T 2060/09 – Single Entity

In this decision the Board had to delve into interpretative questions.

Claim 1 of the main request on file read:

A hermetically sealed, molded thermoplastic dispensing container which comprises:

a nozzle (16, 116, 216) unitary with the container (10, 110, 210) and defining a dispensing aperture (18);

a removable closure unitary with the nozzle (16, 116, 216) and occluding the aperture (18);

said nozzle (16, 116, 216) being adapted to receive the hub (36) of a dispensing assembly (34) in a mating relationship; the hub including an inner surface (38) defining a cavity (40);

characterized by a resilient and compressible annular bead (26, 126, 226) extending outwardly about the periphery of the nozzle (16, 116, 216), unitary therewith and spaced from the aperture (18) and being sized such that the diameter thereof in the region of engagement is greater than the diameter of the cavity (40) defined in said hub (36) whereby said bead (26, 126, 226) is compressed when the hub (36) is received over said bead (26, 126, 226) and said bead (26, 126, 226) exerts a sealing force against the inner surface (38) of the hub (36) in the region of engagement between the hub (36) and the bead (26, 126, 226) to provide a liquid seal between the hub (36) and the nozzle (26, 126, 226) in the region of engagement.

The question arose whether the features of the hub were to be taken into account for the novelty assessment.

Subject-matter of claim 1

[2.1] According to [the opponent] claim 1 defines a dispensing container comprising a nozzle. The features relating to a hub are not to be considered as forming part of the subject-matter of this claim and thus have to be disregarded.

[2.2] [The patent proprietor] agreed to the Board’s opinion of the annex that claim 1 is related to a container and is supposed to describe features of this container.

Concerning the features of claim 1 relating to the hub which was referred to in this claim as a second entity it expressed the view, referring to decisions T 455/92 and T 194/99, that these features should also be taken into account since they contribute to the definition of the container itself.

[2.3] The Board does not find the arguments of [the patent proprietor] convincing and consequently does not see any reason to deviate from its opinion […].

Claim 1 is thus directed to a single entity, namely a dispensing container.

The features in this claim relating to the second entity […], namely the dispensing assembly comprising a hub, do not form part of the subject-matter defined by claim 1.

This assessment of the subject-matter of claim 1 is not in conflict with the decisions T 455/92 and T 194/99 cited by [the patent proprietor]. According to T 455/92 [2.2-3] the length and overall breadth of a covering for a pressed product has been considered sufficiently defined by its intended use and the size such pressed products normally have. According to T 194/99 it is, in principle, “possible in a claim for a first entity to define certain characteristics of that entity as a function of characteristics of a second entity employed when using the first entity …”. It is further indicated that “A prerequisite is, however, that the second entity and its relevant characteristics as such, not their exact values, are unambiguously identified in the claim” (reasons, point [3]).

In the present case neither the hub as second entity nor its cooperation with the container (first entity) are unambiguously defined since the feature of claim 1 relating to the relationship of the nozzle with the hub defines only that the nozzle is adapted to receive the hub in a mating relationship. This feature thus does not give a basis for certain characteristics of the container or its nozzle being defined as a function of the hub as second entity. The feature defining that the hub has a cavity does not help either since it likewise does not lead to the mating relationship between the nozzle and the hub being further defined.

[2.4] Since the features relating to the hub do not form part of the subject-matter of claim 1 either directly or indirectly, since they do not contribute to the definition of the container, the subject-matter of this claim concerns, as indicated in the annex

(i) a hermetically sealed, molded thermoplastic dispensing container which comprises

(ii) a nozzle unitary with the container and defining a dispensing aperture

(iii) a removable closure unitary with the nozzle occluding the aperture

(iv) a resilient and compressible annular bead which is provided extending outwardly about the periphery of the nozzle unitary therewith and spaced from the aperture.

The properties of the bead defined by feature (iv) appear to be the result of the material for / and the manufacturing process of the container as defined by feature (i).

Disclosure of document D4

[3.1] D4 discloses, as indicated in the annex […], with respect to the molded thermoplastic dispensing container of claim 1, a hermetically sealed, molded thermoplastic dispensing container 4 […] which comprises

a nozzle 12 unitary with the container and defining a dispensing aperture […],

a removable closure 6 unitary with the nozzle occluding the aperture […] and

an annular bead 10 which is provided extending outwardly about the periphery of the nozzle unitary therewith and spaced from the aperture […].

[3.2] [The patent proprietor] objects to the annular bead 10 being considered as resilient and compressible (feature (iv)). The argument based on “the conditions prevailing when the container is used together with a dispensing assembly” […] cannot be considered since, as indicated above, a dispensing assembly does not form part of the subject-matter of claim 1 and claim 1 furthermore is not directed to a use of such a combination.

The Board considers the argument that resiliency and compressibility concern two different requirements […] as holding true per se. Since, however, only these properties of the bead are referred to in claim 1 (feature (iv)) without further definition as to the resiliency on the one hand and the compressibility on the other, while also the shape and dimensions of the bead remain undefined, and its material is only referred to as thermoplastic, the material properties referred to by feature (iv) cannot be given any particular meaning.

Since the bead according to D4 is of –  qualitatively similar shape and size and of the same material […] allowing its elastic radial deformation […] its material properties cannot be seen as different from the ones according to feature (iv).

Novelty

[4.1] Based on the above understanding of the subject-matter of claim 1 and of the disclosure of D4, the finding of lack of novelty in the impugned decision […] with respect to D4, is […] correct.

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T 1954/08 – Mere Maths

This is an examination appeal.

