Friday 31 August 2012

T 1082/08 – Be Prepared


This is an appeal of the patent proprietor against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

Claim 1 of the main request before the Board was identical to claim 1 as granted and read (in English translation):
A document of value (Wertdokument) having at least one authenticity feature in the form of a luminescent substance based on doped host lattices, characterized in that the host lattice is doped with at least one chromophore with the electron configuration (3d)².
The OD had found the subject-matter of this claim to be insufficiently disclosed for it to be carried out by a person skilled in the art (A 100(b)). The Board had something to say on this matter:

*** Translation of the German original ***

Substantiation of the ground of opposition

[2.1] The [patent proprietor] has submitted that the ground of opposition under A 100(b) EPC 1973 had been insufficiently substantiated and, consequently, was inadmissible.

The ground of opposition under A 100(b) EPC 1973 has  been introduced into the proceedings by the OD […]. Grounds of opposition or legal bases (Rechtsgrundlagen), respectively, which were subject of the impugned decision, as in the present case, are also subject of the appeal proceedings, cf. T 275/05 [1].

Therefore, it is not to be examined whether the OD was right to consider this ground of opposition to be sufficiently substantiated.

Allowability of the ground of opposition

[2.2] The  [opponent] has essentially cited one reason why it believed that the disclosure of the invention was insufficient: a good portion of the claimed luminescent substances were not stable or did not have the desired luminescence properties allowing to authenticate [documents].

According to A 100(b) EPC 1973 the European patent has to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. According to the established case law of the Boards of appeal this [requirement] is only fulfilled if the invention that is defined in the independent claim can be carried out by the skilled person, using his general knowledge as well as the indications provided in the patent specification, over the whole claimed domain, without undue burden.

Here the term “invention” means the claimed invention. Therefore, it has to be examined what precisely is encompassed by the “whole claimed domain”.

Independent claim 1 of the main request concerns a document of value having at least one authenticity feature in the form of a luminescent substance based on host lattices doped with at least one chromophore with the electron configuration (3d)².

Therefore, the Board is of the opinion that the claim cannot be interpreted in such a manner that it comprises all imaginable (denkbar) dopings with the electron configuration (3d)² in combination with all imaginable host lattices. Rather, the dopant must be capable of being incorporated into the host lattice and the host lattice that has been doped accordingly must have luminescent properties and must be capable of being introduced into documents of value.

The [patent proprietor] has submitted that the corresponding skilled person was a person the professional activity of whom was to ensure the authenticity of documents of value, in particular using luminescent substances. As a consequence, this person had to have technical knowledge in the technical field of production of documents of value as well as in the technical field of luminescent substances. The Board agrees. The Board expects this skilled person to be capable of deciding which transition metal ions with the electron configuration (3d)² he can incorporate into which host lattices, in which concentration or grain size, respectively, in order to obtain luminescent substances that can be introduced into documents of value (e.g. by means of printing ink).

Therefore, the Board reaches the conclusion that the invention claimed in claim 1 of the main request is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

The Board finally found claim 1 to lack inventive step.  

The opponent requested the Board to revoke the patent, which was obviously impossible in view of the prohibition of reformatio in peius. The corresponding paragraph of the decision is interesting because the opponent tried to overcome this prohibition by means of an original argument.

[6.1] The Enlarged Board of appeal has explained in its decisions G 9/92 and G 4/93 [14] that the opponent who has not filed an appeal cannot validly request the revocation of the patent after the expiration of the time limit for filing an appeal.

Therefore, the main request of the [opponent] has to be dismissed as inadmissible.

[6.2] Also, the submission of the [opponent] according to which the [patent proprietor] had filed its appeal on the last day before the expiration of the time limit for filing the appeal and that, as a consequence, it had not had the opportunity to respond by filing an appeal itself, does not alter this assessment. As a matter of fact “if one opposing party does not win a case outright, the other opposing parties must be prepared for it to file an appeal.” (see G 9/92 and G 4/93 [11]).

To read the whole decision (in German), click here.

The file wrapper can be found here.

Thursday 30 August 2012

T 1070/10 – Technical Indeed


Headnote 2 of G 1/93 reads:
A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature.
As we have already seen in earlier posts (e.g. here), the Enlarged Board probably thought of disclaimers, but as it did not use this term, applicants and patent proprietors sometimes argue that their claims do not violate A 123(2) because the feature allegedly violating A 123(2) does not provide a technical contribution. I am not aware of any case where this approach was successful, and the present decision is not such a case either.

Claim 1 of the main request before the Board read:
“A sprayhead comprising: a support comprising a base (2) and a top (3), the base (2) being mountable on a fluid container and the top (3) being mounted on the base (2) and rotatable relative thereto; a passageway (14), mounted on and extending within the support [feature A] that is connectable to a switchable source of fluid and incorporating a fluid outlet (12), the passageway (14) being moveable between a first, non- operative position and a second position in which it switches the source to supply fluid to the outlet (12) via the passageway (14); and a member (17) secured relative to the support being moveable between a first non-operative position in which the member (17) is held in a raised position and supported by a cam means (11,22) on the support and a further position in which the member can be depressed whereby the passageway (14) may switch the source to supply fluid; characterized in that the base (2) and top (3) provide complementary cam means (11,12), the member (17) is selectively lockable by a lock and held in a raised position [feature B] in its first non-operative position thereby preventing the member from urging the passageway to its second position unless the lock is released, the lock comprising the complementary cam means (11,12), such that movement of the top (3) relative to the base (2) moves the corresponding cam means (11,22) relative to each other between a first position of the cam means in which the member (17) is in its said first non-operative position and a second position of the cam means in which the member (17) is in its said further position and the top (3) having a body portion that has an opening (24) for cooperation with the fluid outlet (12) and a section that can face the fluid outlet to completely close it by relative rotation of the top to the base [feature C]. (emphasis added by the Board)
The decision inter alia contains a discussion of whether the addition of feature A complies with the requirements of A 123(2):

[2.2] The appellants do not contest that feature A was not disclosed in the application as originally filed, i.e. in the originally filed grandparent application.

