T 660/08 – It’s Always Been Tight

This is an appeal against the revocation of the patent by the Opposition Division (OD). 

One month before the oral proceedings (OPs) before the Board, the patent proprietor filed a new main request and auxiliary requests I to XIX, replacing all previous claims. 

Obviously, the Board discussed the admissibility of these requests: 

[2] According to Article 13(1) RPBA, any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. 

[3] In the present case, with a letter of 1 November 2011, the [patent proprietor] filed twenty sets of amended claims, according to a main request and auxiliary requests I to XIX, replacing the four sets of claims on which the decision under appeal had been based. 

Re the main request and auxiliary requests I to III and X to XIII 

[4] The claims according to the main request and auxiliary requests I to III and X to XIII differ from the claims of the appealed decision essentially only by the following amendments: 

• the term “content” was replaced by “a television program”; 
• the term “screen” was replaced by “display”; 
• either the expression “in response to a user input” or the expression “in response to a channel change input” was added. 

The first of these amendments limited the “content” displayed according to claim 1 to “a television program” which is displayed, thereby addressing the objection that the content could be an EPG cell as in D7. Since throughout the description of the application as filed it was clear that the content in question was meant to refer to a television program, this amendment did not add any complexity and, as it came as no surprise, did not negatively affect procedural economy. 

The second amendment was an unsubstantial correction making the wording of the claims more consistent. 

The third amendments were made in direct response to the board’s objection under A 123(2) (added subject-matter) raised for the first time in the annex to the summons to OPs. These amendments were filed within the time limit set by the board, successfully addressed the board’s objection under A 123(2) and did not add complexity, as it raised no new issues. 

For the above reasons, the board decided to exercise its discretion under Article 13(1) RPBA to admit the [patent proprietor’s] main request and auxiliary requests I to III and X to XIII into the proceedings. 

Re auxiliary requests IV to IX and XIV to XIX 

[5.1] The [patent proprietor] did not dispute that the further amendments made in claim 1 according to each of these auxiliary requests introduced features which had not been in any of the claims of the granted patent, nor in any of the sets of amended claims examined by the OD. 

The further amendments in claim 1 according to these requests relate to features taken from the description [..] which only played a minor role in the application as filed: they were each mentioned only in one or two paragraphs of the 64-page long description and, with a few exceptions, were not even mentioned in any of the 186 claims of the international application as filed. Since these features may not even have been searched in the same context, were not examined by the examining division before grant of the contested patent, nor by the OD as possible amendments for maintaining the patent in amended form, they could not have been admitted, at this very late stage of the proceedings, without adjournment of the OPs. 

Hence, in view of the current state of the proceedings and the need for procedural economy, the board decided to exercise its discretion under Article 13(1) RPBA in refusing to admit auxiliary requests IV to IX and XIV to XIX into the proceedings. 

The [patent proprietor’s] arguments 

[5.2] The [patent proprietor] explained that the amendments had not been filed with the statement of grounds of appeal because, back in 2008, when the statement of grounds of appeal was filed, it was not possible to know that the board’s practice with regard to the admission of amended claims would become stricter. 

Regarding this argument the board noted that the current version of the RPBA had been published in the Official Journal in 2007 (OJ EPO 2007, 536) i.e. before the filing of the statement of grounds of appeal. Moreover, the text of the current Article 13(1) RPBA is identical to the text of the corresponding Article 10b(1) RPBA of the RPBA published in the Official Journal in 2003 (OJ EPO 2003, 61) which entered into force already on 1 May 2003. Therefore, in the absence of more specific submissions as to any tightening of the conditions for admission in the case law of the boards of appeal since 2008, this argument is not convincing. 

The [patent proprietor] also argued that, in the case of auxiliary request IV, the additional text “in full screen” was explicitly disclosed on page 47, lines 6 to 14, of the application as filed and implied by on page 4, lines 31 to 34, page 6, lines 6 to 8, and page 9, lines 6 to 10. The [patent proprietor] emphasized that this feature was prominent in the description of the application as filed, must have been searched and had been implicitly included in earlier discussions on inventive step. 

The board does not share this argument. The only clear disclosure in the application as filed of the feature that the television program is displayed “in full screen” is on page 47, lines 6 to 14, and, possibly, also on page 9, lines 6 to 10. These short text portions in a 64-page long description cannot be regarded as making this feature “prominent”, within the meaning of a feature of the invention which would obviously have been taken into account in the search and examination proceedings. Moreover, these passages state or imply that, instead of being displayed in a window (as shown, for instance, in figure 13), the television program could also be displayed in full screen, but they do not indicate what would happen in response to a user command selecting to display newsgroup listings related to this program. Whether the newsgroup listings would be overlaid on the television program displayed in full screen or whether the television program would be displayed in a smaller window in order to make space for the display of the newsgroup listings in another window or whether any other unspecified solution would be found, is left unanswered. The board regards the absence of answers to these obvious questions as a further indication that the display of the television program in full screen was not “prominent” in the application as filed. Moreover, the board has no evidence that this feature and its technical effects were taken into account in the drawing up of the search report or that they were implicitly included in earlier discussions on inventive step. 

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T 1872/08 – Abuse Of Discretion

May an Opposition Division (OD) be criticized for not having admitted comparative trials filed during the oral proceedings (OPs) ? Yes, under certain circumstances, as the present decision shows.

This appeal was against the second revocation of the opposed patent.

The patent had been revoked a first time in 2004, but the patent proprietor had filed an appeal and Board 3.3.01 had remitted the case to the OD for further prosecution based on the third auxiliary request (decision T 141/05).

One day before the OPs, opponent 1 filed document D26. The OD did not admit the document because it was late filed and not prima facie relevant.

During the OPs, the patent proprietor filed comparative tests. The OD decided not to admit them either.

The OD then revoked the patent for lack of inventive step.

The Board finally maintained the patent in amended form. Its decision contains an interesting paragraph on how the OD exercised its discretion.

Evidence not admitted into the first instance proceedings

[2.1] In the summons of the OD dated 12 November 2007 to attend OPs, 28 March 2008 was set as the final date under R 71a EPC 1973 for making submissions and/or amendments.

Document D26 was enclosed with a letter received by the EPO by fax in the afternoon of 28 May 2008. The comparative tests were intended to be submitted during the OPs of 29 May 2008.

