T 724/08 – Hard To Find – So What?

In this case the Board inter alia discussed the admissibility of documents filed together with the statements of ground of appeal.

*** Translation of the German original ***

[3.1] The main purpose of inter partes appeal proceedings is to offer the losing party the opportunity to contest the decision of the Opposition Division (OD) that adversely affects it and to have the correctness of this decision reviewed in proceedings that are completely separate from and independent of the first instance proceedings (see e.g. T 34/90, G 9/91 and G 10/91 [18]). As the nature of appeal proceedings is that of proceedings before an administrative court (G 7/91 and G 8/91) the decision of the Board of appeal shall in principle be based on the disputed matter (Streitstoff) of the first instance. As far as new submissions of a party in appeal proceedings are concerned, this principle means that the admission of such submissions is not ruled out but depends on the fulfilment of certain requirements (see e.g. T 356/08 [2.1.1]; T 1685/07 [6.4]; Brigitte Günzel “The treatment of late submissions in proceedings before the boards of appeal of the EPO”, OJ EPO, Special edition 2/2007, 30). An opponent whose opposition has not been successful in the first instance may file new prior art documents during the appeal proceedings, but it has no entitlement to these submissions being admitted into the appeal proceedings. Rather, the admission of new submissions depends on whether certain requirements have been fulfilled and is within the discretion of the Board.

[3.2] These principles are expressed in Articles 12(4) and 13 RPBA. As the [opponent] has filed documents D10/10a and D11/11a together with its statement of grounds of appeal, Article 12(4) is the relevant provision in the present case.

[3.3] Pursuant to Article 12(4) RPBA, without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under Article 12(1) RPBA shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. Accordingly, in application of Article 12(4) RPBA, the Board is entitled, in the present case, not to admit into the proceedings documents D10/10a and D11/11a, which the [opponent] has cited for the first time in the statement of grounds of appeal, if this evidence could have been filed in the course of the first instance proceedings.

[3.4] In its statement of grounds of appeal the [opponent] has for the first time based its objection of lack of inventive step of the claims of the patent as maintained by the OD inter alia on documents D10/10a and D11/11a. The claims of the patent as maintained correspond to the second auxiliary request filed during the OPs before the OD. The amendment with respect to the impugned patent as granted consists in the combination of claims 1 and 3 as granted to claim 1 as amended and the corresponding renumbering of the claims as granted. Thus the Board is of the opinion that the patent as maintained in amended form by the OD does not contain any amendments that raise new aspects with respect to the impugned patent as granted. It is, therefore, not clear to the Board to which extent the submission of documents D10/10a and D11/11a could be a reaction of the [opponent] to this second auxiliary request. Rather, the [opponent] has made the objection of lack of novelty already when filing its opposition, and, therefore, these documents could have been filed in the course of the first instance proceedings or even – as argued by the [patent proprietor] – within the time limit for filing an opposition.

It is not relevant in this context whether the [opponent] has indeed received these Japanese patents and the corresponding “Patent Abstracts of Japan”, respectively, at a later time or whether these documents were indeed hard to find, because this cannot [change the situation] to the detriment of procedural economy and the principle of fairness with respect to the other party. Just as a patent proprietor is required to file amended claims during the first instance opposition proceedings, an opponent has to submit objections to claims as granted during the first instance. If it does submit such objections only when filing the statement of grounds of appeal, as in the present case, then it takes the risk of the Board making use of its discretion pursuant to Article 12(4) RPBA not to admit these submissions into the appeal proceedings.

When exercising this discretion, the Board can make the admission of a submission of a prior art document into the appeal proceedings dependent on whether this prior art document is prima facie relevant. However, the Board does not have to do so; otherwise an opponent could always file a (highly) relevant prior art document together with the statement of grounds of appeal without further ado and rely on its admission into the appeal proceedings, because of its relevance.

