T 1710/09 – Taking A Can For A Must

T 12/81 has made the following statement on selection inventions :

[12] A substance selection can come about in various ways, e.g. if an unmentioned compound or group of compounds having a formula covered by the state of the art is found, in the absence of any information as to the starting substance or substances. The present subject-matter does not involve a selection of that kind in an area which, although marked out by the state of the art, is nonetheless virgin territory.

[13] However, the disclosure by description in a cited document of the starting substance as well as the reaction process is always prejudicial to novelty because those data unalterably establish the end product. If on the other hand two classes of starting substances are required to prepare the end products and examples of individual entities in each class are given in two lists of some length, then a substance resulting from the reaction of a specific pair from the two lists can nevertheless be regarded for patent purposes as a selection and hence as new. (my emphasis)

There is some disagreement between the Boards on the interpretation of the verb “can” here. Some time ago, we have seen T 783/09 where Board 3.3.04 stated:

[5.6] However, given the term “can” in the citation from decision T 12/81, the absence of a direct and unambiguous disclosure for individualised subject-matter is not a mandatory consequence of its presentation as elements of lists. Thus, the “disclosure status” of subject-matter individualised from lists has to be determined according to the circumstances of each specific case by ultimately answering the question whether or not the skilled person would clearly and unambiguously derive the subject-matter at issue from the document as a whole […].

In the present decision, Board 3.3.02 comments this approach.

The patent proprietor had filed an appeal after the Opposition Division had revoked the opposed patent (17 oppositions had been filed!)

Claim 1 of the requests on file read:

Main request (amendments with respect to claim 1 as granted underlined):

Use of alendronate in the manufacture of a medicament for treating osteoporosis in a human in need of such treatment, where said medicament is orally administered to said human in the form of a tablet as a unit dosage comprising about 70 mg of the alendronate compound, on an alendronic acid active weight basis, according to a continuous schedule having a once-weekly dosing interval.

First auxiliary request (amendments with respect to claim 1 of the main request underlined):

Use of alendronate monosodium trihydrate in the manufacture of a medicament for treating osteoporosis in a human in need of such treatment, where said medicament is orally administered to said human in the form of a tablet as a unit dosage comprising about 70 mg of [deleted: the] alendronate monosodium trihydrate [deleted: compound], on an alendronic acid active weight basis, according to a continuous schedule having a once-weekly dosing interval.

Second auxiliary request (amendments with respect to claim 1 of the first auxiliary request underlined):

Use of alendronate monosodium trihydrate in the manufacture of a medicament for treating osteoporosis in a human in need of such treatment, where said medicament is orally administered to said human in the form of a tablet as a unit dosage comprising about 70 mg of alendronate monosodium trihydrate, on an alendronic acid active weight basis, according to a continuous schedule for at least one year and having a once-weekly dosing interval.

Main request; A 76(1)

[3.1] This claim 1 relates to the

• use of alendronate …
• for treating osteoporosis … orally administered … in the form of a tablet
• as a unit dosage comprising about 70 mg of the alendronate compound ……
• according to a continuous schedule having a once-weekly dosing interval.

[3.2] A combination of claims 6, 7 and 8 as originally filed in the earlier application provides for a combination of these features with the exception of the “form of a tablet”, which is missing. Moreover, the active ingredient “alendronate” is disclosed only in the form of the specific salt alendronate monosodium trihydrate and not as alendronate in general. Thus, regarding original claims 6 to 8, the teaching of claim 1 of the main request is at least generalised in an unallowable manner with respect to the active ingredient.

Looking at the description, the missing feature “in the form of a tablet” is found to be mentioned in example 2 together with “alendronate”. However, example 2 refers to examples 7 and 8 defining the “alendronate” as monosodium salt trihydrate, because the text in example 2

“Alendronate tablets or liquid formulations … are prepared (see Examples 7 and 8). The tablets … are orally administered …” (emphasis added by the Board)

leaves no freedom of interpretation that example 2 could relate to another alendronate than the monosodium salt trihydrate actually used […].

If, as an alternative, page 19, lines 18 to 27 are referred to in order to provide a basis for the feature “in the form of a tablet” in claim 1 of the main request, prima facie there would be no problem of unallowable generalisation. In these lines 18 to 27, the “form of a tablet” is correlated to bisphosphonates in general. However, in these lines alendronates as the particular embodiment of bisphosphonates are not disclosed for formulation as a tablet. In addition, the form of a tablet is mentioned as only one possibility of various oral forms, together with capsules, elixirs, syrups … or powder.

To provide a source for allowing the selection of alendronate from bisphosphonates, lines 7 to 14 on the same page could be cited disclosing

• preferred bisphosphonates, inter alia alendronate,
• more preferred alendronate, pharmaceutically acceptable salts thereof, and mixtures thereof (potentially meaning the same as alendronate in general) and, however,
• most preferred alendronate monosodium trihydrate.

The only information that is given for answering the question as to what level of preference might be combined with which member of the group of oral forms, e.g. with elixir, powder or in fact tablets, could be that “most preferred” prevails, but in this case the already described problem of unallowable generalisation reappears and claim 1 of the main request is still in breach of A 76(1).

[3.3] As an alternative, an attempt to find a disclosure of the features of claim 1 of the main request could be started from page 20, line 28 to page 21, line 19 of the description as filed in the earlier application:

a) The teaching set out there relates to the

• use of alendronate …
• as a unit dosage comprising from about 8.75 mg to about 140 mg of the alendronate compound … (page 20, lines 30 to 32)
• according to a continuous schedule having
• a once-weekly dosing interval (page 20, line 33 to page 21, line 4) or
• a twice-weekly dosing interval (page 21, lines 5 to 11) or
• a biweekly (page 21, lines 12 to 19) or
• a twice-monthly dosing interval (page 21, lines 12 to 19)
• for
• osteoporosis prevention or
• treating osteoporosis

with differing unit dosages, namely 35 mg for “prevention” or 70 mg for “treatment” (see page 21, lines 1 to 4, lines 7 to 11 and lines 14 to 19).

