Monday, 30 August 2010

T 811/06 – A Matter Of Judgment

NB: All articles and rules refer to the EPC 1973.

[4.1] The examining division (ED) asserted in the refusal of claim 1 of the main request that the division of a memory in two interchangeable separate areas according to the characterising portion of claim 1 was known in many fields, for instance as a “ping-pong” memory architecture and was thus common general knowledge.

[4.2] The appellant argues that the ED, by not providing a prior art document in support of this assertion, failed to sufficiently reason its decision, and prevented him from formulating a cogent response. The question arises as to whether the behaviour of the ED in the proceedings up to refusal deprived the applicant of the right to be heard (A 113(1)), and whether the decision was sufficiently reasoned (R 68(2)).

[4.3] Decision T 939/92 referred to by the appellant in the statement of grounds of appeal (followed for instance in T 1242/04 [9.2]) sets out that A 54(2) does not limit the state of the art to written disclosure in specific documents. Rather it defines it as including all other ways (“in any other way”) by which technical subject-matter can be made available to the public. Therefore, the absence of a reference to a particular document does not mean that there is no state of the art, as this could reside solely in the relevant common general knowledge, which, again, may be in writing, i.e. in textbooks or the like, or be simply a part of the unwritten “mental furniture” of the notional “person skilled in the art”.

It is true, and the board agrees with the appellant in this respect, that in the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact under contention, has to be proved, for instance by documentary or oral evidence (see also T 329/04 [45]).

[4.4] According to the minutes of the oral proceedings (OPs) held before the ED, the applicant accepted that conventional structures known as “double-buffering” or “ping-pong” memory architecture might be used to increase the throughput of data streams. The board thus deduces that the applicant did not dispute that a ping-pong memory architecture and its benefit were common general knowledge. By contrast, the appellant stated that he was unaware of an example in the context of look-up tables […].

[4.5] Claim 1 of the refused main request sets out separate (active and pending) tables for selecting packets and does not expressly set out look-up tables. The last paragraph on page 4 of the decision under appeal refers to examples of ping-pong memory architectures with separate memory areas in general and also does not specifically refer to the use of such areas as look-up tables.

[4.6] The device of D2 uses a memory containing a single table (operating indeed in practice as a look-up table) to select data packets […]. This was not contested by the appellant. The question whether a person skilled in the art would have combined the teaching of D2 with the (uncontested) common general knowledge of a ping-pong architecture having two interchangeable memory areas is a matter of judgment. Documentary evidence for the feature of ping-pong architecture “in the context of look-up tables” was thus not necessary, and the ED was not required to provide documentary evidence for their argumentation.

[4.7] In view of the above, and since the reasoning in the decision only reflects issues which have been debated in the OPs (which the appellant did not contest), the appellant was not deprived of an opportunity to present comments on the issues relevant to the outcome of the case in the proceedings up to refusal (cf. A 113(1)).

[4.8] R 68(2), first sentence, aims to put the appellant in a position to ascertain the reasons for the decision in order to defend his rights, in particular by setting out grounds of appeal, and the board to exercise its power of review of the legality of the decision. As explained in the foregoing, the reasoning in the decision under appeal […] built on facts disclosed in D2 and uncontested common general knowledge to conclude that the subject-matter of claim 1 lacked an inventive step. The argument qualified by the appellant as a bold assertion of “common general knowledge” did not prevent him from understanding the reasoning in the decision and from formulating counter-arguments in the statement of grounds of appeal. Therefore, the decision is also considered to be sufficiently reasoned.

[4.9] As a result, the ED did not commit a substantial procedural violation and the appellant’s request for reimbursement of the appeal fee is not allowable.

If you wish to download the whole decision, please click here.