BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.3.1 dated 5 November 1993 - W 4/93 - 3.3.1
Composition of the Board:
Headword: Zeolite suspensions
Article: 34(3)(a) PCT
PCT Guidelines Chapter III, 7.5, 7.6, 7.10, Chapter VI, 5.7
Keyword: "Scope of review under Rule 68.3(e) PCT" - "Assessment of unity a posteriori" - "Objective criteria, but avoiding a purely theoretical approach" - "Reimbursement of part of the additional fees" - "Oral proceedings (no)"
I. The review, required under Rule 68.3(e) PCT, of the justification for the invitation to pay an additional fee for the international preliminary examination must be based exclusively on the reasons contained in the invitation to pay, having regard to the facts and arguments submitted by the applicants in the grounds given for their protest. This rules out the subsequent submission of new reasons and evidence in the notification of the result of the review (Reasons, 2.1 and 2.2).
II. The notification of the result of the review of the invitation to pay under Rule 68.3(e) PCT should address the grounds given for the protest (Reasons, 2.3).
III. The right of the applicants to communicate orally with the IPEA (Article 34(2)(a) PCT) does not include the right to formal oral proceedings. An informal interview under Rule 66.6 PCT is usually not expedient in protest proceedings under Rule 68.3(c) PCT (Reasons, 9).
Summary of Facts and Submissions
I. In a communication dated 3 March 1993, the EPO, acting as International Preliminary Examining Authority (hereinafter referred to as "IPEA") in accordance with the agreement dated 7 October 1987 between the EPO and WIPO under the PCT (OJ EPO 1987, 515), informed the applicants that their Euro-PCT application ... related to four different inventions not connected by a single general inventive concept. It invited them under Article 34(3)(a) in conjunction with Rule 68.2 PCT to restrict the claims or to pay three additional examination fees totalling DEM 9 000.
The Euro-PCT application relates to a method for stabilising aqueous zeolite suspensions, characterised in that at least one non-ionic surfactant, selected from the group formed by
(a) guerbet-alcohol/poly(ethyleneglycol) ethers of the formula (I)
in which R1 is a branched alkyl group with 16 to 20 carbon atoms and m is a number from 3 to 15,
(b) fatty-alcohol poly(ethyleneglycol) ethers of the formula (II)
in which R2 is an aliphatic hydrocarbon group with 12 to 22 carbon atoms and 1, 2 or 3 double bonds, and n is a number from 1 to 10,
(c) fatty-alcohol/polyglycol ethers of the formula (III)
in which R3 is an alkyl group with 6 to 10 carbon atoms, p is a number from 1 to 5 and q is a number from 3 to 15, and
(d) alkyl and/or alkenyl glycosides of the formula (IV)
in which R4 is an alkyl or alkenyl group with 6 to 22 carbon atoms, G is a glycose unit derived from a sugar with 5 or 6 carbon atoms, and x is a number between 1 and 10,
is added to the suspensions.
II. The applicants paid the additional fees under protest (Rule 68.3(c) PCT) on 25 March 1993 (date when credited to the EPO's account) together with the prescribed fee for examination of the protest by the Board of Appeal (Rule 68.3(e) PCT in the version in force from 1 July 1992). On 11 May 1993 the IPEA sent the applicants a notification under Rule 66 PCT together with a report on the result of the review under Rule 68.3(e) PCT, in which it stated that the invitation to pay was justified. On 26 May 1993 the applicants informed the IPEA that they were maintaining the protest.
III. According to the IPEA's invitation to pay dated 3 March 1993, it was clear from pages 2 and 3 of the description as filed that the idea of using a non-ionic surfactant to stabilise aqueous zeolite suspensions was known. Thus the use of the four structurally different classes of non-ionic surfactants characterised by formulas (I) to (IV) in claim 1 could no longer be regarded as forming a single general inventive concept. In its notification dated 11 May 1993 concerning the result of the review of the protest, the IPEA additionally adduced five documents which had not been listed in the invitation to pay, including
(5) EP-A-0 294 694,
in support of this objection.
