EP 3 621 766 B1 relates to a method for producing a 3 D structure by means of laser lithography with a modified exposure dose at edge portions and corresponding computer program product.
Brief outline of the case
The OD found that claim 1 as granted lacked N over two documents not mentioned in the ISR established by the EPO. The OD decided maintenance according to AR3.
The opponent appealed this decision.
The board held that claim 1 as maintained was not compliant with Art 123(2) in view of feature M3. The same applied to AR1-11.
The board admitted AR12 and considered that the amended feature M3 was compliant with Art 123(2).
The board also decided that the OD had committed a SPV.
The case was remitted to the OD for further prosecution.
The case is interesting in view of the admissibility of AR12 and of the SPV.
In this blog entry we will deal with the SPV.
The opponent’s point of view on the remittal
The opponent requested remittal to the OD for consideration of the issues of lack of clarity and lack of IS. The opponent argued that he was faced with an entirely new set of circumstances now that one AR had been selected from among 95 AR.
It was unreasonable to expect it to prepare for all possible variations of AR, and it had not been foreseeable that proceedings would continue on the basis of AR12.
A remittal of the case to the OD was necessary to ensure a fair procedure.
During the OP before the OD, arguments regarding IS were put forward on the basis of D3, D6, D11 and D12. The minutes of the OP recorded only the objections based on D3 and D11 and the non-admission of documents D11 to D13.
By contrast, the OD’s decision addressed only the objections of lack of IS based on D6 and the non-admission of D11. The objection of lack of IS based on D3 and the non-admission of D12 were not substantiated.
The proprietor’s point of view on the remittal
The proprietor objected to the remittal to the OD, as the inclusion of the feature of the pulsed laser – which the OD had regarded as implicit – would not result in any changes to the arguments concerning clarity and IS.
The proprietor confirmed that the opponent had raised two objections regarding a lack of IS, based on D6 and, in a more concise form, also on D3.
The board’s decision on remittal
The board reminded that Under Art 111(1), it is at the discretion of the board whether to decide the case itself or to remit it to the previous instance
Pursuant to Art 11 RPBA, a board shall remit only if there are special grounds for doing so. As a rule, special reasons exist where the proceedings before that body are vitiated by substantial procedural defects.
As regards the clarity of the term “internal areas” in feature M5 of claim 1 AR12, the board saw no particular grounds justifying a remittal.
This was not the same for IS.
As confirmed by both parties, an objection on the grounds of lack of IS was raised on the basis of both D3 and D6; however, the objection on the grounds of lack of IS based on D3 was neither addressed nor substantiated in the contested decision.
With regard to D12 and D13, it was stated in the grounds of the decision that these documents do not suggest the subject-matter of claim 1 of AR1, “because neither D12 nor D13 discloses a variation in the exposure dose as a function of the curvature and/or slope of the outer surface in edge sections adjacent to the outer surface as compared with inner regions.”
This also contradicts the minutes of the OD, according to which D11 to D13 had not been admitted. Furthermore, it is not clear from the decision to which ground of opposition this blanket statement refers.
For the board the OD’s decision was not in conformity with R 112(1).
Even though the parties have not specifically raised a procedural violation in the present case, the failure to state reasons, constitutes SPV.
In particular, the objection regarding lack of IS based on D6 – which takes a grey-scale process as the closest prior art – does not appear to be directly transferable, without modification, to the objection based on D3 – which takes two-photon polymerisation with a modified exposure dose at the edges as the closest prior art, with the result that, in this respect, there is no reasoning in the OD’s decision that could be reviewed by the board.
There is therefore a special reason within the meaning of Art 11 RPBA which justifies referring the matter back to the OD for it to assess the IS on its own authority and, where necessary, to amend the description.
Comments
We have here a further example of what has by now become a classical example of a SPV.
The first member has drafted a decision, and the second member has drafted minutes, but neither the first examiner nor the minute writer have cross-checked the decision and the minutes for coherence between each other.
The chair of the OD has manifestly signed the decision and the minutes without spotting the incoherence between the two documents.
For the surplus, I invite you to look at T 0236/22, commented in the present blog.
The fact that during an OP and afterwards the members of an OD are not sitting together is a contributory factor for this type of SPV. The gold standard in OP remains the in-person OP with all three members of the deciding body sitting together.
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