In the present case the Board left aside the question of the relevance of documents D10/10a and D11/11a, which had been discussed by the parties, because, for reasons of procedural economy and also [of fairness] with respect to [the patent proprietor], it did not consider it to be justified to admit these documents - which have been found accidentally and which had not been specifically (gezielt) searched at an earlier stage of the proceedings - into the appeal proceedings, regardless of their relevance.

[3.5] For the above reasons documents D10/10a and D11/11a have not been admitted into the proceedings, in application of Article 12(4) RPBA.

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The file wrapper can be found here.

T 2373/11 – All Too Literal

This is an appeal of an applicant whose application had been refused by the Examining Division (ED).

The applicant explained that he had been deprived of oral proceedings (OPs).

*** Translation of the German original ***

Violation of the right to OPs

[2.1] According to the established case law of the Boards of appeal, in examination proceedings the ED has to grant a request for OPs pursuant to A 116 on behalf of an applicant before it can issue a decision that adversely affects the latter, such as a decision to refuse [its application]. In view of the wording of A 116 the ED has no margin of discretion at all. This obligation that is derived from the fundamental procedural principle of the right to be heard has also found an expression in A 112a(2)(d) in connection with R 104(a), in the context of substantial procedural violations.

[2.2] In its response dated August 20, 2009, the [applicant] had filed a request for a “hearing” (“Anhörung”) in case the ED intended to refuse the present application […]. According to the impugned decision the ED was, however, of the opinion that a request for a hearing could not be considered to be a request for OPs pursuant to A 116 and that [the applicant] was not legally entitled to an oral hearing under the EPC […].

[2.3] In this context, however, the impugned decision does not indicate anywhere how the term “hearing” would have to be concretely interpreted, i.e. what the ED understood the request for a hearing to actually mean. In particular, it is not clear from the decision whether the request for a hearing was considered to be a request for an informal personal or telephone interview, which the ED, as a rule, is not obliged to grant (see the Guidelines of April 2010, C-VI, 6.2; C-VII 2.1 as of June 2012).

[2.4] According to the relevant case law, a request for a “hearing” can on the one hand be understood to be equivalent to a request for “OPs” within the meaning of A 116(1) (cf. T 417/00 [2.3]; T 1829/10 [2.4]) and, on the other hand, can be a request for OPs or an informal interview (cf. T 917/93 [3]). Therefore, the Board can accept that it was not unambiguously clear to the ED, when it was faced with a request for a “hearing” - considered literally and at first sight - that this was beyond doubt a request for OPs.

[2.5] It is true indeed that the applicant would have been well-advised to make its request in an unambiguous way (e.g. by expressly using the expression “OPs” and/or [a reference to] A 116). However, as the relevant procedural right is so fundamental, the ED would have had to ask the applicant for a clarification if there was the slightest doubt that what had been requested was indeed OPs or not (cf. T 19/87 [5]; T 668/89 [3]; T 417/00 [2.3] T 1829/10 [2.4]). In the present case this was not done.

[2.6] Rather, the communication of the ED dated July 13, 2010, made the applicant believe that summons to OPs were to be expected as the next procedural step, unless the claims were substantially amended in view of the objections that had been raised […]. 

NB: The communication contained the following statement: “As the objections of the ED have already been explained in detail and discussed during the international phase, the next proedural step will be the summons to OPs unless the claims are substantially amended in view of the objections that have been raised.”

Thus the applicant was right in assuming that its request for OPs had been understood as a request for OPs and that there was no further need for clarification as to the request for a hearing. Thus the applicant was surprised by the fact that there were no summons to OPs before the final decision on the case was issued, all the more as the amendments to the claims the applicant had filed in response to the above communication only comprised “linguistic adjustments” and did not correspond to substantial amendments […].

Under these circumstances the ED should have summoned OPs or at least clarified [the situation] before taking the decision to refuse [the application]. The refusal without prior summons to OPs or clarification constitutes a procedural violation.