IV. The applicants submitted grounds for their protest in letters received on 25 March and 26 May 1993, stating that the prior art acknowledged in the description taught exclusively the stabilisation of aqueous zeolite suspensions using mixtures of non-ionic fatty-alcohol polyglycol ethers and anionic sulphate surfactants. The general inventive concept within the meaning of Rule 13.1 PCT thus resided in the recognition that stabilisation could also be achieved in the absence of anionic surfactants. Citing decision W 8/87 (OJ EPO 1989, 123), the applicants further stated that the invitation to pay was not legally binding because it merely listed in its support the inventions allegedly lacking in unity, which was inadmissible. Furthermore, according to decision W 3/88 (OJ EPO 1990, 126), the IPEA had no power to lodge an objection of non-unity a posteriori, that is on the basis of the objectively existing prior art. The sole important factor was the subjective view of the applicants at the time they drew up the claims. An objection could therefore only be lodged if the independent claims were obviously not linked by an inventive concept and/or the prior art portion chosen for a Markush group was arbitrary or its novelty recognisably prejudiced by the prior art. When drafting the application, however, the applicants had not been aware of any prior art prejudicial to the novelty of its subject-matter. If non-unity was not established until after the search report had been compiled, it might be necessary to divide the application. But no additional fees would then be due.
Even if the applicants were to agree with the IPEA, the application would relate to two independent inventions at most, as the non-ionic surfactants of formulas I to III were all addition products of ethylene or propylene oxide with various alcohols and thus belonged to a single class of compounds.
V. The applicants request that the protest be allowed and all the fees paid under protest reimbursed. Alternatively, they request that two of the three additional fees be reimbursed and, by way of a further alternative, that "the appeal be dealt with in oral proceedings".
Reasons for the Decision
1. The protest is admissible.
2. As far as the board is aware, this is the first time that a decision has had to be taken on the merits of a protest in which a review of the justification for the invitation to pay has been carried out in accordance with Rule 68.3(e) PCT, in force as from 1 July 1992 and applied by the EPO as IPEA since 1 October 1992 (Rule 104(a) EPC; see OJ EPO 1992, 342 ff., 547). The result of the review under Rule 68.3(e) PCT, which was communicated to the applicants on 11 May 1993, indicated that the IPEA had undertaken a further complete examination of the question of unity and in doing so had added further reasons and evidence not included in the invitation to pay.
2.1 The expression "review of the justification for the invitation to pay an additional fee" does not mean that the entitlement to retain this fee should be re-assessed independently of the reasons given in the invitation to pay. Rather, the obligation laid down in Rule 68.2 PCT to justify the invitation to pay indicates that an invitation is only "justified" within the meaning of Rule 68.3(e) PCT to the extent that it has fulfilled the said obligation to provide justification (see also W 4/85, OJ EPO 1987, 63, and W 7/86, OJ EPO 1987, 67). The object of the review under Rule 68.3(e) PCT is thus solely to justify the invitation to pay in the light of the reasons communicated to the applicants therein and having regard to the facts and arguments submitted by the applicants in support of their protest. The examination of the protest under Rule 68.3(c) PCT imposes no other duties on the board of appeal, as this rule relates to the invitation to pay and not to the result of the review under Rule 68.3(e) PCT. The board thus cannot take into consideration in this examination any new facts or arguments submitted late by the IPEA, ie as part of the review under Rule 68.3(e) PCT (see also W 3/93 of 5 November 1993 (to be published in OJ EPO, Reasons, 4).
2.2 In the board's opinion, a further argument against the subsequent introduction of new reasons and evidence in the notification concerning the result of the review is that the reasons given in the invitation to pay must enable applicants to decide whether to restrict their claims or to pay additional fees. It is therefore imperative that the reasons for requesting additional fees in the invitation to pay be set forth in full and definitive form. Applicants who have good faith in the completeness of the reasons given in support of the invitation to pay and thus see no need to restrict their claims will naturally expect, on the basis of the reasoned statement in support of their protest, that fees paid in response to the invitation will be reimbursed. They will consider themselves to have been deceived if new reasons are subsequently submitted in the review procedure in support of the invitation to pay which, had they known about them, would have caused them to restrict the claims.
2.3 Furthermore, a review of the invitation to pay under Rule 68.3(e) PCT fails to achieve its purpose if the notification concerning the result of the review prescribed in this rule does not address the grounds given for the protest against the invitation, but instead, as in the present case, simply repeats the previous point of view. In fact it goes without saying, in the board's view, that the technical reasoning behind the result of this review, which is required under Chapter VI, 5.7 of the PCT Preliminary Examination Guidelines published by WIPO on 1 March 1993, must contain the reasons for which the invitation to pay was maintained in the light of the protest. These guidelines are binding on both the IPEA and the board of appeal, which acts in such cases as the "special instance" of the IPEA under Rule 68.3(c) PCT (see G 1/89, OJ EPO 1991, 155). The above-mentioned notification should thus address the grounds adduced in support of the protest. The notification from the IPEA dated 11 May 1993 did not do so. This omission is possibly the result of a judicial error by which a reply to the reasoned statement in support of the protest was not considered necessary in view of the newly introduced reasons for the invitation to pay.
