Monday, 23 July 2012

T 1924/07 – Searchless

This appeal is against the decision of the Examining Division (ED) to refuse the application under consideration, which concerned collecting factory automation (FA) information generated at each step of a manufacturing process, and in particular information about abnormal conditions.

The search division had issued a declaration under R 45 EPC 1973 on the grounds that the claims related to subject-matter excluded from patentability and commonplace implementation features. It pointed out that a search might be carried out during examination should the problems be overcome.

In a reply, the applicant argued that at least the apparatus claims should have been searched in the light of the recent change in practice at the EPO as reflected in the Guidelines.

In their three communications and decision, the ED did not refer to excluded subject-matter, but raised substantive objections, mainly of lack of inventive step over the prior art cited in the description. The division refused the application on the ground that there was no basis in the original application for the “two-step” setting of the data collection conditions in amended claim 1 (A 123(2) EPC). The objection of lack of inventive step was in a section entitled “Obiter Dicta”.

Claim 1 of the main request before the Board read:
An FA information collecting method for collecting work front information sent to a data transmission line (11,13,26), using a network, for use in an FA system (10) that manages plural steps for manufacturing a product, the method comprising

setting a data collecting condition on said network, to collect desired information from among the said work front information, and

managing data collection by collecting and storing, as measured data, desired information based on the data collecting condition from an information collecting end (18,19,20,21,22), characterized in that the method further comprises:

specifying another data collecting condition to detect abnormal information;

collating the measured data, with another data collecting condition thus specified;

collecting, when abnormal data deviated from said another data collecting condition is detected, data over a predetermined period going back from the point where said abnormal data was detected; and

transmitting the data over a predetermined period to the FA system.
The decision contains some interesting statements on search-related matters.

The application

[3] In the present case, no search report was established on the grounds that the claims related to subject-matter excluded from patentability and commonplace implementation features. The ED, however, never referred to excluded subject-matter, but raised substantive objections, for the most part that the claims (limited in each successive amendment) lacked inventive step over the prior art cited in the opening part of the description. The last amendments were found to have no basis in the original application and that was the ground for the refusal.

[4] Thus the division essentially examined the application despite the fact that no search had been carried out. This is however only possible in exceptional cases. As set out in T 1242/04 [8.2], the search is an essential element of the grant procedure, designed to identify prior art relevant to the application. The decision goes on to state (point [8.3]) that a search can only be dispensed with under R 45 EPC 1973 (now R 63) if it is not possible to carry out a “meaningful” search. “Meaningful” relates to the practicability of the search and not to the potential relevance of the results in substantive examination. T 1242/04 also points out that features that the search division deems “trivial” do not prevent a meaningful search into the state of the art, which in fact ought to be particularly simple in such a case.

[5] T 1242/04 also explains that an additional search may need to be carried out if an objection of lack of technical character raised at the search stage is not maintained during subsequent proceedings. According to the jurisprudence of the boards, this may be dispensed with if the technical features of the claims are considered to be “notorious”, i.e. generic and so well known that they cannot reasonably be refuted (see T 1411/08 [4]). As set out above, the features in question are collecting factory automation information over a network from terminals at each step of a manufacturing process, setting data collection conditions over the network, including one for “abnormal” data, collecting and storing the measured data based on the conditions, and transmitting the data. In the Board’s view these cannot be considered as “notorious”. Thus an additional search would have been necessary before addressing inventive step.

[6] When assessing inventive step, the ED started from the prior art acknowledged by the applicant in the description. In several communications, including the summons to oral proceedings at point 3.5, but not in the decision, the ED stated that they did not “contest” this state of the art and that therefore no further proof was required, referring to decision T 172/03 [18]. However, the present Board notes that the features in question in case T 172/03, namely general purpose computers at different locations and connected by a communication network, although referred to as “common general knowledge as can, for instance, be seen from the prior art referred to by the appellant”, were in fact notorious as defined above. Moreover, a search was actually performed in this case. The present case is thus not comparable to that in T 172/03.

[7] Nevertheless, it is true that T 1242/04 [9.2] also suggests the idea that an additional search is not required if the features of the claim form part of the “common general knowledge”, or are accepted by the applicant as known (criteria followed to various degrees in T 690/06 [2] and T 1515/07 [6]).

[8] Concerning “common general knowledge”, the present Board notes that its first use in T 1242/04 [9.2] is qualified with the term “undisputable” (“unstreitig” in the original German). The resultant meaning thus corresponds very closely to “notorious” as described above and, in practice, there will be little reason to distinguish between the two concepts. This is how the present Board understands the expression “common general knowledge” used in the decisions cited above.

[9] Concerning the applicant’s acknowledgement of prior art, the Board judges that, given the primacy of the search, which as T 1242/04 [8.3] puts it, “is the basis for substantive examination … and not vice versa”, an applicant’s acknowledgement in the original application that certain prior art is known is in general not a sufficient reason for not carrying out an additional search since such statements may be –  and indeed frequently are – withdrawn or qualified. Moreover, this could only apply in cases where all the technical features in the claim would be acknowledged as known. In the present case, the appellant did not acknowledge the features of specifying the second data collection condition for abnormal data and collecting and storing the measured data based on it, so that a search would need to be carried out for these features anyway.

[10] In summary, therefore, in the present Board’s view, the only condition under which an additional search can be dispensed with is where all the technical features of a claim correspond to notorious prior art.

[11] As to whether the ED’s course of action is a substantial procedural violation, the Board is guided by the existing jurisprudence on the matter. Essentially, this turns on whether the ED acted despite realising that the features were technical and not notorious, thereby indicating a situation where a search was “manifestly necessary” (cf. T 1515/07 and T 1411/08), or whether the features were erroneously overlooked or misjudged, i.e. an “error of judgement” (cf. T 690/06 and T 698/11).

[12] In the present case, it is clear from the above that the division had indeed recognised that at least some of the claim features were technical and not notorious and had not overlooked or misjudged them. In particular, the division had discussed the inventive step involved in adding a certain new “filter” to the acknowledged prior art by a database specialist (see the “Obiter Dicta” in the decision under appeal). As a result, the ED must be held to have committed a substantial procedural violation in the sense of Rule 67 EPC 1973 by not performing an additional search that was manifestly necessary. It is therefore equitable to reimburse the appeal fee.

[13] The Board thus remits the case to the ED for further prosecution, starting with an additional search, which is the proper basis for the appellant to decide which amendments are necessary. […]

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