[2.7] In view of the question whether the case was to be remitted and the appeal fee reimbursed, it is necessary, according to the established case law of the Boards of appeal, to distinguish between a “substantial procedural violation”, which objectively affects the whole proceedings (cf. J 7/83 [12]) and a subjective “error of judgment” (Fehleinschätzung) of the first instance (see, e.g. T 19/87 [5]). The Board is of the opinion that, in principle, an “error of judgment” occurs only when the first instance, despite its desire to assess a case subjectively “correctly” and despite all due care, reaches a decision on a request that is objectively “wrong”. However, this is not what has happened here.

As a matter of fact, the ED, when interpreting the request for a “hearing”, has limited itself to a literal interpretation instead of trying to understand this – apparently not completely unambiguous – request. Moreover, the subjective interpretation of the term “hearing” has not even be justified (see point [2.3] above). The ED only explained that there was no legal right to a hearing under the EPC. If this logic was to be followed, for instance, “auxiliary requests” of a party could be ignored because they are never mentioned expressis verbis in the EPC and, therefore, would have to be considered inadmissible. Thus the ED has not made a serious effort to assess the facts in a manner that is as objective as possible.

Moreover, the ED did not strive to clarify the factual situation in regard of all the doubts it might have had, e.g. by means of a telephone call (cf. point [2.5] above). Thus the Board is of the opinion that [the ED] has not exercised all due care and has accepted the case to remain pending for several years because of an all too literal interpretation instead of obtaining a final first instance decision on this case by means of OPs – which can, as a rule, be carried out within a day. Moreover, by conditionally announcing OPs, it has raised wrong expectations in the applicant and, consequently, has objectively mislead it, thereby violating the generally accepted prohibition of “venire contra factum proprium”.

[2.8] Therefore, the Board is of the opinion that [the ED] has objectively violated the inalienable right of the applicant to OPs, which is anchored in A 116(1). This amounts to an infringement of a procedural principle of the EPC and, therefore, to a procedural violation. As this procedural violation has deprived the applicant of the opportunity to overthrow the negative opinion of the ED by filing new arguments and/or requests during OPs terminating the examination proceedings, and therefore to have a decisive influence on the first instance decision, this has to be considered to be a substantial procedural violation.

[2.9] Thus the impugned decision has to be set aside, for the reasons given above.

The Board decided to remit the case to the ED. It then dealt with the request for reimbursement of the appeal fee:

[4] As the appeal has to be allowed and as the first instance has committed a substantial procedural violation (see points [2.8-9] above), the question of whether the appeal fee has to be reimbursed requires the assessment, in application of R 103(1)(a), whether such a reimbursement is equitable, i.e. if there is a causal link between the substantial procedural violation and the need to file an appeal.

In this context it has to be noted that during the examination proceedings the applicant has not behaved in a way that would raise suspicions as to whether it intended to delay the proceedings or to commit a procedural abuse. Rather, it has responded to the communications of the ED in due time by filing amended claims and counter-arguments […]. Moreover, during OPs the applicant would have had a very last opportunity of avoiding a refusal by filing further amendments or counter-arguments. As the ED has deprived it of this very last opportunity by not summoning it to OPs, it had to file an appeal against the decision to refuse [its application] in order to safeguard its right to OPs and to avoid a final refusal of the application, respectively.

Thus the Board is of the opinion that there is a causal link between the substantial procedural violation committed [by the ED] and the filing of the appeal and the payment of the appeal fee, respectively. Therefore, it is also equitable to reimburse the appeal fee pursuant to R 103(1)(a) in this case.

NB: The Board has provided a headnote:

In case an organ of the EPO has doubts whether a party has required OPs (e.g. when a “hearing” has been requested), it has to clarify the situation in order not to commit a substantial procedural violation (see points [2.4-7])

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The file wrapper can be found here.

T 1125/10 – Passivity Breeds Doom

This is a revocation appeal.

When summoning the parties to oral proceedings (OPs), on October 16, 2009, the Opposition Division (OD) expressed its provisional opinion according to which the prior art on file did not destroy the novelty and inventive step of the claim of the opposed patent.

