as a whole cannot be cited, and that search divisions and examining divisions must select, in exercise of their judgment, from those documents which they have available and the content of which they can understand, that portion of the state of the art which appears relevant to them. This can never fully exclude the possibility that there may somewhere exist - and this is not limited to the relationship between abstracts and their original documents alone - more relevant descriptions or even descriptions which would show relevancy of the cited documents in a different light.

2.5 With respect to this possibility, the question of citability of an abstract must be well distinguished from the different question which of the teachings of an abstract and an original document have to be considered by the examining or opposition division if both documents are available to them and contain conflicting teachings. Board of appeal decision T 77/87 (OJ EPO 1990, 280), on which the appellant entirely relies for opposing the citability of abstracts, relates to this latter question.

Likewise, the "notification" also mentioned by the appellant (Supplement to OJ EPO 1990, 24), is actually a short summary of the above decision T 77/87, and the sentence "the disclosure of this abstract document should be interpreted by reference to its original for the purpose of ascertaining the technical reality of what has been disclosed and should not be regarded as an independent document in isolation", referred to by the appellant, must be understood in the context of the case underlying that decision, which context is clearly taken into account in the decision itself.

The decision concerns an appeal after opposition procedure in which the abstract and the corresponding original document had both been made available to the board, and comes to the conclusion that "when, as here, it is clear from related contemporaneously available evidence that the literal disclosure of a document is erroneous and does not represent the intended technical reality, such an erroneous disclosure should not be considered as part of the state of the art" (paragraph 4.1.4 of the reasons).

In the present case, this question did not arise since only abstract D1 is on file and there is no indication that its disclosure might be erroneous, or that its disclosure might otherwise have to be interpreted differently in the light of the disclosure of the original document. Therefore, the literal disclosure of D1 belongs prima facie to the state of the art. The appellant would have had the burden of proof to show that this disclosure was actually not part of the state of the art. The appellant failed to do so.

The teaching of D1 taken alone, therefore, is to be considered as part of the state of the art.

2.6 For these reasons, the board cannot see a procedural violation in the mere facts of citing and reasoning on the basis of an abstract.

3. Main request; substantial procedural violations

3.1 The first point where the appellant sees a substantial procedural violation, ie citation of a non-citable document, has been dealt with above in paragraph 2.

3.2 The appellant claims that in two telephone conversations with the primary examiner he was misled into believing that a refusal was not imminent, as a further communication would be issued as the next step of the procedure.

The appellant submitted affidavits of two employees of the firm of European patent attorneys representing the appellant, in which affidavits they confirm that in the time after the second communication of the examining division they telephoned the primary examiner (first and second telephone call) and were informed by him that a further communication would be issued.

In a note on file giving the "Result of consultation" concerning a (third) telephone call received from the representative of the appellant after the refusal of the application, the primary examiner declares that he never said that a further communication would be issued.

Thus, there are conflicting declarations as to what was said during these first two telephone calls.

3.3 Telephone calls between the examiners of the European Patent Office and the applicants, in some situations, can be a tool for speeding up an otherwise slower procedure. However, one should be warned against expecting too much from them in critical situations, as misunderstandings can happen more easily than in writing, sometimes promoted by the fact that one of the two participants in the conversation might not be fully prepared for dealing with the case. It is with reason that the procedure before the European Patent Office is in principle, with the exception of oral proceedings under Article 116 EPC, a written procedure. Moreover, in the examination (as well as in the opposition) procedure the primary examiner is only one of a division of three examiners, it being well known that his individual statements cannot be binding for the division. Furthermore, telephone conversations are not provided for in the EPC and do not, as such, form part of the formal procedure before the Office.

The board does not deny that the principle of good faith should govern all the actions over procedural matters, even the informal ones, of employees of the European Patent Office towards parties to the proceedings.

However, for setting aside the decision of the examining division to refuse the application, to which aim the request of the appellant is directed in the present case, it would be required that manifestly the rules of procedure as laid down in the EPC had been infringed. Since telephone conversations do not form part of said formal procedure, the board does not consider it necessary to conduct a detailed investigation seeking to clear up what was said in the above-mentioned telephone calls, the sequence of procedurally relevant facts being already clearly established in the file.

