Friday, 23 September 2011

T 1969/08 – Obscure Matter

The applicant appealed against the refusal of its application by the Examining Division (ED). It filed one single request together with the statement of grounds of appeal.

A summons to oral proceedings (OPs) to be held on June 7, 2011, was issued on February 23, 2011.

On May 6, 2011, the applicant filed a new request that was to replace the request on file. The applicant deleted a feature the Board had objected to under A 84 and introduced another feature from the description.

The Board found this request not to be admissible:

[3] By letter of 6 May 2011, i.e. after the summons for OPs, the appellant filed a new request comprising claims 1 to 4 which replaced the previously filed request (see letter of 6 May 2011, page 1, first paragraph and page 4, point 3 “It is respectfully requested to base further examination on the amended set claims …”). The appellant amended claim 1 by deleting the last feature of claim 1 objected to under A 84 and introduced from the description the feature that the induction layer is an antenna array “formed by silver-plasm or a mixture of silver-plasm and carbon-plasm”, which had not been claimed in the appeal proceedings before.

[3.1] In the communication annexed to the summons to OPs, the appellant was advised that any amendments to its case would have to be examined for compliance with the requirements of the EPC, including inter alia their admissibility. In the board’s judgement, the appellant was forewarned and could therefore have foreseen that any new request might be subject to examination of its admissibility. By not attending the proceedings the appellant effectively chose not to avail itself of the opportunity to present comments orally before the board but instead to rely on its written case (cf. Article 15(3) RPBA).

[3.2] According to R 137(3) in its original version applicable to the present case (see Article 2(2) of the decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the EPC, OJ EPO 2009, 299),
“after receipt of the first communication from the ED, the applicant may, of his own volition, amend once the description, claims and drawings, provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the ED”.
By virtue of A 111(1) and R 100(1), these provisions are also applicable mutatis mutandis to appeal proceedings. According to Article 12(4) RPBA, requests which could have been presented or were not admitted in the first-instance proceedings can be held inadmissible by the board. The board notes that a claim referring to the same feature was objected to by the ED under A 84 as being obscure (see the communication dated 21 July 2006, point 2.7). The ED further argued that the expressions “silver-plasm” and “carbon-plasm” could not be clarified without infringing the requirements of A 123(2) and the corresponding features should therefore be removed.

Apparently, the applicant chose to follow this recommendation, since it no longer prosecuted any claim directed to such a feature in the first-instance proceedings. The board interprets this behaviour as abandoning the corresponding subject-matter. According to Article 12(4) RPBA as referred to above, the board therefore has discretion not to admit such a request which the appellant returns to late in the appeal proceedings.

[3.3] Article 12(2) RPBA stipulates that the statement of grounds of appeal shall contain a party’s complete case. According to Article 13(1) RPBA, any amendment to a party’s case after it has filed its grounds of appeal may be admitted and considered at the board’s discretion. The discretion is to be exercised, inter alia, in the light of the current state of the proceedings.

In the present case, the appellant re-introduced abandoned subject-matter even after OPs had been arranged, and therefore at a very late stage of the proceedings.

[3.4] In addition, according to the established case law of the boards of appeal it is relevant, with respect to the admissibility of new claims during appeal proceedings, whether the respective versions of the sets of claims converge or diverge, i.e. whether the claimed subject-matter of the independent claims of a main request goes in the same direction and further specifies the same alleged inventive aspect (see e.g. T 1685/07 [6.5]; T 240/04 [16]).

In the present case, claim 1 filed with letter of 6 May 2011 specifies features which do not constitute a further limitation of claim 1 of the preceding request on which the annex to the summons for OPs was based and which specified
“wherein said output of the antenna array of the induction layer (4) is positioned between a hard sheet (600) and a printed substrate (500); a buffering layer (8’) is provided between the hard sheet (600) and the output of the antenna array; the hard sheet (600), the buffering layer (8’) and the output of the antenna array are overlaid on the printed substrate (500) by means of the screwing-conjunction; the output of the antenna array is connected with corresponding input terminal (511’)”.
Instead of amending and further specifying this aspect of the different layers of the structure of the touch screen, the appellant amended claim 1 by replacing this feature by the following aspect
“wherein said induction layer (4) is an antenna array formed by silver-plasm or a mixture of silver-plasm and carbon-plasm”.
It thus went in a different direction, specifying the material of one of those layers instead. 

The added feature of amended independent claim 1 therefore concerns a technical problem (reduction of cost, see appellant’s letter of 6 May 2011, page 3, paragraph 5) which is only remotely related to the original one linked to the deleted feature (improving the sensitivity of the structure).

[3.5] By filing, at a very late stage, a new set of claims directed to abandoned subject-matter which is not substantially identical to that of the previous request and is therefore a diverging request […] and not attending the OPs, the appellant waived the opportunity of discussing its case. To admit a new request in those circumstances would practically give appellants the opportunity to compel a remittal to the department of first instance as they pleased, which would run counter to the principle of procedural economy.

Therefore, and since the appellant did not provide any reasons or arguments as to why the objections raised by the ED against the re-introduced feature were wrong or had been overcome, the board has to decide on the admissibility of the new request by using the criterion of whether amended claim 1 would be prima facie clearly allowable under the EPC (see T 979/02 [3.2-3] and T 70/98 [2.1-5]).

[3.6] The appellant did not present any argument with regard to the objections raised in the communication dated 21 July 2006 against the feature re-introduced in claim 1 with the letter of 6 May 2011. In the board’s judgement these objections are justified and therefore prima facie have not been overcome by the appellant.

The board considers the expressions “silver-plasm” and “carbon-plasm” to be unclear, rendering the features “antenna array” and “induction layer” unclear. An unclear feature, however, cannot contribute to the inventive step of the claimed subject-matter. In contrast to the appellant’s argument, the added feature therefore cannot render the claimed subject-matter inventive over the prior-art on file.

In addition, the board considers the added feature to be in contradiction to the rest of the wording of claim 1 which still specifies that the induction layer is “printed” on the insulation membrane. It is ambiguous to say that “silver-plasm or a mixture of silver-plasm and carbon-plasm” can be “printed” on an insulation membrane. The board interprets the term “printed” in claim 1 to refer to printed circuit technology which, however, is in contrast to the use of “silver-plasm” or “carbon-plasm”.

For these reasons, amended claim 1 of the sole request on file lacks clarity under A 84 and its subject-matter is not considered to be prima facie clearly allowable under the EPC.

[4] For the afore-mentioned several reasons, the board refuses its consent under R 137(3) and decides not to admit the request filed with letter of 6 May 2011 into the appeal proceedings.

[5] Since this request now held inadmissible replaced the previous request, there is no longer any request to consider, and the application has to be refused under A 97(2) and A 113(2) on the basis that the application contains no claims to which the applicant has agreed and the appeal must be dismissed.

The Board also drafted a take-away headnote:
If a feature objected to as “obscure” by the ED and omitted from all requests subsequently filed by the applicant is then re-introduced in the claims filed one month before OPs during the appeal proceedings without commenting on the objection raised earlier against this feature, the board may refuse to admit these claims into the proceedings at its discretion under Article 12(4) RPBA.
Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

NB: Also reported on Le blog du droit européen des brevets.