What happens when a Board finds, during oral proceedings (OPs) in the absence of the applicant, that the main claim on file overcomes the objections that led to the refusal by the Examining Division (ED) but that the amendment has caused clarity and A 123(2) problems in the dependent claims? Will the Board dismiss the appeal, as there is no allowable request on file?
[14.3] In view of the foregoing, the board concludes that the prior art of record is not prejudicial to the inventive step of the invention as now defined in claim 1 of the second auxiliary request.
Deficiencies in the dependent claims
[15.1] The board notes that there are deficiencies in the dependent claims of the second auxiliary request as detailed below.
[15.2] The expressions “the available storage capacity” (claim 2) and “the available data capacity” (claims 3 and 4) lack an antecedent basis in view of the amendments to independent claim 1 and thus render the definition of the matter for which protection is sought unclear.
[15.3] The expressions “an amount of unused data storage in the first communication device” (claim 3) and “the amount of data stored in the first communication device” (claim 4) are not specifically limited to the unused data storage or the data stored in the output buffer of the communication device. The wording of claims 3 and 4 in this respect thus represent generalisations which are not supported over their full breadth by the description.
[15.4] Insofar as “the amount of data output” recited in claim 5 is intended to correspond to the “measure of data outputed [sic]” recited in claim 1, the subject-matter of claim 5 appears to be redundant. The unnecessary repetition in a dependent claim of subject-matter which is already present in an independent claim constitutes a lack of conciseness in the formulation of the claims as a whole, contrary to the requirements of A 84.
[15.5] In view of the foregoing, the board finds that the dependent claims of the request do not comply with the requirements of A 84.
Conclusions
[16.1] Claim 1 of the second auxiliary request defines the matter for which protection is sought in a manner which, in the board’s judgement, overcomes the objections under A 84 upheld against the preceding requests. Moreover, in view of the clarifying amendments to the claim, the board finds that the available prior art is no longer prejudicial to the patentability of the claimed subject-matter.
[16.2] Notwithstanding the board’s findings in respect of claim 1 of the second auxiliary request, the request as a whole is not allowable in view of the deficiencies in the dependent claims as detailed under 15. above.
[16.3] Despite these deficiencies, the board takes the view that the request could, without undue difficulty, be amended to comply with the requirements of the EPC. Such amendment would require appropriate adaption (sic) of the dependent claims. The minor linguistic error in claim 1 […] should also be corrected.
[16.4] The board notes that the appellant’s non-attendance at the scheduled OPs was not conducive to procedural efficiency because, in principle, it would have been possible to amend the remaining deficiencies in the request during OPs had the appellant attended or been represented.
[16.5] Nevertheless, the board accepts that the amendments filed with the letter dated 5 May 2009 represent a bone fide attempt to address the objections raised in the communication accompanying the summons to OPs. Given that claim 1 of the second auxiliary request effectively overcomes those objections, the board concludes that a dismissal of the appeal due to the remaining deficiencies in the request would not be justified.
[16.6] Under the given circumstances, the board judges that the most appropriate course of action is to remit the case to the first instance for further prosecution pursuant to A 111(1). The purpose of the remittal is to provide an opportunity for the dependent claims of the second auxiliary request to be amended such that the request as a whole may be brought into conformity with the requirements of the EPC.
So the Board was applicant-friendly and remitted the case back to the ED. It could as well have dismissed the appeal, without committing any procedural violation, and it might well have done so in inter partes proceedings. But even in ex parte proceedings this approach cannot be taken for granted, as we shall see in a forthcoming post. So if you want to reduce the risk of losing a patent for minor details, you better show up at the OPs.
Should you wish to download the whole decision, just click here.
1 comments:
An important aspect in this case was that the appellant had not requested oral proceedings (see point III).
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