The proprietor informed the OD on December 12, that it would not attend the OPs.

On February 12, 2010, the opponent cited new documents E6 and E7.

The OPs were held on March 4, in the absence of the patent proprietor. At the end, the OD revoked the patent.

The patent proprietor filed an appeal as well as new requests taking into account E6 and E7.

It finally decided not to attend the OPs before the Board.

The Board found these requests to be inadmissible.

*** Translation of the French original ***

[1.1] Claims 1 of the main request and of auxiliary requests 1 to 3 have been amended by introducing the subject-matter of claims 5, 7, and 8 of the patent as granted (which correspond to original claims 5, 7, and 8). During the appeal proceedings [the patent proprietor] has presented no argument whatsoever in support of the inventiveness of claim 1 of the patent as granted. The [patent proprietor] does not contest that the decision of the first instance to revoke the patent on the ground of lack of inventive step of said claim was correct.

[1.2] In such a case where the patent proprietor requests the Board of appeal to examine new requests, the question arises whether these requests could have been filed in the course of the first instance proceedings, and their admission into the proceedings is within the discretion of the Board of appeal, which is entitled “to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings” (Article 12(4) RPBA).

[1.3] This discretionary power has to be exercised in view of the purpose of appeal proceedings, which are distinct from and independent of the first instance proceedings and aim at delivering a judicial decision on the validity (bien-fondé) of a decision issued beforehand by the first instance department. Thus the appeal gives the losing party the possibility to contest the first instance decision (G 9/91) and aims at removing the “adverse effect” (“grief”) by modifying or setting aside the impugned decision. As a consequence, a party cannot decide to present its case only before the second instance department. This would be tantamount to “forum shopping” and would jeopardize the normal distribution of functions between the first instance departments and the Boards of appeal (cf. T 1067/08 [7.2, 8.1]). Also, a party cannot compel [a Board] to remit the case to the first instance as it likes (T 240/04 [16.1-2]). Filing requests that could have been filed in the course of the first instance proceedings is also contrary to the principle according to which no party may take advantage of its own negligence (nemo auditur turpitudinem propriam allegans – T 1705/07 [8.7])

[1.4] The following particular elements of this case are relevant in this regard:

[1.4.1] E6 and E7 have a publication date before the priority date of the opposed patent and, therefore, belong to the state of the art according to A 54(2). The passages cited by the opponent immediately reveal that the content of these two disclosures had the potential to overturn the provisional opinion of the OD because of the light they shed on the information contained in D1 in regard of the “dual phase” steels, even in case the documents had been cited for the first time during the OPs.

[1.4.2] The amendments of claims 1 consisting in a combination of the independent claim with one or several dependent claims were possible and appropriate during the opposition proceedings. The amendments are not surprising and do not give rise to particular problems. Such amendments can be made during an interruption of 10 to 15 minutes, which is a normal reaction during OPs before the OD.

[1.4.3] Unlike the situation dealt with in decision G 4/92, the [patent proprietor] was aware of the fact that two new documents were introduced by the opponent […] and of its arguments (at least) three days before the date on which the OPs were to be held. Thus, the [patent proprietor] had several options other than the filing of the requests comprising the amendments referred to above and in particular in point [1.4.2], such as:

• requesting [the Board] not to admit the late-filed documents;
• requesting a postponement of the OPs; and
• reconsidering its decision not to attend the OPs.

[1.5] It has chosen none of these options. Even the statement of grounds of appeal did not contain any argument whatsoever related to this lack of reaction. As a matter of fact, the sole argument of the [patent proprietor] was that it believed that the OD should have postponed the OPs in order to allow the patent proprietor to react to the new documents and to their potential effect on the final decision, as three days clearly was much too short a time for preparing OPs in a proper way.