2.4 No standard practice has so far been established in connection with the recently introduced review procedure. At the same time, it is desirable that the present case be concluded rapidly. Therefore, and given the above-mentioned shortcomings in the review procedure, the board will refrain from ordering a remittal to the review instance stipulated in Rule 68.3(e) with a view to eliminating these deficiencies. Instead, it will itself examine the justification for the invitation to pay on the basis of the above criteria.
3. The board infers from the invitation to pay that the IPEA did not raise its objection of lack of unity because the independent claim as worded had not formally excluded the presence of anionic surfactants, but assumed that the application related only to the use of the surfactants listed in the claim and mixtures thereof (see description, page 5, first paragraph). This view accords with the provisions of Chapter III, 7.6 of the above-mentioned PCT Preliminary Examination Guidelines, whereby lack of unity should only be raised in clear cases, and a narrow, literal or academic approach should be avoided. The board consequently also bases its considerations on this interpretation of claim 1, which is supported by the description.
4. The IPEA justified the invitation to pay merely by asserting that the sole use of non-ionic surfactants to stabilise aqueous zeolite suspensions, ie the inventive concept claimed by the applicants and common to all four alternatives contained in claim 1, belonged to the prior art described on pages 2 and 3 of the description in the present application. The board finds that the only passage from which this could be deduced is in the last paragraph on page 2 and the first paragraph on page 3, where it is stated that according to the teaching of
DE-A-3 423 351 (1A)
zeolite suspensions can be stabilised, for example, by the addition of polyglycol ethers, fatty-acid alcanol amides or fatty-acid monoglycerides at pH 9 to 10. Furthermore, it was known from the literature to use numerous other stabilisers, for example alkylphenol polyglycol ethers:
DE-A-3 401 861 (6),
iso-tridecyl polyglycol ethers:
DE-A-3 444 311 (7)
and addition products of ethylene oxide with oxalcohols:
DE-A-3 719 042 (5A).
These compound classes are obviously non-ionic surfactants. This is not disputed by the applicants, who merely submitted that the use of such surfactants did not belong to the teaching of document (1A), which was mentioned in this connection in the description. In the board's opinion it would have been preferable for the invitation to pay to have specified the precise passages concerned. However, it was satisfied that the reference to pages 2 and 3 of the description sufficed in the present case to allow the merits of the objection to be reviewed both by the applicants, who had listed this prior art themselves, and by the board. It is therefore incorrect to state that the invitation to pay, as the applicants maintain, merely contains a list of the various subject-matters not forming an inventive unity. It does in fact also contain a short but clear reasoned statement in support of the objection. The invitation to pay is not therefore unsupported by reasons.
5. The protest is directed not against the invitation to pay additional search fees, but against the invitation to pay additional fees for an international preliminary examination in accordance with Chapter II of the PCT. The present case is thus not comparable to the one on which decision W 3/88 was based (which, incidentally, was not confirmed by G 1/89 mentioned above). Contrary to the applicants' belief, therefore, the protest cannot be allowed simply because they could have been subjectively of the opinion, when they drew up the application, that all the claimed method variations were based on a single inventive concept. According to Chapter III, 7.5 of the above-mentioned binding PCT Preliminary Examination Guidelines, the prior art established during the search should be taken into consideration in the examination for unity. It therefore goes without saying that the prior art acknowledged in the description as filed must also be taken into account.
6. In the board's opinion, this obliges the IPEA to check the correctness of the information given there before any objections are based on it, since the prior art to be taken into account does not automatically include all the facts which were stated subjectively and possibly erroneously in the description as being known, but only those facts which were objectively known. The IPEA obviously did not carry out such a check in this case; otherwise it would have ascertained that the information referred to cannot be found in document (1A), an application for a patent of addition to DE-A-3 330 220 which is also mentioned in the description belonging to the present application. For this reason it cannot form the teaching of this document. As far as the board can ascertain, the applicants in fact stated correctly in their grounds for the protest that this document teaches only the use of mixtures of a non-ionic surfactant and an anionic surfactant to stabilise aqueous zeolite suspensions. Consequently, the information which according to the description belonging to the present application can allegedly be found in document (1A) does not support the reasons for the invitation to pay required under Rule 68.2 PCT. As indicated, the board cannot therefore take this information into account when examining the protest, even if it has subsequently been shown to be known from other documents. Under these circumstances, it cannot be assumed that the IPEA had intended to refer to the prior art set forth in specification (1A) in the form of comparative examples; to do this it would have required more detailed information, which - inadmissibly - was only communicated with the result of the review.
