T 1614/08 (Simulation model/Entelos) 11-07-2011

Reasons for the Decision

1. The appeal is admissible (see points III and V above).

2. The decision under appeal issued as a so-called "decision according to the state of the file" as sanctioned by the Guidelines for Examination E-X, 4.4 (in the versions of June 2005 or April 2010 alike). Such decisions normally issue on a standard form and for their reasons merely refer to previous communications of the examining division. The board therefore endorses the opinion that it would be preferable to call such a decision a "decision by reference" (see e.g. T 1356/05, reasons 5, not published).

3. As a matter of principle, the board deems it acceptable for the examining division to issue a decision by refe rence to speed up the examination procedure, especially if the applicant explicitly agrees with this course of action. However the applicant's request cannot discharge the examining division of its duty to give reasons why the examination of the application led to its refusal.

4. In particular, according to Rule 111(2) EPC decisions of the European patent office which are open to appeal shall be reasoned. For a decision to be reasoned it must con tain, in addi tion to the logical chain of facts and legal provisions on which the decision is based, a discussion of the cru cial points in dispute, in order to give the party con cer ned a fair idea of why its submissions were not con si dered convincing (cf. J 17/05, reasons 6, unpublished). The board also endorses the corresponding statement in the Guidelines E-X, 5 that in a reasoned decision "it is particularly important that special attention should be paid to important facts and arguments which may speak against the decision made", so as not to give "the impression ... that such points have been overlooked".

5. The fundamental requirement for a decision to be reasoned also applies to decisions according to the state of the file. Furthermore, it is established jurisprudence that an applicant by requesting a decision according to the state of the file does not waive the right to a reasoned decision (cf. e.g. T 265/03, reasons 6, unpublished). Even a statement of the parties to the proceedings that they do not want a reasoned decision would not have a different result. A decision which for its reasons merely refers to previous communications satisfies the require ments of Rule 111(2) EPC only if these communica tions themselves do. This means that the decisive arguments for the decision must be clear from these references (cf. T 963/02, reasons 2.1, not published).

6. In the only communications referred to in the decision, those of 8 July 2004 and 31 January 2007, objections un der Articles 123(2), Rule 29(2), Article 84, and Article 56, then all EPC 1973, were raised. The decision under appeal states inter alia that "[t]he applicant filed no comments or amend ments in reply to the latest communication but requested a decision according to the state of the file ..." This statement is factually incorrect because the applicant had indeed replied to the second communication with letter dated 12 April 2007 and filed comments to each of the objections of added subject matter, lack of conciseness, and lack of inventive step.

7. The applicant's submission dated 26 February 2008 also mentions a telephone conversation with the first examiner. In such a situation it is essential that a telephone conversation be minuted, since otherwise it is left for speculation what was discussed. It is possible that the first examiner replied to the applicant's arguments and argued that some or all of the pending objections were upheld and why. But it is also possible that the first examiner only explained the nature of a decision accor ding to the state of the file.

8. As a consequence, the decision under appeal gives the im pression that the appellant's arguments filed with letter of 12 April 2007 may have been overlooked and, even if they were not, leaves open which of the previously raised objections were waived and which were not and why.

9. For this reason alone the board has to conclude that the decision does not satisfy the requirement of Rule 111(2) EPC.

10. The board finds it appropriate to point out some further irregularities which confirm this conclusion.

10.1 Ad Article 56 EPC 1973: In the second communication under point 3 the examining division expressed that the "comments as in section 3" of the first communication would "still hold". These comments include the statement that no examination of novelty and inventive step was carried out.

In the second communication the examining division refutes an argument by the applicant: It observes why "the applicant states that the system of the application is new over D1", derives a problem solved from that difference and concludes that "the solution proposed by the applicant" is "not considered allowable" for lack of an inventive step. The examining division does not express that it endorses the applicant's analysis nor does it give an own analysis of any of the claims.

Also the observation in the first communication (point 3, last par.) that the GUIs according to D1 and the invention seem to have the same technical effects does not constitute a reasoned objection of a lack of inventive step.

The board therefore concludes that the communications referred to in the decision under appeal do not contain a sufficiently reasoned objection under Article 56 EPC 1973.

10.2 Ad Rule 29(2) and Article 84 EPC 1973: Claims 1 and 13 as filed on 18 January 2005 relate, respectively, to a "method of assigning ... values to object parameters ..." and a corresponding apparatus. Claims 11 and 23 relate, respectively, to "a method of performing a simulation ... comprising: assigning ... values to object parameters ... in accordance with any preceding claim" and again a corresponding apparatus.

In the second communication, the examining division considers claims 11 and 23 as independent claims, the reference to preceding claims notwithstanding.

According to Rule 29(3) EPC 1973 (and, equivalently, Rule 42(3) EPC) "[a]ny claims which includes all the features of any other claim" is considered a dependent claim. This formulation is reproduced in the Guidelines for Examination C-III, 3.4. In view of this the examining division's position is at least unconventional and the applicant, when referring to the standard interpretation of what constitutes a "dependent claim", must have had a fair expectation of having overcome this objection.

10.3 Ad Article 123(2) EPC (1973): The first communication raised concerns against several expressions in the claims as amended during the International phase. With the sub mission of 18 January 2005, the claims were consi derably amended and at least some of the criticized expressions (e.g. "parameter panel") were replaced by the original wording (e.g. "access panel"). Under these circumstances the board considers it dubious to state, as the examining division did in the second communication, that the previous objections were maintained "mutatis mutandis".

The examining division then mentioned a number of ex pressions in the amended claims and stated that no clear support for these amendments had been found in original claim 1 or in the "indications provided in the applicant's reply letter". These indications were however not specifically discussed to show why they failed to provide the due support. For example, the examining division found dubious the reference to "object parameters associ ated with multiple objects" (second communication, p. 2, 1st par.), although the applicant referred to figure 13 (reply of 18 January 2005, par. bridging pp. 3-4) which in the board's view clearly discloses access panels with object parameters associated with multiple objects (see esp. no. 264 in fig. 13 and the corresponding description, p. 21, lines 3 ff.).

In the reply dated 12 April 2007 the applicant insis ted that basis had been given and asked the examining division to reconsider its previous submission, bearing in mind that literal support is not required by Article 123(2) EPC. While the board agrees that Article 123(2) EPC does not require literal support it can be left open whether the basis given by the applicant was sufficient. In the board's view the applicant's reply constituted at least a fair reply to the brief argument by the exa mining divi sion. The board also considers that the appli cant has a right that any basis which allegedly supports amend ments under Article 123(2) EPC be specifi cally consi dered by the examining division. Therefore, the board judges that the applicant would have had the fair expectation that a refusal would not be based on Article 123(2) EPC (1973).

10.4 In summary, the board concludes that the applicant's submission dated 12 April 2007 is a reasonable response to the examining division's objections which puts into question on which objections the decision under appeal was - and, indeed, could have been - actually based. This supports the conclusion that the decision under appeal is not sufficiently reasoned as required by Rule 111(2) EPC.

11. An insufficiently reasoned decision constitutes a substantial procedural violation in view of which reimburse ment of the appeal fee is equitable according to Rule 103(1)(a) EPC. Furthermore, the board decides to admit into the procedure claims 1-6 and description pages 1 and 3 as submitted with the grounds of appeal and, according to Article 11 RPBA, to remit the case to the department of first instance, absent special reasons for doing otherwise.