Claim 1 of the third auxiliary request on file read:

1. A computer-implemented method of predicting outcomes of marketing campaigns, the method comprising:

determining a response probability for each of a plurality of customers, the customers being intended targets of a marketing campaign;

determining a response value for each of the customers that indicates a predicted value of a response to the marketing campaign by the customer; and

predicting an outcome of the marketing campaign using the response probability and the response value,

wherein the marketing campaign comprises at least first and second campaign steps, and wherein predicting the outcome of the marketing campaign further comprises:

using the response probabilities for the plurality of customers to predict a number of responses to be received if the first campaign step were performed toward the plurality of customers;

selecting a target group (168) of customers from the plurality of customers using the response probabilities, where a customer is included in the target group if a randomly generated number is less than the customer’s response probability, the target group (168) being substantially equal to the predicted number of responses; and

predicting an outcome of performing the second campaign step toward the target group (168); and

wherein at least one campaign step (206) in the marketing campaign comprises a plurality of alternative campaign elements (207, 208, 209),

further comprising assigning the customers to the campaign elements (207, 25 208, 209) using an optimizing algorithm, and

wherein the optimizing algorithm assigns and reassigns the customers to the campaign elements (207, 208, 209) while evaluating the predicted outcome of the marketing campaign, but does not reassign a customer to a campaign element to which the customer has previously been assigned, and where each assignment of a customer to a campaign element is recorded in a binary map, such that the optimizing algorithm provides a best goal value for the marketing campaign, where

the customer reassignments are recorded in a list after finding the most recent best goal value, where

the optimizing algorithm is terminated after a user-defined number of customer reassignments does not improve the most recent best goal value, and where

upon said termination, the assignment of customers to campaign elements corresponding to the best goal value is determined by reversing all the assignments made since finding the most recent best goal value.

[5] In the light of A 52(1)(2)(3), an inventive step according to A 56 EPC 1973 requires a non-obvious technical contribution (T 641/00 [headnote 1]; T 1784/06).

The use of computers for automation purposes is technical but commonplace.

A mathematical algorithm may become a technical means, i.e. it may go beyond a mere mathematical contribution, if it serves a technical purpose (T 1227/05 [3.1-2]).

[6] However, anticipating a maximum revenue or profit value […] of a marketing campaign is a commercial rather than a technical purpose. Therefore, the iterative mathematical algorithm of claim 1 remains a mere mathematical contribution which does not enter into the examination for an inventive step.

[6.1] The appellant argues that the choice of algorithm is based on technical considerations as it takes account of technical (e.g. memory) limitations of computers and diverges from a human approach.

[6.2] In decision T 1227/05 [3.2.5] it was held that (the sole) processing speed was not a suitable criterion for distinguishing between technical and non-technical method steps since it was always possible to conceive of a slower algorithm than the one claimed. Similarly, the sole amount of memory a computer-implemented algorithm requires is equally unsuitable for determining whether or not a method step contributes to the solution of a technical problem since it is always possible to imagine an algorithm demanding more memory. Furthermore, whether or not an algorithm is similar to what a human being would do may play a role for the examination for inventive step, but this examination presupposes that the technicality of the feature has been established.

[6.3] The appellant further argues that the choice of algorithm is not part of the requirements supplied to the skilled person by the business manager, and concludes that the choice of algorithm is tied to a particular manner of (computer-)implementation.

The Board agrees that the mathematical algorithm is not provided by the business manager who is only interested in an economic forecast on which he can base his decision for a marketing campaign.

However, the Board does not agree with the appellant’s conclusion that the algorithm is provided by the implementing programmer. In the absence of a technical overall effect and purpose, the algorithm is provided by a mathematician for mathematical and ultimately commercial purposes. Mathematical definitions do not become technical by defining commercial relationships. For example, response probabilities and response values of customers are based on past customer behaviour […].

[6.4] As to the implementation of the algorithm, no internal function of the computer requires a non-obvious consideration to track and reverse incremental changes in the form of reassignments.

[6.4.1] The random number mentioned in claim 1 solves no problem other than splitting a large list of customers into two partial lists, without achieving any external technical effect or implying any technical consideration of the internal functioning of a computer.

On the implementation level, random number generators are well-known. The application implicitly confirms that finding as it is silent on any technical detail of generating random numbers.

[6.4.2] A binary map of flags settable for each possible customer-activity assignment […] does not diverge fundamentally from a human’s approach when testing a multiplicity of assignments: a human would obviously mark (i.e. flag) tested assignments so as to test other assignments next.

Nor does the mathematical or commercial meaning of the flagged information imply any non-obvious technical modification of general computer functions.

[7] The step that “the optimising algorithm is terminated after a user-defined number of customer reassignments does not improve the most recent best goal value” is considered next.

As mentioned above, the innovative potential of the algorithmic scheme can be left aside since it does not serve any technical purpose and, thus, does not contribute to the technical character of the claimed method and cannot enter into the examination for an inventive step.

Said lack of a technical purpose is not altered by defining a mathematical criterion for terminating the algorithm.

[8] The Board concludes that the method according to claim 1 of the third auxiliary request does not involve an inventive step over a general computerised method for processing data according to any existing mathematical algorithm and, thus, does not meet the requirements of A 56 EPC 1973.

[9] A fortiori, the broader versions of claim 1 (main request, first and second auxiliary requests) also lack an inventive step.

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The Memorandum

In a recent post (here) I presented T 1222/11. This decision mentions a Memorandum, which appears not to be available online. A kind colleague has now provided me with a copy of this Memorandum. You can download it here.

T 1507/06 – Adding Zero?

This is an appeal against the rejection of an opposition.

Claim 1 of the patent as granted read:

A method of producing mineral wool, wherein fibres are produced starting from a viscous mineral melt which contains silicon and metal oxides, the fibres then being further processed to form a non-woven wool material, characterised in that added to the mineral melt is a spent aluminium silicate catalyst material which contains at least 40% by weight of aluminium oxide and at least 40% by weight of silicon oxide, as well as magnesium oxide with a proportion of up to 5% by weight and sodium and/or potassium oxide with a proportion of up to 5% by weight. (my emphasis)

The opponent argued that the components magnesium oxide and sodium and/or potassium oxide were optional because there was no lower limit for these components. They were unessential and could not establish novelty over the prior art. Thus claim 1 lacked novelty over example 2 of document D1.

In what follows the Board explains the correct interpretation of claim 1.

*** Translation of the German original ***

[1.3.1] Claim 1 of the impugned patent concerns a method of producing mineral wool, characterised in that added to the mineral melt is a spent aluminium silicate catalyst material which contains at least 40% by weight of aluminium oxide and at least 40% by weight of silicon oxide, as well as magnesium oxide with a proportion of up to 5% by weight and sodium and/or potassium oxide with a proportion of up to 5% by weight.