The appellant, though mentioning G 1/03, has clearly relied upon the decision G 1/93 and argued that feature A merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed. Thus, the opposition ground according to A 100(c) would not hold against the subject-matter of claim 1 disclosing said amendment.

The Board considers that feature A relates to the arrangement/positioning of the passageway and that accordingly it relates to a technical teaching specifying the sprayhead, namely its construction and the positioning of the passageway in the support. Thus, feature A has obviously a technical meaning restricting at the same time the scope of protection defined in claim 1.

The appellants’ argument that the “exact nature of the spray passageway is not in the least involved in the claimed invention” cannot be followed by the Board. In the originally filed claim 1 of the grandparent application (and of the present divisional application) the claimed passageway is mounted on the support, is connectable to a switchable source of fluid, incorporates a fluid outlet, and is moveable between a first, non- operative position and a second position in which it switches the source to supply fluid to the outlet via the passageway.

Feature A defines now in addition to the above- claimed technical characteristics of the passageway the further technical characteristic that the passageway extends, i.e. is positioned, within the support.

The appellants argued further that the feature in question certainly did not create an inventive selection in the sense of G 1/93.

However, according to decision G 1/93 [16] such a selection invention is only mentioned as a “typical example” of when such an added feature could give rise to an unwarranted advantage to the patent proprietor. This does not exclude other examples of an unwarranted advantage. For instance, during the life span of the patent it may occur that further prior art becomes known, for which this technical feature could prove to be of advantage to the patent proprietor, either in distinguishing the invention (further) from the prior art, or by better setting off the invention in the discussion of inventive step. For this feature that is not unimaginable. For this reason the Board is of the opinion that G 1/93 cannot find application. Consequently, it seems that feature A cannot be regarded as a mere limitation of the protection but it has to be considered as subject-matter which extends beyond the content of the application as originally filed.

To download the whole decision, click here.

The file wrapper can be found here.

Wednesday 29 August 2012

T 908/09 – No Priority


This is an appeal against the revocation of the opposed patent by the Opposition Division.

Claim 1 of the main request before the Board read (in English translation):
Water-miscible cooling lubricant concentrate, which contains natural or synthetic mineral oils, emulsifiers, anticorrosive agents, solubility promoters, preservatives, metal inhibitors and other standard additives, characterized in that it has a pH value between 7.0 and 7.5 after dilution to an aqueous solution containing between 2 and 25 percent by weight and further contains as a preservative and an anti-corrosive agent a mixture containing
(a)   at least one substance selected from the group consisting of ethoxylated fatty acids, propoxylated fatty acids, ethoxylated fatty acid alkanolamides, propoxylated fatty acid alkanolamides and reaction products of boric acid and a primary or tertiary alkanolamine as well as
(b)   at least one substance selected from the group consisting of carboxylic acid imides, phosphoric acid esters, thiadiazoles, isothiazolinones, imidazoles, guanidines, aromatic carboxylic acids, 3-iod-2-propinyl-carbamate and methyl urea derivatives.
The question arose whether document E1 was prior art under A 54(2) or A 54(3). Therefore, the Board had to examine the validity of the priority claim:

*** Translation of the German original ***

[2.1.1] Document E1 is part of the state of the art under  A 54(3) to the extent to which the priority of the impugned patent is valid for the claims. Otherwise, E1 is part of the state of the art under A 54(2).

[2.1.2] Although the impugned decision considered the priority to be valid for the claims as granted (i.e. for the claims of the present main request), the Board has explained in its communication why it did not share this opinion. It justified this provisional opinion inter alia by pointing out that the priority document did not directly and unambiguously disclose the combination of at least one compound (a) with at least one compound (b) according to claim 1 as granted. This was all the more true as the priority document did not define the compounds (b) disclosed therein as a group of compounds belonging together (zusammengehörige Gruppe).

[2.1.3] The [patent proprietor] objected that the priority document disclosed the components (a) and (b), with the exception of the carboxylic acid imides and the methyl urea derivatives. The priority document disclosed to the skilled person that at least one anticorrosive agent (a) and at least one preservative (b) had to be used. Therefore, the [patent proprietor] concluded that for the part of the subject-matter of the claims that did not concern carboxylic acid imides and methyl urea derivatives as components (b) the claim to priority had to be valid.

[2.1.4] Claim 1 as granted comprises the following components other than carboxylic acid imides and methyl urea derivatives in group (b):

phosphoric acid esters, thiadiazoles, isothiazolinones, imidazoles, guanidines, aromatic carboxylic acids, and 3-iod-2-propinyl-carbamate.

However, in the priority document, phosphoric acid esters and thiadiazoles are not cited as preservatives (b) but only as anticorrosive agents […], whereas isothiazolinones, imidazoles, guanidines, aromatic carboxylic acids, and 3-iod-2-propinyl-carbamate are classified as preservatives […].

Thus the priority document does not unambiguously assign the components (b) cited in claim 1 as granted to a specific group. Therefore, the priority document does not directly and unambiguously disclose to the skilled person to mix at least one compound (a) with at least one compound (b). Consequently, the claims of the main request do not (i.e. not even partially) enjoy the priority claimed by the impugned patent. Thus there is no effect of the priority right under A 89 and the effective date of the impugned patent with respect to the state of the art corresponds to its filing date rather than its priority date.

To download the whole decision (in German), click here.

The file wrapper can be found here.

Tuesday 28 August 2012

T 294/11 – Tell Me Why


The present decision reminds us that it is dangerous to draft statements of grounds of appeal (SGA) containing sweeping assertions rather than dealing in detail with the objections raised by the first instance department.

The appeal was directed against the refusal of an application by the Examining Division (ED) for lack of clarity (A 84) and non-compliance with A 123(2).

The SGA contained the following statement regarding the ED’s finding on lack of clarity:


The Board found the appeal to be inadmissible:

[2.1] A 108 in conjunction with R 99(2) requires that a SGA is filed which indicates the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.

In this respect, the jurisprudence of the boards of appeal has developed the general principle that the SGA should specify the legal or factual reasons on which the request for setting aside the decision is based (see for instance T 220/83). The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect.

