Thursday, 5 May 2011

T 1691/08 – Don’t Speculate

The present appeal deals with a refusal of an application by the Examining Division (ED). According to the decision, the application did not fulfil the requirements of A 84; insofar as claim 1 could be understood, its subject-matter did not involve an inventive step.

The wording of independent claim 1 before the Board was as follows:
A long-period grating with a center wavelength λp having enhanced stability to variations in temperature comprising:
an optical fiber (10) including a core (11) having an effective mode index of refraction ncore, a cladding (12,13) surrounding said core (11) having an effective mode index ncladding less than ncore, said core (11) having a grating region (14) comprising a plurality of perturbations (15) in its refractive index spaced apart by a periodic distance Λ to form the long period grating with a center wavelength λp ; and characterized in that:
a polymeric overcoat layer (20) is located on said cladding (12,13), said cladding (12,13) being located between said grating region (14) and said polymeric overcoat layer (20), said polymeric overcoat layer (20) having a refractive index np that is lower than an index of refraction of the cladding (12,13) and has a first derivative with respect to temperature dnp/dT, and wherein np and dnp/dT are chosen so that the rate of change of λp with respect to temperature is less than 1 nm/100°C.
The Board does not agree with the ED’s findings. Here is what it had to say on the clarity objection:

[2.2.1] In the Decision objection was raised under A 84 for the reason that the analysis of the temperature dependence of the centre wavelength λp of the long-period fiber grating concentrated on the influence of the refractive index change of the polymer cladding with temperature but that, according to the ED, it was immediately apparent that for a proper solution the inclusion of stress and strain related effects was necessary. Since this influence was not taken into account claim 1 was unclear and not supported by the description.

[2.2.2] The Board does not share this position. The Board notes that the present patent application discusses the underlying technical problem in the Section “Principles of design”. In this section the patent application discloses the solution to this problem and illustrates in Figure 5 the obtained improvement by showing a comparison of a long-period fibre without coating (curve 1) and an exemplary recoated fibre (curve 2).

Furthermore the Board understands that the lower dependency of temperature in the recoated fibre is obtained by selecting the value of the refractive index of the polymer overcoat layer np and its first derivative with respect to temperature dnp/dT […].

[2.2.3] It appears to the Board to be mere speculation whether a further inclusion of stress and strain-related effects in the problem analysis would have led to an even “better” technical solution, but such a consideration is irrelevant for the question whether the conditions of A 84 are met: as is set-out in point [2.2.2], the technical problem of prior art long-period gratings defined in the preamble of claim 1 is solved by the further features defined in the characterising portion of the claim. Thus it appears that claim 1 is not objectionable under A 84. 

The same conclusion holds for the further claims of the main request.

Should you wish to have a look at the whole decision, just click here.

The file wrapper can be found here.


Anonymous said...

Mr. Randl,

Thanks for posting this decision. It is not uncommon for some EPO examiners to engage in "making stuff up" MSU when making clarity objections: claim 1 is unclear because the term X is unknown in the art. Often a quick search of past-issued claims or google books reveals that the term is well-known. It appears to me that some examiners do not interpret claims from the perspective of one skilled in the art, but from their own view: any suspect term beyond current or voltage are objected to.

The biggest disconnect, though, between the BoA and the ED is the application of Art. 123(2) as it relates to intermediate generalizations. Amended claims that straddle the original claims and a certain embodiment are almost always objected to by examiners, and they typically hint that all features of the embodiment must be included. However, the BoA consistently hold this does not violate Art. 123(2): "In the instance of claim features being extracted in isolation from detailed embodiments in the description, this means, following established case law of T 1067/97, T 714/00 or T 25/03, it should be clearly recognizable that these features are not inextricably linked in terms of function or structure with the remaining features of the embodiment."

Further, T 461/05 stated that there should be some reasons articulating why omitted features would be necessary to carry out the invention or why each of the embodiments constitute an indissociable bloc, i.e., inextricably linked.

However, some examiners seem to interpret "the absence of any clearly recognisable functional or structural relationship" between claimed isolated features and the original combination of features not on an inextricably linked basis, but merely that they are shown together in an embodiment, which proves they have a functional or structural relationship.

What gives?

oliver said...

Well, your comment sounds as if you had some bitter experiences.

Clarity is always a difficult matter, because it is more subjective than, say novelty or even inventive step when assessed with the problem-solution approach.

I am not so sure that there is such a big gap between the EDs and the Boards as far as intermediate generalisation is concerned. I've seen a great number of decisions where the Boards did not allow requests on this basis. It really boils down to whether the amendment presents the skilled person with information which cannot be derived directly and unambiguously from the original application, and this is a question that can only be decided on a case-by-case basis.

pat-agoni-a said...

Have you noticed that the examining division issued a further communication on April 22 in response to the order of the BoA to grant a patent?