The feature “in the form of a tablet” is missing here too.

b) For adding this feature, again example 2 could be referred to:

The teaching of example 2 on pages 29 and 30 of the original application reiterates the two alternatives as being treatment (with 70 mg of alendronate) or prevention of osteoporosis (with 35 mg of alendronate) and in addition discloses two further alternatives as the basis for orally administering 70 mg of alendronate to a human patient once-weekly, namely

• tablets or
• liquid formulations

as exemplified in examples 7 and 8.

c) Thus, reading these sources of disclosure relevant for the subject-matter as requested in claim 1 of the main request, the skilled person is free in principle to combine different variations of the elements being suggested as features of the claim with respect to

• dosage (e.g. 70 mg),
• dosing interval (e.g. once-weekly) and
• form of the formulation (e.g. in the form of a tablet),

with no recognisable preference for the features as actually represented in this claim [underlined].

d) Reference to page 19 instead of example 2 also cannot solve the problem of providing for the feature “in the form of a tablet” (and not as a syrup or elixir etc.) clearly connected to alendronate in general (not to monosodium trihydrate) and at the same time clarifying the preference of “once-weekly” and the dosage of 70 mg, as can be seen from the arguments under point [3.2], fourth paragraph et seq. above.

[3.4] As a consequence, a unit dosage of 70 mg of alendronate in the form of a tablet for a once-weekly dosing interval for treating osteoporosis is not individualised in the description as originally filed in the earlier application, and the subject-matter of claim 1 of the main request cannot be derived directly and unambiguously.

First and second auxiliary request; A 76(1)

[3.5.1] The considerations and conclusions under point [3.3] above apply mutatis mutandis to claims 1 of the first and second auxiliary requests because, as the core amendment, they differ only in restriction from alendronate to monosodium trihydrate (with the additional wording that the medicament was orally administered to the human “for at least one year” in the second auxiliary request). These considerations in particular are valid for starting from pages 20 and 21 of the description as originally filed.

[3.5.2] With respect to the claims as originally filed in the earlier application as the basis for the original disclosure, it is to be stressed that they equally reflect

a) the structure of the teaching of pages 20/21,

b) the structure of the description and

c) the structure of the examples.

In these three cases a), b) and c), the alternatives for

• the dosage,

• differ in relation to the use, mostly

• 35 mg (osteoporosis prevention) or
• 70 mg (treating osteoporosis) […]

• the alternatives for the dosing interval are

• a once-weekly dosing interval (see claims 8 and 14 or see page 20, line 33 to page 21, line 4 or example 2) or
• a twice-weekly dosing interval (see claims 9 and 15 or see page 21, lines 5 to 11 or example 3) or
• a biweekly (see claims 10 and 16 or see page 21, lines 12 to 19 or example 4) or
• a twice-monthly dosing interval (see claims 11 and 17 or see page 21, lines 12 to 19 or example 5). 

This teaching is to be supplemented for the form of the formulation

• from the examples representing as alternatives,

• tablets or
• liquid formulations […]

• or from page 19 presenting, as alternatives,

• tablets, capsules, elixirs, syrups, effervescent compositions, powders, and the like or
• tablet, capsule, or powder, respectively […].

In all cases, the alternatives are of equal weight, no preference is indicated by specific words or in any other directly recognisable way and their singling out for reasons of original disclosure is not allowed.

[3.5.3] Therefore, also when starting from the claims as originally filed, the particular combination of features in claim 1 of the first and the second auxiliary requests is not to be found in individualised form in the earlier application as originally filed and the provisions of A 76(1) are not fulfilled.

[4] Under these circumstances, the additional arguments of the appellant cannot hold.

[4.1] Applying the principle of direct and unambiguous derivability gives rise to a clear and unequivocal conclusion in the present case. There is no room for any question as to what the skilled person would seriously contemplate.

[4.2] The “form of a tablet” as well as “70 mg of alendronate once-weekly for treatment of osteoporosis” as preferred features in view of the overall content of the earlier application could not be seen by the Board, and specific and convincing arguments for this opinion were not presented.

For instance, it is not apparent why the structure of the experiments of example 1 would indicate particular weight being attached to a once-weekly dosing: on page 27, lines 10 to 14 of the description of the earlier application it is set out that considerably less oesophageal irritation was observed from the administration of a single high concentration of alendronate on a weekly basis (Group 5) or twice-weekly basis (Group 6) versus administration of low concentration dosages on consecutive days (Group 2) (emphasis added by the Board), giving once-weekly the same weight as twice-weekly.

With respect to the other arguments of the appellant, it is to be stated that in view of example 8 the tablet form is not the primarily exemplified form of the medicament in the application as originally filed, and the mentioning of the word “alendronate” in example 7 does not alter the fact that only the “monosodium salt trihydrate” is specifically used in this example.

[4.3] Coming to its conclusion, the present Board duly considered decision T 783/09 cited by the appellant in support of its line of argumentation concerning the disclosure in its originally filed application of the features currently claimed.

With respect to T 12/81, the following is emphasised in T 783/09 [5.6]:

“… given the term “can” in the citation from decision T 12/81, the absence of a direct and unambiguous disclosure for individualised subject-matter is not a mandatory consequence of its presentation as elements of lists. Thus, the “disclosure status” of subject-matter individualised from lists has to be determined according to the circumstances of each specific case by ultimately answering the question whether or not the skilled person would clearly and unambiguously derive the subject-matter at issue from the document as a whole” (underlining by this Board).

While it is stressed in T 783/09 that the circumstances of each specific case are decisive for the outcome of the assessment of the “disclosure status”, it follows from points [3.3] and [3.5] above, in particular point [3.3 c)], that the specific circumstances of the present case are different from those considered in T 783/09 and nothing has been submitted during the proceedings that might justify a statement to the contrary.

Thus, complying fully with the issue “disclosure status” to be uniformly assessed in all cases of entitlement to priority or original disclosure of an amendment on the one hand and novelty of a claimed subject-matter on the other hand in answering to the question “whether or not the skilled person would clearly and unambiguously derive the subject-matter at issue from the document as a whole”, the present Board considers it inappropriate to expand all the reasonings and conclusions with respect to the particular subject-matter of decision T 783/09 to the present case.

The present Board adheres to the meaning of the sentence in seminal decision T 12/81

“If on the other hand two classes of starting substances are required to prepare the end products and examples of individual entities in each class are given in two lists of some length, then a substance resulting from the reaction of a specific pair from the two lists can nevertheless be regarded for patent purposes as a selection and hence as new.” (underlining by this Board)

taking “can” for a “is to” as the therefrom following standing jurisprudence did. In view of the implications of freely interpreting this word “can”, there is deep concern that in this way the uniformity of the disclosure assessment process cannot be warranted. […]

The appeal is dismissed.

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T 1312/09 – Let’s Be Objective

The problem-solution approach is intended to be as objective as possible : subjective aspects have to be ignored. Inventors may sometimes have the impression that this is unfair, because subjectively, they have indeed made an invention. The present case corresponds to such a situation.

The opponent filed an appeal against the decision of the Opposition Division to reject the opposition.