Hence, both the document and the comparative tests were not submitted in due time.

[2.2] According to A 114(2)

“The EPO may disregard facts and evidence which are not submitted in due time by the parties concerned.”

According to R 71a EPC 1973, new facts and evidence submitted after the final date set in the communication annexed to the summons “need not be considered, unless admitted on the grounds that the subject-matter of the OPs has changed.”

The OD exercised the discretion conferred on it by the afore-mentioned provisions in the decision under appeal […].

It has to be assessed whether or not the OD exercised its discretion in the right way when not admitting document D26 and the comparative tests of the patentee into the proceedings (see G 7/93 [2.6]).

Document D26

[2.3] The OD indicated the reasons for not admitting this late filed document under point 3.1 of the reasons of the decision under appeal. There it explained in detail why it was of the opinion that the disclosure of this document was not prima facie relevant for ink jet ink compositions and why this document could have been filed earlier.

Regarding the reasons given by the OD for not admitting document D26, the Board is satisfied that the OD exercised its discretionary power correctly, namely on the basis of the given relevant facts, in accordance with the right principles and in a reasonable way. Hence, the Board saw no reason to overrule the OD’s decision. Consequently, it did not admit this document into the proceedings.

The comparative tests which the patentee offered to submit during the OPs on 29 May 2008

[2.4.1] The OD indicated the reasons for not admitting this late filed evidence under point 3.3 of the reasons of the decision under appeal. Therein the OD stated that comparative tests filed at such a late stage would have taken the opponent by surprise. The OD goes on to argue as follows:

“The fact that example 18 of D9 is highly relevant for the current proceedings has been made clear already during the appeal procedure. Besides, said example consists of a single mixture of pigments, so that there could not have any ambiguity how a fair comparative example should be done.”

[2.4.2] How a fair comparative example should be done can be derived from point 4.3.1 of the decision under appeal, which refers to the comparative tests filed with the letter dated 28 March 2008. There it is stated that comparative tests should use inks with the same combination of pigments as in example 18 of document D9. The OD continued as follows:

“Furthermore, the additional examples were made with one specific paper and one specific printer (both different from the paper and the printer used in D9 and from the examples of the opposed patent). Moreover, document D18, tables 11-13 describes that the a* and b*-value depend significantly on the paper and on the printer used.”

[2.4.3] Document D18 was first cited by opponent II […] in its letter dated 20 September 2004 to show that an ink set consists of three or four inks of different colours […].

In the opposition and appeal proceedings prior to the issue of the written version of the decision under appeal, no reference was made to the fact that the a* and b*-value depend significantly on the paper and on the printer used. The OD thus introduced in its decision a new fact as a basis for the additional requirement to use certain types of paper and certain printers when preparing comparative tests.

Moreover, the OD did not take into account that the offer of the patentee to present additional comparative tests was the immediate reaction to the objection first raised during the OPs, that the comparative tests submitted under cover of the letter dated 28 March 2008 were deemed to be insufficient. It did not weigh the patentee’s interest of submitting evidence to overcome this objection against the interest to take a decision soon.

Lastly, in not admitting the comparative tests offered by the patentee, the OD did not take into account that it deemed further comparative data to be absolutely necessary in order to overcome its objections as to inventive step. The OD thus deprived the patentee of the possibility to defend its case effectively.

For these reasons, the OD did not use its discretion in a reasonable way by not admitting the additional comparative tests.

Therefore, the Board decided to overrule the decision of the OD in this respect and to admit into the proceedings these comparative tests, which the patentee resubmitted under cover of its statement setting out the grounds for appeal.

[2.4.4] However, the reasons given under point [5.2.10] of this decision show, that the admission of these comparative tests has no effect on the outcome of the present decision.

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T 181/08 – Coverage

Both the patent proprietor and two of the three opponents filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form.

The Board found the requests on file not to comply with A 123(2):

[2.1] Claims 1 of all these requests contain differing or additional features with respect to claim 1 as granted and with respect to claim 1 as originally filed.

[2.2] Claims 1 of all requests concern an oral pharmaceutical multiple unit tableted dosage form comprising

• an enteric coating layer having a thickness of more than 20 μm and said layer
• comprising a plasticizer in an amount of 15-50 % by weight of the enteric coating layer polymer.

Both features are not contained in claim 1 as originally filed. They are derived from the description as originally filed, namely page 15, lines 18 to 23 and lines 10 to 12:

Claim 1 of the second auxiliary request contains a further feature which is also taken from the description as originally filed, i.e. page 16, lines 29 to 30:

As can be seen with regard to this further feature as an example, there are even more parameters in the description than thickness of the enteric coating layer or amount of plasticizer referring to multiple values and characterised by being “usual”, “preferred” or “more preferred”

Under these circumstances, the person skilled in the art reading this description firstly finds no guidance with which of the preferred features to start and secondly which of the other features to combine.

[2.3] Therefore, the combination of the two features “thickness of enteric coating layer of more than 20 μm” and “an amount of 15-50 % by weight of the enteric coating layer” is not directly and unambiguously disclosed in the application as originally filed and claims 1 of all requests containing this combination are in breach of A 123(2).

[3] In addition to the arguments and conclusions set out under point [2] above which lead to the consequence under point [2.3], for the sake of taking account of all arguments presented by the appellant (patent proprietor), the following remarks are added:

[3.1] As a supporting argument, it was mentioned that all the examples covered the “20 μm” and “15-50 % by weight” combination of features.

This remark could put the case close to that of cited decision T 330/05 in asserting that “coverage” by all the examples at least put particular weight on an embodiment carrying one of these features and that this weight would enable the skilled person to directly and unambiguously derive the combination of these features by starting at the particularly weighted embodiment und adding the further feature directly by selecting it from a single list.

However, there is neither particular reference to the amount of plasticizer being in the range of “15-50 % by weight” in each of the examples (the values even have to be figured out by the reader himself and are not indicated as such and, in addition, at least also lie above 10%, one of the other alternatives on page 15 of the description) nor is there any mention of the thickness of the enteric coating layer in any of the examples, except example 15, and there, the thickness is not defined as representing “more than 20 μm” but only corresponding to “approx. 20 μm” which usually also includes a thickness slightly less than 20 μm.

