T 1957/08 02-07-2012

Reasons for the Decision

1. According to the established case law of the Boards of Appeal (T 3/90, OJ EPO 1992, 737, and "Case Law of the Boards of Appeal of the EPO", 6th ed. (2010), VI.C.2.2) the appellant's statement in its letter of 24 February 2012 that it would not be represented at the oral proceedings is to be treated as equivalent to a withdrawal of the request for oral proceedings. Therefore, the Board cancelled the oral proceedings and decided to continue the proceedings in writing and to issue a decision based on the written proceedings.

2. In the statement of grounds of appeal, the appellant does not challenge the Examining Division's decision not to admit its main request and auxiliary requests II to IV under Rule 137(3) EPC (point 1 of the Reasons of the impugned decision). Moreover, none of the independent claims of the sets of claims filed with the appeal as main request or 1st to 4th auxiliary request correspond to those comprised in the sets of claims not admitted in the first instance proceedings.

Accordingly, it must be concluded that the appellant does not challenge this part of the decision either directly or indirectly.

The Board sees no reason to overrule this part of the decision either.

It follows that the appeal is only about auxiliary request I which was admitted into the first instance proceedings, but was not allowed for two reasons, namely lack of novelty under Article 54(3) EPC 1973 of the subject-matter of claim 5 vis-à-vis document D3 (point 2.1 of the Reasons of the impugned decision) and lack of inventive step under Article 56 EPC of the subject-matter of claim 5 in view of D1 and general knowledge (point 2.2 of the Reasons).

Article 108, third sentence, EPC provides that "[w]ithin four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations". Pursuant to Rule 99(2) EPC, "[i]n 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".

According to the established case law of the Boards of Appeal, the grounds of appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. If the appellant submits that the decision under appeal is incorrect, the statement setting out the grounds of appeal must enable the Board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of its own ("Case Law of the Boards of Appeal of the EPO", 6th ed. (2010), VII.E.7.6.1).

In the present case, the admissibility of the appeal therefore depends on whether the appellant's letter of 11 September 2008, together with the five sets of claims filed with the notice of appeal of 9 July 2008, can be regarded as a valid statement of grounds of appeal.

Accordingly, it would have to be apparent from the arguments presented in the statement of grounds and/or from the newly filed amended claims that the reasons for refusal based on lack of novelty vis-à-vis D3 (Article 54(3) EPC 1973) and lack of inventive step starting from D1 (Article 56 EPC) are addressed, or that at least the amended claims clearly overcome them, thus depriving this part of the decision of its basis by amendment. The Board is of the opinion that these requirements are not met in the present case for the following reasons.

2.1 Main request

2.1.1 Whilst the statement of grounds of appeal deals with the issue of inventive step starting from D2 or D3, it is entirely silent with respect to document D1, which was regarded as closest prior art in the impugned decision (point 2.2 of the Reasons). The statement is further devoid of any explanation why D1 should possibly not be regarded as closest prior art. Accordingly, the Board is not able to understand immediately why this part of the decision, i.e. lack of inventive step starting from D1, is contested or even alleged to be incorrect.

Claim 5 of the present main request corresponds to claim 62 as originally filed. Claim 5 of the refused auxiliary request I comprised the additional steps of providing a plurality of acoustic calibration waveguides, each having known acoustic transfer characteristics, predetermined dimensions and first and second ends, the first end being open, and receiving and processing detected calibration electrical signals to determine measurement system parameters when said probe assembly is positioned in the plurality [of] acoustic calibration waveguides. Accordingly, the subject-matter of claim 5 of the present main request is broader than that of claim 5 of the refused auxiliary request I.

Therefore, the above-mentioned reasons of the impugned decision for refusing the former auxiliary request I a fortiori apply to the present main request. However, as mentioned above, the objection of lack of inventive step of the subject-matter of claim 5 in view of D1 and general knowledge raised in point 2.2 of the Reasons of the impugned decision has not been dealt with in the statement of grounds of appeal. Also, it cannot be seen how a thus amended, i.e. broadened, claim would clearly overcome this objection, thus depriving this part of the decision of its basis by amendment.

2.1.2 In point 1.1 of the statement of grounds of appeal it is stated that calculating the reflectance of the ear as a function of the static pressure of the ear based on an estimate of the cross-sectional ear-canal area and the storage of this estimate in the system represents a "distinguishing feature" over document D3, rendering claim 5 novel in view of D3.

In the impugned decision (point 2.1 of the Reasons), however, it is said that document D3 "discloses a method for calculating the reflectance of the ear as a function of the static pressure (cf in D3, page 24, lines 3-17; page 7, lines 26-35) from a calculated transfer function (ear-canal impedance Z) and an estimate of the ear canal area (cf page 27, lines 26-35), the transfer function of the ear being calculated using a plurality of calibration waveguides (cf page 25, line 35 to page 26, line 14)". The Board sees no reason to disagree with this detailed and well-reasoned analysis of the teaching of D3. The appellant's above-mentioned brief assertion in point 1.1, on the other hand, again does not enable the Board to understand immediately why this part of the decision, i.e. lack of novelty vis-à-vis D3, in particular with respect to the above-mentioned "distinguishing feature", is alleged to be incorrect. Also, the broadened wording of the claim is clearly unsuited to overcome this objection.

2.1.3 Additionally, as indicated in the statement of grounds of appeal, claim 5 of the present main request corresponds to claim 5 introduced into the first instance proceedings with letter of 18 April 2005. In point 3 of its communication of 13 July 2006, the Examining Division had raised an objection of lack of novelty under Article 54 EPC vis-à-vis D4 against that claim (this is also mentioned in point X of the impugned decision). This objection was also not addressed in the statement setting out the grounds of appeal. No reasoning has been presented by the appellant in this respect either.

2.2 Auxiliary requests

The above-mentioned lack of reasoning regarding obviousness starting from D1 as closest prior art and lack of novelty vis-à-vis D4 also applies to the 1st to 4th auxiliary requests. The only document discussed in the statement of grounds of appeal with respect to all of these requests is D3. However, D3 was only cited as novelty-destroying under Article 54(3) EPC 1973 in the impugned decision, but not with respect to inventive step. With regard to obviousness starting from the pre-published document D1, the part of the statement dealing with these requests is again entirely silent. The issue of novelty vis-à-vis D4 is also not addressed at all.

The Board is also not able to see how the amended claims of these requests would overcome the objection raised in point 2.2 of the Reasons of the impugned decision, thus depriving this part of the decision of its basis by amendment.

On the contrary, as mentioned in the Board's communication, the independent claims of these requests are the result of an extensive rewording of originally filed claims 47 and 65. As indicated by the appellant itself, the claims comprise numerous additional features taken from various - not necessarily related - parts of the description. Such a patchwork of features would require an extensive re-examination of the case from scratch, which is not the purpose of appeal proceedings. Furthermore, it is not even clear whether the subject-matter now claimed was covered by the search report.

2.3 From the above it follows that the statement of grounds of appeal fails to specify the legal or factual reasons on which the case for setting aside the decision is based and does not enable the Board to understand immediately why the impugned decision is incorrect with respect to any of the requests dealt with therein. Under these circumstances, the appeal is to be rejected as inadmissible pursuant to Rule 101(1) EPC.