[2.2] The contested decision does not contain reasons but only a reference to grounds given in the communication of 14 July 2010 of the ED. This form of decision is allowed if it is quite clear from the grounds in a previous communication which considerations played a crucial role for the responsible division when it took its decision (see for example T 234/86 [5.10]). It should not be left up to the party concerned and a board to construct the applicable reasons (see for instance T 1709/06 and T 1309/05).

In the present case, it is clear from the communication dated 14 July 2010 that lack of clarity and the contravention of A 123(2) were major deficiencies of the application and that these were the reasons for the refusal.

In particular, the ED’s reasoning as to lack of clarity was very elaborated. In fact, the ED identified for claim 1 on file eighteen separate aspects of lack of clarity. Although some of these aspects may be of minor importance, others apparently concern serious problems.

Thus, the appellant should have explained in its statement setting out the grounds for appeal and within the time limit provided for in A 108 why the reasoning of the ED was wrong.

[2.3] As far as the appellant’s SGA of 28 January 2011 addresses the ground for refusal of lack of clarity, it provides two brief observations.

The first observation is an assertion that the claims on file were clear to the skilled man. They defined the subject-matter for which protection was sought whilst simultaneously being clear, concise and supported by the description. The assertion is supported by only one concrete argument which refutes the ED’s objection that it was not clear whether the steps in claim 1 were to be carried out in the order in which they are mentioned. In this respect, it is stated that it would be clearly understood by the skilled man that the steps as claimed were interdependent and had necessarily to follow since the results of one process step were essential for the operation of a subsequent process step.

The second observation does not add any concrete reason why the findings in the contested decision would be wrong but constitutes a submission on the part of the appellant that, in violation of the principles of the Protocol to A 69, the ED’s comments were directed towards encouraging the applicant to narrow the claims to explicit embodiments of the present invention, without necessarily defining the present invention in a way that would provide a fair degree of protection with a reasonable degree of certainty for third parties.

Thus, with the exception of one aspect, the SGA fails to explain why any of the other seventeen reasons for lack of clarity contained in the contested decision would be wrong. Consequently, it does not meet the standard for adequate substantiation.

[2.4] The appellant argued in the oral proceedings that the rulings in the contested decision concerning lack of clarity were fundamentally flawed because the ED relied on the wrong test for judging clarity. Instead of properly interpreting the claims in the light of the description, as called for by the Protocol to Article 69 EPC, the division started from non-sensible interpretations of the claim definitions and arrived, on the basis of these free interpretations, at its findings of lack of clarity. In pointing to this key deficiency of the contested decision, the SGA was sufficiently reasoned.

[2.5] The appellant’s submission is not convincing because it constitutes an argument in support of clarity which was not given in due time, i.e. in the SGA (R 101(1)). Besides, it is doubtful whether it could have been regarded as a sufficient reasoning because it does not address the majority of the clarity objections, which do not rely on any interpretation but directly question the meaning of the claimed definitions.

[2.6] Furthermore, as far as the contravention of A 123(2) is concerned, the statement of grounds contains only the assertion that this article was not contravened.

Apart from a statement concerning the claimed step of determining the velocity of the moving table, which addresses point 2.1.1 of the communication of 14 July 2010, none of the other detailed objections of the ED was dealt with.

[2.7] It follows from the above considerations that the SGA filed in the present case amounts to no more than a mere assertion that the contested decision is incorrect, without stating the legal or factual reasons why that decision should be set aside, and thus does not satisfy the provisions of A 108 in conjunction with R 99(2).

The appeal is therefore not admissible.

To download the whole decision, click here.

The file wrapper can be found here.

Monday 27 August 2012

T 2068/10 – Lack of support


This is an appeal against the refusal of the application under consideration by the Examining Division (ED).

The ED raised objections under A 84 and A 123. In particular, the ED objected to the term “fixed-dried cells”, which in its opinion included also “rehydrated fixed-dried cells”. Additionally, it considered the term “active agent” to be very broad not allowing the claimed subject-matter to be distinguished from the subject-matter of the prior art. The ED also held that in the absence of experimental support as to the viability of the active agent after internalisation the claimed subject-matter lacked technical support.

Claim 1 of the sole request before the Board read:
Fixed-dried blood cells carrying an active agent, wherein said fixed-dried blood cells are fixed-dried platelets and wherein the active agent has been coupled to or introduced into the cells.
There were three more independent claims, one directed at a pharmaceutical composition, the second at a method of making fixed-dried blood cells carrying an active agent and the third at a method of making a pharmaceutically acceptable composition comprising rehydrated fixed-dried blood cells carrying an active agent.

Having found the request to comply with the requirements of A 123(2), the Board dealt with the objections regarding clarity and support (A 84):

[3.1] In the decision under appeal the ED objected to the term “fixed-dried cells” in claim 1. Contrary to the Applicant’s, now Appellant’s, opinion it considered that this term also included “rehydrated fixed dried cells”, because in its opinion further treatment of the cells after having been fixed was not excluded. In support of its interpretation the ED pointed to the prior art, without in this context specifying any particular document, wherein the term “fixed-dried” and “rehydrated lyophilised” (“RL”) were allegedly used interchangeably and to the application as filed “which states on page 6 that fixed-dried blood cells are cells which have been fixed (which of course is also true for cells which have been rehydrated in a subsequent phase)”.

[3.2] The Board does not agree with the ED’s findings. Claim 1 of the present main request, as was claim 1 of the main request before the ED, is directed to a product, namely fixed-dried platelets. When reading claim 1, the term “fixed-dried” suggests to a skilled person a product in a dry or water-free state. The meaning of this term therefore is clear per se. Furthermore, this meaning is confirmed in the description of the application. [… F]ixed-dried blood cells are described as blood cells “which have been fixed, and additionally have had water removed therefrom ....”. In contrast, fixed-dried blood cells which have been contacted with water so that the water is taken up into the intracellular cells, are defined as “rehydrated fixed-dried blood cells” […]. The prior art as cited in the supplementary ESR and the ISR makes the same distinction between dried or lyophilised cells and rehydrated dried or lyophilised cells. An interchangeable use of the term “fixed-dried” and “rehydrated-lyophilised” as argued by the ED is not apparent to the Board. In this context, the Board also notes that the term “fixed-dried” refers to dried cells which were treated with a fixation agent, while “rehydrated-lyophilised” merely refers to a freeze-dried product, which was rehydrated, but was not necessarily fixed […]. Thus, the terms cannot be considered equivalent or interchangeable.