Thus, the appellant (patent proprietor)’s argument that – following the language in T 330/05 – a “most preferred embodiment” based on

• either the enteric coating layer having a thickness of more than 20 μm or
• said layer comprising a plasticizer in an amount of 15-50 % by weight of the enteric coating layer polymer

could be derived from the examples to start with and then simply the second feature had to be added, cannot be followed.

[3.2] The argument that there was no selection from lists leading to totally different embodiments for each item as selected also cannot hold.

Narrowing down parameters or percentages of ingredients of compositions as used in current claims 1 does not in fact result in different products in terms of chemical structure. In any case, however, it results in products carrying different characteristics that, in case of doubt, create a difference with respect to products of the state of the art - which is usually precisely why such “narrowing down” of parameters and percentages is introduced into claims.

[4] Thus, amended claims 1 of the main request and of the first to third auxiliary requests represent subject-matter extending beyond the content of the application as originally filed (A 123(2)).

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T 1880/11 – Untimely

The application under consideration was refused a first time by the Examining Division (ED) with a decision posted on October 4, 2005.

The applicant filed an appeal; on July 24, 2009, Board 3.5.05 set the decision aside and remitted the case to the first instance “with the order to grant a patent on the basis of the main request ... and a description and figures to be adapted thereto” (T 408/06).

The ED issued a communication under R 71(3) on January 12, 2010. In the attached documents, pages 9, 9a and 9b of the description were amended by the ED in order to adapt the description as required by the Board. In particular, the following sentence was added on page 9b:

“The embodiments of figures 2, 3 and 5 do not specify the invention but only related technology.”

In a first letter dated May 20, 2010, the grant documents were said to be approved, but with a request to amend the added sentence to:

“The embodiment of figure 5 does not specify the invention but only related technology.”

In a communication dated September 10, 2010, the ED raised an objection under A 84.

In a second letter dated January 20, 2011, the applicant requested a new communication under R 71(3) wherein the sentence on page 9b should be deleted and the other amendments on pages 9, 9a and 9b maintained. There was also a conditional request for oral proceedings (OPs).

The application was refused a second time by the ED with a decision posted on March 30, 2011. The reason for the refusal was lack of clarity.

The applicant filed an appeal against this decision. It submitted a notice of appeal, together with “abbreviated Grounds of Appeal”:

“Thus, to enable immediate allowance under interlocutory review, the Applicant hereby approves the amendments proposed by the Examiner on pages 9, 9a, and 9b as attached to the Communication under R 71(3) dated 12th January 2010.”

A second statement of the grounds was received on July 14, 2011, repeating the approval and the requests, and a third statement of the grounds on 9 August 2011. Inter alia it was argued that there had been a procedural violation.

The Board found that the ED had committed a substantial procedural violation.

[2.1] In his third grounds of appeal dated 9 August 2011, the appellant submitted that there had been a procedural violation. He complained that the dialogue with the ED about the adaptation of the description had been improperly stopped by the issuing of a refusal decision.

The appellant further argued that the ED had itself interpreted the ratio decidendi of the board of appeal’s decision and had not permitted any discussion on its interpretation […].

The letter ends with the assertion that “not permitting any further written submissions by the applicant” constituted a “procedural violation”.

[2.2] In its communication dated 10 September 2010, the ED argued that the amendments of the ED were “a direct and unavoidable consequence of what has been ordered by the BoA (decision T 480/06, chapter 8)” […].

[2.3] The appealed decision (section 7) argues that:

“the description ... contains subject-matter that does not fall within the scope of the claims since the decision T 408/06, chapter 8 explicitly identifies such subject-matter being not covered by the claims.”

[2.4] The passage in the board of appeal’s decision cited by the ED reads (T 408/06 [8]):

“…

Conclusions

[8] The board concludes that the claims of the main request satisfy the requirements of the EPC. However, the claims of the said request are understood to relate primarily to the embodiment according to Fig. 4 and the related passages of the description. The description includes further embodiments which are not covered by said claims. For example, the embodiments of Figs. 2 and 3 are understood to relate to a client-side “digital content management apparatus” which is used for the secrecy protection of the digital content, (cf. col.5 1.38-47).”

It follows from this passage that figures 2 and 3 are understood to relate to embodiments which are not covered by the claims of the main request.

[2.5] At the time when the ED had to decide on the request for OPs, the following arguments had been presented by the applicant:

“It appears that with the other amendments made on page 9a and 9b, the application is now clearly adapted to the claims and the statement which was hand-written by the Examiner and amended by the representative seems redundant. There is no specific requirement in the Decision for an explicit positive or negative statement, merely for adaptation of the description. There is a conceivable risk that the negative statement may be adversely construed, however improper that might be, which is why we feel it unhelpful as well as unnecessary.” […]

[2.6] In order to decide whether the ED committed a procedural violation, the board has to consider whether the ED had the discretion to reject the request for OPs.

[2.7] A 116(1) EPC 1973 reads:

“OPs shall take place ... at the request of any party to the proceedings. However, the EPO may reject a request for further OPs before the same department where the parties and the subject of the proceedings are the same.”

The only other provision of the EPC allowing rejection of a request for OPs applies only to the Receiving Section (A 116(2) EPC 1973). Thus the EPC defines only one situation which allows the ED to reject a request for OPs: the request is for further OPs (which applies here; the first OPs before the ED took place on 8 July 2005); it must be before the same department (applies here); the parties must be the same (applies here) and the subject of the proceedings is the same. The last condition does not apply here since the claims are different and there is a new subject, namely how to adapt the description and the figures in order to fulfil the order of the board of appeal’s decision.

[2.8] As to the statement in the appealed decision, section 7:

“The auxiliary request for OPs is not allowed since a point to be discussed is prerequisite for the summons to OPs and the applicant is not entitled to continue discussing issues on which the division has no right to decide. In the present case in view of A 111(2) the ED is not entitled to discuss the ratio decidendi of the Boards of Appeal decision T 408/06.”

Firstly, as follows from the above there is no basis for this to be found in the EPC, in particular not in A 116(1) EPC 1973.

[2.9] Secondly there was in fact clearly a need for and an entitlement to discussion between the ED and the applicant in this case. At least the following questions could have been discussed during OPs:

• Does the above cited section [8] of the board of appeal’s decision belong to the ratio decidendi of the decision?
• Does section [8] leave room for interpretation since the wordings “primarily” and “understood” are used?
• Did the ED interpret the ratio decidendi of the board of appeal’s decision or did it strictly follow the ratio decidendi?
• Does section [8] force the addition of the sentence “The embodiments of figures 2, 3 and 5 do not specify the invention but only related technology.” to the description?

