Friday, 20 August 2010

T 1327/07 – Doing Things In The Right Order

Claim 1 of the opposed patent read:

Method for the anonymisation of telecommunications operations and relations in telematics applications, wherein an anonymising device (3) logically located between telecommunications network (2) and telematics service centre (4) removes all characteristics identifying the end subscriber from the communications operation in relation to the operator/provider of telematics services, replaces them by a unique, varying, temporary identification unknown outside the device, and for a limited time ensures projection of the permanent identification onto the temporary identification, characterised in that, when using cryptographic methods to ensure confidentiality and security of communications operations against manipulation, if the latter use parameters individual to the subscriber, the anonymising device (3) logically located between telecommunications network and telematics service centre performs cryptographic transformations (3.2) for the separation of code circuits used in the cryptographic methods.

The patent under consideration had been opposed, inter alia, under A 100 c). The opponent pointed out that the amendment of feature “… for the separation of the code circuits …” (application as filed) to “… for the separation of code circuits used in the cryptographic methods …” (claim 1 as granted) was inadmissible.

The Opposition Division came to the conclusion that no interpretation other than that the code circuits are used in cryptographic methods was possible. The Board confirms this opinion:

** Translation from the German **

[2.3] […] It follows from the meaning of the features of the characterising part of claim 1 [as determined by the Board], which [meaning] encompasses the execution of cryptographic methods at the level of end subscribers, that code circuits are formed at this point and used by the cryptographic methods. In the original disclosure it was stated – without any prior reference to “code circuits” – that “cryptographic transformations are carried out in order to separate the code circuits” (original claim 6, emphasis added by the Board). Within the framework of the interpretation of claim 1 [adopted by the Board], the only technically meaningful understanding of this feature which results from the original disclosure is that those code circuits are separated which have been created, and therefore, used, beforehand by cryptographic methods.

[2.4] The [opponent’s] argumentation referred to decision T 792/94. According to this decision, a request that cannot be understood in an unambiguous way allows for an interpretation which goes beyond the teaching of the application as filed and which, therefore, violates A 123(2).

However, this is not the case here as the Board bases its decision on a possible inadmissible extension on an unambiguous interpretation of claim 1. Moreover the [opponent] was not able to exemplify (durch ein Beispiel aufzeigen) a potential ambiguity of the request.

[2.5] It follows that claim 1 has not been amended in a way that extends its object beyond the content of the application as filed. […] The patent complies with the requirements of A 123(2).

My understanding of this matter is that before examining the extent of protection (and its possible inadmissible extension) one has to come to a conclusion regarding the correct interpretation. The mere existence of an interpretation that would lead to the conclusion of inadmissible extension is not sufficient. The A 123(2) objection will succeed only if the skilled person would retain this particular interpretation. Should the skilled person hesitate between two possible interpretations, both might be considered under A 123(2). If one of them violated A 123(2), there might be trouble ahead.

To read the whole decision (in German), you may click here.