T 0893/13 (Multi-language interface/SERCOMM) 09-11-2015

Reimbursement of the first appeal fee

1. Following a decision of the Administrative Council of 13 December 2013, an amended version of Rule 103 EPC entered into force on 1 April 2014. According to Ar­ticle 2(2) of that decision, the new rule also applies to appeals pending at the date of entry into force, hence also to the present one.

2. The relevant parts of Rule 103 EPC as presently in force read as follows:

"(1) The appeal fee shall be reimbursed in full

(a) in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation, [...]

(3) The department whose decision is impugned shall order the reimbursement if it revises its decision and considers reimbursement equitable by reason of a substantial procedural violation. In all other cases, matters of reimbursement shall be decided by the Board of Appeal."

Competence of the board

3. Firstly, it has to be decided whether the board is com­petent to decide on the appellant's request to have the first appeal fee reimbursed even though the request was filed only after the examining division rectified its decision in response to the first appeal.

3.1 According to Rule 103(2) EPC, the examining division or­ders reimbursement if it concludes that it is equi­table by reason of a substantial procedural violation. Since Rule 103 EPC does not require there to be a re­quest for reimbursement, the examining divi­sion has to assess of its own motion whether reimburse­ment of the appeal fee is equitable under the cir­cum­stances (see also ­­G 3/03, OJ EPO 2005, 34, reasons 3, 2nd sen­tence). The board has no reason to doubt that the exa­mi­ning divi­sion ful­filled this obligation, as it also express­ly declared in the decision under appeal (page 3, 4th paragraph).

3.2 In J 32/95 (OJ EPO 1999, 713) it was decided that the department whose decision has been impugned does not have the power to refuse a requested reimbursement of the appeal fee but that such power lies with the board of appeal (see the headnotes). This decision was con­firmed by G 3/03 (OJ EPO 2005, 34, see headnote 1). New Rule 103 EPC was expressly meant to codify J 32/95 (see OJ EPO Special Edition No. 1, 2003, 184).

3.3 Although under Rule 103 EPC the examining division has the power to order reimbursement of appeal fee, it does not have the power to decide that the appeal fee is not reimbursed (see also G 3/03, reasons 2). Rule 103 EPC expressly provides that "all other matters of reim­burse­ment shall be decided by the Board of Appeal".

3.4 Therefore, according to Rule 103 EPC the board is com­pe­tent to decide on reimbursement of the appeal fee whenever the examining division revises its de­ci­sion and does not order reimbursement itself.

4. In T 21/02 it was decided that "Where a request for reimbursement of the appeal fee [...] was submitted only after the contested decision had been rectified [...], failing a decision of the department of first instance, no legal basis exists for the Board of Appeal to decide on that request" (see headnote). It was reasoned that, if an appeal "had been fully dealt with (by way of inter­locu­tory revision) and was, thus, no longer pending, when the request for re­imbursement was submitted, [...] the request was sub­mitted in the ab­sence of a pending appeal and could not, hence, con­sti­tute an ancillary issue to be dealt with in appeal pro­ceedings" (see reasons 5). It was further argued that, when a request for reimburse­ment was filed only after rectification, the procedural si­tu­ation was the same as if "the Board of Appeal had decided upon it and re­mitted the case to the depart­ment of first in­stance for further prose­cu­tion" (see still reasons 5; see also T 242/05, headnote).

5. The board disagrees with this finding.

5.1 In particular, the board disagrees that non-reimburse­ment of the appeal fee by the examining division in the case of inter­locutory re­vision of its decision must be equa­­ted with the situation in which the board of appeal has refused a corresponding request.

5.2 G 3/03 states (reasons 3, 4th sen­tence) that "In the absence of a request for reim­burse­ment of the appeal fee, the decision of the depart­ment of the first in­stance granting interlocutory re­vi­sion pursuant to Article 109(1) EPC will make no mention of the issue of reimbursement of the appeal fee, and the appellant will not be adversely affected by the decision."

5.3 Apparently, the appellant is not adversely affected by the granting of interlocutory revision itself. Thus the board takes the main point of that statement in G 3/03 to be that an appellant who did not request reimburse­ment of the appeal fee is not adversely affected by the fact that the examining division did not order reim­burse­ment.