The Board acknowledges that ultimately the fixed-dried cells will have to be rehydrated before being administered to a patient and that rehydration is therefore also described in the application. However, this does not justify the conclusion that rehydrated platelets form part of claim 1 contrary to its wording.

[3.3] An additional objection of the ED under A 84 was directed to the breadth of the claims. However, according to the jurisprudence of the Boards of Appeal, the clarity of a claim is not necessarily diminished by the mere breadth of a term. In the present case the ED has understood the term “active agent” as encompassing any compound with any kind of activity or function. The Board agrees with this admittedly very broad definition, which is also in line with the definition in the description of the application […]. The specific activity or function is not essential for the invention. According to the application […], active agents may encompass a wide variety of different compounds, for example RNA, DNA, proteins or peptides such as enzymes or antibodies, viruses, bacteria, small organic compounds, polymers, nanoparticles, having a wide variety of activity like antimicrobial, antibacterial or antiviral, blood coagulation or anti-coagulation activity, reporter or detectable activity, like radiolabels or fluorescent probes. Compounds with a different activity, for example stabilisers (trehalose, albumin) are, however, also included.

Whether or not this broad definition allows the claimed subject-matter to be distinguished from the prior art, is a matter that should be dealt with by the ED in the examination of novelty, taking into account the fact that claim 1 is not directed to a rehydrated product.

[3.4] The Board also does not agree with the ED’s finding of “lack of technical support” in the sense of A 84”. With lack of technical support, the ED refers to the absence of experimental results for example 5 directed to the internalisation of Ribavirin into platelets.

[3.4.1] Concerning the question of support under A 84, the Board observes that according to the jurisprudence of the Boards of Appeal the expression “support by the description” means that the technical features stated in the description as being essential for the invention must be the same as those used to define the invention in the claims (see decision T 939/92 [2.2.2], T 821/96 [3.2.1]). The ED did not argue that features which are mentioned as essential in the description are missing in claim 1. Nor can the Board find any such features. Instead the ED referred to the existence of an alleged prejudice in the prior art, namely that the active agent may not be viable when platelets were subjected to fixation and that in the absence of experimental results showing that ribavirin, the active agent of example 5, is still viable this prejudice was not considered to be overcome. In other words, concerning the embodiment of internalisation, the EDs doubted that the technical problem of delivering the active agent as stated on page 2 of the application was solved.

[3.4.2] However, the question whether or not this problem is indeed solved by the claimed subject-matter may be dealt with when assessing inventive step or examining sufficiency of disclosure. Moreover, the Board notes that the ED considered that support existed for embodiments where the active agent is carried on the surface of the platelets. According to the invention the internalisation of the active agent into the platelets is an alternative embodiment of the invention. There is no reason apparent to the Board why there should be any doubt as to the viability of the active agent, if it is internalised, where it is even less exposed to any fixing or cross-linking agent, instead of being carried on the surface of the platelet, and the decision under appeal fails to give any explanation in this respect. In this context, the Board also notes that according to the prior art cross-linking in platelets occurs on the surface of the platelets, i.e. cross-linking of surface proteins and lipids […]. Moreover, fixation in platelets is carried out under particularly mild conditions (room temperature, low concentration of formaldehyde, short reaction time) in order not to loose viability of the platelets […]. There is no plausible reason apparent to the Board why the skilled person would have concerns that under these conditions the viability of the active agent will be in jeopardy, while the viability of the platelets remains largely intact, i.e. many of the surface membrane functions despite a certain degree of cross-linking of surface proteins and lipids are retained. Thus, an objection of lack of support by the description cannot, in the Board’s judgement, be validly raised in the present case.

The Board finally remitted the case to the ED for further prosecution.

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

The file wrapper can be found here.

Saturday 25 August 2012

T 588/09 – That’s All Folks


The present decision deals with an appeal against the revocation of a patent by the Opposition Division (OD). In what follows, the Board made clear that the way in which the patent proprietors wanted the proceedings to be conducted was unacceptable:

[2.1] R 115(2) EPC and A 15(3) RPBA provide respectively that, if a party duly summoned to oral proceedings (OPs) before the EPO does not appear, the proceedings may continue without that party and that the Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who then may be treated as relying only on its written case.

[2.2] In the present case the [patent proprietors] and the [opponent] had been duly summoned to OPs, which both of them had requested in their statement setting out the grounds of appeal and in the reply thereto respectively.

[2.3] The [opponent] informed the Board three weeks before the scheduled date that it would not attend the OPs. The [patent proprietors] communicated that they would not attend the OPs four days before the fixed date and accompanied that communication with the request to continue the proceedings in writing on the basis of two requests which had been filed ten days before. No reasons were given for justifying the late filing of the requests and the absence at the OPs. It was only invoked, when filing the new requests, that that filing was an earnest attempt to provide a set of claims which was novel and inventive and to avoid OPs.

[2.4] The procedural strategy of the [patent proprietors] to file new requests shortly prior to the OPs and then decide not to appear at the OPs asking for a continuation in writing cannot result in forcing the Board to follow the procedural steps imposed by the [patent proprietors] against the legal provisions cited above (point [2.1]) and commonly applied by the Boards of Appeal. This is all the more the case, since there is no justification for the behaviour of the [patent proprietors], as the legal and factual framework of the opposition did not change since the issuing of the decision of the OD […] and there was no apparent impediment for them to come to the OPs.

[2.5] It results therefrom, bearing in mind that there had been no changes in the legal and factual framework of the case which might justify the filing of new claims, that there was no reason to cancel the OPs requested by both parties and continue the proceedings in writing. Such a course of action under the present circumstances and in view of R 115(2) EPC and A 15(3) RPBA […] would go against the principle of procedural economy.

[2.6] The Board therefore refuses the request to continue the proceedings in writing and decides on the basis of the written submissions.

To download the whole decision, click here.

The file wrapper can be found here.

Friday 24 August 2012

T 313/10 – Double Mistake


This is an appeal of the applicant (Amazon.com) against the decision of the Examining Division (ED) to refuse its application relating to matching a given item description (e.g. of a book) with stored item definitions (e.g. in a website’s product catalog).