3.4 The file shows that the examining division issued two communications in which reasons were given why in their view the subject-matter of claims 1, 12 and 15 lacked an inventive step, having regard to D1, and why D1 could be used as prior art (because its technical information could be understood by the person skilled in the art). The second communication contains an explicit invitation to deal with the objections raised against the inventive step of the claimed subject- matter and ends with the statement that "if the applicant fails to deal with them, the application will be rejected in accordance with Article 97(1) EPC". In his reply, dated 19 February 1991, the appellant again (as in his first response) argued that D1 could not be cited as prior art. He did not otherwise discuss the question of inventive step, nor did he file new claims. In a further letter, dated 1 May 1991, shortly before the end of the time limit set for replying to the second communication of the examining division, the appellant only expressed his wish to obtain a reply from the examining division, and stated that as long as the matter raised in his last letter (citability of D1) was unresolved, the representative was unable to obtain full instructions from his clients. Three months after expiry of the above-mentioned time limit the examining division refused the application.

Whatever the appellant's impression was about the content of the above-mentioned informal telephone calls, he should have realised from the objections raised in the official communications and in particular from the announcement of likely rejection at the end of the second communication that refusal of the application was imminent if his arguments regarding the citability of D1 did not convince the examining division, and that abstaining from discussion of inventive step on the basis of D1 (which discussion he could have undertaken independently of his opinion on the citability of D1) was a risk if his primary argumentation was not accepted. It could not be expected from the examining division that a further communication would be issued on a subject it had already dealt with.

3.5 The appellant further argues that, after expiry of the time limit set on the second communication of the examining division, he would have expected, if not a further communication, then at least to have his application deemed to be withdrawn (Art. 96(3) EPC) instead of a refusal since his letter dated 19 February 1991 was not a response to the communication.

Since, in the view of the board, the letter of 19 February 1991 constitutes a reply in the sense of Article 96(3) EPC, there is no need to discuss the question whether an examining division, in the case that the applicant does not reply, has a right to refuse the application instead of communicating to the applicant that the application is deemed to be withdrawn.

At the beginning, said letter refers "to your communication issued on 30th January 1991 pursuant to Article 96(2) and Rule 51(2) EPC". It deals with the reasoning of the examining division in this communication regarding the citability of D1 as an isolated document, and contains an argumentation why D1 should not be considered as prior art.

It is true that in the first paragraph of this letter is stated that "this present letter is not to be treated as a formal response to that communication", and that the letter fails to deal with the question of inventive step on the basis of D1 as prior art, so that it is not as comprehensive as it could be.

However, an argumentation against the citability as prior art of the only cited document, if successful, would certainly by itself be an effective reply to the objections of the examining division, so that it even cannot be regarded as evidently incomplete. In any case, Article 96(3) EPC does not require "a complete reply", but only "a reply" for avoiding the consequence of having the application deemed to be withdrawn. The objective fact that therefore the letter, according to its content, constitutes a reply to the communication cannot be set aside by a simple request of the appellant not to treat it as such and thus to make it null and void.

Therefore, it was correct not to treat the application as deemed to be withdrawn in the sense of Article 96(3) EPC.

Moreover, the board does not see what the appellant would have expected to gain if the Office had applied Article 96(3) EPC. If the appellant had in mind then to request further processing under Article 121 EPC, this would not have changed the procedural situation except in leading to an extension of the time limit for replying to the communication of the examining division, which extension the appellant could have obtained more easily by requesting it directly (since he was evidently aware of the lapse of this period).

3.6 Since the board does not find any substantial procedural violations, as claimed by the appellant, which might have necessitated the remittal of the case to the first instance (Art. 111(1), second sentence, EPC), the main request is rejected.

4. First auxiliary request

9. Since the question of inventive step of the claimed subject-matter has already been examined by the examining division in the knowledge of documents D1 and D2, and since no substantial procedural violation can be found (cf. main request of the appellant), the board sees no reason to remit the case to the examining division (Art. 111(1) EPC).

10. Since none of the requests of the appellant is allowable, the decision to refuse the application has to be confirmed.