[1.6] However, the question to be answered is not so much whether there is a minimum time limit, nor how much time the [patent proprietor] would have needed for preparing the OPs under consideration, which it did not even intend to attend. As far as the discretionary power of the Board to hold inadmissible requests that have been presented for the first time during the appeal proceedings is concerned, the relevant question is whether the fact that the new requests have not already been examined by the first instance department is not due to the latter (here, the OD) but to the party concerned (here, the [patent proprietor]), whose behaviour has de facto hindered [the OD] from examining those requests (as has been stated in case T 1067/08 [8.1]).

[1.7] As for the OD, it has acted correctly; [the Board] cannot see any procedural violation. Under the circumstances [of the case], the only possible interpretation of the lack of reaction of the [patent proprietor] was that it was aware of [the situation], relied on the submissions that were on file and left it to the OD to decide according to its discretionary power. The [patent proprietor] knew, or should have known, that its passivity made the opponent and the OD understand that it would not contribute any more to the remaining proceedings. Moreover, the fact that it was very easy to check that the late-filed documents were quite suitable for establishing that a “dual-phase steel” as the one of D1 contained aluminium, that the OD had good reason to accept the documents E6 and E7 that had been filed after the time limit fixed pursuant to R 116(1) and to maintain the OPs and that it had no reason to postpone the OPs. Quite to the contrary, as things stood, the public and the parties could expect a decision to be taken without any further delay.

[1.8] As to the admissibility of the new requests filed before the Board of appeal, it clearly follows from the above that it was the sheer passivity of the [patent proprietor] in the presence of new and clearly relevant documents that caused the OD not to take a reasoned decision on the subject-matter of the claims as amended in response to these documents, and that, as a consequence, the Board of appeal is in a position where it either would be the first and last instance to decide, or had to remit the case to the first instance, despite the fact that the [patent proprietor] again did not attend the proceedings. Moreover, a discussion of and a decision on the requests in the appeal proceedings would offer the [patent proprietor] the possibility of remedying an omission for which it is responsible, for its sole benefit and to the detriment of the interest of the [opponent] and the public to have an immediate decision on the case.

[1.9] Consequently, the admission of the requests would be contrary to the purpose of appeal proceedings and the principles that govern it (see [1.2] above). Thus the Board of appeal makes use of its power to hold them inadmissible.

[1.10] As a consequence, there is not text submitted or agreed upon by the patent proprietor within the meaning of A 113(2). […]

The appeal is dismissed.

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The file wrapper can be found here.

NB: This case has already been presented on Le blog du droit européen des brevets (here).

T 42/10 – Not Amused

This is an examination appeal.

Claim 1 of the main request read:

A computer-implemented method of determining an indication of the relative skill (205) of at least a first player and a second player of a game based on the outcome of one or more such games involving those players said method comprising the steps of:

(i) arranging a processor (204) to, for each player, set statistics (200) describing a probability distribution associated with skill of that player to default values;

(ii) at the processor (204) receiving information about the outcome (201) of one of the games;

(iii) arranging the processor (204) to form and store a factor graph comprising variable nodes and factor nodes, the factor nodes having associated calculation rules, said graph being formed using the received information about the outcome, and arranging the processor (204) to instantiate at least some of the variable nodes with the statistics; and arranging the processor to form and store the factor graph such that it comprises a plurality of first groups of nodes, each first group being associated with a particular player and comprising nodes linked in series; and

(iv) arranging the processor (204) to update the statistics associated with each player by applying message passing to the factor graph using the calculation rules;

(v) arranging the processor to repeat the process of updating the statistics as further game outcomes are received

The Board found this claim to lack inventive step.

The decision has some interesting statements on technicality and contains a brief discussion of Gale’s application, a 1991 decision of the Court of Appeal of England and Wales.

[2.1] Claim 1 according to the main request defines a method that, based on outcomes of games, calculates indications of the skills of the players, by passing messages between nodes of a factor graph. It is necessary to determine in how far the features of the claim have technical character and so could contribute to inventive step.

[2.2] The [applicant], relying on T 619/02 [2.4.1], argues that the method of assessing player performance is technical by virtue of being a method of measuring.

