T 606/08 – Crystal Clear

When a claim is amended based on parts of the description, is it necessary to incorporate all the features disclosed in that part? The answer is no, for the features the skilled person would understand to be inessential, as explained in T 331/87 (criticized in T 910/03, but see also T 404/03 [11]). The present case reminds us that there is another case to be considered: the deletion of a feature in a claim is admissible if the sole purpose of such deletion is to clarify and/or resolve an inconsistency. (T 172/82).

The application as filed concerned an “amorphous diamond coating of blades”. Claim 1 as granted read:

A process for forming a razor blade wherein a layer of amorphous diamond (60) is deposited on a substrate (50), comprising the steps of:

(a) providing a substrate;

(b) forming a wedge-shaped sharpened edge on said substrate that has an included angle of less than thirty degrees and a tip (52) radius of less than 1,200 angstroms; and characterized by

(c) depositing a layer (60) of amorphous diamond on said sharpened edge; applying an initial high bias to the substrate (50) during deposition, and then applying a second lower bias to the substrate during deposition.

The patent was revoked by the Opposition Division.

Claim 1 of the main request before the Board read (the underlined parts are amendments with respect to claim 1 as granted):

A process for forming a razor blade wherein a layer of amorphous diamond (60) is deposited on a substrate (50) using a cathodic arc source, comprising the steps of:

(a) providing a substrate;

(b) forming a wedge-shaped sharpened edge on said substrate that has an included angle of less than thirty degrees and a tip (52) radius of less than 1,200 angstroms; and characterized by

(c) depositing a layer (60) of amorphous diamond on said sharpened edge; applying an initial high bias in the range of 200 to 2000 Volts to the substrate (50) during deposition for up to two minutes to establish adhesion, and then applying a second lower bias in the range of 10 to 200 Volts to the substrate during deposition to optimize the structure of the amorphous diamond coating.

This amendment was based on page 13, lines 25 to 32 of the application as filed:

Will the Board accept the amendment?

[1.1] Process claim 1 of the main request has been restricted to the use of a cathodic arc source; it is based on original claims 1 and 6 in combination with the bias voltage ranges of the two deposition steps taken from page 13, lines 25 to 32 of the application as originally filed (corresponding to the published D5). The deposition steps are disclosed as: “An initial high bias in the range of 200-2000 volts is applied to the substrate during deposition for up to two minutes to establish adhesion. A second stage lower bias in the range of 10-200 volts is then applied to optimize the structure of the amorphous diamond hard carbon coating and to establish the desired crystal structure” (emphasis added by the Board).

[1.1.1] It goes without saying that said bias voltage values are negative so that the missing minus signs need not be incorporated into claim 1.

[1.1.2] The omission of the feature “to establish the desired crystal structure” in the amendment, which the Board in point 4 of its communication considered to be inconsistent with the definition “amorphous diamond”, is in the present case, in line with decision T 172/82, not to be objected under A 123(2) since its inclusion would result in an inconsistency contrary to A 84. Amorphous diamond normally does not have a crystal structure.

[1.1.3] There exists also no need to incorporate the term “hard carbon” after the expression “amorphous diamond” […] since it is clear that the resulting amorphous diamond coating is a particularly hard carbon (see patent, paragraph [0007]). The omission of the term “hard carbon” from the amendment thus complies with A 123(2).

[1.1.4] The aforementioned passage […] is the only one in the description of D5 (the same holds true for the claims dependent upon claim 1 as originally filed) which discloses these – originally preferred – two bias voltage ranges and is taken from the paragraph named “Process Conditions and Adjustments.” This passage is preceded by the statement “Process conditions include a multi-step bias to the substrate; an equal average deposition on both sides of the blade; and attention to the angle of presentation” (see D5, page 13, lines 20 to 32).

Consequently, according to this more general disclosure the multi-step bias is to be combined with an equal average deposition on both sides of the substrate (see also page 14, lines 1 to 3, lines 7 to 9 and lines 29 to 32) and a specific angle of presentation of the substrate to the arc source. This angle is either measured from a line normal to the plane formed by the tips of stacked blades or from the line bisecting the angle enclosed by the tip and the first and second inclined surfaces of the cutting edge of an unstacked blade (see page 15, lines 12 to 23). This disclosure is also in line with the single example of a particular processing sequence (see page 9, line 9 to page 12, line 8).

[1.1.5] The result of this amendment is that claim 1 of the main request – which is now not restricted to depositing a layer of amorphous diamond “at an equal rate or simultaneously on both sides of the substrate” nor to a definition of the angle of presentation – contravenes A 123(2), as it has selectively taken up only the bias voltage ranges from the description as originally filed. This amounts to an unallowable “intermediate generalisation” of the two passages disclosed in D5 at page 13, lines 21 to 24 and at page 13, lines 25 to 32 since the two-step bias deposition without the above mentioned two features is not directly and unambiguously derivable from D5. A preliminary conclusion to this effect had already been drawn in point 4 of the Board’s communication annexed to its summons to oral proceedings.

[1.1.6] The arguments of the appellant to the contrary cannot hold for the following reasons.

An argument is that the equal deposition on both sides of the substrate and the angle of presentation of the substrate to the cathodic arc source do not represent essential features of the claimed process. However, this is contradicted by the aforementioned passage of page 13, lines 20 to 24 relating to the process conditions, which include both features. The amendment is therefore not directly and unambiguously derivable from the application as originally filed.

The quoted statement concerning “an uneven or unbalanced layering” (see D5, page 15, lines 8 to 11) does not support the suggestion that the invention could involve the deposition of an amorphous diamond coating on one side of the substrate only. It has to be seen in the context of the disclosure of the whole paragraph comprising it and to which it is restricted. This paragraph, however, deals with preferred forms of depositing the amorphous diamond coating in a thickness of 1000 angstroms on both sides of a blade stack, i.e. several substrates, either by a simultaneous deposition on both sides or a cyclic alternation on the first and second side of the substrate until the desired thickness is built up on both sides (see page 14, line 33 to page 15, line 8). In the Board’s view this statement makes only sense in the context of the cyclic alternation embodiment – if there is a simultaneous deposition than there should be equal deposition on both sides of the substrate due to the movement of the substrate or the blade stacks - and could be interpreted as meaning that the cycle lengths for each of the two sides may be different so that the individual intermediate layers produced on the first side of the substrate after a first cycle and on the second side after the second cycle can have different thicknesses (e.g. it may be 100 angstroms on the first side of the substrate after a first coating cycle while that on the second side after the second coating cycle may be 500 angstroms, etc. and so on up to a final total thickness of e.g. 1000 angstroms). This statement, however, does not necessarily imply that the final desired coating thickness on both sides must be different.

