T 1953/07 – Words Count

This appeal was against the decision of the Examining Division (ED) to refuse the patent application under consideration, on the basis that the independent claims in the main request did not satisfy R 29(2) EPC 1973, that claim 1 in the main request was not novel and that the auxiliary request contained subject-matter did not comply with A 123(2) EPC. The following document was cited in the decision:

The independent claims of the main request before the Board read as follows:

Claim 1

A method for determining an address that uniquely identifies a hardware component (200) on a common bus (115), said method characterized by the steps of:

reading identification information from a connector of said hardware component, said identification information having physical significance; and

deriving a bus address from said identification information that uniquely identifies said hardware component on said common bus.

Claim 3

A system for determining an address that uniquely identifies a hardware component on a common bus, said system characterized by:

a memory (220) for storing computer readable code; and a processor (210) operatively coupled to said memory, said processor configured to:

read identification information from a connector of said hardware component, said identification information having physical significance; and

derive a bus address from said identification information that uniquely identifies said hardware component on said common bus.

Claim 10

A method for determining the configuration of a plurality of hardware components installed on a larger piece of equipment, said method characterized by the steps of:

providing an identification value to each of said hardware components, said identification value having physical significance;

receiving physical identification information from each of said hardware components; and

determining how said plurality of hardware components are interconnected.

Claim 12

A system for determining the configuration of a plurality of hardware components installed on a larger piece of equipment, said system characterized by:

a memory for storing computer readable code; and

a processor operatively coupled to said memory, said processor configured to:

provide an identification value to each of said hardware components, said identification value having physical significance;

receive physical identification information from each of said hardware components; and

determine how said plurality of hardware components are interconnected.

The Board confirmed the finding of the ED according to which claim 1 was not novel. It nevertheless decided to deal with the issue of plural independent claims in the same category.

NB: R 29(2) EPC 1973 – which has now become R 43(2) – read

Without prejudice to A 82, a EP application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following :

(a) a plurality of inter-related products ;

(b) different uses of a product or apparatus ;

(c) alternative solutions to a particular problem, where it is not appropriate to cover these alternatives by a single claim.

Independent claims in the same category; R 29(2) EPC 1973

[4.3] As set out in the appealed decision, the subject-matter claimed in the independent method claims 1 and 10, as well as the subject-matter claimed in the independent apparatus claims 3 and 12, does not involve any of the exceptions (a), (b) or (c) mentioned under R 29(2) EPC 1973.

According to the appellant, the independent claims in each category involve “a plurality of interrelated products” (Rule 29(2)(a) EPC 1973), the tasks in claims 1 and 10 both being related to managing and operating hardware components; in claim 1 by providing an identification value having physical significance to each hardware component, and in claims 1 and 10 by reading/receiving identification information having physical significance. The appellant points out that, in order for information to be read by a component, it must be provided by a component and, thus, the step of reading requires a complement or cooperation for the step of providing.

The board, however, holds the view, as did the first instance, that the mere fact that the information provided is the same as that which is read is not sufficient to demonstrate the presence of an interrelationship in the sense of R 29(2)(a) EPC 1973. The remainder of the claims’ wording cannot be left aside when arguing that such an interrelationship exists.

For example, in order for the subject-matter in two independent claims to be considered interrelated, there should, at the very least, be no discrepancy in the wording that is used to define those elements in the subject-matter in each of these claims that would be identical in view of the nature of the interrelationship.

This is clearly not the case for respectively claims 1 and 10. Indeed, claim 1 relates to “a method for determining an address that uniquely identifies a hardware component on a common bus”, whereas claim 10 relates to “a method for determining the configuration of a plurality of hardware components installed on a larger piece of equipment”. The appellant has provided no reason why, although the subject-matter of both claims is, allegedly, interrelated, the component in claim 1 is on a bus, whereas the components in claim 10 are on a “larger piece of equipment”, which may or may not be a bus.

The same applies to independent system claims 3 and 12.

The appellant has, thus, not provided any counterarguments that successfully rebut the arguments given in the appealed decision and that would thereby show that the presence of two independent claims in, respectively, the method and the apparatus category is, or possibly could be, justified. The board, therefore, concludes that the main request does not satisfy the requirements of R 29(2) EPC 1973.

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The file wrapper can be found here.