[2.10] Moreover the outcome of the OPs could clearly have had a decisive influence on the outcome of the examination procedure as a whole. Thus, the rejection of the request for OPs by the ED constitutes a substantial procedural violation.

[2.11] The appellant did not request the reimbursement of the appeal fee. The board could grant the reimbursement even without such a request. According to R 103(1)(a) the prerequisites for reimbursement are the allowability of the appeal, equity and a substantial procedural violation. While the first and last of these conditions are satisfied in the present case, the fact that the appellant now does not request more than was in fact offered in the R 71(3) communication and so could have been achieved even without the (refused) OPs, means that reimbursement would not be equitable.

The appropriate order

[3.1] The board could only guess at the ED’s reasons for not granting interlocutory revision as requested, since, in accordance with A 109(2) EPC 1973, it passed the appeal to the board without comment. The board refrains from making any such guess. Prima facie the ED should have granted interlocutory revision, since the applicant now accepted the text which had been proposed to it. However the board notes that an ED is not bound, even by an applicant’s approval of a text put forward by the division to grant a patent on that text (G 7/93, [2.1, penultimate paragraph]). Given that the dialogue between division and applicant was brought to a premature end by the untimely issuance of a refusal decision without holding the OPs requested, the board therefore uses its discretion under A 111(1) EPC 1973 and remits the case to the department of first instance for further prosecution (bearing in mind that the final form of the claims has already been decided).

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Great minds think alike; Laurent Teyssèdre has commented this decision on the very same day (here).

T 690/10 – What If

The appeal was filed against a refusal of an application based on an international application.

Claims 1 and 2 as originally filed read:

1. A pharmaceutical composition, for delivery of carbon monoxide to a physiological target, comprising a metal carbonyl compound or pharmaceutically acceptable salt thereof and at least one pharmaceutically acceptable carrier, wherein the metal carbonyl makes available CO suitable for physiological effect by at least one of the following means:

1) CO derived by dissociation of the metal carbonyl is present in the composition in dissolved form;

2) on contact with a solvent the metal carbonyl releases CO;

3) on contact with a tissue, organ or cell the metal carbonyl releases CO;

4) on irradiation the metal carbonyl releases CO.

2. A pharmaceutical composition according to claim 1, wherein the metal carbonyl compound is a complex of at least one of Fe, Mn, Ru, Rh, Ni, Mo or Co with at least one carbonyl ligand.

In its communication dated July 15, 2003, the EPO, acting as ISA, invited the applicant pursuant to Article 17D3(a) and Rule 40.1 PCT to pay seven additional search fees.

The ISA found that the subject-matter concerned metal carbonyl compounds releasing carbon monoxide in organisms to increase the CO-concentration and their use in therapy. Such compounds were already disclosed in document D3.

The ISA found that there were eight different inventions claimed: seven classes of CO-containing metal-complex compounds and one invention concerning formate- or oxalate-derivatives.

The ISA searched only the first of these inventions, i.e. pharmaceutical compositions for the delivery of carbon monoxide to a physiological target comprising the metal Fe, and the therapeutic uses of these compositions.

After entry into the regional phase, the Examining Division (ED) in its first communication, dated May 14, 2004, confirmed the lack of unity objection raised by the ISA and asked the applicant whether it wished to obtain a European search report for the other inventions under R 112 EPC 1973.

In response to this communication, the applicant filed a new set of claims with its letter dated July 5, 2004 and paid one additional search fee to have a search performed on these claims. It did not provide any indication as to the invention to which the additional search should be directed.

A second communication was issued by the ED on July 12, 2005, stating that the applicant could not amend the application at this stage. The ED further asked the applicant to indicate on which of the inventions as identified in the annex accompanying the communication under R 112 EPC 1973 the additional search should be performed.

In reply to this communication, the applicant requested the refund of the search fee and asked that examination be started on the set of claims filed on July 5, 2004. Arguments in support of unity of invention were also provided.

In its third communication, issued on November 8, 2005, the ED again confirmed the lack of unity of the application as filed and asked the applicant to restrict the application to the invention searched (the first invention).

The applicant replied by a letter dated July 31, 2006, filed a new set of claims and presented arguments for unity of invention and to the effect that the amended claims did not relate to unsearched matter.

A fourth communication was issued by the ED on 8 February 2007. Since the last set of claims still contained unsearched subject-matter, this set of claims had been considered as inadmissible on the basis of R 46(1) and R 112 EPC 1973 in conjunction with opinion G 2/92. The ED again requested the applicant to limit the application to the invention searched.

In reply to this communication, the applicant contested the findings of the ED. The claims were still not restricted to the only invention searched.

A summons to attend oral proceedings (OPs) was sent out on April 2009. the ED once more invited the appellant to “limit the application to the invention covered by the International Search Report”.

The OPs were held in the absence of the applicant. The application was refused.

Together with its appeal, the applicant filed a new main request identical to claim 1 as filed on July 31, 2006, as well as three auxiliary requests.

In what follows, the Board examined the unity objection with respect to the application as originally filed :

[3.1] A 82 EPC 1973 (which was not amended in the EPC 2000 revision) deals with the requirement of unity of invention and states the principle that a European patent application should relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. R 30 EPC 1973 (in comparison to which no substantive amendments were made in the corresponding provision of the EPC 2000, i.e. R 44) defines the method for determining whether the requirement of unity of invention is satisfied in respect of a group of inventions claimed in a European patent application. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding “special technical features”. The expression “special technical features” is defined in R 30 EPC 1973 as meaning those features that define a contribution which each of the inventions, considered as a whole, makes over the prior art.

Claim 2 of the application as originally filed constitutes seven equal embodiments representing a group of inventions which supposedly involve one or more of the same or corresponding “special technical features” defining a contribution which each of the inventions, considered as a whole, makes over the prior art in order to establish a technical relationship that guarantees unity of the application.

Firstly, the “special technical features” that this group of inventions can involve are all or scope of the features of claim 1, because this claim 1 includes the subject-matter of claim 2.