[2.3] The board notes that T 619/02 does not say that all methods of measuring are technical. It must therefore be assessed whether the measurement can be accepted as technical in the present case.

[2.4] The term “measurement” is rather broad. It encompasses finding the spectrum of the hydrogen atom, or the salinity of sea water; but also whether one political party is more or less popular than another. In T 619/02, the measurement was of reactions to odours, and it was found to be non-technical. The [applicant] seeks to distinguish the present case, arguing that the reasons for rejecting the method in T 619/02 do not apply to the present case, because there are no psychological assessments involved.

[2.5] In the Board’s view, the lack of psychological assessments cannot, alone, be determinative. What is needed is a technical problem and a technical solution to it, i.e. a technical effect. However, judging the skill of a game player does not seem to involve a physical change at all, still less a technical effect.

[2.6] In this context, the [applicant] argues that the measurement of player performance might involve the measurement of hand-eye coordination or of reaction times. However, the claimed method does not measure reaction times, or use it to deduce information on performance. Nor does it take the information on performance and deduce anything about reaction times. The reaction time is never known. The same goes for hand-eye coordination. In fact, the claimed method is in no way limited to games in which reaction time or hand-eye coordination are important. It applies to chess as much as to football, and to poker as much as to pinball.

[2.7] The Board, therefore, sees clear reasons for considering the measurement of performance in games as non-technical.

[2.8] The [applicant’s] second argument is based on T 717/05 [5.9], in which it is stated that “amusement is the psychological purpose of a gaming apparatus and is the relevant objective technical problem to the extent that the enhanced amusement is achieved by technical features of the claim.”

[2.9] In T 717/05, the deciding Board did indeed hold that the step of monitoring outcomes of games was a technical feature, but only in combination with the step of displaying them (paragraph [5.6] with paragraph [4.5]). The displaying step was necessary, since it permitted the player to be informed about the development of the game, thus addressing the problem of maintaining interest (paragraph [5.1]). The present claim, however, does not require the players’ scores to be displayed, but only to be calculated. For this reason alone, T 717/05 does not appear to be relevant. A more basic reason is that the Board has strong doubts that amusement, even if achieved by technical (in particular, computing and displaying) means, really is a technical problem. If it were, any dull computer game could be regarded a posing a technical problem that could be solved by any less dull game. The difficulties involved in such a view are evident (the skilled person need not be skilled in a technical art; the effect would be subjective), and the decision has been largely ignored in the jurisprudence of the Boards of Appeal. T 528/07, expressly declined to follow the approach taken in T 717/05.

[2.10] The [applicant’s] third argument is that factor graphs, and the associated message passing algorithm, are technical. They address the technical problem of speeding up computation.

[2.11] In its full generality, speed of computation is a mathematical problem. It may be the case that a computer has a particular processor that is particularly good, or particularly poor, at some (class of) operations. Recasting a mathematical method so as to take advantage of what the processor does quickly, or to avoid what it does slowly, might involve technical considerations. In such a case, the recast method, when performed on that particular processor, might not be “just” mathematical but also be technical. However, not all recasting of mathematical methods in order to increase speed are technical. In the days when people looked up trigonometric functions in tables, recasting a method so as to reduce the number of times the tables had to be consulted might speed up computation, but nothing technical was happening.

[2.12] The [applicant] has not provided any evidence that there really is an increase in speed of computation. There is no analysis of the complexity of any prior art method of performing the same sort of calculation, and there is none of the complexity using factor graphs. Nor has the [applicant] provided any evidence for its assertion that the increase in speed would only be obtained on a computer, whereas calculations by hand would be slower. However, the Board also considers that, even if the increase in speed were established, it would not be an increase which solved a technical problem, and that is enough to reject the argument. According to the application […], it does not matter what sort of technical apparatus is used to perform the calculations. What matters is only the ability to carry out the necessary steps. It follows from that, that any improvement in speed is inherent in the method of calculation. It does not result from exploiting ability or avoiding some lack in the computer. At best, if the [applicant] is correct, and there is an increase in speed which only occurs on computers, it is a matter of abstract computer science.