The Board of appeal is of the opinion that a skilled person would interpret claim 1 such that magnesium oxide and sodium and/or potassium oxide may be added to the melt either as part of the catalyst material or independently of the catalyst material. This broad interpretation follows from the fact that the conjunction “as well as” (“sowie”) is preceded by a comma, as a consequence of which the skilled person understands that a spent aluminium silicate catalyst material and magnesium oxide with a proportion of up to 5% by weight and sodium and/or potassium oxide with a proportion of up to 5% by weight are added to the melt.

Although claim 1 does not have a lower limit for the amount of magnesium oxide and sodium and/or potassium oxide, the wording of claim 1 makes it clear for the skilled person that both magnesium oxide and sodium and/or potassium oxide have to be present. As a matter of fact, claim 1 indicates that an aluminium silicate catalyst material as well as magnesium oxide and sodium and/or potassium oxide are added. This means that the addition of magnesium oxide and sodium and/or potassium oxide constitutes a process step and that it would not make technical sense if nothing was added in this process step.

Thus claim 1 establishes that magnesium oxide and sodium and/or potassium oxide have to be added. It also indicates the maximum amount, the % by weight of which have to refer to the mineral melt because the oxides are not necessarily part of the catalyst material. The fact that magnesium oxide and sodium and/or potassium oxide have to be added to the melt is also in line with the description, paragraphs [0013] and [0014] of which indicate that the catalyst material that is added according to the invention contains up to 5% by weight of magnesium oxide 5% by weight of sodium and/or potassium oxide. Magnesium oxide is added in order to reduce the crystallisation tendency whereas sodium and/or potassium oxide should be added in order to decrease the melting point. The way in which the claim is drafted does not exclude that in case of need alkali earth oxides be added, if the melt viscosity is to be reduced, as mentioned in paragraph [0010] of the patent specification.

Moreover, wording claims such that they indicate maximum amounts is standard practice in claim drafting (also see T 988/07 [2.1.2]).

Thus the Board comes to the conclusion that claim 1 is to be interpreted such that both magnesium oxide and sodium and/or potassium oxide have to be added to the mineral melt in some way.

The appeal was finally dismissed.

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T 1949/09 – Unwelcome Guests

This appeal against the revocation of the opposed patent reminds us of how the Boards deal with late filed documents.

Preliminary procedural remarks in respect of the late filed material

[2] Pursuant to A 114(2) the EPO may disregard facts and evidence not submitted in due time by the parties. As far as the appeal procedure is concerned, the Rules of Procedure of the Boards of Appeal (RPBA) give the general directions as to the way in which the Boards of Appeal have to exercise their power to admit or disregard the material filed at different stages of the appeal proceedings.

[2.1] Article 12 delineates the basis of the appeal proceedings, providing that the appeal file should contain one comprehensive submission from each party. The purpose of this provision is that the exchange of the grounds and the reply should effect a defined and controlled initial phase of proceedings providing a moment in time fixed by the rules when a party’s case is deemed to be complete, any further material submitted being, in the terms of Article 13 RPBA, an amendment to the party’s case.

[2.2] It is commonplace that amendments to a party’s case filed in response to new objections raised by the other party or by the Board, are deemed to be filed in due time within the meaning of A 114(2) itself.

[2.3] As to the other amendments (which cannot be deemed to be filed in due time), it is in the Board’s discretion to evaluate their admissibility in the light of several criteria, the most common being listed in Article 13(1) RPBA: the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

[2.4] Finally, after oral proceedings (OPs) have been arranged, an additional criterion has to be taken into account: the other party and the Board should be capable of dealing with the new issue without any adjournment of the OPs (Article 13(3) RPBA).

[2.5] These principles apply in the following paragraphs.

Admissibility of the declaration of the inventor

[3] The declaration filed with letter of 12 September 2012 includes some tests performed to assay the mechanical strength of some catalysts (section 3 of the declaration) and a review of the content of document D6 (section 4 of the declaration).

[3.1] In the light of the preliminary remarks, the Board notices that the tests included in the declaration cannot be deemed to be filed in due time, because they cannot be seen as a reaction to a new situation which was not already present at the time in which the grounds of appeal were filed, as the lack of experimental tests which would confirm an advantage of the specific catalyst was already a crucial point of the decision […], or at the latest after the [opponent] filed the letter of reply to the statement of grounds, in which a clear position was taken on the tests filed with that statement.

[3.2] The only justification put forward for the late filing, namely the time needed to have the tests authorised and performed, cannot justify their filing almost three years after the grounds of appeal, more than two years after the reply of the [opponent] and only 15 days before the convened OPs, all the more as the [patent proprietor] never informed the Board of any difficulty in providing further evidence, nor requested additional time to prepare such evidence.

[3.3] Apart from the unjustified late filing, the tests raise a number of questions about their significance, which could not be answered without an adjournment of the proceedings, including in particular the question whether the values of the mechanical strength depend only on the differences between the production method in D1 and in the opposed patent (in particular co-precipitation of chromium and aluminium hydroxides and formation of a catalyst in amorphous form) or on other parameters of the compared catalysts which do not appear in the claims (e.g. their particle size distribution) or on other features of the method of production which are present in other examples of D1, but do not form part of the tests (e.g. the presence of a calcination step as in examples 8 to 10 of D1).

[3.4] Finally, Article 15(3) RPBA, which provides that the Board is not obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party, does not go so far as to nullify A 113(1). On that basis, the [opponent], which chose not to attend the OPs, can rely on the procedural provisions mentioned above, namely that the decision would be made on the basis of the written case in the meaning of Article 12 RPBA and that no significant amendment of the case would be admitted which would go beyond what is foreseen by Article 13 RPBA (see also T 1621/09 [41-44]).

[3.5] For these reasons, the Board on application of the RPBA does not admit the tests included in the declaration filed with letter of 12 September 2012 into the proceedings […].

[3.6] On the contrary, the review of the content of document D6, which is based on the documents itself and on arguments which were already in the proceedings, does not pose any problem with regard to admissibility and is therefore admitted into the proceedings.

Admissibility of D7 to D11

[4] The contention that documents D7 to D11 were ipso facto part of the appeal proceedings only because they were mentioned in the description cannot be followed by the Board for the following reasons.