Claim 1 before the Board read (in English translation):

1. Milking cup (1) comprising a cup sleeve (2), a teat rubber (3) inserted in the cup sleeve (2) with a head piece (4) and an intake socket (5) connectable with a milk discharge conduit, and comprising an air inlet valve (13) provided on the milking cup (1) and connected with the interior space of the intake socket (5) via a first conduit (14), which lets atmospheric air penetrate into the intake socket (5) in response to a relief phase, during which a higher pressure causing a folding-in of the intake socket (5) relative to the milking vacuum pending in the milk discharge conduit is generated in a clearance (12) between the cup sleeve (2) and the intake socket (5), characterized in that an opening (25) toward the interior space of the teat rubber (3) is provided in the head piece (4) of the teat rubber (3), wherein the opening (25) can controllably be supplied with atmospheric air in response to the relief phase, and a second conduit (24) is provided in flow connection with the opening and the air inlet valve so as to supply the opening with atmospheric air.

 The Board found this request to lack inventive step:

*** Translation of the German original ***

[2.1] It is undisputed that D5 is the closest prior art.

This document discloses […] a milking cup (1) comprising a cup sleeve (2), a teat rubber (3) inserted in the cup sleeve (2) with a head piece (4) and an intake socket (5) connectable with a milk discharge conduit, and comprising an air inlet valve (13) provided on the milking cup (1) and connected with the interior space of the intake socket (5) via a first conduit (14), which lets atmospheric air penetrate into the intake socket (5) in response to a relief phase, during which a higher pressure causing a folding-in of the intake socket (5) relative to the milking vacuum pending in the milk discharge conduit is generated in a clearance (12) between the cup sleeve (2) and the intake socket (5).

[2.2] The subject-matter of claim 1 according to the main request […] differs from the milking cup disclosed in D5 in that an opening toward the interior space of the teat rubber is provided in the head piece of the teat rubber, wherein the opening can controllably be supplied with atmospheric air in response to the relief phase, and a second conduit (24) is provided in flow connection with the opening and the air inlet valve so as to supply the opening with atmospheric air.

[2.3] According to the opposed patent, the problem underlying the invention […] consists in providing an improved milking cup that has a simple structure, is easy to clean and which has properties that increase the well-being of the animal during milking.

[2.4] The features known from D5 ensure that the udder of the domestic animal to be milked is handled in a gentle way; the handling and the cleaning of the milking apparatus is easy. This is indeed acknowledged in the opposed patent […]. Moreover, D5 […] discloses that the teat is massaged and injections of milk back into the teat are avoided by letting atmospheric air flow into the intake socket.

Starting from D5, the objective technical problem can be seen in further improving the well-being of the animal that is being milked during the milking.

[2.5] The [patent proprietor] has asserted that in the present case the appropriate skilled person is an agrobiologist having little mechanical engineering knowledge. The Board cannot endorse this opinion. For developing a milking cup as the one claimed what is needed is not only in-depth knowledge of the anatomy and the behaviour of domestic animals that are to be milked, and in particular of cows, but also extensive knowledge in the filed of milking cups and of pneumatic milking installations, in order to be able to constructively implement the animal-specific requirements. A milking cup is a technically complex object, as also follows from the submissions of the inventor to this effect.

Therefore, in the present case, the “skilled person” consists in a “team of skilled persons” comprising an agrobiologist and a mechanical engineer having experience in the field of milking cups and pneumatic milking installations.

[2.6] From D2 […] it is known to provide an opening toward the interior space of the teat rubber in the head piece of the teat rubber, wherein the opening can controllably be supplied with atmospheric air in response to the relief phase, and to provide a conduit in flow connection with the opening and the air inlet valve so as to supply the opening with atmospheric air.

This results in massaging the teat and circulatory problems of the teat are avoided […].

As improved blood circulation and massaging the teats can only improve the well-being of the domestic animal to be milked, it is obvious for the skilled person to introduce atmospheric air also into the head piece of the teat rubber known from D5, as taught in D2.

[2.7] The [patent proprietor] has submitted that both D5 and D2 have been invented by the same inventor as the opposed patent and that the inventor already knew D2 when he was developing D5. Therefore, it could not be obvious to combine D5 and D2. In other words, what is not obvious for the inventor cannot be obvious for the skilled person. The Board cannot endorse this view. According to the established case law, the skilled person within the meaning of A 56 is a normal expert who is active in the field of the invention and who has an average knowledge and average skills. He is not an outstanding or smart (gewieft) skilled person, and in particular, he is not an inventor (see Schulte, PatG, 8th edition, § 4, marginal numbers 39-41 and T 39/93).

D2 and D5 disclose different measures each of which contributes to the well-being during milking of a domestic animal that is to be milked. As there was no prejudice against it, there is no reason why a skilled person should not use both measures simultaneously.

The [patent proprietor] also asserted that the skilled person could not have found any incentive in D2 to further develop a milking cup known from D5 because D5 already solved the problem underlying the invention. Again, the Board cannot agree, because, as explained above, the problem to be solved in respect of the closest prior art D5 is to “further improve” the well-being during milking of the domestic animal that is to be milked, i.e. to provide a better solution for a problem that has already been solved in D5.

Although the milking cup disclosed in D5 already ensures gentle handling of the udder of the animal, its first objective is to avoid wetting of the air inlet valve by milk, as well as obtaining an improvement of the milk outflow. In contrast, the teaching of D2 provides improvements of the health of the udder […] because it reduces the constriction of the teat region and thereby improves the blood circulation […]. Therefore, it was advantageous to simultaneously implement both measures.

Finally, the [patent proprietor] has submitted that it was not obvious to implement the control of the conduit letting air into the head peace and into the suction-side end of the teat rubber by means of a single valve, because the valves of D2 and D5 were different and this [implementation] was technically too complicated for an agrobiologist.

Although the valve of D5 is a valve that is closed when it is in its idle position (Ruhestellung) and the valve of D2 is open when it is in its idle position, their way of functioning is the same, i.e. both supply the conduit connected to them with atmospheric air during the relief phase (when the annular space is brought to atmospheric pressure). Therefore, it is obvious for the mechanical engineer who is familiar with milking cups and pneumatic milking installations – who is part of the “team” defined above) – that the valve provided in D5 is sufficient for implementing the teaching of D2 and that he only has to provide a second conduit.

[2.8] Consequently, the subject-matter of claim 1 of the main request […] does not involve an inventive step.

Should you wish to download the whole decision (in German), click here.

The file wrapper can be found here.

T 177/08 – Fake Dependency

Another decision with an interesting paragraph on dependent claims, but also on A 69 and R 139 ...

This appeal was directed against the decision of the Opposition Division to revoke the patent.

Claim 1 of all the requests on file before the Board concerned the use of a compound of general formula II:

for the preparation of a pharmaceutical composition for inhibiting hyperproliferation in a cell.