[1.1.7] Claim 1 of the main request is therefore not allowable.

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T 1803/09 – Wrong Approach

The applicant filed an appeal against the decision of the Examining Division refusing its application.

Claim 1 of the main request before the Board read:

1. A method for predicting cardiac mortality in a chronic congestive heart failure (CHF) patient, said method comprising the steps of:

(A) assaying for the presence of a cardiac marker of cell injury in a body fluid sample drawn from said patient using:

a first antibody that specifically binds to a cardiac marker of cell injury, wherein said cardiac marker of cell injury is cardiac Troponin-I; and

(B) assaying for the presence of a marker of organ adaptation in a body fluid sample drawn from said patient using:

a second antibody that specifically binds to said marker of organ adaptation, wherein said marker of organ adaptation is selected from the group consisting of ANP, N-terminal ANP, BNP, N-terminal BNP and CNP,

wherein when both said marker of cell injury and said marker of organ adaptation are present in said sample at significantly increased levels as compared to control samples from normal individuals, said patient is predicted to have an increased prognosis of cardiac mortality. (my emphasis)

There was agreement on the fact that the subject-matter of this claim was not explicitly disclosed in the application as filed, but the applicant pointed out that the disclosure was implicit.

The Board won’t have it:

[7] The appellant does not contest the absence of an explicit disclosure of the subject-matter of claim 1 […] in the application as filed, but its argumentation relies on an implicit disclosure of this subject-matter which, in the appellant’s view, is directly and unambiguously derivable from the application as filed when taken as a whole, the specific teachings of the Example assisting the skilled person to understand the general disclosure (T 40/97), and from the fact that said disclosure and teachings would prompt the skilled person to seriously contemplate the use of the claimed combinations of markers in the method of the Main Request or of Auxiliary Requests 1 to 3 in chronic CHF patients (T 187/91 and T 296/96).

[7.1] The board agrees with the appellant that the entire disclosure of the application as filed is focused on the heart as the organ of study and, in particular, on CHF. However, as stated in the application as filed when acknowledging prior art concerned with CHF […], various and different causes may be at the origin of CHF and, although some of them may be shared by both acute and chronic CHF, these two conditions are differentiable and distinguished – albeit, admittedly, broadly defined. Thus, contrary to the appellant’s view, the term “CHF” as used in the application as filed can not always be, only and exclusively, equated to “chronic CHF”. Although the former term includes the latter, it is much broader and includes other conditions, such as “acute CHF”.

[7.2] The board does not share the appellant’s view that the tests and methods disclosed in the application as filed for use in CHF patients are appropriate only for “chronic CHF” and not for “acute CHF”. Early, preliminary diagnosis methods may distinguish and differentiate patients with one of these conditions. Likewise, methods may be developed for monitoring the long-term management (efficacy of therapeutic agents) of each of these two CHF conditions. Indeed, the references in the application as filed to “methods for distinguishing CHF” may be interpreted as referring to methods for distinguishing CHF from other heart failures as well as methods for distinguishing – at an early, preliminary stage – different CHF conditions. If at all, these references are ambiguous. It is worth noting here that not all tests and methods referred to in the application as filed are necessarily concerned with the prediction of CHF mortality. A test for early, preliminary diagnosis for CHF may well inform about the specific type of CHF condition but may be of limited value, or of no value at all, for the prediction of the severity or mortality of this condition.

[7.3] Although the sole method exemplified in the application as filed refers to criteria for selecting markers of cell injury and organ adaptation having elevated levels in CHF patients, it is also explicitly stated that

“(h)owever in patients with chronic heart failure, it is unclear whether there is a relationship between either elevated levels of cTnI alone, or in conjunction with elevated levels of pro-ANP, and survival” (emphasis added by the board) […].

Although this uncertainty is set aside for the specific marker combination disclosed in the Example, the board does not see the results reported in the Example for cTnI and pro-ANP to be directly and unambiguously transferable to all other possible combinations of markers fulfilling said criteria. Indeed and contrary to the appellant’s view, the same uncertainty remains for other markers, their possible combination does not necessarily have to provide similar or identical results to those obtained with cTnI and pro-ANP. If at all, the sentence referred to above is ambiguous.

The results shown in the Example may well render the combination of other markers obvious or, in other words, they may be for the skilled person obvious to try but this is not a criteria to apply under A 123(2). These combinations are not a direct and unambiguous consequence of the results shown in the Example nor a consequence directly and unambiguously derivable from the application as filed when taken as a whole.

[7.4] Thus, not all tissue or organ failures, damages or diseases within the above identified group A) can be directly and unambiguously equated to “chronic CHF” […]. Likewise, not all subject-matter within the above identified group C) can be directly and unambiguously understood as relating to mortality prediction for chronic CHF patients […]. Moreover, on the basis of the results shown in the Example of the application as filed, not all possible marker combinations within the above identified group B) can be seen as being directly and unambiguously interchangeable in the method of that Example […]. The identification of three groups of interrelated subject-matter and the different levels of generalization for each of them is not artificial and inappropriate but it is clearly derivable from the application as filed taken as a whole.

When reading the application as filed, the skilled person would not recognize that the feature “chronic CHF” is equally applicable to “all marker combinations” disclosed in the application, let alone that all marker combinations might be useful “for predicting cardiac mortality” in a patient with this specific CHF condition. This reading can only arise when using the disclosure of the application as filed as a large reservoir from which parts are arbitrarily taken and combined. Such a reading, however, is not allowable under A 123(2) […].

[8] Thus, there is no implicit disclosure in the application as filed of the subject-matter of claim 1 […].

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T 692/09 – No Experiments Needed

The appeal was filed by the opponent whose opposition had been rejected by the Opposition Division.

Claim 1 as granted read:

1. A laundry detergent composition comprising a bleach system which contains a hydrogen peroxide source and at least 2.5% by weight of a peroxyacid bleach precursor, at least 15% by weight of a carbonate source, which may include the hydrogen peroxide source, at least 7% by weight of an acid, preferably an organic acid, whereby a 1% by weight mixture of the composition in demineralised water provides a pH from 8.8 to 9.9, and which further comprises an anionic surfactant.