[4.1] First of all, such a contention is inconsistent with Article 12 RPBA: to be part of the proceedings and play an active role for a new argumentation the documents should have been singled out in the written submissions as being of possible relevance at some point in time. Having been introduced at the OPs before the Board without any previous indication, they are late filed and subject to a discretionary decision on their admissibility.

[4.2] This approach is consistent with the case law (Case Law of, 6^th edition 2010, VII.C.1.7), according to which a document considered during the examination procedure is not automatically scrutinised in opposition or opposition appeal proceedings, even it is quoted and acknowledged in the contested patent. Only the document cited and acknowledged in the description of the contested patent as the closest prior art and on the basis of which the technical problem in the description was formulated remains an exception and forms directly part of the opposition or opposition appeal proceedings.

[4.3] Documents D7 to D11, although cited in the specification of the patent in suit, had been merely acknowledged as conventional background art therein […] and were not considered in the patent as essential or as the closest prior art and the starting point of the claimed invention.

[4.4] The [patent proprietor] did not provide any justification of their late filing and did not present any of those documents as more relevant than the documents on file, as, in its arguments, D1 remained the closest prior art and none of D7 to D11 was relevant for the analysis of the obviousness of the solution (they were only used as supporting evidence for the acknowledgement of an effect).

[4.5] Moreover, the [opponent] absent at the OPs […] and relying on the rules of procedure, could not have expected a new line of argumentation based on these documents and never announced in the written phase of the proceedings, which could have changed the analysis of the case and its counterarguments.

[4.6] Therefore, pursuant to Article 13(1) and (3) RPBA the Board considers it appropriate not to admit documents D7 to D11 into the proceedings.

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T 1131/12 – Late & Too Late

This appeal was against the decision of the Examining Division (ED) to refuse the European application under consideration.

In a first communication dated August 27, 2002, the ED inter alia raised an objection of lack of inventive step over documents D1 and D2.

In a second communication dated June 28, 2004, an objection was raised that “essential features” were missing from claim 1 and that the feature of the amplifying circuit lacked clarity (A 84).

In a third communication dated June 29, 2006, the previous objection of missing “essential features” was withdrawn and a further objection of lack of clarity as regards the expressions “binary signal” and “binary digital signal” was raised.

The applicant amended the claims in response to each of the three communications. Two requests for accelerated examination were filed, on February 23, 2009, and June 7, 2011.

On October 24, 2011 (!) the ED refused the application on the grounds that claim 1 lacked clarity (A 84) due to the expression “binary digital” and that the subject-matter of claim 1 lacked an inventive step (A 56).

The applicant filed an appeal against this decision. In the notice of appeal the appellant requested that the decision be cancelled.

In the statement of grounds the appellant requested that a patent be granted on the basis of a set of claims accompanying the statement of grounds.

The board issued a summons to oral proceedings (OPs).

In a letter filed on January 31, 2013 the appellant contended that the ED had committed a “breach of the principle of legitimate expectations” and expressed doubts as to whether its right to be heard had been correctly exercised by the ED. The appellant argued that although an objection of lack of inventive step had been raised by the ED in its first communication of 27 August 2002, the two subsequent communications were silent on inventive step. The fact that the main reason in the decision to reject the application was lack of inventive step was surprising for the appellant.

[1.1] In the letter of 31 January 2013 the appellant requested a remittal to the department of first instance on two grounds: firstly that there was a “breach of the principle of legitimate expectations” in that the ED failed to point out in its second and third communications that the inventive step objection raised in the first communication was still considered relevant; and secondly that the right to be heard was not “correctly exercised”. No reasoning accompanied the second ground.

[1.2] It is sufficient here, with respect to the conduct of the first instance proceedings, to note that from the file history as well as from the grounds advanced by the appellant no fundamental deficiency, in the sense of an objective deficiency only ascribable to the ED and having a direct causal link with the outcome of the decision under appeal, could be detected which would justify an immediate remittal to the first instance as provided by Article 11 RPBA. The board wishes to emphasise that, although a delay of five years between a last communication and the written decision is wholly unacceptable, all the more so as a clear request for accelerated proceedings was made and ignored, action only being taken after the request was repeated, there is no causal link between this excessive delay and the outcome of the ED’s decision.

[1.3] As to the grounds as raised by the appellant […], the appellant raised the issue of “legitimate expectations” only a week before the OPs and the issue of a violation of the right to be heard only during the OPs themselves; the board considers that a finding of a substantial procedural violation is not appropriate for the following reasons.

[1.4] The board sees no reason to disregard Article 12(2) RPBA according to which the statement of grounds of appeal shall contain the party’s complete case. From this it follows that a party appealing a decision for the reason that it did not have an opportunity to comment on grounds on which the impugned decision is based is obliged to argue this ground of appeal in the statement of grounds. This applies all the more in ex parte proceedings since a further effect of such a complaint being raised late, i.e. later than filing the statement of grounds, is that the ED was prevented from considering the complaint within the scope of A 109, when deciding whether it would rectify its decision. The appellant’s argument that the ED in the present case would in any case have refused an interlocutory revision is merely speculative and therefore not convincing.

[1.5] Since the board cannot detect any fundamental deficiency as noted at point [1.2] supra, the request for reimbursement of the appeal fee filed and substantiated shortly before the OPs […] is refused pursuant to Article 12(1)(a) and (2) RPBA.

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T 2526/11 – Seriously?

In this case the Board had to deal with a request for remittal to the first instance:

[2.1] According to Article 11 RPBA the board remits the case to the department of the first instance if fundamental deficiencies are apparent in first-instance proceedings. During the oral proceedings (OPs) before the board on 9 January 2013, and hence at a very late stage of the appeal proceedings, the representative of the appellant contended for the first time that its right to be heard had been violated by refusing its request to postpone the OPs of 26 September 2011 (Monday) before the Opposition Division (OD). The reason given for the postponement was a lecture to be given at a conference on 23/24 September 2011 in Carolina (US). As announced by fax dated 26 August 2011, the representative did not attend the OPs before the OD.

[2.2] When exercising its discretion in deciding whether or not to postpone OPs, the OD has to take into account the particular circumstances of the case. Given this discretion of the OD the principal task of the board of appeal is to consider whether the OD exercised its discretion in a reasonable way.