5.4 Since the examining division is not competent to decide that the appeal fee is not reimbursed, an in­ter­locutory revision without an order for reim­burse­­ment cannot be construed as a decision not to re­im­burse.

5.5 Rather, the board con­si­ders that the request for re­imbursement of the appeal fee can be validly filed even after the examining divi­sion has granted interlocutory revision, since Rule 103 EPC entrusts the board with the decision on "all other matters of reimbursement" based on only the two conditions mentioned: That the decision was rectified and the appeal fee was not reimbursed by the exa­mining divi­sion.

6. Therefore, the board considers itself competent to deal with the appellant's request for reimbursement of the first appeal fee.

Termination of financial obligations

7. According to Article 13(2) RFees, rights against the Organisation for the refunding by the European Patent Office of fees are extinguished after four years from the end of the calendar year in which the right arose. The appellant's potential right to have its appeal fee reimbursed arose from the decision of the examining division to grant interlocutory revision. This decision bears the date 26 March 2012, so the Office's potential obligation to reimburse the fee is not extinguished until the end of 2016.

The alleged procedural violation

8. The appellant argues in its present grounds of appeal that the examining division, in coming to its first decision, violated the appellant's right to be heard for two reasons.

9. Firstly the appellant notes that the examining divi­sion, in its communication of 20 December 2010, had argued that claim 1 as received on 5 November 2009 was unclear due to the feature that "a tool is fur­ther applied to convert the JavaScript program code into a HTML docu­ment file" (see in that communication, section entitled "Cla­rity and Support", pages 2-3; especially the first paragraph on page 2). The exa­mining division had further made refe­rence to the ori­ginal disclosure on page 5, lines 8-10, which specifies that "a tool is applied to convert this JavaScript do­cument file into a HTML document file" (loc. cit.).

9.1 The appellant therefore had to assume, as the board understands the argument it, that the examining divi­sion's objection was a lack of support due to the diffe­­rent language used in the claim and in the descrip­tion on page 5 (see grounds of appeal, page 11, lines 6-10) and amended the pertinent phrase accor­ding­ly so as to refer to "a tool to convert a JavaScript file into a HTML document file".

9.2 In its subsequent refusal decision, the exa­mi­ning divi­sion used the same wording as in the pre­vious commu­ni­cation. The appellant argued that, even though the same wording was used, this was "a new factual reasoning", and that it therefore seemed that the examining divi­sion had not ta­ken into account the appellant's submission dated 21 June 2011 (see grounds of appeal, page 11, 2nd para­graph).

10. Secondly, the appellant points out that the examining division granted interlocutory revision although no new claims had been filed with the appeal, arguing later that "arguments given by the applicant for clarity [had been] possibly of nature of overcoming the ground of refusal", and claims that this already shows that there was a violation of the right to be heard (see grounds of appeal, paragraph bridging pages 11 and 12). It is further argued that the examining division acted against the principle of procedural economy in that the second refusal is at least in part based on the same reason as the first decision to refuse the appli­ca­tion," namely "the question, how the tool can convert a JavaScript file into a HTML file" (see grounds of appeal, page 12, 2nd paragraph).

11. Regarding the first alleged procedural violation, the board takes the following view.

11.1 In the communication dated 20 December 2010, the exami­ning division objected under Article 84 EPC that the functionality of the claimed "tool" lacked support and was unclear in a number of respects (see page 2, "Cla­ri­ty and Support"). Although reciting the specific terms in which this tool was claimed, the examining division also expressed the opinion that the tool was unclear even in view of the passage of the original de­scription which, according to the appellant (see its letter dated 4 November 2009, page 2, 5th paragraph), disclosed the claimed tool.

11.2 With its response dated 21 June 2011, the appellant filed an amended claim 1 in which the tool was now claimed in terms more literally corresponding to the original disclosure of the application. In the board's view, the appellant could therefore assume that it had over­come the examining divi­sion's concern regarding support by the de­scription. Ostensibly, the examining division shared this view: its first decision recites the amended wording of claim 1 and does not maintain the objection that the claim lacked support (see page 2, section now entitled only "Clarity"). The examining division also did not main­tain an objection relating to the term "message.js", apparently in res­ponse to the appellant's response (see the commu­nica­tion of 20 December 2010, point b), and the appellant's response, page 3, 5th paragraph.