The USPTO acting as ISA found two X documents. For the supplementary search in the European phase, the search division issued a declaration of no search. The reason was that the subject-matter was a “mental act - selecting intangible items of abstract information on the basis of fuzzy but technically unspecified criteria - which is implemented by a program for computers”, both excluded under A 52(2). The overall method was seen as a method of doing business, also excluded.

In the first examination communication, the ED referred to the declaration of no search and made some other minor objections. In the reply, the applicant amended claim 1 to include the aspect of identifying candidate item. It cited T 258/03 and argued that the claims had technical character by virtue of mentioning a computer and because the identification of candidate item definitions was a technical solution to the problem of automating the matching of a large number of items.

The ED issued summons arguing in the communication that the identification of candidate item definitions was limited to the field of computer programs without a tangible technical effect going beyond the normal interaction between the computer and the program it was executing, without wilfully and directly controlling the forces of nature, without transforming or transporting a physical object and without the processed data being defined in their technical significance. The subject matter was therefore excluded from patentability. The division further stated that it was not bound by the case law. It added that the then pending referral G 3/08 showed that there was no generally accepted jurisprudence on computer program exclusions. It found that a decision could be reached on the basis of the Convention and the Guidelines alone.

In its reply, the applicant pointed out that the Guidelines in force as of April 2009 did in fact state that any claimed subject-matter defining or using technical means was an invention within the meaning of A 52(1) EPC and cited T 258/03 again. It gave arguments about which features it considered as technical and what technical problem was solved.

The applicant did not attend the oral proceedings (OPs). The application was refused on the ground of lack of patentable subject-matter (A 52(2) and (3)). The decision stated that “no further comments in the merit having arrived from the applicant …” the application had to be refused for the defects and reasons noted in the summons. The decision does not mention the Guidelines.

The applicant filed an appeal.

Claim 1 before the Board read:
A method performed by a computer system (100; 110) for identifying an item definition that matches an item description, the item definition and item description having attributes with values, the item definitions being stored in an item definition table (101), the method comprising:

providing one or more rules (211) that specify how to generate a similarity score based on similarity between the values of the attributes of an item definition and an item description, wherein at least one rule specifies a criterion for identifying candidate item definitions;

identifying one or more candidate item definitions in accordance with the rules using indexes (212) of attributes into the item definitions in the item definition table, each index for an attribute mapping values of that attribute to the item definitions;

for each of the one or more candidate item definitions, generating a similarity score for the candidate item definition and the item description in accordance with the rules (403, 902), wherein said generating comprises assigning a score to the attributes of the candidate item definition and the item description, and aggregating scores of the attributes to derive the similarity score (909); and

selecting the candidate item definition whose generated similarity score indicates it is most similar to the item description as the matching item description.
The Board found dismissed the appeal but expressed its disagreement with the ED:

[1] The first issue in this case is whether the claimed method, performed by a computer, of matching items in a table is excluded from patentability (A 52(2) and (3)). It is the established case law of the Boards of Appeal (see G 3/08, T 258/03, and T 424/03) that claimed subject-matter specifying at least one feature not falling within the ambit of A 52(2) is not excluded from patentability by the provisions of A 52(2) and (3). In this case, claims 1 to 16 are all method claims which specify that the method is “performed by a computer system”. Claims 17 to 24 are claims to a computer system and claims 25 to 41 are claims to a “computer-readable medium”. None of these features fall under the exclusions of A 52(2) and hence the claimed subject-matter of the present request is not excluded from patentability by the provisions of A 52(2) and (3).

[2] The ED argued, using their own criteria, that a method performed by a computer was excluded. This was contrary to the established jurisprudence as set out in the Guidelines for Examination at the time. After stating that they were only bound by the EPC and the Guidelines, the division ignored the applicant’s observations that their approach was in fact in breach of the Guidelines. Both of these acts were procedural violations.

[3] The next issue that arises is whether therefore the matter should be remitted to the ED for an additional search as per the appellant’s main request.

[4] It is established jurisprudence that an additional search can be dispensed with if the only 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 1242/04 [9.2] and T 1411/08 [4]). If this is the case, then there is no need to remit the case for an additional search. Thus the Board must examine whether there are any technical features that are not notorious.

[5] The invention is essentially to match an item description (e.g. of a book) with one in an “item definition table” (e.g. a web site’s database) using rules that define the required similarity of different attributes of the item (for a book, the attributes may be ISBN number, author, title, product type, etc.) The main aspect of the invention and the one that the appellant alleges to be technical is that, before applying the full set of matching rules, a number of “candidates” are identified (analogous to a pre-selection of candidates before a job interview). Although not claimed, this is based on a subset of the rules used in the full matching procedure. This avoids having to perform a time-consuming detailed match against all the items in the table (analogous to avoiding interviewing all applicants) [32]. The candidates are identified using indexes of the attributes.

[6] At the OPs, there was some debate about the nature of the indexes. The Board asked the representative whether they were not the same as indexes conventionally used by databases. Such an index may be a sub-table of the main table ordered by the attribute in question. Instead of searching the whole database for records with a particular value of the attribute, it is looked up in the index, which is quicker because the attributes are ordered. However, the representative explained that the index in the invention was different, being “an index into the attributes”, which was somehow different from an index into the table. Nevertheless, neither the claim, nor the description appear to provide any support for this interpretation, the claim defining the indexes as “indexes of attributes into the item definitions in the item definition table, each index for an attribute mapping values of that attribute to the item definitions”. In the Board’s view, this defines the indexes in the sense understood by the Board, namely as a mapping from attribute values to definitions in the table.

[7] According to the jurisprudence going back to T 208/84, one indication of technical character is that the method has an overall technical effect, such as controlling some physical process. This is not the case in the present invention since the effect of matching items with items in a table is either an abstract data processing one, or taking the embodiment into account (matching e.g. books and CDs), a business one.