[2.3] In order to safeguard a party’s right to be heard pursuant to A 113(1) not only must the party be granted the procedural possibility of presenting comments but also the EPO has to take into due account the arguments and submissions of the party. These requirements were met by the procedure applied by the OD when dealing with the said request for postponement.

[2.4] With communication dated 27 May 2011 the OD replied to the request for postponement filed with the applicant’s fax of 4 May 2011, explaining that the request could not be granted because the fact that the representative was to speak at a conference did not fall under the exceptional reasons for which the change of date of OPs was allowed according to the case law of the boards of appeal. The OD quoted the pertinent pages of the 5th edition of the Case Law of the Boards of Appeal. It repeated its refusal of the request for postponement with communication of 8 September 2011, now referring to the current (6th) edition of the case law book, the appellant having complained that it had cited an old edition.

[2.5] In the decision under appeal the OD reiterated the objection made in its previous communications and summarised the issue of postponement, explaining why the reasoning of the appellant could not be followed. It held that the fact that the representative had to travel over the weekend in order to attend OPs scheduled for a Monday was not a sufficient reason to change the date of the OPs. Furthermore, it explained why decisions T 1102/03 and T 1505/06, cited by appellant, did not support the appellant’s request for postponement. In this context the OD pointed out that the journey to the US had not been firmly booked, as confirmed by the representative in the OPs before the present board on 9 January 2013, and that the conference took place three days before the OPs scheduled before the OD.

[2.6] Hence, the OD did indeed take into account the arguments of the appellant when it exercised its discretion and decided on the request for postponement. It follows from the foregoing that it did not refuse the request for postponement merely by citing as outdated edition of the Case Law book, as the appellant has alleged.

[2.7] Admittedly, the reasoning given by the OD for refusing the request is relatively brief and could indeed in some respects have been more detailed and comprehensive. However, the absence of possibly more detailed reasoning is certainly not a fundamental (emphasis by the board) deficiency requiring a remittal pursuant to Article 11 RPBA. Lastly, the reasons provided by the OD in its communications of 27 May 2011 and 8 September 2011 and in the decision under appeal are sufficiently clear and comprehensible to show that the arguments put forward by the appellant in support of its request had been taken into due account by the OD when exercising its discretion.

[2.8] The board points out that the reason given for postponement, namely a speech to be held by the representative at a conference, is actually clearly and unambiguously not a serious substantive reason for a postponement, as is clear from the case law of the boards of appeal. That case law is also reflected in the Guidelines for Examination (Part E-III 7, 2010 (sic)) and in the Notice from the EPO dated 18 December 2008 concerning OPs before the EPO (OJ EPO 2009, 68). The Guidelines are issued by the President of the EPO in accordance with Article 10(2)(a) EPC. Although the Guidelines are not legally binding, the examining staff may depart from them only in exceptional cases and, as a general rule, parties can expect the EPO to act in accordance with the Guidelines.

[2.9] It is correct that the list of serious reasons justifying a change of the date of OPs in the Guidelines is not exhaustive. However, these reasons clearly all involve special circumstances (e.g. pre-existing OPs, serious illness, or death within the family) or unavoidable commitments such as military service or other obligatory performance of civic duty. Business trips and holidays must have already been firmly booked in order to qualify as serious reasons for a postponement of OPs. It has been explicitly confirmed by the appellant’s representative that his trip to the US had not been firmly booked prior to the notification of the summons to OPs on 26 September 2011. Furthermore it is obvious that a speech at a conference is not one of the serious reasons listed in the notice of the EPO referred to in the Guidelines. Rather, in T 699/06 [6] the board stated that such a commitment – to speak at a conference – was additional to the normal professional responsibilities of a representative. A representative who undertook such a commitment did so in the knowledge that this would make him unavailable to his clients, and unavailable to appear at any OPs, on the dates in question. Therefore, as a reason for changing the date of OPs, it was a reason which by definition resulted from excessive work pressure – excessive if only because it was a commitment which the representative was not obliged to undertake but which, having undertaken it, made him unavailable. Excessive work pressure was specifically mentioned in the notice from the EPO of 18 December 2008 as a non-acceptable reason (see paragraph 2.4 of the notice). With this legal situation in mind it is in principle irrelevant whether the representative had sufficient time to prepare and attend the OPs once the conference in the US was over.

[2.10] The decisions of the boards of appeal cited by the appellant during the opposition proceedings related to circumstances explicitly acknowledged as serious reasons for postponement of OPs, namely serious illness (T 1505/06) and pre-booked holidays (T 1102/03). These decisions therefore cannot support the present request for postponement.

[2.11] The appellant has failed to show – either in its written submissions or orally at the OPs before the board on 9 January 2013 – why its request for postponement might nevertheless qualify as a serious reason exceptionally allowing the requested change of date. It follows from the foregoing that its contention in the statement of grounds of appeal of 24 February 2012 that the decision regarding postponement had no basis in the EPC has to be considered as a mere allegation which lacks the necessary substantiation.

[2.12] In the statement of grounds of appeal the appellant further contends that the reasoning given in the decision under appeal, namely that having to travel at weekends could not be regarded as sufficient reason not to attend OPs, was not the reasoning of the appellant, since representatives could of course be expected to travel at weekends in order to attend OPs. Rather, the correct reasoning was that it was physically impossible to get from the conference in the US in time for the OPs in Munich given the time difference. Apart from that what has already been said above (point [2.9]), this submission, however, was put forwarded (sic) for the first time in the statement of grounds of appeal, whereas the letters of the appellant filed during the opposition proceedings are silent about it. So too are the minutes of the OPs before OD, due to the fact that the appellant did not attend them. Hence, this submission could not have been taken into account by the OD when taking its discretionary decision on the request for postponement and thus cannot be a basis for a contending that the division infringed the appellant’s right to be heard.

[2.13] In consequence, the decision of the OD not to postpone the OPs scheduled for 26 September 2011 is fully justified and based on a reasonable exercise of its discretion. In this context it has also be taken into account that the request of the appellant’s representative for postponement filed on 4 May 2011 was already its third request to change the date fixed for OPs, following two previous requests which had already been granted, the second of which was due to a lecture to be held by the appellant’s representative at a conference.