[2.13] During oral proceedings before the board, Re Gale’s Application was briefly discussed, and the Board finds it useful to comment on it.

[2.13.1] Mr Gale had found an algorithm for calculating square roots, which he had implemented as a computer program. The court was concerned with the question of whether that was excluded under Section 1(2) of the Patents Act 1977. That provision gives effect, in UK law, to A 52(2). Lord Justice Nicholls delivered the lead judgment. He found that the program did not “embody a technical process which [existed] outside the computer,” and that although the computer “will be a better computer when programmed with Mr Gale’s instructions,” it did not “solve a ‘technical’ problem lying within the computer.”

[2.13.2] The Board’s approach to assessing questions of what is and what is not technical about a computer-implemented method, in this case, asks the same questions as Nicholls LJ in Re Gale’s Application. The first is: what does the method as a whole do, and does it produce an overall technical result? The second is: if there is no overall technical result, does the method at least have a technical effect within the computer? If both questions are answered in the negative, no technical problem has been solved and there can be no inventive step.

[2.14] The Board’s view regarding technicality can be summarized as follows.

[2.14.1] The overall aim of keeping players interested is not technical.

[2.14.2] The intermediary aim of assessing and comparing playing performance is not technical.

[2.14.3] The representation of performance by probability distributions, and the updating of them, are mathematical methods.

[2.14.4] The use of factor graphs with message passing is a matter of mathematics or abstract computer science.

[2.15] Given the Board’s conclusions regarding technicality, the only technical feature defined in this claim is the (computer) processor. The subject matter of claim 1, therefore, does not involve an inventive step if it would have been obvious to the skilled person, who has the task of implementing the method, to use a computer processor.

[2.16] It is not disputed that suitable computer processors were well known at the filing date (10 February 2006). The skilled person would have been aware that they would be able to carry out the mathematical operations involved in forming a factor graph and passing messages between nodes. Indeed, the method involves the collection of data, possibly large amounts of data, and the carrying out of calculations on it. That is just what computer processors were designed to be good at. It would, then, have been obvious to use them.

[2.17] The [applicant’s] argument that online Bayesian learning was not (well) known at the filing date does not affect the conclusion, even if correct. That is because the Bayesian learning is already part of the non-technical method the skilled person is required to automate.

[2.18] The [applicant’s] other argument, that there is a reduction in network traffic also fails to affect the Board’s conclusion. Firstly, there is no evidence of a reduction. Secondly, if there is an effect on network traffic, it is an effect that is obtained in any technical implementation that uses a communication network at all, rather than one that belongs to some particular (claimed) such implementation but not to others.

[2.19] The main request, therefore, cannot be allowed, because the method defined in claim 1 does not involve an inventive step.

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NB: There is a parallel case, T 1281/10.

T 99/09 – Not Quite Invisible

This is a revocation appeal.

Claim 1 of the main request was identical to claim 1 as granted and read:

Immediate release fenofibrate composition with a dissolution of at least 10% in 5 minutes, 20% in 10 minutes, 50% in 20 minutes and 75% in 30 minutes, as measured in accordance with the rotating blade method at 75 rpm according to the European Pharmacopoeia, in a dissolution medium consisting of water with 2% by weight of polysorbate 80 or 0.025M of sodium lauryl sulphate. (my emphasis)

The Board found this claim to extend beyond the content of the application as filed.

*** Translation of the French original ***

[5.1.1] Claim 1 of the main request is identical to claim 1 of the patent as granted.

This claim refers to an “immediate release” pharmaceutical fenofibrate composition having a certain in vitro dissolution profile. The application as filed did not contain this claim.