[8] The technical character may also come from within, namely from the effect on the computer. This was the case, for example in T 424/03 where the technical effect came from “functional data structures (clipboard formats) used independently of any cognitive content … in order to enhance the internal operation of a computer system” (see point [5.2]). Such “functional data structures” were also considered to be present in the file search method that was the subject of T 1351/04. Here, the functional data was also in the form of an index containing “management information” that indicated the “start positions”, i.e. memory addresses, that pointed to the data to be searched for. This was said to control the computer by directing it to a certain memory location (see point [7.2]). This was contrasted with the looking up of addresses in T 52/85. In that case the addresses stored linguistic expressions that were equivalent to possible input expressions. The contribution there was seen to relate only to the kind of data represented, i.e. linguistic expressions. In T 1351/04, it was conjectured that the line to be drawn between the use of addresses in these two decisions is that if the method is concerned with the way that a computer performs the search, it may be technical. If, however, the kind of data is decisive it is not.

[9] It thus follows that the index may well have technical character since, using the terms of T 1351/04, it controls the computer by directing it to a certain memory location. On the other hand, the Board cannot see any technical effect in the identification of the items or candidate items in accordance with rules. This is a purely abstract process part of an algorithm to provide matching and not part of any technical process or interacting with the computer in any way.

[10] The representative essentially argued that the technical character came from being part of the technical process going on in the computer and that the identification of candidate item definitions was a technical solution to the problem of automating the matching of a large number of items using a computer. However, in the Board’s view, these are merely manifestations of the intrinsic effect of implementing an algorithm on the computer. They are analogous to “normal” physical interactions between program (software) and computer (hardware) that does not contribute in the case of a computer program (see T 1173/97 [headnote]).

[11] The representative argued that implementing the matching operation was the task of the engineer and therefore technical. The Board agrees that the implementation is indeed technical by virtue of the computer system. However, the point is that the contribution of the matching algorithm is not technical.

[12] In conclusion, the Board judges that the only features having technical character are the computer system and potentially the use of indexes. However, a computer system in general is clearly notorious. As stated above, the Board is of the view that indexes are certainly well known in the field of databases. The question is then whether they are so well known as to qualify as “notorious”. The Board judges that they are and were at the priority date of 2003. The problem of searching databases has been known for a very long time and methods of speeding this up using some kind of “index” have been implemented in virtually all commercial database products. Decision T 1411/08 requires not only that the features be notorious, but also generic, that is, features which are defined in such a way that technical details are not significant (see [headnote]). In the Board’s view, the present description of the use of the index does not specify any technical features and so is “generic” by that standard. In conclusion, the Board judges that claim 1 contains only technical features that are notorious so that no additional search is required.

[13] Accordingly, the Board cannot allow the appellant’s main request.

[14] Moreover, under these circumstances, the Board considers that there can be no inventive step since the only features that could contribute are notorious. Thus the problem to be solved would be along the lines of how to implement the matching scheme. Clearly, it would be obvious to use a computer system and to consider the use of indexes to speed up the access to the data. Claim 1 accordingly does not involve an inventive step (A 56 EPC 1973), so that the Board cannot allow the appellant’s auxiliary request either.  […]

The appeal is dismissed.

Point [2] of the reasons is interesting. Ignoring the applicant’s objection clearly amounts to a substantial procedural violation (SPV). But what exactly was the second SPV detected by the Board? Probably the fact that the ED acted in contradiction to the Guidelines. One may note, however, that sometimes Boards have stated that acting in this way did not constitute a SPV. Two examples should suffice:
  • T 42/84: The Guidelines, as stated in the General Introduction to them, do not have the binding authority of a legal text. Therefore a failure by the ED to follow them is not to be regarded as a procedural violation within the meaning of R 67 unless it also constitutes a violation of a rule or principle of procedure governed by an article of the EPC or one of the Implementing Regulations. [9]

  • T 647/93Although it is normally desirable for ED to act in accordance with the Guidelines, the Board wishes to point out that the Guidelines are guidelines, not rules of law, so that failure to follow a procedure set out there is not in itself a SPV. [4.1] 
The way in which the Board has worded point [2] of the reasons appears to suggest that what constituted the SPV is that the ED acted in contradiction to the established jurisprudence. I think this reasoning would lead us on even less solid ground, because it is not clear when case law becomes established. I have sometimes heard attorneys invoke “established case law” for which there was only one T decision (if any). And even if there was a generally accepted definition of “established jurisprudence”, I do not see anything in the EPC that would make it binding on an ED. Of course, an ED would be very unwise to go against well established case law - simply because its decision would be likely to be set aside in appeal proceedings - but I do not think that by doing so it would ipso facto commit a SPV, in particular if the Guidelines are silent on the matter. 

Any thoughts?

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NB: This decision has also been presented on Le blog du droit européen des brevets.

Thursday 23 August 2012

T 160/09 – Transparency


This appeal was filed against the decision of the Examining Division (ED) to refuse the application under consideration (claiming a mobile terminal for a wireless telecommunications system) for lack of inventive step.

The decision was delivered during oral proceedings (OPs) before an ED in a different composition than the one having signed the summons to OPs. More specifically, instead of the second examiner who had signed the summons another examiner was present during OPs and signed both the minutes and the decision.

The decision contains several interesting paragraphs on procedural matters:

Remittal in case of an adverse decision

[1] If the board were to examine the case substantially and come to a negative conclusion, it would make no sense to then remit the case to the ED for further prosecution. The reasons for the decision of the board would have to be given, and the negative conclusions would therefore be part of the ratio decidendi of the decision. The ED would therefore be bound by those conclusions (A 111(2) EPC 1973). Thus the only purpose of such a remittal would be to give the appellant a further opportunity to amend its case to rely on new facts, such as new, more restricted, claims. But any such facts could and should be submitted to the board itself, preferably with the grounds of appeal (Articles 12(2) and 13(1) RPBA). The appellant is effectively asking for a blank cheque to further modify its case, together with a further opportunity to appeal. Accession to such a request would require truly exceptional circumstances, of a nature which the board cannot presently envisage. At any rate, no such circumstances have been claimed here. Hence, the appellant’s request to remit the case if the board intends to come to an adverse decision for the appellant cannot be granted.

[2] According to Article 11 RBPA the board shall remit the case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. If no such reasons exist, the board will allow the appeal because of the fundamental deficiency alone and without assessing the substantive merits of the appeal, and will remit the case in order for this error to be corrected in further prosecution. So the board will first examine whether there is a fundamental deficiency in the first instance procedure which justifies an immediate remittal.