The decisive question before the Board was whether this claim involved an inventive step:

[2.1] Claim 1 of the patent-in-suit […] defines a GP laundry detergent composition (i.e. a laundry detergent composition generating in situ peroxyacid bleach) containing a hydrogen peroxide source, a peroxyacid bleach precursor (at least 2.5% by weight), a carbonate source (at least 15% by weight) which may simultaneously be the hydrogen peroxide source, an acid (at least 7% by weight) and an anionic surfactant, whereby a 1% by weight mixture of the composition in demineralised water provides a pH of from 8.8 to 9.9.

[2.2] In order to correctly identify the prior art of departure for the assessment of inventive step it is necessary to consider the statements contained in the patent-in-suit as to the technical problem addressed by the invention.

[2.2.1] The Board notes that paragraphs [0002] to [0008] of the patent-in-suit describe the background of the invention by referring to difficulties in formulating GP laundry compositions (i.e. composition in which a peroxyacid bleach is generated in situ from a precursor thereof and from a source of hydrogen peroxide) capable of providing efficient sanitisation simultaneously with excellent cleaning. These difficulties are attributed to the fact that while an highly alkaline pH is necessary for generating the peroxyacid bleach and favoured by certain conventional ingredients of GP laundry compositions (such as percarbonate or certain builders), the same highly alkaline pH is also known to promote dissociation of the acid form of the peroxyacid required for sanitisation. Consistently, the technical problem underlying the invention is then identified in paragraph [0009] of the patent-in-suit as that of providing “efficient antimicrobial performance and/or sanitisation whilst a good cleaning of both bleachable and non-bleachable stains is achieved”.

The patent-in-suit provides examples of the patented compositions. Some quantitative information on the level of biocidal activity aimed at is provided in paragraphs [0016] to [0019] of the patent-in-suit that describe a standard method for measuring the activity of microorganisms and a list of the relevant microorganisms, identify the minimum concentration at which the laundry composition should be used relative to the initial concentration of microorganisms and define some specified minima for the reduction in microorganism activity to be observed.

[2.2.2] The Board considers appropriate to stress that this description of the addressed problem of the background art given in the patent-in-suit appears consistent with the common general knowledge as derivable from the available non-patent literature of documents D12, D14 and D18. These citations confirm indeed that the skilled person would know that in the case of GP laundry compositions the acid form of the peroxyacid prevailing at lower pH is in general much more effective in providing sanitisation than its anionic form prevailing under alkaline conditions […]. Moreover, document D18 explicitly recognises that there is a necessity of “potentiating” the sanitising activity of the peroxyacid anion in the alkaline wash baths […], thereby implicitly confirming the existence of difficulties in achieving good sanitisation under the alkaline conditions required for peroxyacid generation and good bleaching.

[2.2.3] Hence, the skilled reader of the whole patent disclosure is correctly reminded of the existing common general knowledge as to the fact that the GP laundry compositions of the prior art containing a carbonate source that produce highly alkaline wash baths and result in good bleaching normally do not provide satisfactory sanitisation. Accordingly, the skilled person can only reasonably interpret the aimed “efficient antimicrobial performance and/or sanitisation” indicated in paragraph [0009] of the patent-in-suit as a level of sanitisation superior to that expected for the GP laundry compositions containing a carbonate source that produce highly alkaline wash baths. Hereinafter the aimed combination of good levels of sanitisation and bleaching is also indicated as efficient sanitisation with good bleaching.

[2.3] The [opponents] have considered reasonable to assess inventive step starting from any of the two examples of departure […].

In view of the technical problem indicated in the patent-in-suit and discussed above, and considering that:

• both these prior art examples are GP laundry compositions containing a carbonate source and providing good cleaning […] and
• that the subject-matter of claim 1 of the patent-in-suit only differs from example 1A of document D1 as well as from example 1 of document D3 in that claim 1 requires a 1% by weight mixture of the patented laundry composition in demineralised water to have a pH of from 8.8 to 9.9,

the Board concurs with the [opponents] that it was reasonable for a skilled person to start from one or the other of these prior art examples.

[2.4] In a first line of reasoning in view of A 56, the [opponents] have combined each of the two examples of departure with the document D9 or with document D11.

In particular, they have considered that, in the absence of any experimental data demonstrating the superior sanitising effect of the patented composition in comparison to those observable in one or the other of the two examples of departure, the statement as to the efficient sanitisation in paragraphs [0008] and [0009] of the patent-in-suit would just be an allegation of an improvement that, as indicated e.g. in the decision of the Boards of Appeal T 1392/04 [20], required experimental evidence in order to be considered for the assessment of inventive step.

Since it would not be credible that the patented GP laundry compositions provided a level of sanitisation superior to that of the prior art of departure, the subject-matter of claim 1 of the patent-in-suit represented just an optimization of the prior art, optimization that was rendered obvious by the combination of one or the other of the two examples of departure with document D9 or D11.

[2.4.1] The Board notes however that the referred passage in T 1392/04 only relates to the credibility of a statement of the patent proprietor that the patented subject-matter would provide an improvement of “some particular property of the closest prior art” (emphasis added by this Board), i.e. an improvement of one of the properties already disclosed in the prior art (such as those indicated at point [13] of the Reasons in this decision).

[2.4.2] The content of T 1392/04 [20] is, thus, not similar to the issue raised by the present case wherein, as argued by the patent proprietor, the skilled reader of the relevant prior art document would not know if the examples of departure also provide an efficient sanitisation or not.

Indeed, the absence of specific information in documents D1 or D3 as to the (final) pH of the wash baths produced when using one or the other of the two examples of departure, and the fact that it is not even possible to presume that these examples produce a 1% by weight wash bath with a pH in the range of 8.8 to 9.9 (and, thus, necessarily obtain the aimed combination of efficient sanitisation with good bleaching) has not been disputed by the [opponent].

It is also undisputed that, whereas document D1 does not mention at all disinfection or any other expression related to sanitisation, document D3 only contains a single reference at page 8, lines 41-42, as to the fact that the optional ingredient “oxygen bleach” of the laundry compositions disclosed therein can “provide a multitude of benefits such as bleaching of stains, deodorization as well as disinfectancy”.

The Board concurs with the [patent proprietor] that this passage is only a vague general statement, insufficient at justifying any reasonable prediction of the skilled reader of document D3 as to whether the specific composition of e.g. example 1, based on the specific peroxyacid bleach produced by the presence therein of percarbonate, would also provide some sanitisation, and even less the aimed effective sanitisation.

