T 2346/10 13-07-2012

1. Competence of the Board 3.4.01

1.1 By an order dated 19 January 2011, the chairmen of Board 3.5.01, to which the present case was first allocated, and of Board 3.4.01 agreed, under Article 1(3) of the Business distribution scheme of the Technical Boards of Appeal for the year 2011 (Supplement to OJ EPO 1/2011, 12), to transfer the appeal from Board 3.5.01 to Board 3.4.01.

For this reason, the Board 3.4.01 is competent for dealing with the present case.

1.2 The transfer of the appeal was agreed upon because the technical content of the appeal made it appropriate for allocation to Board 3.4.01. This finding does not, however, equate to an acknowledgement that the application has been incorrectly classified, for which issue the Board lacks competence.

2. Oral proceedings

2.1 Article 116(1) EPC states that "Oral proceedings shall take place either at the instance of the EPO if it considers this to be expedient or at the request of any party to the proceedings".

2.2 In the present case, the Board considered the oral proceedings to be expedient in order to come to a conclusion on the issue of the admissibility of the appeal in an effective manner. Indeed, oral proceedings are intended to provide the opportunity to carry out a focussed exchange of views enabling the Board to reach a decision on the issues discussed. The volume of correspondence which was triggered by the annex to the summons to oral proceedings indeed illustrates how cumbersome the written procedure was likely to become in the present case. For this reason, the Board saw no cause for cancelling the oral proceedings which were thus held as scheduled.

2.3 The appellant did not appear at the oral proceedings. The oral proceedings were conducted in his absence and a decision was taken at the end of the proceedings. This procedure is fully in line with Article 15(3) RPBA, which states "The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned who may then be treated as relying only on its written case".

3. Admissibility of the appeal

3.1 The third sentence of Article 108 EPC states: "Within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations".

Rule 99(2) EPC specifies the content of this statement of grounds: "In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based".

Moreover, Rule 101(1) EPC states that "If the appeal does not comply with Articles 106 to 108, ... , the Board of Appeal shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under Article 108 has expired".

3.2 In the following, the Board will, in particular, consider whether the requirements of Rule 99(2) EPC are satisfied.

The following two specific aspects are essential for this assessment in the present case:

(a) Firstly, whether an allegedly incorrect classification of the application and the consequential allocation of the application to an allegedly incompetent examining division may constitute a reason for setting aside the contested decision;

(b) Secondly, whether the concrete objections under Articles 123(2) and 56 EPC set out in the contested decision have been addressed.

3.3 Classification of the application

3.3.1 In the letter dated 03 November 2010, which will be referred to in the following as "the statement of grounds", the appellant submitted that the application had been wrongly classified and had thus been allocated to the wrong examining division. In his letter of 23 June 2012 the appellant emphasised that this was the sole reason for his appeal. It was maintained that this reason was clearly derivable from the statement of grounds of appeal. In his letter of 06 June 2012 the appellant held that the wrong classification represented a fundamental deficiency in the first instance proceedings which, in accordance with Article 11 RPBA, would require the Board to remit the case to an examining division which was qualified to assess the application correctly.

3.3.2 The Board does not consider that an allegedly incorrect classification would necessarily represent a fundamental deficiency justifying the remittal of the case to the examining division. This cannot constitute an indication of "reasons for setting aside the decision impugned" as is required by Rule 99(2) EPC.

In the Board's view, a "fundamental deficiency" in the sense of Article 11 RPBA would arise when the actual act of issuing the decision is flawed. In this respect, a "fundamental deficiency" does not appear to be any different to a "substantial procedural violation" which has been defined as "an objective deficiency in the procedure in the sense that the rules of procedure have not been applied in the manner prescribed by the Convention" in the Case Law of the Boards of Appeal of the European Patent Office, 6th Edition, 2010 (see page 912). Indeed, it results from the jurisprudence that a fundamental deficiency in the sense of Article 11 RPBA is held to be present whenever a substantial procedural violation has been committed. Examples of fundamental deficiencies which would justify setting aside the contested decision and remitting the case to the examining division include:

- The violation of the right to be heard (Article 113(1) EPC);

- The disregard of a request for oral proceedings (Article 116(1) EPC);

- The failure to provide reasons in the decision (Rule 111(2) EPC);

- An incorrect composition of the opposition division (Article 19(2) EPC);

- The issuance of a decision on the basis of a text not agreed upon by the applicant (Article 113(2) EPC).

These deficiencies all arise from a disregard of those fundamental legal provisions of the EPC which are intended to protect the parties to the proceedings.

In contrast, the classification which is assigned to an application is not related to such fundamental legal provisions of the EPC. Instead, any potential mistake in the classification of the application would appear to derive from an error of judgement by the search division rather than a misapplication of fundamental rules of procedure.

3.3.3 Should an examining division not be technically qualified to examine a clearly wrongly classified application, then it is likely that the resulting lack of technical expertise will be reflected in the arguments provided in the decision refusing the application. In such a case, the decision would be set aside if the applicant as appellant were to convince the Board that the substance of the decision was indeed wrong. Whilst an incorrect classification can therefore contribute to the incorrectness of a decision, it is not an issue which per se could justify setting aside the contested decision.

