Monday, 16 December 2013

T 2091/11 – Considering The Context

This is an examination appeal.

The Examining Division (ED) refused the application on the grounds of lack of clarity and insufficient disclosure.

Claim 1 of the main request read:

Method of setting Reverse Link Channel Quality Indicator (CQI) Reporting Modes in an access terminal in a wireless communication system, characterized by:
  • determining a value for CQIReportingMode; 
  • and setting reporting modes of the access terminal based on CQIReportingMode value.

In what follows the Board deals with the clarity objection:

[2.1.1] The ED held that the application did not meet the requirements of A 84, since the term “CQIReportingMode” used in claim 1 was vague and ambiguous and did not allow the skilled person to understand the limitations that this term introduced in the scope of the claims. This also applied to the terms “Single Code Word CQI Reporting Mode”, “Multiple Code Word CQI Reporting Mode”, and “Single Input and Single Output (SISO) CQI Reporting Mode” used in the dependent claims […].

[2.1.2] The board cannot agree with this finding.

It is established case law of the Boards of Appeal that the meaning of the features of a claim should be clear for the person skilled in the art from the wording of the claim alone (see e.g. G 1/04 [6.2]). In this regard, it is worth noting that a patent application (and thus also its claims) is addressed to a skilled reader and that therefore its context has to be taken into account when assessing the clarity of its claims.
The present application is addressed to a skilled reader in the field of wireless communication systems […]. From the wording of the claims alone, the reader skilled in that field would understand that
  • channel quality indicators (CQIs) related to the reverse link of a wireless communication system are to be reported by an access terminal (see preamble of claims 1, 3, and 5);
  • the modes of the access terminal for such reporting are to be set in the access terminal (see preamble of claims 1, 3, and 5);
  • the setting is done based on a particular value for the respective reporting mode, called “CQIReportingMode” (see characterising portion of claims 1, 3, and 5);
  • the possible reporting modes are modes which are called “Single Code Word CQI Reporting Mode”, “Multiple Code Word CQI Reporting Mode”, and “Single Input and Single Output (SISO) CQI Reporting Mode” (see claims 2, 4, and 6).

The board takes the view that the objected term “CQIReportingMode” may only be interpreted by the skilled reader as a mode for reporting channel quality information. That was also the interpretation “guessed” by the ED in the first-instance proceedings […]. But in the end, for whatever reasons, it was not taken into account in the clarity analysis. Hence, the board concludes that the expression “CQIReportingMode” is neither too vague and ambiguous nor renders the limitations of the claimed scope unclear.

[2.1.3] Consequently, the subject-matter of the claims, i.e. the matter for which protection is sought, is considered to be sufficiently clear for assessing novelty and inventive step, as implicitly confirmed by the novelty analysis performed by the ED […], and for establishing the scope of protection sought. For these reasons, the board holds that the present claims are clear within the meaning of A 84. […]

[2.3] In conclusion, the grounds for refusal […] are considered to be overcome with regard to the main request. Consequently, the decision under appeal is to be set aside.

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

The file wrapper can be found here.


sam bergstrom said...

yes, the nominal skilled person may be quite clever when assessing inventive step, but dense when assessing clarity

MaxDrei said...

Three cheers for this Board, and for sanity. Mere words can never define a concept with 100% clarity. Clever patent atorneys (or ED's) will always be able to point out where it falls below 100%. What matters then, as this Board notes, is whether the words are clear enough for purpose.

Some ED's delight in screwing the Applicant with the Bermuda Triangle of Art 64, 123(2) and 56. The as-filed claims are not clear of the art, but any attempt to amend falls foul of Art 123(2) or Art 84. The ED shrugs its shoulders, laments how poor patent drafting skills are in the USA, and refuses the application secure in the faith that the refusal is all the own fault of the Applicant.

Yet the refused claim was always clear enough for the ED to determine whether or not its subject matter was novel. If that, I say, well then it is also clear enough for a judge to determine its scope (especially with the Doctrine of Equivalents fudge factor there to help the judge).

Can we have this decision quickly incorporated in the next Edition of the Guidelines?

Kuifje said...

I feel compelled to also bring up the other side compared to the previous commenters

The primary purpose of A 84 is not to allow judges or the ED to understand the claim, but to allow third parties to do so.

Let’s not forget, a patent gives an exclusive right to the applicant, but thereby takes away liberties from the rest of society. Society has a right to know what it may freely do, and what is exclusive to the patent holder. A 84 is all about letting third parties know where exactly the boundaries are.

Even with unclear boundaries, a lack of novelty can easily be established, the two have no direct relation.

MaxDrei said...

Fair point from Kuifje, who sounds like an English judge, much more bothered than Europeans on the mainland are, about the boundary fence rather than the content of the protected area.

But the specialist patent judges in England themselves say that it is impossible with mere words to define the scope with a boundary line of mathematical zero width. A "puzzle at the edge of the claim" is more or less inevitable, and no reason, in itself, to strike down as improper a claim that in all other respects is fit for purpose.

Kuifje said...

I wouldn't say more concerned with one or the other. My point is just that these are different requirements, for different reasons, that should not be confused.

BTW I do fully agree with you last sentence

For the content of the protected area we have A54, 56, 83.

For the fence we have A84.

That's how simple it is.

And as to A123(2): Perhaps somewhat philosophical: I believe it started as a 'content' article. It seems to have turned however to a 'fences' article.