The subject-matter of claim 1 relates to

a pharmaceutical composition,

for delivery of carbon monoxide to a physiological target,

comprising a metal carbonyl compound or pharmaceutically acceptable salt thereof and at least one pharmaceutically acceptable carrier,

wherein the metal carbonyl makes available CO suitable for physiological effect

by at least one of the following means:

1) CO derived by dissociation of the metal carbonyl is present in the composition in dissolved form;

2) on contact with a solvent the metal carbonyl releases CO ;

3) on contact with a tissue, organ or cell the metal carbonyl releases CO ;

4) on irradiation the metal carbonyl releases CO.

In the description, it is stressed that “the ligands to the metal may all be carbonyl ligands, as e.g. in [Mn2(CO)10]” […], which means that such metal carbonyl compounds, including e.g. iron pentacarbonyl, must make available CO suitable for physiological effect by at least one of the means as defined under points 1 to 4 in claim 1, which is part of the common general knowledge of a chemist.

Secondly, there could be a common feature within claim 2 representing the “special technical feature” unifying the seven teachings concerning seven metals, which is not set out explicitly in this context, for instance a teaching relating to the use of a transition metal carbonyl to deliver CO with physiological effect.

Document D3 discloses

a pharmaceutical composition (see claim 6 in combination with claim 1),

for delivery of carbon monoxide to a physiological target (see claim 1),

comprising a metal carbonyl compound or pharmaceutically acceptable salt thereof and at least one pharmaceutically acceptable carrier (see claim 6 relating to iron pentacarbonyl representing a transition metal and even one of the particular metals mentioned in claim 2 of the application in suit),

wherein the metal carbonyl makes available CO suitable for physiological effect by at least one of the following means, namely on contact with a tissue, organ or cell the metal carbonyl releases CO (see column 1, lines 44 to 53 of document D3, which is in line with the argumentation in the paragraphs before).

Consequently, all the features of claim 1 of the application as originally filed, and even the feature relating to “transition metals” which were common to the metals in claim 2 itself, are anticipated by the teaching of document D3; finally, even one of the metals itself is already mentioned in document D3. Therefore, from the features contained in claim 1, none is left that could be regarded as a “special technical feature” to provide unity for the embodiments representing the group of inventions under claim 2, and there is also no additional feature which could serve as the special technical feature within the meaning of R 30 EPC 1973.

Consequently, in accordance with the ISA’s argumentation in the invitation to pay additional search fees and the argumentation of the ED, there remains no special technical feature that could define a contribution which any of the claimed inventions could make over the prior art.

Thus, the original set of claims does not satisfy the requirements of A 82. The non-unity objection raised for the initial claims by the International Search Division [sic] during the international search, and the resulting invitation to pay further search fees under R 112 EPC 1973 for a search with respect to inventions numbers 2 to 8, were thus justified.

[3.2] The appellant’s argument that the current non-unity objection would not have occurred if claim 2 of the application had not existed cannot succeed. Nor can the argument that it would have been no undue effort to the ISA to make a search for the subject-matter of the whole application without raising the non-unity objection.

As for the first argument, the fact is that seven specific examples for the metal atoms are mentioned in claim 2. That is the same situation as if seven separate claims had been set out with respect to the seven metals. They define a group of seven different teachings, and it is the first of these seven specific teachings, containing Fe as the metal, that is not new with respect to document D3.

Beyond this fact and the resulting conclusion, the board sees no possibility to consider speculative situations with respect to the subject-matter that could have been claimed, because their implications would be different and are not known.

The second argument relates to Chapter VII-12 of the PCT International Search Guidelines (PCT Gazette No. S-06/1998) giving the possibility to the searching authority to search a group of inventions together and to include the result in the ISR, even if they lacked unity. This regulation applies to a situation in which the search examiner is able to make a complete international search for more than one invention with negligible additional work. Nevertheless, it is fully within the examiner’s discretion to decide on this matter and nothing has been submitted by the appellant to suggest that this discretion was misused in the present case. The board cannot find any such reasons either.

The Board then found all the requests on file unallowable because none of the claims 1 of the main request or of the auxiliary requests 1 to 3 is restricted to Fe-containing metal-carbonyl complexes ; consequently, they all contain unsearched subject-matter.

The appeal was dismissed.

I am not much of a chemist, but it looks to me as if it was advantageous not to place a Markush-type claims (or equivalents) immediately after a broad main claim, in order to avoid unity objections (and all the troubles that may arise therefrom) during the search phase.

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

The file wrapper can be found here.

T 1679/09 – When One Becomes Two

Recently, a reader enquired on case law concerning R 80. Well, here is a recent decision dealing with a multiplication of independent claims in the course of opposition proceedings.

One landmark decision on this topic was T 223/97 [2.2], where Board 3.2.1 stated (my translation of the French original):

“According to a principle set forth in decision G 1/84 [9] opposition proceedings are not to be considered an extension of the examination proceedings and is not to be misused as such. This means that only the independent claims challenged in the opposition may be amended, provided that this amendment is a response to the grounds for opposition invoked, in particular lack of patentability, and also satisfied the requirements of the EPC and in particular the double requirement expressed in paragraphs 2 and 3 of A 123. It is clear that the addition of two new independent claims cannot be admissible because this addition, which does not have any effect on the fate of claim 1 that has been challenged, cannot be considered to be a limitation of claim 1 itself in response to a ground for opposition that has been invoked against it.

If claim 1, as here, covers two particular embodiments, the patent proprietor may as a response to the lack of patentability, limit [the patent] to those two embodiments and, consequently, file two independent claims each of which protects one of those two embodiments. If, as in the auxiliary request, the main claim that has been challenged is deleted, the two new independent claims replacing it constitute a limitation of this main claim because only two particular embodiments are still protected. As a consequence, these claims are admissible provided that they satisfy the double condition of A 123(2) and (3).

However, if, as in the main request, the main claim, which already covers the two particular embodiments is essentially maintained in its entirety, the introduction of these two new requests (3 and 4) violates the well-established principle mentioned above, because then the addition of those two new claims cannot be considered to be a limitation of the main claim itself in response to the ground for opposition, i.e. the lack of patentability invoked against it.

Moreover, the requirement of concision of the claims pursuant to A 84 [EPC 1973] pleads against the introduction of superfluous new claims that do not improve the fate of the European patent under consideration. Therefore, [the Board] has to conclude that the independent claims 3 and 4 that have been introduced in the course of the opposition proceedings are not admissible.” (my emphasis)

In the present case, both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

Claim 1 of the main request (identical to the set of claims as granted) read (in English translation):

A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), characterized in that the rotor of the synchronous motor (03) has poles comprising permanent magnets.

