Monday, 20 December 2010

T 296/08 – Essential Yet Unclaimed?

When a feature is presented as essential in an application, does it have to be incorporated into the claims ? The present decision suggests that there are special cases where it does not.

Claim 1 of the divisional application refused by the Examining Division (ED) read:

1. A coning compensation method for use in a strapdown inertial navigation system, the method utilizing the incremental angles of rotation of a coordinate system expressed as a vector Δθ(k,n,m) and measured in successive time periods to obtain an estimate of the coning compensation for NK successive time periods, Δθ(k,n,m) corresponding to the (mNK+nK+k)’th time period, k being equal to 5, the method comprising calculating the R(m) component of the coning compensation according to the formulas

n taking on integer values from 1 to H, H being equal to 3, U(h,k) and V(h,k) being predetermined numbers for all values of h and k, W(h) being a predetermined number for each value of h, and the symbol x denoting the vector cross-product operation.

The Board first states that the claims on file overcome the A 76 objection and then continues:

[2] A further objection under A 84 raised by the ED with respect to the independent claims 1 and 13 is not confirmed by the Board in view of extensive arguments put forward by the appellant in its statement of grounds.

The ED argued that the term 1/2 R(0,m) + R(m) was an essential feature of the invention because it was stated in the description of the parent application as originally filed:

“The sum of quantities 1/2 R(0,m) and R(m) is the coning compensation and corresponds to the integration of the second and third terms in equation (2).”

This term should therefore appear in the independent claims to meet the requirements of A 84.

[3] However, the original versions of the corresponding claims 1 and 3 of the parent application do not contain this feature. It is rather indicated in these claims (see the last feature in each), that: “...the estimate of the coning compensation comprising R(m)”.

Therefore the estimate of the coning compensation includes R(m) as an essential element. This is, however, not in contradiction to the coning compensation being the sum of 1/2R (0,m) and R(m).

As far as the problem underlying the claimed subject-matter is concerned, the relevant prior art determines whether there is a difference solving a reasonable technical problem, which would be the objective technical problem, accordingly.

However, in the absence of any relevant prior art - only documents describing technical background (category A) are cited in the European Search Report - there is no reason to limit the claims any further and reformulate the technical problem.

[4] Therefore the Board concludes that the subject-matter of the independent claims meets the requirements of A 76 and A 84 and sees no reason to question novelty and inventive step over the prior art. […]

I may be wrong, but I understand this to mean that even if a feature was described as essential in the application (which is not beyond all doubt in the present case), it does not have to be incorporated into the claims if the claims as filed did not contain it. 

In such a case, will it be necessary to amend the description in order to eliminate the discrepancy between the description and the claims?

The Guidelines (C-III 4.3(ii)) have an interesting paragraph on inconsistencies regarding apparently essential features:
… it may appear, either from general technical knowledge or from what is stated or implied in the description, that a certain described technical feature not mentioned in an independent claim is essential to the performance of the invention, or, in other words, is necessary for the solution of the problem to which the invention relates. In such a case, the claim does not meet the requirements of A 84, because A 84, first sentence, when read in conjunction with R 43(1) and (3), has to be interpreted as meaning not only that an independent claim must be comprehensible from a technical point of view but also that it must clearly define the subject-matter of the invention, that is to say indicate all the essential features thereof (see T 32/82). If, in response to this objection, the applicant shows convincingly, e.g. by means of additional documents or other evidence, that the feature is in fact not essential, he may be allowed to retain the unamended claim and, where necessary, to amend the description instead. The opposite situation in which an independent claim includes features which do not seem essential for the performance of the invention is not objectionable. This is a matter of the applicant’s choice. The examiner should therefore not suggest that a claim be broadened by the omission of apparently inessential features; ... (my emphasis)
I for one would be very reluctant to amend the description because such an amendment definitely invites A 123(2) objections in later opposition or nullity proceedings. Depending on the exact wording of the application before and after the amendment, such objections might be very hard to counter. So unless the Examiner obliged me to do so, I would not take the initiative of amending the description.

Should you wish to download the whole decision, just click here.

To have a look at the file wrapper, click here.


manolis said...

The guidelines are clear: any feature identified as essential in the description must be present in the claim. If it is missing, this discrepancy must be corrected, either by adding it in the claim or by amending the description to stop identifying it as essential, provided that the latter is technically justified (prior art, problem to be solved etc). In this case, the Board - in my opinion - mentioned the original claims as an indication to the fact that the feature in question was not essential since it was not there. This appears to be the reasoning and not like "it is essential but since it was missing from the original claims, it is ok to leave it out now".

oliver said...

Well, the situation is not clear-cut, and there is room for interpretation.

What I found noteworthy is the "where necessary" in the Guidelines. You could say that this means "in the passages where it is necessary", but this is not what the German and French versions of the Guidelines suggest. Their wording ("si nécessaire", "gegebenenfalls") is less ambiguous and does not sound as if it was an absolute requirement. There is some discretion left to the Examiner, and an attorney might want to take advantage of it.

BTW, it would be interesting to know in which language the Guidelines are drafted before they are translated. I guess it is the English version that comes first (if I remember correctly, the English version of the EPC 2000 Guidelines was available well before the French and German versions).

Norman said...

It seems to me that the application does not say that the contentious equation for the calculation of Φ(m) is essential. The ED relied on column 5, lines 34-36 of the description, but these lines say only that the contentious equation defines “the coning compensation.” From the application, it seems that the inventive step is the method of calculation of R(m), which is then used in the contentious formula to calculate Φ(m), which is itself used to calculate the ultimate quantity of interest, ΔC. The Board decision says that while the coning compensation is Φ(m), only R(m) is essential. It is not necessary to specify the method of calculation of Φ(m) for the same reason that it is not necessary to specify the method of calculation of ΔC. To insist that the claim include the contentious equation would “reformulate” the technical problem – from determination of R(m), to the determination of Φ(m).

Is this a sensible interpretation? I am a Canadian academic, trying to become familiar with EPO case law, so I may well be msising something.

oliver said...

Hello Norman,

Yes, I think your interpretation is alright. Apparently the ED had come to another conclusion, but the Board found this conclusion not to be correct.

I used this case as a springboard for more general musings on applications containing discrepancies but this appears to have created more confusion than insight.

Incidentally, I doubt that a blog like mine is the best place for becoming familiar with EPO case law. If you want to get familiar with the fundamentals, I would recommend that your read the Case Law Bible, which you can download here:$FILE/Case_law_of_the_boards_of_appeal_2010_en.pdf

Best regards.

Kimiko Loko said...

Do not be so shy/humble Oliver. Although I find the Case law "bible" as an excellent book, it that not means that your blog is also an excellent tool to become familiar with the EPO jurisprudence.

oliver said...

Thanks, Kimiko Loko.

What I meant is that when you want to become a cook, you should start by learing how to separate eggs. Later on you will learn how to make a crêpe Suzette. This blog is more about haute cuisine than about the fundamentals. In other words, it is preferable to know about G 1/03 before you dwell on the effect of a disclaimer on priority.

This is also why, as a rule, I do not think that EQE candidates should spend too much time on my blog: because the exam is about fundamentals rather than the forefront of case law.

Myshkin said...

The Guidelines are probably an even better starting point for becoming familiar with EPO case law.