7. On page 3, lines 5 to 6, of the description as filed, reference is also made to documents (6) and (7). As far as the board can ascertain, document (6) is in line with the description belonging to the present application in relating to the use of ethoxylated alkyl phenols and document (7) in concerning the use of ethoxylated iso-tridecyl alcohols (which, as their name indicates, are branched) to stabilise, for example, zeolite A (see claims 1 and 4 of both documents). In view of this prior art, the board did not think it necessary to take account of document (5A), whose content where relevant to the present case cannot extend beyond that of document (5). The latter document, in which priority was claimed for (5A), relates to the stabilisation of aqueous suspensions of, among other things, zeolite A with mixtures of ethoxylated oxalcohols with 10 to 15 carbon atoms, whose alkyl groups are partially branched (claims 1 and 4). Its subject-matter is therefore similar to that of document (7).
It is thus clear from the prior art acknowledged in the description as filed that the problem of stabilising aqueous zeolite suspensions using non-ionic surfactants was already known and had been solved many times. The unifying link of a common inventive concept as claimed by the applicants is thereby nullified. The claims propose four further solutions to the problem which, because of the differences in structure between the proposed surfactant groups, are not based on a common principle. The IPEA was thus correct to state in the invitation to pay that the four alternative stabilisation methods contained in claim 1 were not based on a general inventive concept. The applicants' main request for reimbursement of all the additional fees thus cannot be allowed.
8. In the alternative the applicants request reimbursement of two of the three additional fees paid for the international preliminary examination. They hold that the surfactants of formulas (I) to (III) are so closely linked structurally that it is justifiable to claim method variations (a), (b) and (c) of claim 1 in one single application. Their argument is obviously based on certain general principles whereby an assessment of the unity of an inventive complex or a group of inventions should avoid a formal approach and unnecessary division of the application. These principles are enshrined in Chapter III, 7.6 and 7.10 of the PCT Preliminary Examination Guidelines mentioned in 2.3 above. According to these, a narrow or academic approach should be avoided and the applicant should not be invited to pay additional fees if only a little additional effort would be needed to complete a full examination of the application. Obviously in view of the applicants' request in the alternative, the IPEA subsequently added, as a result of the review under Rule 68.3(e) PCT, the argument that in the substantive examination of the alternatives in claim 1 different documents would have to be taken as the closest prior art for each of the alternatives. For the reasons given in paragraph 2 above, it is not the duty of the board to examine this reasoning presented subsequently. Moreover, it is not apparent to the board why a single document cannot be used to establish the problem according to the application. The board therefore considers it justified, in view of the technical link between them and for reasons of efficiency, to deal jointly with the three methods, which are connected by the close structural relation between the surfactants, in order to avoid unnecessary division of the application. The invitation to pay three additional examination fees is thus not justified, and the applicants' request in the alternative can accordingly be allowed.
9. Finally, the applicants also requested in the alternative that "the appeal be dealt with in oral proceedings". Under Article 34(2)(a) PCT, applicants have the right to communicate orally with the IPEA. This does not however give them the right to formal oral proceedings as provided for by Article 116 EPC, for example, but merely means that they can communicate their opinion orally to the IPEA and have that opinion put on record. The applicants have not made use of this right. Furthermore, under Rule 66.6 PCT, it is at the discretion of the IPEA and, by analogy, of the board in its capacity as special instance of the IPEA to arrange an informal interview with the applicants. However, such interviews do not usually serve any purpose in the case of protests under Rule 68.3(c) PCT, which, unlike the examination under Article 33(1) PCT, merely relate to the formal matter of unity and, in conjunction therewith, the amount of fees to be paid under the PCT. The present case does not justify any exception to this rule, as the applicants have already commented on the matter in detail in their reasoned statement in support of their protest and in their response to the result of the review of the protest by the IPEA under Rule 68.3(e). Nor have the applicants demonstrated that there are any further aspects to be taken into account which have not yet been submitted in writing and would justify an interview. The alternative request is therefore rejected.
For these reasons it is decided that:
1. The request for oral proceedings is rejected.
2. The main request is refused.
3. The alternative request is allowed. The reimbursement of DEM 6 000 is ordered.