Accordingly, and in the absence of any evidence to the contrary, the Board has no reason for rejecting the argument of the [patent proprietor] that no combination of efficient sanitisation with good cleaning is disclosed to be present or to be predictable in any of the two examples of departure.

[2.4.3] Thus, the Board finds that no comparative experimental evidence is required for concluding that the subject-matter of claim 1 of the patent-in-suit solves vis-à-vis each of the two examples of departure the same technical problem mentioned in the patent-in-suit, i.e. that of providing GP laundry compositions capable of producing in combination efficient sanitisation and good bleaching (see above point [2.2.3]).

[2.4.4] The Board concludes therefore that the [opponents’] first line of reasoning resumed above at point [2.4] is not convincing already because it fails to correctly identify the technical problem solved.

The Board then also dismissed the opponent’s second line of reasoning and came to the conclusion that claim 1 involved an inventive step.

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T 520/06 – Walk The Line

Opponent 3 filed an appeal after the Opposition Division (OD) had rejected the opposition.

Claim 1 before the Board (which corresponds to claim 1 as granted) read:

A precipitated silica characterised in that it has:

• a CTAB specific surface area (SCTAB) of between 140 and 240 m2/g,
• a porous distribution such that the porous volume formed by pores whose diameter is between 175 and 275 Å represents less than 50% of the porous volume formed by pores of diameters less than or equal to 400 Å,
• an ultrasound disagglomeration factor (FD) of higher than 5.5 ml, and
• a median diameter (Ø50) after ultrasound disagglomeration of less than 5 μm,

and is in at least one of the following forms: substantially spherical balls of a mean size of at least 80 μm, powder of a mean size of at least 15 μm and granules of a size of at least 1 mm.

and independent process claim 6 read:

A process for the preparation of a silica according to one of claims 1 to 5 comprising the reaction of an alkali metal silicate M with an acidifying agent, thereby obtaining a precipitated silica suspension, then separation and drying of said suspension, characterised by effecting precipitation in the following manner:

(i) forming an initial vessel bottoms comprising a part of the total amount of the alkali metal silicate M involved in the reaction, the concentration of silicate (expressed as SO2) in said vessel bottoms being at most 15 g/l,

(ii) adding the acidifying agent to said initial vessel bottoms until at least 50% of the amount of M20 present in said initial vessel bottoms is neutralised, and

(iii) simultaneously adding to the reaction medium acidifying agent and the remaining amount of alkali metal silicate M such that the ratio of the amount of silicate added (expressed as Si02)/amount of silicate present in the initial vessel bottoms (expressed as Si02) is between 12 and 100.

Among other things, the Board dealt with the objections that claim 6 did violate A 123(2) and that claim 1 was not novel:

*** Translation of the French original ***

[2.1] Process claim 6 is based on process claims 1 to 3 of the application as filed. However, the initial silicate concentration […] according to claim 6 of the patent is limited to “at most 15 g/l” whereas the independent process claim 1 of the application as filed only requires a value “less than 20 g/l”.

[2.2] In application of the principle restated in T 925/98 [2] the Board considers that a limiting amendment consisting in a replacement of the upper limit “less than 20 g/l” of said range by the limit “at most 15 g/l” does not extend the subject-matter of claim 6 beyond the content of the application as filed.

[2.2.1] In the present case, the value of the upper limit of a narrow preferred range (“between 10 and 15 g/l; cf. claim 11 of the application as filed) is used to delimit the more general range which has an upper limit of 20 g/l (cf. claim 1 of the application as filed) but which is not limited by a precise value at its lower end.

[2.2.2] It has been submitted that the principle restated in T 925/98 does not apply to the present case. It is not obvious to the Board why this principle would not be applicable to the particular case of a larger range of values corresponding to an open interval, i.e. which has been formulated without any indication of a precise value for one of the two boundaries of said interval. […]

[9] Document D2, which was cited as a novelty-destructive document, discloses the preparation of precipitated silica and their use as reinforcing filler for elastomers […]. According to D2, said silica are easily dispersed and have improved reinforcing properties. They are obtained by reacting silicate with an acidifying agent and have granular, powder or bead shape.

[9.1] Generally speaking, the precipitated silica disclosed in document D2 have a specific surface area SCTAB between 140 and 200 m2/g […]. The granules preferably have a dimension between 1 and 10 mm […]. The powders generally have an average granulometry (D50) of between 5 and 70 μm, preferably between 10 and 30 μm […] and the beads have an average size of at least 80 μm […]. The powders and the beads according to D2 preferably have an ultrasound disagglomeration factor that is greater than 6 ml or 5.5 ml, respectively […] and have a median diameter (Ø50) after ultrasound disagglomeration of less than 4.5 μm or 5 μm, respectively […]. As far as the above cited parameters are concerned, the silica disclosed in D2 comply with the criteria mentioned in claim 1 of the opposed patent.

[9.2] However, the precipitated silica according to D2 are characterised by a very particular distribution of their porous volume, this distribution being expressed by means of the ratio (in %) between the porous volume constituted by the pores having a diameter between 175 Å and 275 Å and the porous volume constituted by the pores having diameters of less than or equal to 400 Å, this ratio being referred to as “V2/V1” […]. Said ratio V2/V1 is of at least 60%, preferably of at least 65%, for granules, and of at least 50%, preferably of at least 60%, for powders and beads.

[10] Now, the Board is of the opinion that the claim feature of the patent under consideration regarding the distribution of porous volume, which can be expressed in the form of the condition that V2/V1 < 50% limits claim 1 to silica which the skilled person can distinguish from silica having a ration V2/V1 of 50% or more by means of measurement according to the method cited in the patent under consideration (mercury porosimetry) […], which by the way is the same as the one in D2 […]. 

[11] Contrary to the opinion of the [opponent], claim 1 of the patent under consideration unambiguously excludes the products disclosed by D2 […], i.e. precipitated silica having powder or bead shape and a V2/V1 ratio ≥ 50% as well as granules having a ratio V2/V1 ≥ 60% and the silica according to example 12 of D2 where the V2/V1 ratio is equal to 61%. 

[12] It has to be noted that D2 also discloses comparative products having a V2/V1 ratio that is clearly smaller than 50% (cf. table I and example 2; PC1: 43%; PC2: 46%). Products PC1 (Ø50: 7.4 μm, FD: 3.0 ml) and PC2 (Ø50: 9.9 μm, FD: 2.3 ml) however, do not comply with the criteria given in claim 1 of the patent under consideration according to which Ø50 < 5 μm and FD > 5.5. The V2/V1 value of the comparative products GRC1 and GRC2 mentioned in D2 (53% […]) is greater than 50% and its Ø50 and FD values are not given.