11.3 The examining division however maintained its genuine clarity objection as regards the way in which the tool was to convert the JavaScript file into an HTML file (cf. first decision, page 2, question a) towards the bottom) and its reasons for this objection ("First" to "Fourth" on page 3 of the first decision). Contrary to the appellant's argument, this does not amount to new factual reasoning even though the claims were amended. Moreover, the board cannot find in the relevant passage of the appellant's submission dated 21 June 2011 (point 3, beginning on page 3) any statement that would res­pond to the exami­ning division in this respect. The board therefore considers it justifiable that the exa­mi­ning division main­tained its clarity objection. It is immaterial for this finding whether the board agrees in substance with all objections raised by the exami­ning division.

11.4 In summary, the board finds that the file does not support the appellant's allegation that the decision under appeal was based on grounds on which the appellant did not have an opportunity to comment, or that the examining division did not take into account the appellant's submissions, Article 113(1) EPC 1973.

12. Regarding the second alleged procedural violation, the board takes the following view.

12.1 Article 109(1) EPC 1973 provides that the examining division rectifies its decision if it con­si­ders the appeal to be well-founded. It must there­fore normally be assumed that the exami­ning division, when rec­ti­fying its decision, considers the appeal to be well-founded.

12.2 The appellant argues that a substantial procedural vio­lation is evident from the fact that the examining di­vision maintained at least some objections from the first decision in its summons to oral proceedings issued after rectification. The board understands the appellant to imply that the examining division should not have rectified its decision because it did not actually consider the appeal to be well-founded.

12.3 The board notes that the examining division is not re­quired to provide written rea­sons to explain its decision to rectify. The board can hence only speculate about the decision-ma­king of the examining division.

12.4 That said, the board deems it plausible that the exami­ning di­vi­sion considered that the reasons given in its de­ci­sion were no longer sufficient in view of the appellant's grounds of appeal and therefore decided to rectify its decision. It appears also from the file that the examining division later changed its mind with respect to at least some of its original objections.

12.5 The board considers that this sequence of events may have been unfortunate for the appellant but is of the opinion that it may not under all circumstances be avoi­­ded. That the course of action taken by the exa­mi­ning divi­sion may not be the procedurally most effi­cient one does not mean that a substantial proce­dural vio­la­tion occurred. Fur­thermore, the finding that an appeal is well-founded where it later turns out not to be may be a substantive error but is not in itself a procedural violation. The board cannot exclude the possibility that under certain circumstances an abusive rectification of a decision may have to be considered a procedural vio­lation. Since, however, the board has no reason to assume that the examining division rectified its deci­sion abusive­ly, it need not go into the poten­tial conse­quences of this that.

13. In summary, the board concludes that no substantial pro­cedural error occurred in the examining proceedings leading to the first appeal or the examining division's decision to rectify and that, therefore, the request for reimbursement of the first appeal fee must be rejec­ted.

The invention

14. The application addresses the need to provide web pages in multiple (natural) languages such as English, French and German and is concerned with the problem of provi­ding a suitable way of switching between languages.

14.1 It is discussed that known solutions are undesirable as they either require too much memory or cause compli­ca­ted coding processes and excessively high data load (see page 1, 3rd paragraph - page 2, 1st paragraph). The invention is meant to improve known solutions in these regards.

14.2 The invention proposes to replace the text fragments in the HTML code defining a given web page by JavaScript fragments which represent a corres­ponding text fragment as the value of a JavaScript variable (say, va_access). Such a fragment is disclosed in the application on page 4, lines 27-30. Furthermore, in a separate JavaScript file, the variables are assigned the corres­pon­ding text fragment. There are different "language packs", each pre­sumably comprising the text assign­ments for all re­le­­vant variables in a given language (see page 4, last sentence). In the board's un­derstanding, this file is re­ferred to as a "JavaScript associated docu­ment file" (page 4, line 33); la­ter in the same sen­tence it is referred to as "the document file". The de­finition and the use of the JavaScript variables in, res­pectively, the JavaScript file and the HTML file, are re­ferred to as "variable codes".