[2.14] The request for postponement having been properly refused and the appellant duly summoned by communication dated 18 April 2011 for OPs on 26 September 2011, the appellant had ample time to prepare for these OPs. As long as a request for postponement of OPs has not been granted, the requesting party cannot simply assume that it will be. The party has to consider the possibility of a refusal of the request and has to prepare the case accordingly to minimise the risk of time pressure (T 1102/03[3.2]). The right to be heard had thus been granted by the OD. By choosing not to attend OPs, as announced with letter dated 26 August 2011, the appellant deliberately did not avail himself of his right to be heard and must therefore bear any adverse consequences.

Hence, the request to remit the case to the first instance is to be refused.

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

The file wrapper can be found here.

NB: This case has been commented on Le blog du droit européen des brevets (here).

R 12/12 – When In Doubt, Ask The Board

This petition was filed by the patent proprietor. Board 3.2.07 had revoked the opposed patent after the Opposition Division had rejected the opposition (decision T 321/10).

The Enlarged Board (EBA) found the petition not to be clearly inadmissible and then discussed whether it was clearly unallowable:

*** Translation of the German original ***

[2] The EBA agrees with the petitioner that the common technical knowledge in a given field has to be determined on a case-by-case basis in view of the corresponding facts and evidence, that such facts and evidence are, as a rule, found in encyclopaedias, manuals, and dictionaries, and that – as is the case for all facts or evidence – the party that does not invoke them has to be offered the opportunity to comment on them. This also holds true when – as happens from time to time – the new facts are not introduced into the proceedings by one of the parties but by the Board of appeal (BoA). In such a case each party must be offered the opportunity to present comments. Irrespective on how the facts were introduced, A 113(1) requires [the EPO] to offer the opportunity to present comments on facts forming the evidence or arguments on which a decision is based. If this opportunity is not offered, then the decision may not be based on those facts, and if this has happened, it can be set aside under A 112a(2)(c).

[3] In the present case it has to be established whether the petitioner has had the opportunity to comment on the facts on which the BoA has based its decision according to which auxiliary request II of the petitioner lacked inventive step […]. The only statements in this part of the decision which are criticized by the petitioner refer to what the petitioner calls “common technical knowledge” (“allgemeines Fachwissen”). (The decision only refers to “what a skilled person would do” (“fachmännisches Handeln”), but the EBA will consider, for the purposes of the review proceedings, that these two expressions are interchangeable […]. In contrast to citations from the decision that is to be reviewed the EBA will refer to “common technical knowledge”, as does the petitioner.)

[4] The minutes of the oral proceedings (Ops) before the BoA state, in general terms, that the “common technical knowledge” had been discussed in regard of the inventive step of all requests of the petitioner […]. Moreover, the impugned decision contains […] a summary of the submissions of the parties as well as arguments that are clearly related to the question whether the auxiliary requests involve an inventive step […]. Thus the decision makes clear that both parties have presented comments on “common technical knowledge” in regard of the inventive step involved in auxiliary request II. The petitioner also agreed with the EBA that such a discussion had taken place […].

[5] Therefore, the only difference between the minutes of the OPs and the written decision of the BoA on the one hand and the petition for review on the other hand, consists in the assertion of the petitioner that the BoA had not specified, during the OPs, what its indication of “common technical knowledge” was supposed to mean but had left it to the imagination of the parties. The petitioner also explains that it did not know what “common technical knowledge” was supposed to mean and could only assert that there was none. When reading the written decision, it had understood what the BoA had thought of when referring to “common technical knowledge” […]. For the purpose of the present decision, the EBA will assume, in favour of the petitioner, that the petitioner’s presentation of this discussion is correct and that the BoA has introduced the expression “common technical knowledge” without specifying what it was supposed to mean.   

[6] The EBA is of the opinion that it cannot be correct that a party can or should accept such an indication that undisclosed facts are taken into account by the BoA or by another party, without these facts having been disclosed or commented upon. Obviously, the situation would have been completely different without this indication, but if the petitioner, as it has asserted, has heard of potential new facts that had not or only partially been disclosed, then it would have had to ask the BoA for explanations. Missing the opportunity to do so and then filing a petition for review is tantamount to acting on the way which the EBA in its decision R 21/11 [5] has found to be potentially unfair (“unbillig”). It is up to a party requesting a decision in its favour to actively participate in the proceedings and to do so in due time and of its own motion (see R 2/08 [8.5, 9.10]).

[7] These principles of the case law regarding petitions for review are not to be limited to the proper submissions of a party but also apply to statements on the submissions of another party or on arguments of the BoA. Thus the EBA noted in R 3/10 [2.11]:

“The purpose of OPs is to allow each party to make an oral presentation of its arguments, to allow the BoA to ask each party questions, to allow the parties to respond to such questions and to allow the BoA and the parties to discuss issues, including controversial and perhaps crucial issues. The value of OPs is that matters may as a result be clarified and the BoA may ultimately be satisfied that a party’s position is the right one, although it was not so satisfied by the written submissions alone.” (emphasis by the EBA)

According to the submissions of the petitioner, in the present case the BoA has asked the parties to answer questions and the petitioner – or its representative – has decided to only partially answer these questions and not to request the required clarification. It had had the opportunity to comment, but it did not make use of it in the way it could have. Under these circumstances one cannot find the right to be heard to have been violated.

[8] This conclusion of the EBA is based on the very arguments of the petitioner itself. The EBA is of the opinion that these arguments are self-contradictory and that the part of the decision that is criticised by the petitioner is based on facts that have been discussed by the parties.

[9] The petitioner explains that it had only understood from the written decision what “common technical knowledge” on which the BoA had based its decision was supposed to mean, i.e. the element which was presented as a fact in the decision, according to which the added feature (g) did not concern some specific action but rather some standard practice, and that the BoA, therefore, considered that it was part of the “common technical knowledge” that a material of higher quality would only be used to the extent to which it was required, depending on the particular application, and that if this purpose had been met and if this material of higher quality obviously was not required any more in order to meet a further purpose, then using an appropriate less expensive medium was part of what the skilled person would do […]. Although the petitioner asserts that these statements had only appeared in the written decision, they clearly reflect the submissions of the parties.