The smallest V2/V1 value given for a non-comparative product according to D2 is 57% […].

[13] Therefore, all the precipitated silica disclosed in D2, including the ones disclosed as comparative products, differ from the silica according to claim 1 of the patent under consideration at least regarding the distribution of their porous volume (according to the teaching of D2) and/or regarding the values for Ø50 and FD (comparative products in D2).

[14] In particular, the beads according to example 12 of D2 (comparative product MP1 according to the opposed patent) have a V2/V1 ratio (61%) that is greater than 50% and, therefore, are perfectly distinguishable from the claimed beads. This conclusion is not liable to be called into question in view of documents E2 and E4 which essentially only deal with the influence the sampling conditions can have on the results obtained when the V2/V1 values of granules are measured.

[15] As regards the decisions cited by the [opponent], the Board notes that they are not directly applicable to the present case, for the following reasons:

[15.1] The principle developed in decision T 594/01 [4.1.5] cannot be applied to the present case, be it only because the value of 50% mentioned several times in D2 is not an “experimental value” that has been concretely measured on an embodiment, but the lower boundary defining the range of V2/V1 values to be complied with (à respecter) according to D2. None of the examples of embodiments of D2 discloses a value equal to or even close to 50%, the smallest experimental value disclosed being equal to 57% […]. The V2/V1 values smaller than 50% mentioned in D2 (tables I and II) only concern the comparative products (“PC1” and “PC2”) and do not disclose the whole set of features of the product according to claim 1 of the patent under consideration […].

[15.1.1] According to the established case law of the Boards of appeal, including decision T 240/95 [4.2, 3rd §], a numerical range expressed as “from x to y” effectively constitutes a disclosure of the numerical values x and y. However, in the case of the patent under consideration, the range of claim 1 under consideration is formulated as an open interval having an upper boundary, i.e. “less than 50%”. This wording expressly excludes the value of 50%.

[15.1.2] Decision T 666/89 concerns situations of “selection” and “overlapping” of numerical ranges. However, in the present case, the respective ranges for the V2/V1 parameter in D2 and in the patent under consideration precisely do not overlap, because the interval defined by the expression “< 50%” does not have any point in common with the interval defined by the expression “≥ 50%”.

[15.1.3] Therefore, considering said decisions does not lead to a different assessment of D2 than the one given in points [13] and [14] above.

The claims were found to be novel and inventive.

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T 1914/08 – Total Recall

The patent proprietor filed an appeal after the Opposition Division (OD) had maintained the opposed patent in amended form.

After expiration of the time limit for filing an appeal, the opponent filed a “cross- appeal” (Anschlußbeschwerde) but he finally withdrew this appeal.

The patent proprietor requested the Board to maintain the patent as granted. Claim 1 as granted read:

1. Method for cleaning a UHT installation (1) for flowable foods comprising the steps:

(a) Placing a cleaning solution in a storage vessel (6,7),

(b) Cleaning the UHT installation (1) with a first portion of the cleaning solution,

(c) Discarding this first portion of the cleaning solution,

(d) Cleaning the UHT installation (1) with a second portion of the cleaning solution,

(e) Recirculating this second portion to the storage vessel (6,7),

(f) Rinsing the UHT installation (1) with fresh water,

(g) Collecting at least a portion of the rinse solution in step (f) in the storage vessel (6,7),

(h) Fortifying the solution in the storage vessel (6,7) with cleaning agent.

The decision contains some interesting statements on late filed documents and witness testimonies.

*** Translation of the German original ***

Consideration of documents D18 to D25

[2] Documents D18 to D25 were announced on May 4 and 13, 2009, by the [opponent] and filed together with a written submission dated August 26, 2011, about one month and a half before the oral proceedings (OPs) before the Board.

The [patent proprietor] is of the opinion that said documents were late filed, so that he did not have the opportunity to prepare himself properly. It should also be taken into account that the late filed documents concerned the alleged prior public use (PPU) and evidence therefor, respectively, and that all the evidence was in the sphere of the [opponent], so that all the [patent proprietor] could do was to point out gaps and inconsistencies of the evidence. This possibility would be seriously limited if the late filing of documents D18 to D25 was considered admissible.

According to the [opponent] the documents under consideration were not indispensable for establishing the alleged PPU Leche Pascual but could nevertheless provide further evidence for the prior use and invalidate (entkräften) the patent proprietor’s objections against the conclusions at which the OD had arrived when assessing the evidence.

The [opponent] has announced the filing of further documents related to the PPU at an early stage of the proceedings – in written submissions dated May 4 and May 13, 2009 – when reacting against the objections made by the [patent proprietor] in the statement of grounds of appeal. He justified the fact that the documents were filed only together with his written submissions of August 26, 2011, i.e. more than two years later and shortly before the date of the OPs (October 13, 2011) by the tense economic situation the [opponent] had had to face in the meantime.

In the exercise of its discretional power, the Board considers that the late filing of documents that had been announced earlier and which, therefore, were available, without any justification having a causal link to the present proceedings, does not comply with a regular way of conduction the proceedings.

Therefore the late filed documents D18 to D25 have not been admitted into the proceedings. […]

Prior public use

[4.1] According to the impugned decision […] the processing plant (Prozeßanlage) that is said to constitute a prior public disclosure has been delivered in the 1994/1995 period by the Gea Finnah company to the Grupo Leche Pascual company, the latter being both the purchaser and the operator of the plant. This delivery, for which there had been no confidentiality obligation, had made the plant available to the public. Moreover, the operation of this plant had made a process for cleaning a UHT installation available to the public, which process destroyed the novelty of claim 1 as granted, which is the only version that will be considered hereinafter […].

[4.2] When assessing the evidence, the OD has considered the witness testimonies of witnesses Tacke and Assing […] to be the essential pieces of evidence. Moreover, in the context of these witness testimonies, it has referred to documents D5 and D6 as “written evidence”.

[4.3] The Board is of the opinion that the two witness testimonies, which go beyond the disclosure of documents D5 and D6 – as far as the process plant alleged to have been the object of a PPU and the cleaning process are concerned –, are the decisive pieces of evidence by which the alleged PPU has been completely (lückenlos) established to the extent that is necessary in the present case. As both witnesses have referred to D5 for explaining their statements and as witness Tacke also used D6, these pieces of evidence comprise facts that can be taken from D5 and D6, insofar as they are comprised by the witness testimonies.

