Monday, 23 January 2012

T 689/11 – Overstretched

This decision deals with the refusal of an application claiming an interface between a packaging machine and a data storage storing a plurality of packaging specifications, for selecting at least one of them.

According to the Examining Division (ED), the claimed interface aimed at implementing a business scheme and amounted to no more than a notorious general purpose networked computer system linked to a generic packaging machine as a commonplace peripheral thereof. The description did not mention any technical detail but dealt with a scheme for doing business. Therefore, no prior art search had been carried out at any stage of the application.

Here is what the Board had to say:

Additional search

[2.1] The application was refused for lack of inventive step without a search having been performed. As set out in decision T 1242/04, an ED may raise an objection of lack of inventive step without documented prior art. That should be allowable where the objection is based on “notorious knowledge” or indisputable common general knowledge. Such cases, however are exceptional, and a search is otherwise essential.

[2.2] The Board concurs with the ED in considering a networked general-purpose computer as part of notorious knowledge. However, the Board judges that the ED overstretched the concept of a notorious networked general-purpose computer by alleging that a packaging machine constituted a commonplace peripheral of such a computer so that the notoriety of the computer system propagated to the packaging machine. Even though the application refers to packaging machines only in a generic way, the Board does not regard packaging machines as notorious components. A packaging machine is a technical device which is not a usual computer peripheral, such as a printer, keyboard, data storage, display, I/O modem or the like.

[2.3] An ED should not normally refuse an application for lack of inventive step if the invention as claimed contains at least one technical feature which is not notorious (T 690/06). Therefore, it would have been necessary for the ED in this case to carry out a search into the documented prior art pertaining to packaging machines controlled by (networked) computers, and to take the result of that search into account during the examination of the application.

Request for reimbursement of the appeal fee

[3] According to R 103(1)(a), the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

Thus, the appeal fee can only be reimbursed if a procedural violation has occurred. An error of judgement on substantive issues by the ED does not constitute a procedural violation (T 690/06 [12]).

[3.1] In the present case, the ED’s reasoning that a generic packaging machine might be considered as a notorious peripheral of a networked general-purpose computer constitutes an error of judgement on a substantive issue rather than an incorrect conduct of the procedure.

Therefore, the ED’s decision not to carry out a search into the prior art of the present application is not considered as a procedural violation.

3.2 Furthermore, and in contradistinction to case T 1287/04 [4.4-5], the reasoning in the refused decision is sufficient, i.e. existent in a form that can be examined by the Board and the appellant. Although prima facie containing no non-technical feature, claim 1 read in the light of the description, i.e. in the light of the objectives and advantages emphasised by the applicant itself […], can be seen to relate to an interface embedded in a commercial context. Therefore, again it was a matter of judgement for the examining division whether or not to base their reasoning on the case law developed for assessing mixtures of technical and non-technical features, e.g. T 641/00, as it is reflected in the Guidelines for Examination.

[3.3] In conclusion, the Board does not identify a substantial procedural violation and, thus, cannot order a reimbursement of the appeal fee.

To download the whole decision, click here.

The file wrapper can be found here.


Anonymous said...

Cute kitten. But doesn't the IPKat own all rights for the use of felines in commenting IP decisions? ;-)

As to the absence of a search, when I was an examiner I always strove to find and cite some document, no matter how severely flawed the application was. I couldn't have gotten the file past my hierarchical superior otherwise. I could still be as scathing as necessary in the written opinion, by concentrating on Art. 52(2), 53, 83, 84, etc. issues, leaving the assessment of novelty and IS to a later stage of the procedure if the applicant ever came back with somewhat more serviceable documents. (In PCT that meant: only point III of the opinion is filled).

Myshkin said...

From the ED's decision:
"The purpose of the application is of a business nature, namely, to pack products."

Duh? By this reasoning *everything* that could make money is of a business nature and therefore excluded.

(Of course things that cannot make money are not industrially applicable, Art. 57, so this approach considerably simplifies examination...)