The Board found the main request not to comply with A 123(3):

[3.1] The Markush formula according to claim 1 as granted can contain C1-C10 alkyl rests at three locations, namely at positions R1, R2 and R8. The claims do not contain any information as to whether or not these alkyl rests may be substituted. As was correctly pointed out in the decision under appeal, alkyl according to IUPAC is equivalent to CnH2n+1, which precludes substitution. On the other hand, paragraph [0086] of the description reads:

“Moreover, the term “alkyl” (or “lower alkyl”) as used throughout the specification, examples, and claims is intended to include both “unsubstituted alkyls” and “substituted alkyls”, the latter of which refers to alkyl moieties having substituents replacing a hydrogen on one or more carbons of the hydrocarbon backbone.”

[3.2] According to A 69, the extent of the protection conferred by a European patent shall be determined by the claims. Nevertheless, the description and the drawings shall be used to interpret the claims. It therefore has to be decided whether said interpretation of the claims by the content of the description is limited to cases where the claims are in need of interpretation, e.g. because of functional or unclear features, or whether it also applies to the present case, where a well-known and generally accepted meaning of a term is overthrown and replaced by a new definition given in the description.

[3.3] The appellant cited decisions T 1321/04 and T 190/99 in this context.

T 1321/04 [2.3] indicates that terms are not considered in isolation but in the context of the content of the document as a whole. Terms must be construed as they would be by the skilled person according to the whole content of the application, taking into account what is achieved by the invention. However, decision T 1321/04 concerned the question of how the term “predetermined value of nitrogen oxide concentration” should be interpreted in view of the assessment of novelty. To understand the meaning of this term, the whole content of the document was taken into consideration. The case was not concerned with the issue of determining the scope of protection.

In the present case, the situation is quite different: here, the meaning of the feature in question is generally accepted, perfectly understandable per se, and unambiguously defined by IUPAC, whom the skilled person acknowledges as the competent authority in this context. The skilled person therefore has no need to consult the description for a definition of “alkyl”. The board is of the opinion that the second sentence of A 69 does not apply to cases where an unambiguous and generally accepted definition of a term figuring in the claims should be superseded by a different definition found in the description. If it is intended that a term which is in no need of any interpretation is given a new meaning, then the definition for this new meaning must be put into the claims. Third parties cannot be expected to check every single term of the claims for a potentially different meaning that might be hidden somewhere in the description. As a consequence, irrespective of the definition in paragraph [0086] of the contested patent, the term “alkyl” in the claims as granted has the meaning of CnH2n+1.

[3.4] Nor does decision T 190/99 have any bearing on the present case. In T 190/99 [2.4], it was found that the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent pursuant to A 69. The patent must be construed by a mind willing to understand, not by a mind desirous of misunderstanding. In T 190/99 [2.2.4], the board held that the skilled person reading the feature

“said plurality of tensioning warp threads (19) extending parallel with and between said upper and lower binding warp threads (17, 18)”

would not unreservedly assume that the term “parallel” had to be understood in the strict geometrical sense of the word (i.e. two equidistant straight lines). It was part of the most basic knowledge of the skilled person that in a woven fabric warp threads appeared to be parallel when the fabric was seen in plan, but running approximately sinusoidally when seen in cross- section. Warp threads were therefore not parallel in the strict sense of the word (see point [2.2.3]). As a consequence, the board arrived at the conclusion that in view of the overall disclosure the replacement of “parallel” by an amended and less restricted definition was not objectionable under A 123(3).

In contrast to decision T 190/99, where a term used in its usual meaning did not make technical sense, formula II according to claim 1 of the contested patent does not include any subject-matter which is illogical or does not make technical sense if the term “alkyl” is used in its usual and well-known meaning. Reference is again made to the last two sentences of point [3.3] above.

[3.5] As a consequence, the board concludes that the subject-matter of the main request extends the protection conferred and does not meet the requirements of A 123(3).

The same was found to be true for the first auxiliary request. The Board then went on to examine the second auxiliary request:

[5.1] The subject-matter of auxiliary request 2 does not include substituted alkyl groups. As a consequence, the objections raised above in point 3 do not apply to auxiliary request 2.

[5.2] Formula II according to claim 1 of auxiliary request 2 comprises compounds in which L adjacent to X is -CH(R10)-. Claim 1 as granted does not include this option. However, claim 21 as granted, which refers to any preceding claim and thus also to claim 1 as granted, comprises compounds wherein X adjacent to L includes unsubstituted methylene groups if L adjacent to R1 is absent. The latter condition is also fulfilled by the subject-matter of auxiliary request 2, where L adjacent to R1 was deleted from formula II.

NB: Claim 21 as granted read:

21. The use as in any preceding claim, wherein L adjacent to R1 is absent, and L adjacent to X is a substituted or unsubstituted methylene.

Claim 21 as granted, in combination with the preceding claims to which it refers, therefore encompasses the subject-matter of auxiliary request 2. As a consequence, it has to be evaluated whether claim 21 as granted can be taken into consideration or, as was alleged by [opponent 2], whether it is erroneous and therefore to be disregarded. In this context, [opponent 2] made reference to R 43 and R 139.

R 43

[5.2.1] R 43(4) stipulates that any claim which includes all the features of any other claim is a dependent claim and shall contain, if possible at the beginning, a reference to the other claim and then state the additional features.

Claim 21 as granted contains a reference to the preceding claims and has the same category as the claims to which it refers. However, the compounds defined by formula II according to claim 21 as granted are different from those according to claims 1 to 20 as granted as far as the substituent L adjacent to R1 is concerned: substituted methylene groups (claim 21 as granted) are not included in the list of substituents for L as defined in claim 1 as granted. Despite its reference to the preceding claims, claim 21 as granted is therefore an independent claim, as it does not include all the features of the claims to which it refers. As a consequence, the requirements of R 43(4) are not met.

Despite this deficiency, the skilled person has no doubts as far as the content of claim 21 as granted is concerned. He will conclude that the definitions for those substituents not mentioned there (i.e. all substituents except R1 and L adjacent to X) can be found in the preceding claims and in particular in claim 1. Doing so, he will realise that claim 21 is indeed an independent claim which, however, is clearly and unambiguously defined and therefore does not give rise to any doubts regarding its content. As a consequence, the skilled person would not disregard claim 21 as granted.

R 139

[5.2.2] Making reference to R 139, [opponent 2] alleged that claim 21 had been erroneously introduced in the course of substantive examination. Features which were the consequence of an obvious error had not been intended to be part of the claims and could therefore not be used in support of A 123(3).

