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. 

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

The file wrapper can be found here.