Each witness testimony as such gives a consistent and complete picture of the cleaning process which is to be established. Moreover, the witness testimonies agree with each other as far as the essential process steps of the cleaning process are concerned.

[4.4] Based on the content of the witness testimonies that has been taken into account in the impugned decision, and on the minutes of the hearing of witnesses Tacke and Assing, the Board considers the way in which the evidence was assessed by the OD, the underlying standard of proof and the outcome of the assessment to be correct.

The Board agrees with the [patent proprietor] that in the present case the applicable standard of proof is such that the alleged public prior use has to be established “beyond reasonable doubt”.

This follows from the fact that it is the legal predecessor of the [opponent’s] company who delivered the CIP (Cleaning In Place) plant under consideration and, therefore, caused the PPU, which means that the PPU belongs to his sphere of influence.

[4.5] The [patent proprietor], who considers that the PPU has not been established and contests its reality […] has tried to expose gaps and inconsistencies regarding the evidence of the opponent and shortcomings in the assessment of the evidence on behalf of the OD, both in the opposition and appeal proceedings.

The OD has not endorsed the corresponding objections, essentially because it considered the facts to be proven by means of the witness testimonies […].

[4.6] The Board considers the OD’s assessment of the situation to be correct.

[4.6.1] In particular, as far as the availability to the public is concerned, it is of the opinion that the impugned decision is right in coming to the conclusion that the CIP plant, which had been delivered by the Gea Finnah company to the Leche Pascual company, who was both purchaser and operator, has been made available to the public through this very delivery.

The Board is of the opinion that the same holds true for the assessment according to which the operation of the CIP plant for cleaning the UHT installation has made the process used for cleaning the UHT installation available to the public before the date of filing of the impugned patent. As a matter of fact, when the plant was sold, put into service and homologated (see witness testimony […]) all process steps have been carried out.

In this context the OD was right in coming to the conclusion that the delivery and operation of the plant was performed without there being any confidentiality obligation and that the Leche Pascual company acting as a purchaser and operator of the plant was a third party within the meaning of patent law, in the person of whom the CIP plant for cleaning a UHT installation under consideration as well as the process for cleaning the UHT installation carried out with it have been made available to the public.

[4.6.2] The impugned decision is also correct on the object of the PPU.

Accordingly, the witness testimonies have shown that the delivered CIP plant is suitable for carrying out the cleaning process according to claim 1 both in view of the means provided in the plant and its control and of the interaction with the UHT installation.

As far as the operating sequence of the cleaning process carried out in the plant of the PPU is concerned, the impugned decision refers to the process steps disclosed in D5 and uses the designations for the individual steps used therein. This is in agreement with the declarations of both witnesses who have kept their declarations on the operating sequence of the cleaning in line with the process sequence of D5.

The outcome is that the OD has considered that it has been proven that the process for cleaning a UHT installation carried out in the plant of the PPU comprised all steps of the process according to claim 1.

[4.6.3] It may be left open to which extent D5 is to be considered as an independent piece of written evidence alongside the witness testimonies – as the OD appears to have believed – because the two witness testimonies – partly referring to D5 – completely encompass its disclosure insofar as it concerns the object of the PPU in view of the process according to claim 1. The same holds true for D6 and the construction of the CIP plant, because the witness Tacke refers to this document in his deposition.

[4.6.4] Therefore, the objections of the opponent concerning the use of D5 and D6 as independent pieces of evidence are pointless because the witness testimonies are complete both in view of the construction of the CIP plant and – to the extent necessary – the UHT installation, and in view of the operating sequence of the cleaning process carried out on the UHT installation by means of the CIP plant to the extent required in the context of the process according to claim 1, and as such establish the alleged PPU.

As a consequence, it may be left open to which extent D5 and D6 are to be considered as independent pieces of evidence alongside the two witness testimonies.

For analogous reasons it is not necessary to consider declaration D16, which the [opponent] has used for supporting his argumentation alongside both witness testimonies, either.

[4.6.5] Concerning D5 and D6, the objection of the [patent proprietor] according to which it was not proven which version of D5 and D6 was available when the PPU took place, and what they disclosed, is also irrelevant. The same reasoning applies to the objection that D5 does not disclose the complete cleaning process and that the precise interaction of the CIP plant and the UHT installation in view of cleaning the UHT installation by means of the CIP plant is not apparent in D6. That the cleaning process has indeed been carried out in compliance with the process according to claim 1 follows from the relevant declarations of both witnesses, which are extensive and complete, as explained above.

In this context, it has to be taken into account that, according to the minutes of the hearing of the witnesses, the witness Tacke has been personally involved as project manager in the start-up of the plant until its homologation According to the minutes of the hearing of witness Assing, the same holds true for this witness, who was responsible for developing and implementing the complete software and who, therefore, was on site from October 1994 to June 1995. As a consequence, both witnesses could draw upon their recollections concerning the operating sequence of the cleaning process during the start-up of the delivered CIP plant in conjunction with the UHT installation.

[4.6.6] As far as the establishment of proof (Beweisführung) is concerned, the [patent proprietor] has explained that he did not question the reliability of the witnesses as such. However, as there were inconsistencies in the witness declarations regarding the dates at which the documents D5 and D6 were established / published and their content during the relevant period, there were indications that doubts concerning the witnesses’ powers of recollection were justified. This also held true for the witness declarations concerning the period and the object of the alleged PPU.

In this regard, it has to be noted, as explained above, that in the present case the PPU is considered to have been proven by the two witness testimonies. Therefore, links and details that can be found in D5 and D6 do only matter to the extent to which the witnesses have referred to them during the hearing.

Regarding the powers of recollection of the witnesses the general experience of life allows to act on the assumption that when actions that have taken place in the past, such as in the context of the present PPU, actions that are experienced directly (unmittelbar wahrgenommen), such as the construction of the CIP plant in conjunction with the UHT installation, as well as the start-up of the CIP plant for cleaning the UHT installation, wherein both witnesses have participated actively, according to their declaration, can be recollected much better than actions that are not readily assigned to such immediate perception. In the present case this concerns the moment at which D5 or D6, respectively, have been established and the version of each of these documents that was available in the period that is relevant for the PPU.