This argument cannot succeed, as the [patent proprietor] contested that the introduction of claim 21 was the result of an obvious error. The fact that [opponent 2] has doubts regarding the basis for claim 21 as granted in the application as originally filed is an issue that does not concern A 123(3) but should be discussed in connection with the requirements of A 123(2). The board therefore concludes that claim 21 is not the result of an obvious error.

[5.3] As a consequence, the use of compounds according to formula II as defined in auxiliary request 2, in which L adjacent to X is -CH(R10)-, is encompassed by the claims as granted, so the requirements of A 123(3) are met.

The Board then remitted the case to the Opposition Division for further processing.

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T 1614/08 – Still Dependent

The present appeal was directed against the decision of the Examining Division (ED) to refuse the application under consideration.

In its first communication, dated July 8, 2004, the ED had objected that the claims on file violated A 123(2) and also lacked conciseness due to the presence of two independent method claims 1 and 13, in violation of R 29(2) and A 84.

On January 18, 2005, the applicant filed a new set of claims in order to overcome objections under A 84. The claims now contained a single independent method claim 1, a single independent apparatus claim 13 and a dependent machine readable disc claim 12.

Claims 1, 11, 13, and 23 read:

1. A method of assigning, via a graphical user interface, values to object parameters (70,72) of objects (54) of a simulation mode1 (30), the method comprising: displaying a diagram panel (401) within a user interface, the diagram panel (401) including respective graphical representations (152-164) of objects (54) of the simulation mode1 (30); displaying an access panel (260; 262) within the user interface enabling user input of values to be assigned to object parameters (70,72) of objects (54) of the simulation model (30), the access panel (260;262) being distinct £rom the diagram panel (401); and assigning user input values received via the access panel (260;262) to object parameters (70,72) of the simulation model (30), characterized in that displaying (284) an access panel (260;262) and assigning (292) user input values received via the access panel (260;262) comprises: detecting user identification of a set of object parameters (7O,72) for inclusion within an access panel (260;262), the set of object parameters including object parameters (70,72) associated with multiple objects (54) of the simulation model(30); in response to the user identification of a set of object parameters (54) of the simulation mode1 (30) for inclusion in an access panel (260;262), displaying (288) an identifier (264,266) for each object parameter (70,72) of the user identified set of object parameters within the access panel (260;262); receiving user input via the access panel (260, 262) of values (268) for one or more of the object parameters (70,72) represented by identifiers (264,266) in the access panel (260;262); and assigning the respective values received via the access panel (260;262) to said one or more object parameters (70,72).

11. A method of performing a simulation utilizing a simulation model (30), comprising: assigning, via a graphical user interface, values to object parameters (70,72) of objects (54) of a simulation model (30) in accordance with any preceding claim; and utilizing the values assigned to the object parameters as initial input values for object parameters (70,72) in the simulation model (30).

13. Apparatus for assigning, via a graphical user interface, values to object parameters (70,72) of objects (54) of a simulation mode1 (30), the apparatus comprising: user interface means operable to generate a user interface display including: a diagram panel (4 01) including graphical representations (152-164) of objects (54) of a simulation model (30);and at least one access panel (260;262) enabling user input of values to be assigned to object parameters (70,72) of objects (54) of the simulation model (30), the access panel (260;262) being distinct from the diagram panel (401); and means for assigning user input values received via an access panel (260;262) to object parameters (7O,72) of the simulation model (30), characterized by further comprising: means for detecting user identification of a set of object parameters (7O,72) including object parameters (70,72) associated with multiple objects (54) of the simulation model(30) for inclusion within an access panel (260;262), the user interface means being responsive to said means for detecting user identification of a set of objects, to display an identifier (264,266) for each object parameter (70,72) of the user identified set of object parameters within an access panel (260;262), said means for assigning user input values being responsive to receiving (290) user input via the access panel (260, 262) of values (268) for one or more of the object parameters (70,72) represented by identifiers (264,266) in the access panel (260;262) to assign the respective values received via the access panel (260;262) to the object parameters (7O,72) represented by identifiers (260,262).

23. Apparatus for performing a simulation utilizing a simulation model (30), the apparatus comprising: means for assigning, via a graphical user interface, values to object parameters (70,72) of objects (54) of a simulation model (30) in accordance with any of claims 13-22; and simulation means operable to utilize values assigned to object parameters as initial input values for object parameters (70,72) in a simulation mode1 (30).

In a second communication, dated January 31, 2007, the ED maintained its objections.

In its response, the applicant pointed out that claims 11 and 23 had to be considered as dependent claims.

The refusal was delivered in the form of a “decision according to the state of the file”, as requested by the applicant.

As is so often the case with decisions according to the state of the file (which the Board would prefer to call “decisions by reference”, see [2] of the reasons), the Board found the decision to be insufficiently reasoned. There is an interesting paragraph on the R 29 objection:

[10.2] Claims 1 and 13 as filed on 18 January 2005 relate, respectively, to a “method of assigning... values to object parameters ...” and a corresponding apparatus. Claims 11 and 23 relate, respectively, to “a method of performing a simulation... comprising: assigning... values to object parameters... in accordance with any preceding claim” and again a corresponding apparatus. 

In the second communication, the ED considers claims 11 and 23 as independent claims, the reference to preceding claims notwithstanding. 

According to R 29(3) EPC 1973 (and, equivalently, R 42(3)) [sic, the correct reference is R 43(4)] “[a]ny claims which includes all the features of any other claim” is considered a dependent claim. This formulation is reproduced in the Guidelines for Examination C-III, 3.4. In view of this the ED’s position is at least unconventional and the applicant, when referring to the standard interpretation of what constitutes a “dependent claim”, must have had a fair expectation of having overcome this objection. 

The case was remitted to the ED for further prosecution.

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

The file wrapper can be found here.

T 1188/09 – You May Come Back

The patent proprietor filed an appeal after the Opposition Division (OD) had revoked his patent. The main request before the Board was to maintain the patent as granted, although this had never been requested before the OD. 

Will the Board admit this request?

The opponents thought it should not, and pointed out that this question of law had been answered differently by the Boards, which justified the referral of the following question to the Enlarged Board of appeal (EBA):

Is a patent proprietor who has withdrawn the subject-matter of a main request before the OD (in the present case, the request to maintain the patent as granted), entitled to pursue this subject-matter in the appeal proceedings?

*** Translation of the German original ***

Referral to the EBA

[1] Opponent 3 has requested to refer the question of admissibility to the EBA by means of a referral pursuant to A 112(1)(a). For the reasons following from what is said in point [2] below the Board cannot grant this request.