Auxiliary requests I, Ia and Ib each had two independent claims:

1. A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), wherein a receiving unit (05; 06; 16) engages with each end of the two ends of the material reel (02), wherein two pairs of receiving units (05; 06; 16) are arranged so that each receives one material reel (02) or a scrap reel, wherein each receiving unit (05; 06; 16) of the reel changer has its own actuator (21) for adjusting the receiving units (05; 06; 16) in the axial direction of the material reel (02), wherein the actuators (21) are movable together with the receiving units (05; 06; 16).

2. A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), wherein the rotor of the synchronous motor (03) has poles comprising permanent magnets, wherein a receiving units (05; 06; 16) engages with each end of the two ends of the material reel (02), wherein two receiving units (05; 06; 16) are arranged for bearing the material reel (02), wherein both receiving units (05; 06; 16) are rotatably supported and wherein only one of the two receiving units (05; 16) is driven by the electric motor (03), wherein the receiving units (06; 16) have structurally identical bearings.

The Board found the main request to lack inventive step and then dealt with auxiliary requests I, Ia and Ib. Here is what the Board had to say on their compliance with R 80:

*** Translation of the German original ***

[4.1] The OD did not admit auxiliary request I inter alia based on R 80 because the addition of the second independent claim 2 was not required to overcome an objection under A 100 (a). This was only admissible in exceptional cases. The OD also argued that its reasoning was supported by decisions T 610/95 and T 181/02.

[4.2] The Board cannot adopt this point of view, for the following reasons:

R 80 essentially provides that the description, claims and drawings of the European patent may be amended, provided that the amendments are occasioned by a ground for opposition under A 100, even if that ground has not been invoked by the opponent.

In the present case the single independent claim of the patent as granted was considered to lack novelty. During the opposition proceedings [the patent proprietor] has filed two independent claims limited to different subject-matter, wherein the independent claim as granted was limited by adding the features of dependent claims as granted (claims 36, 47, 53 and 54, and claims 36, 37 and 40, respectively). The Board is of the opinion that the [patent proprietor] was right in pointing out that under these circumstances such an amendment complies with the requirements of R 80.

[4.3] Decision T 181/02, which has been cited by the OD, discusses a situation that can be compared to the present case. There also the competent Board came to the conclusion that the replacement of a single independent claim by two or more dependent claims may be caused by a ground for opposition, e.g. when two dependent claims as granted were inked in parallel to a single independent claim. Then the filing of two independent claims might be possible.

Decision T 610/95, which has also been cited in the impugned decision, concerns the situation where the patent proprietor keeps the single independent claim which has been attacked in the opposition proceedings and adds a second independent claim, which was considered to be inadmissible in view of R 57a EPC 1973 (now R 80). However, as the present factual situation is different, decision T 610/95 is not suitable for justifying the dismissal of auxiliary request I based on R 80.

Even considering said decisions the Board is of the opinion that auxiliary request I complies with the requirements of R 80. For the same reason, auxiliary requests Ia and Ib also comply with the requirements of R 80.

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

The file wrapper can be found here.


NB: Another interesting decision in this context is T 642/06 [4.2], where Board 3.2.03 said (again, my translation of the French original):

“Moreover, the set of claims filed comprises not one single independent claim by three such claims, i.e. new claims 1, 10, and 15, which are based on the combinations of claims 1 and 6, claims 1 and 10 and claims 1 and 3 as granted. However, dependent claims 3, 6 and 10 as granted are neither parallel nor exclusively dependent on claim 1. Quite obviously, as their subject-matter is not directed at alternative or equivalent developments of a single concept or embodiment (see Case Law, 5th edition, 2006, VII.C.6.1.3 and T 181/02), they cannot correspond to the only exception where the case law allows the filing of supplementary independent claims during opposition or opposition appeal proceedings. The amendments included in the set of claims according to the first auxiliary request go beyond the amendments that are necessary for overcoming the grounds for opposition (in particular, A 56) and, therefore, violate R 80.” (my emphasis)

T 188/09 - No Good Reason

This appeal deals with the refusal of an application by the Examining Division.

The applicant argued that the “problem-solution approach” should not be used. Although this approach was used as a tool to provide a consistent approach to the assessment of inventive step, there were cases where its application was not appropriate because it hindered rather than assisted in answering the ultimate question of whether or not the claimed subject-matter was obvious over the prior art. This was acknowledged in decision T 465/92.

The Board was unwilling to adopt this argument and to follow T 465/92 – which, incidentally, is referred to as a “one-off” decision in the Case Law Book:

[1] The “problem and solution approach” is regularly applied as an auxiliary means by the instances of the EPO in the course of deciding whether or not claimed subject-matter fulfils the requirements of A 56.

[2] The appellant, referring to decision T 465/92, observes that there are however cases where the “problem and solution approach” hinders, rather than assists answering the question of whether claimed subject-matter is obvious over the prior art.

[3] In decision T 465/92 [6-9.6] the board explicitly decided not to use the “problem and solution approach”. Thus, the board understands the appellant’s reference to this decision as an argument that the present case is one where the “problem and solution approach” should not be used.

[4] The board notes first that whatever approach is applied as an auxiliary means for the evaluation of inventive step of claimed subject-matter, in a given evidential situation it must provide the same result, be it either in favour of or against inventive step. Therefore, in the present case, even if the “problem and solution approach” was applied, the decision on inventiveness should be the same as if it was not used.

[5] Moreover, according to the reasons of decision T 465/92, the board decided to avoid the “problem and solution approach” because it considered that the seven relevant citations were all equally close to the claimed invention and that therefore, the opponent “ought not to be tied down by having to select one or more citations as being closer than others” (see points [9.3] and [9.4] of the reasons). Consequently, the board considered them all individually without selecting one as the closest prior art document.

[6] The board in decision T 465/92 [9.5] also notes that there may be situations which “can result in a complicated multi-step reasoning where the facts were clear, either for or against inventiveness. Thus, if an inventions breaks new ground it may suffice to say that there is no close prior art rather than constructing a problem based on what is tenuously regarded as the closest prior art.”

