This is a good example of we never give up and do anything we can for our client to get a successful result.
This is an application at the European Patent Office (EPO) where the case received an oral proceeding notice after several office communications.
The last office action rejected all claims under Article 83 EPC, Article 84 EPC, Article 56 EPC.
Upon receiving the last office action, we set up an interview with the Examiner. During the interview, the Examiner pointed out that it would be very challenging if not impossible to overcome these rejections and especially Article 123(2) EPC and Article 83 EPC rejection.
Consequently, we participated to the oral hearing with three Examiners. The oral hearing took approximately 9 hours 40 minutes. At the end of the hearing the Examining Committee decided to allow the case with minor amendments to independent claim.
We made the following arguments to bring this case having no hope for allowance to allowable case.
- We argued under Article 83 EPC and Rule 88 EPC that there was an obvious mistake and the mistake would be obvious to a person having ordinary skill in the art given the disclosure. We used board decisions such as G3/89 and G11/91 to support our arguments. After we made our arguments, Examining Committee agreed with our arguments and allowed us to amend the specification to eliminate ambiguity in the specification by deleting two sections of the specification that cause ambiguity.
- Next, we addressed Article 84 rejection. Upon overcoming Article 83 EPC rejection, we were also able to overcome Article 84 EPC rejection.
- We then moved to arguing against Article 56 EPC Inventive Step rejection. We argued against each rejection one by one using all prior arts cited by the Examiner in the office communication. We were able to overcome all rejections except one rejection which is an inventive step rejection based on the combination of prior arts D1 and D8. We argued against this combination and stated that this would be an “ex post facto” analysis which means the Examiner is using the Application claim as a road map to find claim limitations in the prior art.
- After our arguments and after a brief recess, the Examining Committee agreed to allow the application with minor amendment to independent claim.