It turns out that the expression “immediate release” is disclosed in the application as filed only in exclusive association with other structural or functional features:

• first, in claim 1 as filed in correlation with other features, i.e. the presence of a “inert hydrosoluble carrier”, “a fenofibrate active ingredient in a micronized form having a particle size less than or equal to 20 µm”, and an in vitro dissolution profile such that it has “a dissolution of at least 10% in 5 minutes, 20% in 10 minutes, 50% in 20 minutes and 75% in 30 minutes, as measured using the rotating blade method at 75 rpm according to the European Pharmacopoeia, in a dissolution medium constituted by water with 2% by weight polysorbate 80 or 0.025M sodium lauryl sulphate”;

• then, in paragraph [0015] of the application as published […], in correlation with an “inert hydrosoluble carrier” coated with a layer containing “fenofibrate in a micronized form having a particle size less than 20 µm” and a “hydrophilic polymer”.

Thus the expression “immediate release” is never disclosed in isolation but always in association with certain technical features, in this instance always with at least an “inert hydrosoluble carrier” and “fenofibrate in a micronized form having a particle size less than or equal to 20 µm”.

These technical features are absent from the subject-matter of claim 1 of the main request, which, therefore, constitutes a generalisation with respect to the cited passages. The application as filed does not provide any basis for such a generalisation, in this instance for any “immediate release” composition whatsoever having the claimed dissolution profile.

Thus a fenofibrate composition according to claim 1 of the main request cannot be directly and unambiguously derived from the application as filed.

[5.1.2] According to the [patent proprietor] paragraph [0017] of the application as published […] provides a basis for claim 1 of the main request. This paragraph discloses that the invention also provides a composition comprising fenofibrate having the claimed dissolution profile.

[According to the patent proprietor,] the expression “immediate release”, therefore, had to be interpreted as an invisible limitation because the dissolution profile necessarily implied immediate release.

The Board agrees that paragraph [0017] of the application as published […] may serve as a basis for a composition claim that is exclusively based on the dissolution profile. However, this paragraph does not disclose that it is an immediate release composition.

Moreover, it is not possible to combine the functional feature of paragraph [0017] of the application as published […] with other structural or functional features isolated from the description when the latter are disclosed exclusively in association with other functional or technical features. This would be tantamount to being able to create a great number of compositions that have no basis whatsoever in the application as filed.

Incidentally, the Board cannot agree that the “immediate release” feature is synonymous with the claimed dissolution profile. As a matter of fact, this expression has a technical meaning that is common in the field of galenical pharmacology and allows to categorise the kind of composition to which it applies. In this instance, “immediate release” implies the release of a great quantity of active agent over a very short span of time, or even instantaneously, from a structured galenic formulation after its administration to a patient. This expression allows to distinguish the claimed compositions from compositions which allow to have a “delayed release” or an “extended release” of the active substance, and, therefore, implicitly implies the existence of a galenic formulation that allows immediate or instantaneous release. Although the expression is vague, the “immediate release” feature, therefore, has to be considered to be a functional feature expressing the fact that all the parameters of the fenofibrate composition have to be chosen such that the active substance is released immediately. Incidentally, immediate release does not necessarily imply that the active substance dissolves quickly, because the speed of dissolution depends on the degree of solubility of the active substance.

As a matter of fact, the in vitro dissolution profile that is disclosed in paragraph [0017] of the application as published […] defines the speed of dissolution of the fenofibrate and not its speed of release from a galenical formulation; this speed of release depends on the dissolution medium used for the measurement and of the degree of solubility of the active substance. The dissolution profile disclosed in this passage does not necessarily imply the existence of a particular galenic formulation because a pharmaceutical composition containing only fenofibrate, without any limitation as to the galenic formulation of the fenofibrate and/or the presence of excipients, may have this dissolution speed. Thus the dissolution profile cannot be considered to be a synonym of the release mode.

Therefore, the expression “immediate release” provides a technical contribution to the claimed subject-matter and cannot be considered to be “invisible”.

[5.1.3] As a consequence, claim 1 of the request extends beyond the content of the application as filed (A 100(c)).

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