[4.7] Based on the fact that, as mentioned above, both witness testimonies as such are complete in view of the factual situation to be established and do not contradict each other or the other documents filed in this regard, in particular D5 and D6, the other objections of the [patent proprietor] with respect to the proof of the PPU are irrelevant.

[4.7.1] The objection that, starting from D5 and D6, gaps in the disclosure made it unclear how the CIP plant and the UHT installation were constructed, how they interacted in the cleaning of the UHT installation and which process steps a cleaning process for the UHT implemented in the allegedly used CIP plant has comprised, cannot be accepted.

As the PPU has been proven by the two witness testimonies, further documents or pieces of evidence, such as the “written pieces of evidence” D5 and D6 mentioned in the impugned decision, are not relevant.

This holds true at least for the present case wherein there are no fundamental contradictions between the pieces of evidence such as the two witness testimonies, and further documents, such as D5 and D6, which would diminish the evidentiary power (Aussagekraft) of some or all of the pieces of evidence so that they cannot be taken into account, either partly or completely, when evidence is assessed within the framework of the free evaluation of evidence.

However, the [patent proprietor] has not been able to demonstrate the existence of such gaps of disclosure or contradictions. […]

[4.7.2] The [patent proprietor] also expressed the opinion that, given his unlimited access to the pieces of evidence concerning the alleged PPU, the [opponent] could have been expected to provide further written pieces of evidence concerning the construction of the plant that had been delivered and, therefore, the cleaning process carried out with it. In this context, he also criticized that there had not been any documents representing the whole construction of the CIP plant and the UHT installation or from which the whole operating sequence of the cleaning process was discernable.

The Board is of the opinion that this request for further pieces of evidence concerns aspects of establishment of proof by the [opponent] which go beyond what the [opponent] had to supply in order to bear his burden of proof.

As the OD, acting within the framework of free evaluation of evidence, has come to the conclusion – which the Board considers to be correct – that the alleged PPU has been essentially established by the two witness testimonies, and as the [patent proprietor] has not been able to cast into doubt the probative value of these witness testimonies, there was no motivation for the opponent to file further pieces of evidence, neither in the opposition nor in the appeal proceedings.

Finally the appeal was dismissed.

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T 2210/10 – Swedish Post

The opponent filed an appeal against the decision to maintain the patent in amended form.

The decision was posted on August 10, 2010 with an advice of delivery. On the address label the addressee was mentioned in the following way : Name of the representative, name of its office, address.

According to the advice of delivery received at the EPO on August 19, the decision was received at the representative’s office on August 17. The advice of delivery had been signed by an employee of the this office.

The acknowledgement of receipt (EPO Form 2936) was received at the EPO on 3 September 2010. It bears the signature of the representative and the date of 3 September 2010.

The opponent filed a notice of appeal on 3 November 2010 and a statement setting out the grounds of appeal on 3 January 2011.

The Board informed the appellant that it was to be expected that the appeal would be rejected as inadmissible pursuant to A 108, first sentence, in conjunction with R 101(1).

The representative further referred to two articles of the Swedish Code of Judicial Procedure Chapter 33 which read as follows in their English translation:

“If service is to be done to a single person, the document is handed over to him. If there is a substitute for him and if this person is authorized to represent him in the proceedings of the case the document is handed over to him.

If a single person is sought for service on his place for employment but is not to be met there during his normal working time, the document may be handed over to the employer of the sought person. By employer is meant a person in an executive position or in a position comparable with this or the manager of the human resource administrative department on the workplace of the person sought”.

He argued that because on the address label of the mail containing the decision the name of the representative appeared in the first line and the name of the representative’s office only in the second line, the mail had to be considered as addressed to the representative in person and not to the representative’s office. Therefore the employee having accepted the mail acted in breach of its authorisation to do so, since the employee was only authorised to accept mail for the representative’s office. Likewise the Swedish post office should not have handed out the decision to the said employee because under Swedish law such mail should be handed out to the person named on the mail only, or to a person authorised to accept mail in the name of this very person. Hence, the decision had to be considered as delivered to a non-authorised person. The date of notification to be taken as the starting day for the calculation of the time limit had therefore to be the date on which the representative became aware of the decision upon returning from holiday. This was 3 September 2011 as indicated on form 2936 sent back to the office on that very day.

You might have guessed that the Board did not endorse these arguments. Here are the reasons why:

[1] In the case under consideration the decision of the Opposition Division was notified by registered mail with an advice of delivery pursuant to R 126(1) on 10 August 2010. As a representative was designated, the decision was sent to him (R 130(1)) and, according to the advice of delivery, received at his office on 17 August 2010.

Undisputedly the decision was accepted there by an employee of the representative who was authorised to accept all mail delivered to the representative’s office.

Thus, the decision was notified within ten days following its posting, so that the fiction of R 126(2) applies for the calculation of the starting day of the time limit and the decision is deemed to have been notified on 20 August 2010.

Hence, the time limit for filing a notice of appeal ended on Wednesday 20 October 2010 and the time limit for filing a statement setting out the grounds of appeal ended on Monday 20 December 2010, respectively.

The appellant, however, filed a notice of appeal on 3 November 2010 and a statement setting out the grounds of appeal on 3 January 2011, respectively. Both dates are late, i.e. after expiry of the corresponding time limits.

[2] The appellant submitted that because the name of the representative appeared first on the address label of the mail, the decision could only be considered notified when the representative himself took knowledge of the decision.

The Board cannot accept this argument. Pursuant to R 130 the decision was addressed to the representative at his office. For organisational reasons, it is clear that in the representative’s office, one or several employees are entitled to accept mail addressed to the representatives working there. The employee who took over the impugned decision had an authorisation to do so in the name of the representative’s office. This is not disputed by the appellant. What happened there is no longer as much the responsibility of the EPO, but rather that of the representative (see T 743/05 [1.6] ; T 1535/10 [1.5.2]).

In addition, unless otherwise provided for, if an employee has an authorisation to accept over mail for the representative’s office this means that the employee has a right to take in mail for any one of the representatives working there, at least as long as the representative’s office name is on the address label. Any other interpretation would not make any sense. As a matter of fact in any of a granting, opposition or appeal procedure, when a representative is designated, this is in general a single natural person (representative) of a bigger law firm with a certain number of representatives. If the representative in the present case were right in his assumption, this would mean that the mail sent by the EPO would never be notified until the particular representative was informed of it. This would lead to inextricable difficulties for determining the date of notification, and the representative could pick and choose at will the day on which it would like the notification to have taken place.