Myshkin said...

Ah, the ED is introducing new documents instead of keeping to the Board's orders. I don't think the ED has any room for that. Is there case law on this?

Anonymous said...

I did not mean to sound bitter, just frustrated. To be clear, I find most of the ED competent and intelligent. But, their emphasis on formalities can be maddening and can cost an applicant quite a bit of money. In short, expressis verbis has no support in the EPC or case law, but that seems to be the standard applied.

Thanks for your reply.

Anonymous said...

I hope that the applicant does not bend to the objections of the examining division and forces a further refusal, so that the board has the opportunity to state their view on such procedure. I cannot view any other outcome than a severe reprimand and the finding of a substantial procedural violation.

oliver said...

Thanks, pat-agoni-a, for having shared this noteworthy discovery with us.

I guess A 111(2) is the most relevant legal basis, although one might perhaps argue that the facts are not the same when the ED comes across new relevant prior art.

As far as case law is concerned, I think the body of res iudicata doctrine would find application. Besides that, I also found T 1399/06 in my case law treasure chest, but the situation is not quite the same: in this case an OD was scolded for maintaining a request that was broader than the set of claims on which the Board based its remittal for further prosecution.

Myshkin said...

"In short, expressis verbis has no support in the EPC or case law, but that seems to be the standard applied."

Literal support is indeed not required, but without literal support for an amended claim an applicant will usually have a very difficult time explaining why the claim is not in any respect broader or narrower than what was disclosed in the application as filed (because usually it will be broader or narrower in some respect). The case law of the Boards IS very strict.

Of course, if an applicant has done his homework and also clearly explains to the ED how he derived the amended claim directly and unambiguously from the application as filed, it should be expected that the ED does not object.

pat-agoni-a said...

A 111(2) EPC does not apply in this case, as the board did not remit the case "for further prosecution", but decided the case with the order to grant a patent with the listed documents. There is no room for any further action of the ED but to follow this order. In fact it is A 111(1) EPC which applies in this case with the BoA exercising the powers of the ED.

oliver said...

Well,you may be right. When thinking about this I had come to the conclusion that the remittal with an order to grant was a particular case of remittal for further prosecution. If your argument was right, then the Board itself would have to grant the patent, wouldn't it?

pat-agoni-a said...

In principle yes, but as still some formalities have to be fulfilled (fees, translations, etc) this is handled by the department of first instance. This has administrative reasons, so that DG3 does not need to duplicate all the required administrative infrastructure.

Anonymous said...

I can't follow pat-agoni-a's argumentation.
Art 111 is the only article that regulates what the BoA can do for finishing a case: either exercise the power of the first instance (111(1)) or remit the case for further prosecution (111(2)). In the present case clearly Art 111(2) was applied.
The ratio decidendi is to grant a patent as set forth in the decision.
This however only holds true as long as the facts are the same. In the present case the facts have apparently changed by the additional document which is cited by the applicant but apparently not discussed for reaching the ratio decidendi. Therefore, though the ED cannot deny Art 84/56 with the documents so far on file, the application must be assessed in light of the new document not yet considered.

In my opinion this is a straightforward and also cost-effective procedure: for example the same document may be submitted as third party observation - then the ED would also need to take this document into account for the decision (at least the document would be relevant in opposition proceedings).

oliver said...

My last offer: A 111(1,5) applies. ;-)

pat-agoni-a said...

There are three typical orders in examination proceedings in decisions from the BoAs following setting aside the decision:
a) to grant a patent with the following docs;
b) to adapt the description;
c) for further prosecution.

Only in case (c) is the ED empowered to request amendments to the claims, although following the ratio decidendi of the decision, ie if something was found novel or inventive over some docs the ED is bound by these findings. New material may be cited in these cases. What is not so clear is whether the ED is bound by the interpretation of the claims given by the board or if, on hand of new material, a new interpretation can be given to some features.

In any case, in situations (a) and (b) no amendments to the claims are allowed. They were finally decided by the board (res judicata). Opposition although is a new chapter that is still open.

Myshkin said...

Although I suspect that pat-agoni-a is right, I wonder what he considers to be the legal basis for a) and b) (where I understand a) to refer to an "order to grant").

That the ED is bound by an order to grant does not follow from Art. 111(2), since the order (R. 102(h)) is not a ratio decidendi (R. 102(g)).

I also don't see how remitting and ordering the ED to grant a patent is a case of exercising the power of the ED.

The "order to grant" seems part of the decision on allowability of Art. 111(1), first sentence. This decision is of course binding. However, Art. 111(1), second sentence, does not seem to give room for giving such an order.

Of course the fact of the matter is that most if not all allowable appeals result in one of orders a), b) and c), and I cannot imagine a Board saying that its orders have no binding power.

oliver said...