The alleged substantial procedural violations

Right to be heard

[3] The decision makes repeated reference to figure 4 of D2 […] which had not been mentioned in the written procedure nor, as it appears from the minutes, discussed during OPs. Thus it would appear that the appellant did not have an opportunity to comment on this aspect of the decision. Contrary to the appellant’s position, however, the board is of the opinion that the reference to figure 4 of D2 was not decisive for the decision.

[4] As regards the main request, the decision comes to its conclusion as to lack of inventive step of claim 1 over D1 and D2 without referring to figure 4 (see point 2-2.9). Figure 4 is mentioned later on with respect to claims 2 and 3 (point 3.1) and in a subsequent section dealing with the applicant’s arguments (points 4 et seq.) to show why they did not, according the ED, affect this conclusion. As regards the auxiliary request, the ED argue (sic) in the decision (point 5.1) that the “additional feature does not render the claimed subject matter inventive” because to use event subscription is “the most common way of implementing an event-based communication” and “well within the reach of the skilled person”. The ED further argue (sic) (point 5.2) that figure 4 of D2 provides an example of event subscription, and conclude (sic) (point 5.3) that “[t]herefore, the subject-matter of independent claims of the auxiliary request does not involve an inventive step”.

[5] The appellant pointed out that neither section 4 nor point 5.2 of the decision are labelled as obiter dicta nor placed sufficiently separate from the reasons (e.g. at the very end) to warrant the conclusion that they were meant as obiter dicta. The appellant was also of the opinion that the conclusion in point 5.3 relies on the arguments in both points 5.1 and 5.2.

[5.1] As a consequence, the appellant argued that these sections belong to the ratio decidendi of the decision un der appeal. The appellant also made reference to T 5/81 [headnote, 7] which states that “an alleged violation affecting a part of the decision other than its ratio decidendi cannot be a substantial violation” and submitted that, by implication, all procedural violations which do affect the ratio decidendi must be considered as substantial procedural violations.

[5.2] The appellant further argued that the board had to assess whether a substantial procedural violation had occurred on a purely objective basis and that therefore there was no room for any discretion on the board’s side based on subjective judgment. In case of doubt the board had, so the argument, no choice according to T 1505/06 [3.1] but to remit the case. It also argued that an objective assessment must be based on the structure of the decision […].

[6] The board agrees that a “substantial procedural violation” is an objective deficiency affecting the entire proceedings (J 7/83 [12]) which is to be determined on an objective basis (see J 32/95 [4.1]). However, the board’s assessment is indeed based on the pertinent objective facts, in particular the decision under appeal.

[6.1] In T 1505/06 the Opposition Division (OD) had refused the proprietor’s request to postpone the OPs but had failed to give their pertinent reasons in the minutes or in the final decision. Absent such reasons the board had found itself incapable of deciding whether OD had exercised its discretion properly or not and whether a substantial procedural violation had occurred, and therefore saw no choice but to remit the case to the OD for further prosecution (see esp. [3.1]). In the present case, the situation is significantly different: It is undisputed that the decision under appeal contains reasons for the relevant conclusion as to inventive step and thus there is a factual basis to decide whether or not the alleged violation of the right to be heard occurred or not.

[6.2] The board agrees with the appellant that the structure of the decision is an important aspect for analysing the reasons of a decision, but disagrees that it is the only one that may be taken into account for this analysis to be objective. Rather, the content of the individual arguments may and normally must be assessed, too.

[6.3] Also, the requirement that a decision be based on objective facts does not exclude that the board has to assess and judge the facts at issue nor that consequently the decision may also contain subjective elements.

[7] Having said that, the board interprets the reasons in the decision as follows:

[7.1] In point 2.6 of the decision it is argued that D2 dis closes that software modules are permitted to invoke functionality in their own layer or in layers below, whereas communication upwards through the layers is con figured to be handled by events. With respect to events, reference is made to the following disclosure of D2 […]:
“Upcalls arise in systems that receive asynchronous inputs through lower level components and that usher the processing of these inputs up through the system. Upcalls are common in net works and operating systems, and are initiated via hardware interrupts.”
[7.2] Point 4.4 of the decision repeats the applicant’s argument according to which “D2 does not disclose the ‘asymmetric’ operation between layers as claimed”. This argument is dismissed in point 4.5 with reference to the cited section of section 3.1. In point 4.6, reference to figure 4 along with the argument that “the receipt of a data packet” would represent a hardware interrupt “as introduced in section 3.1, line 14” the “processing” of which “implies its propagation upwards through all the layers” which would show “the existence of event-based processing in all layers of the system”.

[7.3] In the board’s judgment, the ED made reference to figure 4 of D2 as a specific example of the general statement in the cited passage of section 3.1 with respect to the existence and handling of hardware interrupts. Therefore, this reference merely illustrates an argument previously made by the ED and discussed with the applicant and does not introduce a new argument.

[7.4] The fact that, as the appellant pointed out during OPs, the board of appeal had expressed doubt in the summons to OPs as to whether section 3.1 of D2 actually discloses exclusively event-based upward communication and therefore disagreement with the ED’s argument in substance, is irrelevant for the issue at stake: Whether the appellant’s right to be heard was violated or not is a procedural question quite independent of the substantive question of whether the board agrees with the reasoning of the ED or their conclusion.

[7.5] Similarly, in the board’s opinion, the ED referred to figure 4 in point 5.2 in order to illustrate the argument made under point 5.1, whereas the conclusion as to lack of inventive step in point 5.3 does not depend on this example but is supported by the allegation of common knowledge under point 5.1 alone.

[8] The board thus comes to the conclusion that figure 4 of D2 was not decisive for the ED to arrive at their finding as to lack of an inventive step of the independent claims of both requests and thus is not a substantial procedural violation which would make an immediate remittal equitable under Article 11 RPBA.

Composition and constitution of the ED

[9] The appellant argued that the OPs did not take place before the legally appointed ED because the second examiner present at the OPs was not the same as the examiner having signed the summons, and because there is no evidence that the president of the EPO directly or by delegation had ordered or approved this change or according to what procedure.