[7] None of the circumstances for the avoidance of the classical “problem and solution approach” referred to in decision T 465/92 is present in the case at hand, i.e. neither can the claimed subject-matter be considered as breaking new ground, since document D4 describes a G-protein coupled receptor specifically located in taste cells nor is there a large number of equally close prior art documents […].

[8] Thus, having considered the rationale in decision T 465/92 the present board does not see a reason to apply the approach adopted by the board in that decision rather than the classical “problem and solution approach”.

T 465/92 was indeed more radical than what is said about it in the present decision, because it made the somewhat provocative statement that the problem-solution approach, “as it relies on the results of a search made with actual knowledge of the invention, it is inherently based on hindsight, and therefore calls for care in its application in some circumstances” (point [9.5] of the reasons). If this were true, then the statement under point [4] above would not be correct any more because a method based on hindsight will not always give the same results as a method that is not. However, even if the statement in T 465/92 was correct, if an invention was found to be inventive when assessed with an approach based on hindsight, then it should a fortiori be inventive when assessed with an approach that was not flawed by hindsight. The reverse would not be true. Please correct me if I am wrong.

To download the whole decision, click here.

The file wrapper can be found here.

T 1248/08 – What’s Your Number?

This is an appeal against the revocation of the European patent under consideration.

Claim 1 of the patent as granted read:

A coating solution for forming a film for cutting off heat radiation which contains fine particles of at least one hexaboride and fine particles of tin-containing indium oxide (ITO) or antimony-containing tin oxide (ATO), in a weight ratio of from 0.1:99.9 to 90:10, said hexaboride being represented as XB6 where X is Y, La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Lu, Sr or Ca provided that, when the hexaboride is LaB6, the weight ratio of LaB6 to ITO or LaB6 to ATO is not 18.6:81.4.

Claim 1 of the main request before the Board read:

A coating solution for forming a film for cutting off heat radiation which contains fine particles of LaB6 and fine particles of tin-containing indium oxide (ITO) or antimony-containing tin oxide (ATO), provided that the weight ratio of LaB6 to ITO is from 0.62:99.38 to 10.7:89.3 and the weight ratio of LaB6 and ATO is from 1.10:98.9 to 13.8:86.2. (my emphasis)

The opponent raised objections under A 123(2) against the value of LaB6/ITO of 0.62:99.38, which was based on the alleged disclosure of 0.09 for the LaB6 concentration. According to the opponent, this value was not unambiguously derivable from the application documents as originally filed.

The patent proprietor considered that the proposed value of “0.09” in example 1 of Table 1 was allowable because it was clearly and unambiguously derivable from the application documents as originally filed.

Moreover, the value was indirectly derivable from the plotted points in Figure 2 at the position x = LaB6 /(LaB6 + ITO) = 0.06 which agreed with the proposed value of 0.09 for the hexaboride concentration, but not with alternative values of “0.08” or even “0.05”.

The opponent argued that the scale of the axes and the plotted points in Figure 2 made it impossible to distinguish between 0.62% and 0.55%, and hence it could not be used to confirm the value of 0.09 in example 1 of Table 1.

The Board agreed with the opponent:

Amendments (A 123(2) and (3))

Main request […]

[1.1.1] In the application as filed (page 24, Table 1, first row, second column), a number pertaining to the value of the amount of the Lanthanum hexaboride used in example 1 was illegible and indecipherable. It was not clear whether it should read “0.08” or “0.09”, or even “0.05”.

The board is not persuaded by the appellant’s arguments that the actual disclosure of that figure was unequivocal and that it reads “0.09”.

According to the board, said value, in particular the number “9” thereof, is neither directly and unambiguously derivable from said Table 1 […] because the entry in question is so poorly legible that it may be interpreted as “0.08” or as “0.09” or even as “0.05”, nor can it be derived in an unambiguous manner from the position on the abscissa of the corresponding data points on the graph of example 1 in Figure 2 as filed. To avoid any ambiguity, a higher degree of accuracy would be required so that the position of the plotted points could be ascertained with a precision of as little as 0.07. Such a precision is, in the board’s opinion, impossible to achieve in view of the scale of the abscissa of Figure 2 and in view of the fact that the data “points” are represented by circles having themselves a diameter of at least about 0.05.

The application documents as originally filed are therefore ambiguous in this respect.

[1.1.2] In accordance with the established jurisprudence of the Boards of Appeal of the EPO, and contrary to the assertions of the appellant, in the case of a proposed amendment under A 123(2) or of a correction under R 139, the factual disclosure of a European patent application as originally filed has to be established to a rigorous standard, namely the standard of certainty “beyond reasonable doubt” (see T 113/86 [2.2]; T 383/88 [2.2.2]; T 581/91 [3, last three paragraphs]; T 723/02 [2.4]; T 1239/03 [3.3.3]). In the above-cited decisions, the boards explicitly rejected the “balance of probabilities”, the normal standard of proof in civil proceedings, as an appropriate criterion to be applied. In particular, it was decided in T 113/86 that

“amendments requested by the Patentee should not be allowed if there was the slightest doubt that the unamended patent could be construed differently to the patent as amended”.

In T 383/88 the board remarked that

“applying a lower standard could easily lead to undetected abuse by allowing amendments on the basis of ostensibly proven common general knowledge.”

[1.1.3] The board considers that the above-cited jurisprudence is eminently important and clearly applicable to the present case, where an analogous question of compliance or non-compliance with the requirements of A 123(2) needs to be decided, namely the question of whether a particular proposed feature is disclosed in the application documents as originally filed. Following the established jurisprudence, the board considers that the balance of probabilities is not an acceptable standard for determining the actual value and that this question should be [determined] on the basis of the rigorous standard of certainty characterised as “beyond reasonable doubt”. Therefore, the arguments of the appellant adopting a proof “on the balance of probability” in favour of the value of “0.09”, in particular the survey A6, must fail. According to this survey – conducted amongst partners and staff at Withers & Rogers LLP (the firm of the [patent proprietor’s] representative) – out of 72 test persons, a total of 67 indicated the relevant entry in Table 1 to be “0.09” without qualification. However, it was also found that two respondents indicated another figure (“0.08”) and that three further respondents who indicated “0.09” had also considered other possibilities. In the board’s opinion, therefore, these results demonstrate that the value in question cannot be considered to be “0.09” with a certainty “beyond reasonable doubt”, as required by the established jurisprudence. In any event, a question of accuracy and disclosure cannot be decided by a poll.