I think almost all that can be said has been said. I too would like to see whether there is any "legal basis" for pat-agoni-a's triptych.

The more I think about it, the more I believe that the drafters of A 111 had no "remittal with the order to grant" in mind when they wrote the provision. A 111 appears to cover two situations: either the Board exercises the powers of the first instance (and it can do so until the end, for instance when it revokes an opposed patent), or it remits the case at some point "for further prosecution", whatever this may be. Remittal with an order to grant is somewhat in between and might have been introduced for practical reasons. As it is in between, it is difficult to be sure whether A 111(2) applies or not. Personnally I still believe it does (even formalities qualify as further prosecution), but there have been good arguments against this view.

Myshkin's R 102 argument is interesting but I would say that one must not mix up the reasons for the decision and its ratio decidendi. T 934/91, citing Black's law dictionary, has given a definition of the latter: "the "ratio" of any decision is the ground or the reason for making it, in other words, the point in a case which determines the outcome of the judgment". So the reasons under R 102(g) certainly have to express the ratio decidendi but they are not to be confounded with it.

Myshkin said...

Several decisions cite Art. 111(1) as the basis for remitting to the first instance with an order to grant. See e.g. T 22/00, T 978/98, T 962/95, T 1221/01.

T 79/89 is interesting. In the earlier decision T 133/85 on the same application, the Board refused the main request and remitted the case to the ED with the order "to complete the examination of the application on the basis of Claim 1 of the conditional submission B". The ED then sent a R. 51(4)-communication, but the applicant reinstated the claims of the main request. The ED did not admit these claims and refused the application, the applicant appealed once more.

In the summons to the oral proceedings (dated 22.03.1990), the Board expressed the view that, firstly, it followed from Art. 111(2) that the ED was bound by the order of the BoA, so that it had no discretion to re-open examination on the basis of any other claim. Secondly (and for the case that the Board would not maintain the above position), it followed from Art. 111(2) that the ED was bound by the Board's decision to refuse the main request, so that the ED had no discretion to re-open examination of the main request.

In the decision, the Board took the second position. Maybe it had some doubt that the order it had given in T 133/85 was really binding on the ED?

Turning again to T 1691/08, if we assume for the moment that the ED is not bound by the order itself, does the introduction of new documents really change the facts to the extent that the ED is not bound by the finding of the Board that the claims were new and inventive? If the Board states that certain subject-matter is novel, is this an absolute statement (so that new documents may prove it wrong but cannot undo its binding effect), or only relative to a limited set of prior art (so that new documents can undo its binding effect)?

Myshkin said...

I agree that not everything of the reasons is part of the ratio decidendi of a decision, but I wanted to distinguish between the ratio decidendi (to be found in the reasons) and what is in the order, and R. 102 seems to support this quite nicely.

I've now found T 609/94 about the difference between pat-agoni-a's cases a) and c):
"2.2. According to Article 111(2) EPC it is assumed that the Board took one or several partial decisions and, for the rest, remitted the case for further prosecution and decision to the first instance. The opposition procedure is resumed for the remaining part to be decided - in the present case above all the question of inventive step had to be investigated. In doing so, it is a matter of course that the patentee, also at this stage of the procedure, should have the opportunity to modify the claims (following decision T 0027/94, unpublished). Thereby the modified claims may not be in conflict with the ratio decidendi of the earlier decision of the Board of Appeal.

2.3. It is a different situation if the Board dismissed the decision under appeal and remitted the case to the first instance with the order to maintain a patent with claims whose wording had been defined by the Board. In such a case (as in decision T 0843/91 cited by Respondent II), the first instance is not entitled to admit amended claims, since they are part of the res iudicata of the decision of the Board."

As I understand this, the binding effect of an order is not based on Art. 111(2), but on the more general principle of res iudicata.

Decision T 843/91, points 3.4.1 and 3.4.2, explains that pat-agoni-a's case b) is based partly on Art. 111(1), exercise of the powers of the ED (for the claims, which are res iudicata) and partly on Art. 111(1) and (2), remittal for further prosecution (of the description, which has to be adapted). Point 3.4.2 refers to T 79/89, but imho this decision says less than what point 3.4.2 suggests.

Another interesting decision is J 8/98. The Board agreed with the (old) practice to skip the R. 51(4)-communication (when there was still R. 51(6)) after an order to grant, because the text had become res iudicata.

T 694/01 gives a nice overview, contrasting in points 2.13 and 2.14 the case where a Board has only decided on novelty and inventive step (leaving open the possibility of examining sufficiency of disclosure) with the case where a Board has decided on the text of the claims.

So in the present case, the order of the Board implies that the text of the patent application has become res iudicata. The ED has no power to contest its compliance with the EPC on whatever grounds and in regard to whatever new facts. The ED is now clearly in the process of committing a substantial procedural violation.

oliver said...

Job well done!