In view of this, the comparison made by the appellant in the present case with regard to the terms appearing in the present application and in the allegedly incorrect classification G06Q is not sufficient for invalidating the technical arguments produced by the examining division in the contested decision. Rather, convincing technical counter-arguments remain indispensable.

In conclusion, the simple allegation that the present application was wrongly classified does not constitute a reason in the sense of Rule 99(2) EPC.

3.4 Objections under Articles 123(2) and 56 EPC set out in the contested decision

3.4.1 Irrespective of whether the application was correctly classified and irrespective of whether the application was allocated to the competent examining division, a reasoned decision has been issued in the present case. In particular, the contested decision relies upon two main objections, i.e. added subject-matter (Article 123(2) EPC) and lack of inventive step (Article 56 EPC). Within the framework of the latter objection, comments are also made concerning the technical character of the subject-matter of claim 1 then on file.

Whilst the statement of grounds extensively elaborates a number of grievances concerning the competence of the examining division to examine the case and to conduct the procedure in the correct manner, no reasons have been advanced to indicate why the specific objections raised by the examining division are incorrect. Rather, in his letter of 06 June 2012 the appellant argued that all of the arguments which he presented to the examining division were available in the EPO file and that, in his opinion, he was under no obligation to repeat what had already been said.

3.4.2 With regard to the objection under Article 123(2) EPC, the appellant presented his own understanding of this legal norm. In particular, the provision of a "word-by-word basis" of disclosure, as requested by the examining division, was not necessary. Article 123(2) EPC concerned the content of the entire application rather than requiring a literal basis for the amendments.

The appellant also explained that the amendments to claim 1 had been performed in order to improve the clarity of the claim. It was held that the claims could be amended as long as they were still supported by the description. An objection of lack of support by the description should however only be raised with well-founded reasons (Guidelines for Examination, April 2010, section C-III,6.3).

Moreover, the appellant alleged that the minutes of the oral proceedings before the examining division were deficient in that not all of the passages cited by him to provide a basis for the amendments had been recorded.

In the Board's view, these submissions are of merely a general nature. The appellant failed to produce specific reasons for rebutting each of the concrete findings of the examining division in the contested decision: not a single passage of the original application documents has been cited in the statement of grounds which would provide a basis for the amendments objected to in the contested decision. No explanation has been provided as to why the specific findings of the examining division in the contested decision would be incorrect. Even though the appellant expressed concern that the examining division may not have referred to the same "original disclosure" as he was citing from during the oral proceedings, the appellant made no attempt to explain to the Board which passages from which document would provide a basis for each of the amendments.

3.4.3 With regard to the issues of technical character and inventive step, the appellant held that they had not been sufficiently discussed in the oral proceedings before the examining division. Indeed, the majority of time had been spent discussing Article 123(2) EPC.

The Board, however, notes in this respect that the appellant left the oral proceedings before they were closed in order to catch his plane. This fact is not contested by the appellant who moreover acknowledged that, before leaving prematurely, he had been given the chance to make submissions on the remaining issues of technical character and inventive step.

In response to the specific arguments in section 3 of the reasons of the contested decision concerning non-technical steps of the claimed method, the appellant simply argued that "Those questions become non-questions if one considers the facts about the invention as a new detection process".

However, this somewhat vague statement cannot be regarded as a specific reason sufficient for rebutting the concrete findings of the examining division.

Moreover, in response to the specific arguments in section 4 of the reasons of the contested decision concerning inventive step of the claimed method, the appellant made no submissions in the statement of grounds.

3.5 In accordance with Article 12(2) RPBA, the statement of grounds of appeal shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed and should specify expressly "all the facts, arguments and evidence" relied on.

It is established jurisprudence that the appeal procedure is not a continuation of the examining procedure but is a distinct procedure which relies upon the appellant's analysis of the contested decision in order that the Board may ascertain why the appellant considers the contested decision to be incorrect. Only in this manner is the Board in a position to reach a decision. Consequently, if the appellant refers to the correspondence which is already on file, then he has to point the Board to those arguments which he considers to be relevant for the specific objections of the contested decision and to construct his case accordingly. The role of the Board is not to build the appellant's case for him, but rather to judge whether the case presented by him is convincing.

In view of the foregoing, with respect to the objections under Article 123(2) EPC, no attempt was made in the statement of grounds to indicate the reasons for setting aside the decision impugned.

The same applies with respect to the objection under Article 56 EPC, the question of technical character being discussed in this context.

These issues not being sufficiently addressed in the statement of grounds of appeal, no attempt was made to indicate the reasons for setting aside the decision impugned.

For the sake of completeness, it is noted that the only arguments contained in the notice of appeal concerned the classification and the EPO procedure for correction of a classification. No other correspondence was received in the four-month period of Article 108 EPC.

3.6 In summary, the Board is of the opinion that the statement of grounds of appeal does not meet the requirements of Rule 99(2) EPC since it does not contain an indication of reasons for setting aside the decision impugned. As a result, the requirements of Article 108 EPC are not fulfilled and the appeal is therefore not admissible under Rule 101(1) EPC.

The Board adds that remedy of any identified deficiency under Rule 101(1) EPC was excluded at the date of the decision because the four-month period under Article 108 EPC had expired.

4. Further requests

In view of the inadmissibility of the appeal, any further requests of the appellant do not need to be considered. In particular, the case cannot be remitted to "competent examiners in the technical field of the invention" because the appeal is not admissible.