Tuesday, 31 January 2012

T 1491/06 – Just Overlapping

Need a reminder on how (most) Boards deal with double patenting? Here we go.

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse his (divisional) application.

The ED refused the application on the grounds that the claims filed by the then applicant with the letter of 1 August 2003 were identical to the claims granted in the parent application, which was not allowable since double patenting was prohibited under A 125. The ED further considered that the prohibition of double patenting could also be regarded as a specific case of the general concept of legitimate interest in the proceedings, which itself was a generally recognised principle of procedural law.

The Board found the new main request not to be a case of double patenting:

[3.1] Prohibition of double patenting the subject-matter of the same claims as those of the parent patent was the sole ground for refusing the present application […].

[3.2] In its decisions in cases G 1/05 and G 1/06 handed down on 28 June 2007 the Enlarged Board of Appeal (EBA) held obiter (see point [13.4] of the identical Reasons):
“The Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor.”
The board in decision T 1391/07 [2.6], referring to the above decisions of the EBA, saw no basis for extending the existing practice to “cover claims not defining the same subject-matter but conferring ... a scope of protection overlapping with each other only partially in the sense that some, but not all of the embodiments notionally encompassed by one of the claims would also be encompassed by the other one of the claims.” The present board agrees with this view.

[3.3] Whether the subject-matter of the single claim (claim 1) of the main request, as amended during the appeal proceedings, is the same as subject-matter claimed in a patent already granted to the appellant is therefore decisive.

The subject-matter claimed in the parent patent

[3.4.1] Claim 1 in the parent patent essentially relates to an apparatus for pre-processing a set of transform coefficients, comprising an accumulator, parity judgement means, parity inverting means to provide a parity-inverted transform coefficient such that the parity of the sum would be odd, and means for providing the transform coefficients as a set of transform coefficients which is error-immune when subject to the inverse orthogonal transform.

Claim 1 according to the main request in the present case relates to a sum-oddifying circuit for processing a block of DCT coefficients comprising an accumulator, a parity judgment circuit and a parity inverter, in order to output a block of sum-oddified DCT coefficients to prevent a mismatch error when the block is inversely orthogonally transformed.

Thus these claims essentially differ in that transform coefficients in general are processed according to claim 1 of the parent patent, whereas DCT coefficients are processed according to claim 1 of the main request on file. The Discrete Cosine Transform (DCT) is a particular instance of an orthogonal transform. As a result, claim 1 according to the main request is at least in this respect distinct from claim 1 of the parent patent.

[3.4.2] DCT coefficients are recited in dependent claim 2 of the parent patent, however with the additional limitation that the parity inverting means (corresponding to the parity inverter (28) in claim 1 according to the main request) is adapted to invert the parity of one of the transform coefficients other than the transform coefficient representing the DC component.

[3.4.3] As a result, the subject-matter of present claim 1 is not the same as the subject-matter of either of claims 1 or 2 in the parent patent.

The subject-matter in other applications by the same appellant

[3.5.1] In the decision under appeal no objection of double patenting was raised with respect to the grand parent application No. 94 907 708.5, which matured into European patent No. 0 638 218. Dependent method claim 2 of this grand parent patent sets out DCT coefficients in a step having in substance the same further limitation as dependent apparatus claim 2 of the parent patent […]. As a result, the subject-matter of present claim 1 is not the same as the subject-matter of claim 2 of the grand parent patent.

[3.5.2] Further European patent applications No. 10 011 642.5 and No. 10 011 843.9 have been filed by the appellant as divisional applications of the present application. However, no patent has been granted so far on the basis of these later-filed applications. Consequently, no issue of double patenting arises in the present case.

[4] In conclusion, the subject-matter of claim 1 of the main request is different from subject-matter of a patent already granted to the appellant. Hence claim 1 overcomes the grounds for refusal and the decision under appeal is to be set aside.

[5] The ED raised other objections during the examination proceedings, for instance lack of novelty and inventive step. These objections were not addressed in the decision under appeal. In view of these objections, of the amendments to claim 1, and of the pending further divisional applications, the board considers it appropriate to grant the appellant's request that the present application be remitted to the ED for further prosecution on the basis of the main request.

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

The file wrapper can be found here.

NB: Other interesting decisions on double patenting can be found here and here.