Wednesday, 10 March 2010

T 810/07 – Ways Of Saying No

The present decision concerns a textbook example of a ‘wish claim’. The Board appears to have hesitated between rejecting it for lack of novelty and rejecting it for lack of clarity. Finally it formulated a sort of hybrid rejection.

Claim 1 read : “A projector comprising: a light source for emitting beams of lights; a rod lens (24) for receiving the beams of lights from the light source for making a distribution of the beams uniform; and, a polarization beam converter (26-30) having a lens part (26, 28) comprising a first illumination lens (26) and a second illumination lens (28) for receiving the beams from the rod lens (24) and focussing onto a plurality of focusing points, and polarization beam split array (30) for receiving the beams inclusive of a P wave and an S wave, and forwarding the P wave as it is, and converting the S wave into the P wave before forwarding, or forwarding the S wave as it is, and converting the P wave into the S wave, characterized in that the rod lens (24) and the polarization beam converter (26-30) are arranged to improve the quantity of the beams concentrated on the center part (38) of the illumination lenses (26, 28), so that the deterioration of the beam uniformity caused by fine movements of the illumination lenses (26, 28) and/or the polarization beam split array (30) is prevented.

In a communication accompanying the summons to oral proceedings (OPs), the board informed the appellant of its purely preliminary and unbinding comments on the case as follows.

The functional terminology used in the characterising part of claim 1 could not be considered clear within the meaning of A 84 because (a) the general terms used, such as “improve”, “deterioration” and “fine” movements, were not quantified and thus obscure and (b) in the absence of any structure or quantification, it amounted to an obscure result to be achieved.

With respect to novelty, it seemed undisputed that the pre-characterising features of claim 1 were known from document D2 as explained by the examining division. In view of its obscurity, the feature “to improve the quantity of the beams concentrated on the centre part” could not be considered to provide novelty. Generally speaking, axial beam concentration is always a desideratum, and even if the board considered the terminology somehow limited to the configuration of Figure 9 of the application, this would not seem novel over, for instance, Figure 4 of document D2. Equally no structure was present explaining non occurrence of “deterioration” of the beam consequent to “fine” movement, and whatever this may mean, the same structure in the prior art documents would appear also to achieve this result.

Accordingly, the board was not in a position to consider the subject matter of claim 1 to be novel. [V]

[…] Since no response was made to the communication of the board ahead of the OPs, the comments therein made have not been disputed by the appellant. The board has, of its own motion, seen no reason to change its position as set out in that communication. In particular, the board remains of the view that the features in the pre-characterising part of the claim are known from document D2 as explained by the Examining Division (ED), whereby it can be observed that the division referred to lenses 4 and 5 and the word “sprite” mentioned in the analysis of the ED has been corrected to “split” in the claim presented on appeal. [2]

Likewise, the board remains of the view that the characterising features of claim 1 are not clear, and, do not provide novelty. Therefore, so far as the subject matter of claim 1 can be considered clear, it is not novel within the meaning of A 54. [3]

Accordingly, the application documents provided with the statement of grounds for appeal, the sole version up for decision, cannot be considered to comply with the requirements of the EPC. [4] 

Perhaps I am being pernickety, but I do not find the hybrid formula “so far as ... can be considered clear, it is not novel” fortunate. This wording raises the question of how a lack of clarity should be dealt with. I plan to comment on another decision where the Board found that unclear features should be considered as open to anticipation by more extensive prior art, or, in extreme cases, non-limitative. On the other hand, a simple rejection for lack of clarity appears to be possible, too. The present formula tries to strike a balance between these two options, which makes it look undecided (or should I say: unclear?).  

To read the whole decision, click here.