[10] Thus the appellant had declared, in the course of the OPs before the BoA […] that the problem of keeping the consumption of disinfecting gas as small as possible was a problem the skilled person encountered very commonly and that the solution of this problem according to said feature, when starting from the method according to D1 was obvious in view of what the skilled person would do.

[11] In the course of this discussion the petitioner declared […] that the method according to auxiliary request II further differed from the method disclosed in D1 by feature (g), which allowed to advantageously reduce the consumption of the – high quality – disinfecting medium by subsequently using a merely disinfected and/or sterile medium, and, as there was no indication whatsoever for this measure in the state of the art on file, that one had to consider that this feature, in combination with the other features of the corresponding claims, led to a method involving an inventive step. It was not possible to consider the specific measure according to feature (g) to be part of what the skilled person would do.

[12] It follows from a mere comparison of these arguments of both parties and the subsequent decision of the BoA that the arguments of the parties have covered the same issues as the decision of the BoA, i.e. that feature (g) had the effect of reducing the need to use the disinfecting (and more expensive) gas by using another (and less expensive) gas for shaping the bags, as well as the question of whether this was obvious for the skilled person because of his “general technical knowledge” (argument of the appellant) or not (argument of the petitioner). Moreover, the decision of the BoA, and in particular the passage criticised by the petitioner […] appears to be based on the arguments of the parties, to which the BoA refers […] before it comes to the conclusion that feature (g) does not require any specific action and that it is part of the “common technical knowledge” to use a second, less expensive gas for shaping the bags.

[13] For this reason also the EBA cannot see any indication that the decision is based on facts which the petitioner had not had an opportunity to comment upon. Quite to the contrary, the decision is clearly based on the arguments of the parties and the “common technical knowledge” which the petitioner allegedly only discovered in the decision was nothing but the conclusion of the BoA after it had heard the parties on the issue whether the skilled person would try to reduce the cost of the process, if possible. The only reason for the petitioner to be dissatisfied is that its argument was not successful.

[14] Irrespective of whether it considers only the arguments of the petitioner or, more objectively, all available information on the proceedings before the BoA, the EBA comes to the conclusion that the right to be heard has not been violated.

Thus the petition has to be dismissed as clearly unallowable.

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

The file wrapper can be found here.

T 454/08 – A Fake Swiss

Swiss-type claims are a dying species, but from time to time we still have decisions dealing with them.

Claim 1 of the main request before the Board read (in English translation):

Use of an active substance in the form of microcrystals or microgranules comprising a coating that masks their taste and a mixture of excipients, wherein the mixture of excipients comprises one or more disintegrating agents and one or more swelling agents or soluble agents, for the manufacture of a rapidly disintegratable multiparticulate tablet, wherein said tablet is intended for oral administration in the buccal cavity on the tongue, and wherein its disintegration speed is such that it disintegrates in less than 60 seconds, in order to provide with the saliva present a suspension easy to be swallowed.

In what follows, the Board examines the novelty of this claim and shows us that travelling with a fake Swiss passport is a dangerous activity.

*** Translation of the French original ***

[4] Claim 1 of the main request is essentially directed at:

• the use of an active substance in the form of microcrystals or microgranules comprising a coating that masks their taste and a mixture of excipients …
• for the manufacture of a rapidly disintegratable multiparticulate tablet …
• said tablet is intended for oral administration in the buccal cavity on the tongue …
• its disintegration speed is such that it disintegrates in less than 60 seconds, in order to provide with the saliva present a suspension easy to be swallowed.

Interpretation of claim 1

[4.1.1] According to decision G 6/83, a European patent may be granted with claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application.

Decision G 6/83 allowed the reformulation of claims for therapeutic methods referred to in A 52(4) EPC 1973 as so-called Swiss-type claims.

Thus the use of a composition for manufacturing a medicament to be used within the framework of a therapeutic or surgical activity is patentable for the implementation of any specific use in a given therapeutic method, within the framework of a further medical indication, provided that the other requirements of the EPC, and in particular novelty and inventive step, are satisfied.

However, if a claim drafted in the form of a Swiss-type claim does not refer to an implementation of any therapeutic method or de facto refers to a non-therapeutic use, then the feature defining the implementation is of purely illustrative character and cannot serve to establish novelty over the state of the art. As a matter of fact, this particular approach to novelty only applies to claims directed at the use of a substance or composition for a method within the meaning of A 52(4) EPC 1973 (now A 53(c)).

Claim 1 of the main request is drafted according to the model proposed by decision G 6/83, i.e. the use of a substance for the manufacture of a composition intended for a specific use.

However, none of the terms of claim 1, i.e. “active substance”, “multiparticulate tablet” and “intended for oral administration in the buccal cavity on the tongue” implies the implementation in any therapeutic method within the meaning of A 53(c).

As a matter of fact, the expressions “active substance”, “multiparticulate tablet” and “intended for oral administration in the buccal cavity on the tongue” cannot be considered to be limited to the therapeutic domain. In particular, one cannot assert that a “oral administration in the buccal cavity on the tongue” refers to a therapeutic use. Moreover, claim 1 does not contain any additional feature related to any implementation in a therapeutic method.

The particular approach to novelty created by decision G 6/83, therefore, does not apply to claim 1 of the main request, the subject-matter of which is equivalent to a process claim, i.e.  “process for manufacturing a rapidly disintegratable multiparticulate tablet by using an active substance in the form of microcrystals or microgranules comprising a coating that masks their taste and a mixture of excipients …”. The step where the tablet is administered, wherein “said tablet is intended for oral administration in the buccal cavity on the tongue” has to be understood as a feature that is illustrative of the tablet and not as a limiting feature concerning a specific way of administration.

[4.1.2] Moreover, the subject-matter of the claim comprises a functional feature defining the multiparticulate tablet, i.e. “its disintegration speed is such that it disintegrates in less than 60 seconds, in order to provide with the saliva present a suspension easy to be swallowed”.

This functional feature does not allow to define the subject-matter of claim 1 in a clear and unambiguous way. As a matter of fact, claim 1 does not contain any indication concerning the measuring method used for the measurement of the disintegration speed. In particular, claim 1 only defines the degree of disintegration via its capacity to form a suspension that can be swallowed easily. This capacity is a subjective concept. The level of disintegration can vary between a mere reduction of the size of the multiparticulate tablet and the achievement of a suspension of small particles. This variability has an impact on the claimed disintegration time, which makes it ambiguous.