Admissibility

[2.1] The [opponent’s] view that the appeal is inadmissible is based on the fact that the set of claims that the patent proprietor had defended during the opposition proceedings was limited with respect to the patent as granted. The OD had not decided on the set of claims as granted. Therefore, the patent proprietor was not entitled to defend the patent in a broader version, i.e. the claims as granted, after having submitted a limited version during the opposition proceedings.

[2.2] According to the established case law of the Boards of appeal the patent proprietor may not surrender his patent in part during opposition proceedings and irrevocably limit his patent by declaring that he does so (T 123/85 [3.1.1]). Based on this principle, the case law has deduced that the appealing patent proprietor whose patent had been defended in limited form only during the opposition proceedings cannot be hindered from requesting that the Board of appeal maintain the patent as granted. T 407/02 [1.2] has made the following statement:

Conversely, there is a predominant view that the patent proprietor who had defended his patent in limited form only during the opposition proceedings cannot, as a rule (i.e. unless the prohibition of reformatio in peius applies or there is an abuse of proceedings), be prohibited from reverting to a broader version of the patent, including the patent as granted, because limitations made in the meantime are not to be understood as a surrender of parts of the patent but only as formulation attempts that are to delimit the patent in view of objections (Benkard/Günzel, EPÜ, Munich 2002, A 107, marginal number 17). Therefore, the opponents have to expect in any case that the patent proprietor whose patent was revoked by the OD defends the patent as granted during the appeal proceedings.

Decision T 1018/02 [2.4], which was taken shortly afterwards, has expressly followed this approach. Decision T 386/04 [1] has reaffirmed the same view and pointed out that decisions that appeared to contradict it always dealt with situations where the amendment of the claims was tantamount to an abuse of proceedings. In this context the Board also commented T 528/93, which the present [opponents] have invoked and have said to be deviant. Decision T 420/03, which has also been cited by the [opponents], deals with the questions of whether criticism of a decision on apportionment of costs by the OD, which has not been attacked before, is still admissible after the expiration for filing the statement of grounds for appeal, which is an entirely different question.

[2.3] In the present case, the Board does not see any reason to deviate from this established case law. Nor does it see any divergence between the decisions of the Boards of appeal in this respect, which would call for a referral to the EBA.

Therefore, the appeal is admissible.

Certainly to be approved. The claims as granted are in the opposition proceedings at least at the time when the opposition is filed (unless there the patent was limited before the opposition was filed, that is). 

This being said, I wonder whether the more generous view of T 407/02 and T 1018/02, according to which the patent proprietor could also revert to a broader version somewhere between the patent as granted and the claims as defended during the opposition proceedings, is still up-to-date. The recent tendency to invoke Article 12(4) RPBA appears to go against this view.

To read the whole decision, click here. The file wrapper can be found here.

T 1782/09 and T 2127/09 – What About Some Tetris?

The present decisions deal with the patentability of devices for playing games similar to the famous Tetris game. If you are not interested in such subject-matter, you might still want to have a look at the last part of this post where Article 12(4) RPBA related questions are discussed.

The two decisions under consideration correspond to parallel appeals filed against decisions of the Examining Division (ED) refusing applications EP 1 600 197 and EP 1 600 198.

Claim 1 of the main request before the Board in T 1782/09 read:

A game apparatus having an operation unit (1406) which inputs an operation to a game, a display unit (1405) which displays information associated with the game, and a storage 10 unit (1403) which stores data required to execute the game, the game apparatus comprising:

means for generating display data of falling objects (101, 102, 103, 104) which are displayed to fall from an upper portion to a lower portion in a predetermined display area (100) on the display unit (1405), and storing the display data in the storage unit (1403);

means for reading out the generated display data of the falling objects from the storage unit (1403), and displaying the falling objects to fall from the upper portion to the lower portion in the predetermined display area (100); and

means for, when the falling objects reach a falling stop position in the display area, changing the display data to display the falling objects as stop objects whose falling movement stops, and storing the changed display data in the storage unit (1403), the game apparatus characterized by further comprising:

object designating means for designating a predetermined number or less of stop objects in accordance with a designation instruction from the operation unit (1406) and re-arranging means for, when the stop objects are designated, changing the display data of stop objects to rearrange positions of the predetermined number of designated stop objects in accordance with a re-arrange instruction from the operation unit (1406), and storing the changed display data in the storage unit (1403) wherein:

the object designating means comprises a cursor (106) movable on the display area (100) in accordance with a movement instruction from the operation unit (1406) and having a shape and size to accommodate a plurality of the objects;

the re-arranging means is arranged to perform the processing to re-arrange the positions of the stop objects when the cursor (106) has been positioned to accommodate the predetermined number of stop objects;

and the apparatus further comprises:

means for, when the re-arranged stop objects and stop objects which are located around the re-arranged stop objects form a predetermined combination, changing display data of a plurality of stop objects which match the predetermined combination to display data that express rising objects which rise from the lower portion to the upper portion in the predetermined display area (100) on the display unit (1405), and storing the changed display data in the storage unit (1403); and

means for, when the rising objects reach a predetermined clear position in the display area, changing the display data to clear display of the rising objects;

wherein the re-arranging means is further configured to perform the processing to re-arrange the positions of a plurality of objects accommodated in the cursor among the rising objects.

Having determined the differences with respect to closest prior art D1, the Board concluded that

“the non-technical aspects of the distinguishing features reflect modified game rules of the D1 computer game and the technical aspects reflect the technical implementation thereof” ([2.3.2(c)])

and that

“the objective technical problem is merely to technically implement the modified game rules on the D1 computer game apparatus.” ([2.3.4]).

The Board then stated:

[4] In summary, the board finds that claim 1 of both requests relates to the technical implementation of excluded matter in the form of game rules. Disregarding any effects and advantages inherent in the game rules themselves, the board is unable to identify any further technical effects in the particular manner of technical implementation that might render it non-obvious to the skilled person. In conclusion therefore, the board finds that the subject-matter of claim 1 of both requests does not involve an inventive step as required by A 52(1) and A 56.

During the oral proceedings (OPs) held before the Board, he applicant had requested the Board to refer a question to the Enlarged Board (EBA):

In the context of a computer-implemented gaming system, can a feature be regarded as a non-technical feature although the feature cannot exist and be put into practice outside the computer-implemented game system?

The Board refused a referral:

[5.1] A 112(1)(a) stipulates that in order to ensure uniform application of the law or if a point of law of fundamental importance arise, the board of appeal shall, … following a request from a party to the appeal, refer any question to the EBA, if it considers that a decision is required for that purpose.

However, as stated in G 3/08 [7.2.5], the boards of appeal are not authorised to consult the EBA whenever they so wish in order to clarify abstract points of law. The question has to be essential to reach a decision on the appeal in question.