14.3 It is further disclosed that for displaying text data "no modification other than the access route is re­quired". The board takes this to mean that the HTML file need not change when the language changes, but that it must only be specified which language pack the Java­Script variables in the HTML file refer to (page 5, lines 4-8).

14.4 The description also mentions that "multiple check keys" are generated "for the translator to check whe­ther [the] messages are correct" (page 5, lines 15-18, and page 6, lines 10-12) - i.e., in the board's under­stan­ding, correctly translated.

Clarity and terminological questions

15. The board has no reason to drop the objections raised in the annex to its summons to oral proceedings, be­cause the appellant has chosen not to respond to the summons. This applies in particular to the clarity objections which are summarised below, based on the objections raised in the annex to the summons to oral proceedings.

16. The board agrees with the decision under appeal that some of the language used in the inde­pen­dent claims is vague and unclear.

16.1 Firstly, the claims use imprecise lan­guage in a number of places. For example: The term "va­riable code" used in claim 1, although lite­rally meaning "code which may vary", must apparent­ly be con­strued to mean "code rela­ting to variables". Although claim 1 (lines 11-13) li­terally specifies that the "variable code" is re­placed with "one of those language packs", it is evi­dent that this cannot mean that the "variable code" is re­placed by an entire "lan­guage pack"; rather, indivi­du­al bits of the "variable code" should be re­placed with indivi­du­al text fragments from the language packs.

16.2 Secondly, the board considers the term "JavaScript asso­ciated document file" to be unclear. Even if it is un­derstood to mean a document file written in Java­Script, the claims do not specify what it is "asso­ci­ated with".

16.3 Thirdly, the board agrees with the decision under appeal that the term "access route of the document file" is unclear. Even if the term is taken, as the appellant suggests (see grounds of appeal, page 5, 2nd and 3rd paragraphs), to have no spe­cial meaning but to refer merely to the way in which the "JavaScript asso­ci­ated document file is accessed by the JavaScript pro­gram code", it re­mains unclear what the statement that "a readout and pro­ce­dural output according to an access route" is per­formed means.

16.4 Fourthly, the board considers unclear the phrase "for a translator to check whether the messa­ges are correct while performing trans­lation", which qualifies the "mul­­­tiple messages generated by the JavaScript program code" and "displayed in multiple pop-up message boxes": it is unclear whether the phrase is a non-limiting state­­ment of intended purpose and alleged advan­tage, or whe­ther it is meant to limit the claim and, if so, what limitation is meant to be implied. And the phrase is un­clear in itself in that it does not define what spe­cifically the trans­la­tor is to check and how the "pop-up message boxes" might support the trans­lator in his or her task. The board notes that clarity of this fea­ture is of par­ticular importance because it is central to the appellant's argument in favour of inventive step.

16.4.1 In order to produce a new "language pack" it would seem that the translator would have to provide translated versions of the individual text fragments. The trans­la­ted text fragments would be stored in a newly created "JavaScript associated document file". Although this file has to define the "variables" used in the "vari­able code" of the "JavaScript program code" and thus would have to contain some bits of JavaScript code (for in­stance as the appellant suggests on page 6, last pa­ragraph, of the grounds of appeal), the text frag­ments would be clearly apparent from that "JavaScript" file even for readers without any knowledge of JavaScript. It would therefore seem to the board that the Java­Script file itself conveniently enables the translator "to check whether the messages are correct". The board considers unclear how the message boxes might further contribute to this effect.

16.4.2 The board also notes that the pop-up boxes according to the claimed invention produce the text fragments out of context, i.e. independent of the actual run-time situ­a­tions in which they might be produced by the pro­gram in question (see application, page 5, lines 12-18). Hence, the translator could not assess whether the trans­la­tions are correct in the specific circumstances but only that they are correct in principle.

16.4.3 The board also notes that claim 1 does not specify how the "message boxes" are generated and how they are arranged relative to one another in an assumed (but not claimed) user interface. For example, it is not clear whether all message boxes are displayed on one screen, or only some of them and which ones. Speci­fi­cally, the arrangement depicted and discussed in the grounds of appeal (see page 4, figure) appears to have no basis in the application as originally filed.

17. In summary, the board comes the conclusion that claim 1 lacks clarity, Article 84 EPC 1973.