[9.1] The appellant argued that absent such evidence it must be assumed that the new second examiner had appointed himself. The appellant argued that according to T 390/86 [7] such a “self-appointment” is illegal because members of the ED are personally appointed under A 18 EPC 1973 on a particular file. The appellant also suggested that “self-appointment” would offend against the appellant’s right to defend their case before an ED as “fairly diverse as possible”. The appellant did not however provide any evidence to corroborate the suspicion of self-appointment. According to the minutes […] the appellant had only asked why the second examiner was changed but when the ED referred to “organizational reasons” the appellant did not request further information to establish that this change was approved or by whom.

[9.2] The appellant did not question that the new second examiner might not be technically qualified as required by A 18(2) EPC 1973 or not be competent to deal with the pertinent parts of the international patent classification (cf. R 9(1) EPC 1973). The board also does not consider that the requirement of A 18(1) EPC 1973 that the EDs shall be responsible for the examination of European patent applications prohibits changes in their composition per se.

[9.3] The appellant did not, in fact, raise any objection against the individual new member, did not claim that the new ED had shown any lack of “fair diversity” to the appellant’s disadvantage, and generally did not argue that the appellant was negatively affected by the replacement.

[10] In T 390/86, the appealed decision was set aside be cause the written decision had not been signed by those members of the OD who had delivered the decision during OPs. In the reasons (points [7] and [8]) it is explained that the decision must be delivered by the examiners who are “appointed on a personal basis” to constitute a particular OD in order to decide the case and that wrong signatures on the written decision put into doubt whether the written decision reflected the views of the same examiners who had decided the case in oral proceedings. As the board reads it, T 390/86 does not prohibit that the composition of an OD be changed at all, nor does it require that the EPO follow a particular procedure to do this. In the present case there is no doubt that the written decision was signed by those examiners who had taken part in the OPs. For this reason alone T 390/86 does not apply to the present case.

[11] The appointment and possible replacement of members of the ED (and OD) are amongst the “necessary steps” which by A 10(2)(a) EPC 1973 the president is empowered to take to ensure the functioning of the EPO. The president may delegate these powers under A 10(2)(i) EPC 1973. In this respect, R 12(1) EPC 1973 provides that EDs are grouped together administratively so as to form directorates. In the board’s view this implies that the president delegates decisions about administrative matters regarding the ED, including the appointment and replacement of members, to the directorates.

[11.1] It is true that there is no evidence on file that the president has, directly or by delegation, approved the change in the composition of the ED. However, the EPC does not contain an explicit requirement that such evidence be made available. The board points out that neither is such evidence available for the initial allocation of the ED. In fact, to the best knowledge of the board such information is generally not publicly available.

[11.2] The sections of Guidelines for Examination as referred to by the appellant (Version June 2005, sections C-VI, 1.2 and 1.3) explain that a dossier is normally allocated to an ED responsible for the examination of applications in the technical field in which the particular application has been classified by the search division and under which conditions exceptions to this principle are made, that one member of the ED will, as a rule, be entrusted to carry out all the work up to the point of a decision to grant a patent or refuse the application, and that this primary examiner is normally the examiner who drafted the search report. The appellant considers that these sections make at least plausible that the initial appointment of an ED to an application is performed according to a well-defined procedure.

[11.3] The board however cannot see that these sections of the Guidelines relate to the question of whether the appointment takes place according to delegation by the president or according to what procedure. The board also disagrees with the appellant that the Guidelines relate to the initial appointment of an application as opposed to a change in the ED: They do not mention initial allocation explicitly, and there is no reason to assume that changes in the composition of the ED should not be made according to the same criteria. For this reason, the board considers the cited sections of the Guidelines to be irrelevant for the appellant’s argument.

[12] The appellant also argues that there is a generally accepted principle of transparency in procedural law in the contracting states of the EPC which the EPO should take into account under A 125 EPC 1973. This transparency principle would require that the procedure according to which the composition of the ED is changed be made public.

[12.1] In support of this allegation, the appellant refers to the European Treaties and therein specifically to:
  • Article 1 in section “Common Provisions” stating inter alia that “[t]his treaty marks a new stage in the process of creating an ever closer union among the peoples of Europe, in which decisions are taken as openly as possible and as closely as possible to the citizen”,
  • Article 10(3) in section “Provisions on Democratic Principles” stating inter alia that “[d]ecisions shall be taken as openly and as closely as possible to the citizen”, and to
  • Article 15(1) in section “Provisions Having General Application” stating that “[i]n order to promote good governance and ensure the participation of civil society, the Union’s institutions, bodies, offices and agencies shall conduct their work as openly as possible”.
[12.2] Firstly, the board notes that the objective for open decision making in Articles 1 and 10(3) explicitly refers to “the Union”, i.e. to the European Union as an organization separate from its member states. The board thus rejects the idea that a general principle accepted within the member states can be derived from the cited passages of the EU treaties.

[12.3] Secondly, the board is not of the opinion that the “democratic principle” according to which decisions shall be taken “as openly as possible” can be derived from the cited passages of the EU treaties as a point of procedural law as opposed to a non-enforceable commitment of the member states.

[12.4] Thirdly, the board considers that the vague reference to decisions which should be taken “as openly as possible” does not suffice to conclude that it would imply, as alleged by the appellant, the particular requirement to publish the appointment procedure of examiners. The appellant also did not claim that the procedures according to which tasks are allocated to administrative employees are conventionally published in member states of the European Union, nor was anecdotal evidence provided that some of them are. The board has no reason to assume that this is generally the case.

[12.5] The board therefore concludes that the appellant has failed to establish a transparency principle which would, according to A 125 EPC 1973, require the EPO to publish the appointment procedure of examiners. The board also finds that the appellant has not established that the replacement of the second examiner in the present case infringed on its right to be heard or constituted a fundamental procedural defect for other reasons.

[13] In summary, the board comes to the conclusion that no substantial procedural violation occurred which would on its own justify that the decision be set aside and the case be remitted to the first instance according to Article 11 RPBA. The request that such remittal should preferably be to an ED in a different composition is thus moot.

The appeal was dismissed.

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

The file wrapper can be found here.