The relevance of the state of the art has to be evaluated taking into account this ambiguity.

Document 4(3)

[4.2] Document 4(3) refers to pharmaceutical compositions for oral administration, comprising a medicament that is coated by a polymer which is soluble at pH values above 5 and an acid component intended to reduce or avoid the dissolution of the coating in the buccal cavity […]. It is the polymer coating, which is protected from dissolution by the acid component, that masks the taste […].

The compound can be a tablet that quickly disintegrates in the mouth […]. The tablets of example 1 comprise cellulose and reticulated polyvinylpyrrolidone. They disintegrate in the mouth in less than 30 seconds (see example 1).

Thus document 4(3) anticipates all the features of the subject-matter of claim 1 of the main request.

Document 2(3)

[4.3] Document 2(3) concerns tablets that are to be dispersed in water in order to be then swallowed in the form of a suspension […]. These tablets are made up of coated microparticles that are dispersed in at least one swelling agent and a disintegrating agent […]. Examples 1 and 3 comprise coated microparticles that are associated with guar gum, cellulose and reticulated polyvinylpyrrolidone.

The amounts of excipients and the final hardness of the tablets obtained in document 2(3) are identical or very similar to the amounts and the hardness obtained with the tablets of the preferred embodiment of the impugned patent […]. The speed of disintegration obtained with the tablets of document 2(3) is 1 minute in water. The skilled person can only conclude that these tablets have physical properties that are equivalent to those of the impugned patent and necessarily would have the same disintegration properties if they were administered in the mouth.

Incidentally, although these tablets are intended for a different use, they are appropriate and suitable “for oral administration in the buccal cavity on the tongue”.

Thus the subject-matter of claim 1 of the main request is not novel over the disclosure of document 2(3).
 

Document 2(2)

[4.4] Document 2(2) concerns a tablet that quickly disintegrates into several granules in the stomach […]. The granules are made up of an active substance that is coated with a mixture of acrylic polymers and ethyl cellulose (Eudragit® E30D and Aquacoat® ECD), which polymers are well known for masking the taste […] and which are also used in the impugned patent. These coated granules are blended with cellulose and reticulated polyvinylpyrrolidone, which are also cited among the preferred excipients of the embodiments of the impugned patent. These tablets are appropriate and suitable “for oral administration in the buccal cavity on the tongue”.

These tablets disintegrate in 37°C water in less than one minute […]. Although the disintegration time is measured in vitro, one may expect that the disintegration time is of the same order when it is measured in vivo, in presence of saliva. The skilled person can only conclude that these tablets have physical properties that are equivalent to those of the impugned patent and necessarily would have the same disintegration properties if they were administered in the mouth.

Thus document 2(2) destroys the novelty of claim 1 of the main request.

Document 4(6)

[4.5] Document 4(6) discloses tablets comprising pellets that are coated with a protective polymer. These tablets may be brought in contact with a small quantity of water […] and may be absorbed as they are or in drinkable form that is obtained using the liquid used for disintegrating the tablet […]. The tablet of example 1 discloses pellets coated with Eudragit® E30D and contains starch and reticulated polyvinylpyrrolidone as excipients. The quantities of excipients and the final hardness of the tablet are equivalent to the tablets of the impugned patent. One can only conclude that the tablet of document 4(6) is suitable for buccal administration on the tongue and that implicitly the disintegration speed would be identical to the embodiments of the present invention.

Thus claim 1 of the main request is not novel over document 4(6).

Additional arguments of the [patent proprietor]

[4.6] (a) The [patent proprietor] was of the opinion that claim 1 of the main request was drafted as a second therapeutic use related to a specific way of administration. Claim 1 of the main request has to be read in the light of the description, which makes it clear that the active substance can only be a therapeutic substance. As a matter of fact, the description uses expressions related to therapy such as “practitioner” […], “therapeutic substance” […], “medicament” […], therapeutic protection […] all along. Also, the examples contain therapeutic substances. Thus the skilled person cannot interpret the expression “active substance” in claim 1 to mean anything but a “therapeutic substance”. Consequently, the oral administration is to be considered as a feature to be taken into account for assessing novelty. However, this reasoning cannot be endorsed. Not only should it not be necessary to consult the description in order to interpret the subject-matter of a claim, but these expressions, in particular “active substance”, “therapeutic substance” or “medicament” are not sufficient for de facto implying a therapeutic method. A therapeutic use is not related to the nature of a substance that in itself possesses therapeutic properties, but it is related to the effective involvement of said substance in any therapeutic method within the meaning of A 53(c). As a matter of fact, one cannot exclude that a substance having therapeutic properties may be used in methods that are not methods within the meaning of A 53(c).

(b) According to the [patent proprietor], the claimed tablet has to have particular properties, i.e. it has to have satisfy conditions related to the disintegration time and masking of taste. In particular, the criterion according to which it has to disintegrate in less than 60 seconds has to be taken into account when novelty is assessed. The Board does not contest that the criterion of disintegration is a fundamental feature of the multiparticulate tablet according to the invention and agrees that it should be taken into account for the assessment of the novelty of claim 1. However, the ambiguity and the subjective nature of this functional feature does not allow for a restrictive interpretation. In particular, the interpretation of the disintegration level allows for many different ways of measuring the corresponding disintegration time. This variability has to be taken into account when comparing [the claimed subject-matter] with the state of the art (cf. point [4.1.2] above). The [patent proprietor] has provided Annexes 2 and 4 containing measurements of the disintegration time of the tablet according to example 3 of document 2(3) and a comparison between example 1 of document 4(6) and example 1 of the impugned patent. As far as Annex 2 is concerned, there is no explanation whatsoever in regard of the way in which the time of disintegration in the mouth is measured. Annex 4 advocates complete disintegration of the tablet, which is a particular method that is not mentioned in claim 1 or in the text of the description of the impugned patent. Thus these Annexes cannot be considered to be relevant for establishing an objective comparison with the state of the art.

Conclusions

[4.7] It follows [from the above] that the subject-matter of claim 1 of the main request is not novel (A 54).

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

The file wrapper can be found here.