Moreover it was stated therein (reasons [10.3.2]) that the case law of the boards of appeal regarding computer-implemented inventions, as summarised in T 154/04, is consistent and has a sound legal basis in the Convention.

Item 5 of the reasons of T 154/04 reads:

(E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.

[5.2] In the present case, the board distinguished between technical and non-technical aspects of the claimed distinguishing features on the basis of their contribution to the technical character of the invention. Whether, in the context of a computer implemented gaming system, a feature may be regarded as a non-technical feature although the feature cannot exist and be put into practice outside the computer-implemented game system, is not decisive for this assessment.

Put differently, this finding of the board answers the question of the appellant, and implies that features do not become inevitably technical merely because such features only make sense and realistically may only be put into practice in a computer-implemented game system. The board also notes that it was able to arrive at this finding without having to refer the question to the EBA. Furthermore, the board is also not aware of any other decision on this specific point, hence the board is also not aware of any divergence in the jurisprudence, as mentioned above.

An answer of the EBA to the question submitted at the OPs is thus not necessary for the decision on the present appeal and the request for referral to the EBA must therefore be refused.

Now, coming to the second decision, the independent claims of the main request before the Board in T 2127/09 read:

1. A game apparatus for making a player operate a falling object (102) that falls within a predetermined display area (100), and clearing the falling object (102) and falling stop objects (103) by combining the falling object (102) and the falling stop objects (103) under a predetermined condition, the apparatus comprising: a CPU (1101),

a) said CPU (1101) being adapted to display a falling object (102) at a falling start position (101) of a predetermined display area (100);

b) said CPU (1101) being adapted to display the displayed falling object (102) to move in a lower direction of the display area independently of an operation input from the player;

c) said CPU (1101) being adapted to display the falling object (102) to move in the lower or horizontal direction of the display area in accordance with an operation input to the falling object (102); and

d) said CPU (1101) being adapted to, when the falling object (102) reaches a falling stop position of the display area (100) and satisfies a falling stop condition, stop falling of the falling object (102), and display the falling object (102) as a falling stop object;

e) said CPU (1101) being adapted to determine if the falling stop object and other falling stop objects (103) which are arranged around the falling stop object in advance satisfy clear conditions, characterized by further comprising:

f) said CPU (1101) being adapted to, when the clear conditions are satisfied, register a portion of the falling stop object which satisfies the clear conditions as an object to be cleared;

g) said CPU (1101) being adapted to display a sequence bar (701) when a counter, counting given timings independently of the music data, reaches a predetermined value, the sequence bar being displayed to move from left to right in the display area in synchronism with a music which is output along with progress of a game; and

h) said CPU (1101) being adapted to, when the sequence bar (701) has passed the portion of the falling stop object registered as the object to be cleared, clear the portion of the falling stop object.

9. A method of controlling a game apparatus having an operation unit (1106) which makes an operation input to a game, which makes a player operate a falling object (102) that falls within a predetermined display area (100), and clears the falling object (102) and falling stop objects (103) by combining the falling object (102) and the falling stop objects (103) under a predetermined condition, a display unit (1105) which displays information associated with the game, a storage unit (1102, 1103, 1104) which stores data required to execute the game, and an audio output unit (1107) which outputs music data of the stored data along with progress of the game, the method comprising:

a step of displaying the falling object (102) at a falling start position (101) by setting display position data of the falling object (102) at the falling start position (101) in the predetermined display area (100) of the display unit (1105);

a step of changing the display position data of the falling object (102) to move the falling object (102) displayed on the display unit (1105) in a lower direction of the display area independently of an operation input from the operation unit (1106);

a step of changing the display position data of the falling object (102) to move the falling object (102) in the lower or horizontal direction of the display area in accordance with an operation input from the operation unit (1106) to the falling object (102);

a step of stopping, when the falling object (102) reaches a falling stop position of the display area and satisfies a falling stop condition, falling of the falling object (102), and displaying the falling object (102) as a falling stop object;

a step of determining if the display position data of the falling stop object and display position data of other falling stop objects (103) which are arranged around the falling stop object in advance satisfy clear conditions; and

a step of generating, when the clear conditions are satisfied, clear object data used to register a portion of the falling stop object which satisfies the clear conditions as an object to be cleared, and storing the generated data in the storage unit (1102, 1103, 1104) , characterized by further comprising:

a step of displaying a sequence bar (701) when a counter, counting given timings independently of the music data, reaches a predetermined value, the sequence bar being displayed to move it in the display area from left to right in synchronism with the music data which is read out from the storage unit (1102, 1103, 1104) and is output from the audio output unit (1107) along with progress of the game;

a step of determining on the basis of display position data of the sequence bar (701) if the sequence bar (701) has passed the portion of the falling stop object corresponding to the clear object data stored in the storage unit (1102, 1103, 1104) and

a step of clearing, when it is determined that the sequence bar (701) has passed the portion of the falling stop object, display of the portion.

18. A computer program product adapted to perform the method steps of one or more of claims 9 to 17.

19. A computer readable recording medium recording a computer program product of claim 18.

Again, the Board examined whether this subject-matter involved an inventive step:

[3.1] The application relates to a computer game like “Tetris” in which objects as blocks are displayed to fall down and fill a row. Once a row is fully filled, the blocks will be cleared immediately. It can be stated that the blocks will be cleared when they satisfy a first condition.

The idea behind the claimed subject-matter is now to introduce a second condition which has to be satisfied before the blocks are cleared. According to claims 1, 9, 18 and 19, the second condition is implemented with a sequence bar moving over the blocks to be cleared.

[3.2] The rules of the notoriously known “Tetris” computer game could be described as follows:

A random sequence of objects appear at the top of a playing field display and fall down to the bottom thereof. The objects stop falling when they hit either the bottom line of the playing field or an object that has already fallen and stopped before. In the latter case, the objects will be stacked towards the top of the display. When new objects cannot fall any longer because the fallen objects are stacked and reach the top of the playing field where the new objects are supposed to fall, the game is over.

A player can move the falling objects to the left or to the right and can thus try to fully fill a horizontal row of objects. When a row is fully filled with objects, these are immediately cleared, i.e. they disappear, and any object above a cleared one, will fall into the cleared space.

The new objects appear at the top of the playing fields display as soon as the falling object stop moving.

[3.3] Compared with the standard “Tetris” game in which objects are cleared when a first condition is satisfied, the distinguishing features f) to h) of claim 1 and the corresponding features in claims 9, 18 and 19 include now a second condition which has to be satisfied before the objects are cleared and disappear.