[1.1.4] The appellant also pointed to the priority document of the patent in suit and to the family patent document A8 (published 20 November 2001) as potential sources of supplemental original disclosure. This approach must fail, because the Enlarged Board of Appeal (EBA) ruled in decision G 11/91 [7] that

“[b]efore a correction can be made under R 88, second sentence, it has to be established in point of fact what actually a skilled person would derive, on the date of filing, from the parts of the European patent application relating to the disclosure. As a result of the prohibition of extension under A 123(2), documents other than the description, claims and drawings may only be used insofar as they are sufficient for proving the common general knowledge on the date of filing. On the other hand, documents not meeting this condition may not be used for a correction under R 88, second sentence, even if they were filed together with the European patent application. These include, inter alia, priority documents, the abstract and the like.” (emphasis added).

Therefore, the disclosure of the priority document cannot be used to supplement or replace parts of the disclosure of the application as originally filed. Nor can it be used to dispel doubts as to the meaning of an ambiguous part of the application.

The same applies to the family documents, for the reason that the text of another patent application based on the same priority document need not be identical to the European patent application.

[1.1.5] In view of the above reasoning, the lower limit of the ratio of LaB6 to ITO of 0.62:99.38 […] and derived from a weight ratio of 0.09 to 14.5 (Table 1, example 1) is not disclosed in the originally filed documents.

For comparison only, a weight ratio of 0.8 to 14:5 in example 1 would yield the weight ratio of 0.55:99.45.

The board observes that an amendment to 0.55:99.45 would also not be allowable because of a lack of a clear and unambiguous disclosure of the concentration value of 0.08 in Table 1 as originally filed.

The requirements of A 123(2) and (3) are thus not met. The main request [… is] not allowable.

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

The file wrapper can be found here.

NB : The decision has already been reported on Le blog du droit européen des brevets (here).

T 1575/07 – When Things Get Narrow

This appeal was filed against a decision to refuse a European patent for lack of inventive step.

Claim 1 of the main request before the Board read as follows:

A method for managing maintenance of equipment comprising:

storing, in a database (116), first data defining a plurality of planned maintenance tasks for equipment (302,304,306);

storing, in the database (116), second data defining a plurality of unplanned maintenance tasks for the equipment (310,312,314);

storing, in the database (116), location data associating the planned maintenance tasks (302,304,306) with the unplanned maintenance tasks (310,312,314) where the location data identifies the physical location on the equipment associated with completion of the planned maintenance tasks and associated with the unplanned maintenance tasks;

identifying using a user interface a planned maintenance task for the equipment (308); and

based on the location associated with completion of the planned maintenance task, retrieving from the database (116) all unplanned maintenance tasks (310, 312, 314) that are associated with the identified planned maintenance task (308).

The Board came to the same conclusion as the Examining Division (ED). When applying the problem-solution method, it made an interesting statement on technical problems.

The application

[2] When performing routine maintenance work an unfortunate problem tends to occur, namely that unplanned work is discovered, also termed “above and beyond” or “emergent” work […]. The invention is concerned with the identification and categorisation of the extent of such work, which is crucial to dealing with it successfully and managing the maintenance schedule.

[3] The solution offered is essentially to store all the planned routine maintenance tasks in a database along with unplanned work that is likely to be found at the same physical location as the routine work. When an intended planned maintenance task (e.g. “inspect left wing hydraulic lines”) is entered into the system, the location associated with that task (e.g. “left wing”) is used to retrieve associated possible unplanned tasks that should be checked at the same time (e.g. “left wing airframe damage”) […].

[4] In another aspect of the invention, the location can be entered and the system shows all the tasks (both planned and unplanned) associated with that location […].

Main request

[5] The appellant’s essential argument is that displaying only unplanned maintenance tasks based on the location of the given planned maintenance task solves the technical problem of filtering data retrieved from the database so that only the most useful or relevant data is presented to a user. This is said to be a technical problem in the light of T 49/04. This is because this decision concludes that

“the presentation of natural language text on a display in a manner which improves readability, enabling the user to perform their task more efficiently, relates to how, i.e. by what physical arrangement of the text, cognitive content is conveyed to the reader and can thus be considered as contributing to a technical solution to a technical problem”.

This decision is based on the judgement in that case that the physical arrangement of text (the “how”) was a technical solution to the technical problem of improving readability of the text. However, the present Board does not consider that it is a general statement to the effect that any feature that relates to “how” information is conveyed to the user involves technical considerations. In particular, if the “how” simply concerns putting data in a table for easier comprehension, this is clearly still only a presentation of information, excluded from patentability. As stated in decision T 1143/06 [5.4], which discusses T 49/04 at more length, the manner of presentation has to have a credible technical effect.

[6] In the Board’s view that is not the case here. The Board agrees with the ED […] that showing data that is useful or relevant to an administrative maintenance scheme is essentially a part of that administrative scheme and not part of a technical process. Basing the choice on the “location” of the maintenance task does not change that. The only link to anything technical is that the maintenance is on “equipment”. However, this is a remote connection and is not directly related to the displaying, which has to do with the administrative process, and thus cannot contribute to the technical nature of the problem.

Similarly, in the Board’s judgement, there is no interaction, in the sense of T 154/04, of these non-technical features with the technical features of the database and the user interface, which operate in a conventional manner. In particular, there is no functional modification of the database, just a storage of different data. Thus in the Board’s view, the problem reduces to that of implementing such a filtering. The claim gives no details of the actual implementation, and the Board agrees with the ED that it would be obvious to consider using standard data processing hardware containing a database and a user interface for this purpose.

[7] The above also explains the apparent paradox in the ED’s reasoning alluded to by the appellant that a broad problem cannot be formulated despite the lack of relevant prior art. According to the problem and solution approach, the objective technical problem is based on the distinguishing features. It is therefore true that when there are many distinguishing features, as when there is no close prior art, the problem tends to be broad. However, only the features having technical character should be considered. If these are few in number a narrower, more specific, formulation of the problem is appropriate. Since this is the situation in the present case, the Board judges that the ED was correct in identifying only the implementation of the filtering as the technical problem. […]

[10] Accordingly, claim 1 […] lacks an inventive step (A 56 EPC 1973), so that the appeal must be dismissed.

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