[3.3.1] These distinguishing features have both technical and non-technical aspects.

(a) “Game rules” form part of “the regulatory framework agreed between [or with] players concerning conduct, conventions and conditions that are meaningful only in a gaming context (T 12/08 [4.6]). They govern the conduct and actions of the players during game play (T 336/07 [3.3.1]).

Thus, “games rules” define inter alia the structural setup of the game that allows choice making to occur and determines how the game play evolves from the beginning to its end in response to player actions and decisions. It should be noted that the structural setup of the game does not require a player’s interaction.

(b) Such “games rules” are clearly recognisable in the independent claims. The game apparatus of claim 1 and the method of claim 9 are setup such that the objects are cleared only when the first and the second clearing conditions are satisfied. The same can be stated with respect to claims 18 and 19.

(c) From this it follows that the non-technical aspects reflect modified “Tetris” game rules and the technical aspects reflect the technical implementation of these modified game rules.

[3.3.2] Since these distinguishing features include both technical and non-technical aspects, the subject-matter of claims 1, 9, 18 and 19 is of “mixed” nature.

(a) In dealing with such “mixed” inventions the board adopts the approach as set out in T 1543/06 [2] which is based foremost on T 641/00. Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step.

That requirement cannot rely on excluded (non-technical) subject-matter alone, however original that matter might be. The mere technical implementation of something excluded cannot form the basis for inventive step. Decisive for inventive step is the question how excluded subject-matter has been technically implemented, and whether such implementation is obvious in the light of the prior art. As explained in T 1543/06 [2.7-9], such a consideration focuses on any further technical effects associated with implementation of the excluded subject-matter over and above those inherent in the excluded subject-matter itself.

(b) In the present case, the independent claims have been substantially amended and specify now in addition the control of the sequence bar in accordance with a counter when a predetermined count value is reached.

However, since the search division (SD) did not carry out a search under R 45 EPC 1973, the board is unable to finally assess whether the claimed subject-matter involves an inventive step, and in particular whether these amended features provide any further technical effects associated with the implementation of the modified “Tetris” game rules over and above those inherent in these rules themselves.

Procedural matters

[4.1] The OPs before the board focused in particular on the definition of “game rules” and resulted in amendments to the claims which addressed the board’s objections. Thus the amended claims have been filed in response to the board’s objections at the OPs.

[4.2] It is true that according to Article 13(3) of the Rules of Procedure of the Boards of Appeal (RPBA) amendments made especially at the OPs should not be admitted if they raise issues which the board cannot reasonably be expected to deal with without adjournment of the OPs.

However, in the present case, the SD decided under R 45 EPC 1973 to draw up no search report, without consulting the applicant, so that the claims on file contain unsearched matter and that an amendment to the claims also necessarily introduces unsearched matter.

Thus, the board at the OPs was not able to examine whether the amended claimed subject-matter involves an inventive step, not because this amendment had been submitted at a very late stage namely at the OPs but because it merely relates to unsearched matter.

The fact that the board was not in a position to decide on the issue of inventive step at the OPs is clearly not dependent on the degree of lateness of the applicant’s amendment, it is primarily the result of the SD’s decision that no search should be carried out so that only unsearched matter could be used by the applicant for amending the claims.

[4.3] In cases in which the SD did not carry out a search under R 45 EPC 1973 and features are claimed which are neither notoriously known nor explicitly accepted by the applicant as known, the boards of appeal have decided (see e.g. T 1515/07 [6]; T 690/06 [2]) that an additional search must be carried out.

Since the amendment in feature g) of claim 1 and the corresponding amendment in claim 9 meet these requirements, it is necessary to carry out an additional search according to R 63.

Moreover, already in the annex to the OPs, the board expressed the view that if a request were found to be allowable on the basis of the available facts and evidence, then the case should be remitted to the department of first instance for carrying out an additional search.

[4.4] The above nothwithstanding, the board emphasizes that remittal should be seen as an exceptional procedural possibility, and it must be also examined whether the applicant could have been expected to make the amendments which were made during the appeal before the board earlier (see Rule 12(4) RPBA), and thereby could have requested from the ED to perform the necessary search. For example, the board notes that the applicant did not file any auxiliary request before the ED, and therefore the question arises if the appellant could have been expected to file these amendments at least by way of an auxiliary request.

To this the board notes that the identification and separation of the technical effects which may and may not contribute to the technical charater of an invention (and thus to inventive step) is far from straightforward. Further, the assumption of a general obligation to file auxiliary requests - in the sense that the party must fear adverse procedural consequences if he does not - appears problematic.

Firstly, if one were to recognise this as a procedural obligation, one must immediately also answer the question: how many auxiliary requests are then “expected”, given that it is also standing jurisprudence of the boards that too many auxiliary requests can be seen as an abuse of the procedure.

Secondly, the EPC as such is completely silent on auxiliary requests: while the board recognises that these are well established in the proceedings before the EPO, both before the first and appeal instances, there is no legal basis for penalising an applicant for not using them. In other words, it should be possible for an applicant to act in good faith also without making use of auxiliary requests.

On the other hand, it is also clear that parties have no entitlement to a remittal as of right (apart from those cases where the first instance commits a procedural violation). This means that a party restricting itself to a single request before the first instance must be prepared for the possibility that he will not be able to present further requests and have them examined.

Considering the above, the board finds that the appellant himself is also not completely without fault, as nothing prevented him from introducing the subject-matter of the present amendments earlier into the procedure.

However, an examination of the first instance proceedings reveals that while the applicant possibly might have realised that further technical features in the claims could lead to the identification of potentially patentable and searchable subject-matter, it would be exaggerated to state that the applicant could have been expected to recognise what amendments he needs to make there and then. He was apparently not invited to make such amendments - and indeed the ED had no obligation to invite him -, but apparently he also could not have been expected to realise that by way of the further amendments he might at least achieve the recognition of a searchable invention. Apparently the ED did accept that the claims on file at that time do contain technical features and as such are not excluded from patentability on the basis of A 52(2) EPC, see point 3 of the Minutes, first sentence. However, all the recognised technical features were considered notorious and not contributing to inventive step. At no time did the ED indicate (at least according to the file) that it intends to perform a further search. In other words, there is some justification for the applicant for not trying to find further technical features which could potentially overcome the A 56 objections of the ED.

[4.5] In view of these particular circumstances, the board decided to admit the amendments to the claims submitted for the first time at the OPs before the board and, in accordance with A 111(1) second sentence, to remit the present case to the department of first instance for further prosecution, starting with an additional search.

Should you wish to download these decisions, click here and here.

The file wrappers can be found here and here.

NB: I guess the IPKat was the first to report T 1782/09 (here).