[3] The appellant further submitted that in Sweden, where notification by post is concerned, it makes a difference whether on the address label the name of the representative is mentioned first and the name of the representative’s office second, or vice-versa. In the first case, the mail must be delivered to the very person named and in the second case it can be delivered to its office. In the present case this would mean that the decision was delivered to a person not authorised to accept it.

Pursuant to R 126(2) last part of the only sentence, “in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.”

In the opinion of the Board, this, however, cannot mean that it is the duty of the EPO to start enquiries as soon as a party, against the evidence on file, considers that the mail has not been properly notified.

The EPO, and the Boards of appeal in particular, cannot be expected to undertake exhaustive investigations to establish on their own the date of notification in the absence of serious doubts. This would de facto amount to allowing any party to request the EPO to prove that notification has duly been effected whenever the party feels it advantageous to do so. This cannot be the aim of this rule.

In the present case, the Board considers that no serious doubts exist. Once again, the advice of delivery has been returned to the EPO in due time, the date of reception of the mail is duly indicated (17 August 2010) on the advice of delivery and the employee who accepted the mail was indisputably authorised to accept mail for the representative’s office.

In such a case, if the representative still considers that notification has not been correctly effected it is up to him to bring convincing evidence as to the contrary.

But the appellant did not file any convincing evidence to back up its allegations. In its letter of 22 March 2011, it mentioned two articles of the “Swedish Code of Judicial Procedure Chapter 33”, which according to it would require that “If service is to be done to a single person, the document is handed over to him.”.

In the absence of any argument in this respect from the appellant’s side, the Board fails to see why the Swedish Code of Judicial Procedure would have any relevance when it comes to deciding to whom a registered letter of an administrative body should be delivered by the postal services.

It is further to be noted that case T 743/05 also concerned a Swedish representative, that the name of the representative and the representative’s office name and address were in the same format as in the present case, and that this issue did not play any role. This casts further doubts as to the relevance of the representative’s argument.

Moreover, if the two articles of the Swedish Code of Judicial Procedure cited by the appellant were applicable, they do not make any reference to a difference of treatment between pieces of mail having either the name of the person or the name of the person’s place of employment cited first on the address label. In other words even if they were applicable to registered letters of an administrative body, the cited articles fail to deal with the present situation.

Hence, in the present case, on the basis of the filed evidence, the Board cannot see any difference, when it comes to notification, between an address label with either the name of the representative or the name of his office in the first position, as in both cases the name of the representative’s office is on the label.

[4] The appellant further submitted that the date of notification to be considered should be the date indicated by him on the EPO Form 2936, namely the 3 September 2011.

This form was introduced by the EPO in order to facilitate the establishment of the date of notification in cases in which the advice of delivery is either not returned to the EPO or is returned but without being completed at the receiving end (see Notice of the European Patent Office dated 10 June 2010 in Official Journal EPO 7/2010, page 377).

In the present case the advice of delivery was duly completed and returned to the EPO, so that the date on Form 2936 is of no importance.

[5] Hence, pursuant to R 101(1) in combination with A 106 to A 108, the appeal must be considered inadmissible.

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T 848/09 – Not Frozen

The manner in which Article 12(4) RPBA is applied by the Boards is a matter of concern for many patent attorneys. Here is another interesting case, where Board 3.5.03 had to deal with an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent.

In its response to the summons to attend oral proceedings (OPs), the patent proprietor filed amended main and auxiliary requests. Obviously, the question of admissibility arose.

Here is what the Board had to say on the admissibility of the main request.

[1] In accordance with Article 12(4) RPBA, the board has the discretion “to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings”.

The [opponent] argued that the main request should not be admitted as it was not submitted during opposition proceedings, despite the fact that the patent proprietor had been asked by the chairman of the OD whether it wished to file “an auxiliary request” […]. The [opponent] also argued that appeal proceedings concerned a judicial procedure whose primary purpose was to determine the correctness of the decision taken by the OD. The [opponent] referred to decisions T 379/09, T 144/09 and T 240/04 to provide support for its view.

The board concurs with the [opponent] that the primary purpose of the appeal procedure is to check the correctness of the decision of the department of first instance. It is also established case law that the parties should not in general be able to change the factual and legal framework of the case during the appeal phase; however, this does not mean their procedural situation becomes frozen following the decision from the department of first instance. In accordance with Article 12(4) RPBA, amendments are possible, provided that these amendments are justified by the normal development of the proceedings. Amendments may for instance be justifiable having regard to the principle of procedural economy (which is not the main justification here, but at least there is no conflict since no delay to the proceedings has ensued), or, as is the case here, be a normal reaction of a party given the circumstances of the case.

In the cases cited by the [opponent] where the new requests were not admitted under Article 12(4) RPBA, the circumstances were different, namely:

• In T 379/09, the patent proprietor filed the new request aimed at overcoming an objection raised by the OD only one month before the OPs before the board of the appeal although the nature of the objection had been set out in the summons to OPs issued by the OD. Furthermore, admitting the request would have caused a considerable delay of the procedure.

• In T 144/09 [1.14], the proprietor had made a “considered and deliberate choice” not to file an amended request, despite being given the opportunity to do so after the objection had been explained.

• In T 240/04 [16], the new request introduced subject-matter which had not been considered by the first instance and, above all, diverged from what had been discussed before; instead of convergence there was a jump to another invention.

By contrast, in the present case the board considers the filing of the present main request to be a legitimate and normal reaction to the decision to revoke the patent, because the amendment concerns the addition of a feature of a dependent claim which further limits the subject-matter distinguishing the invention with respect to the disclosure of document D3. As the added feature was previously in a dependent claim, it can be assumed that the claimed subject-matter has been searched. Moreover, the request was filed at the earliest possible stage of the appeal proceedings, namely with the statement of grounds. The filing of this request therefore did not give rise to any procedural complications preventing a discussion of the request at the OPs. Even if, theoretically, the patent proprietor might have been able to file this request at the end of the OPs before the OD, the board sees a difference with the other cited cases above, in particular with T 144/09, since it does not appear that the patent proprietor made a “considered and deliberate choice” not to file the request. Rather, the reasons for the revocation of the patent were not so explicitly known as in case T 144/09 and plausibly the formulation of a suitable new request overcoming the objection was not immediately evident. In such circumstances it would be unreasonable to penalise the non-filing of an auxiliary request at the end of OPs by later invoking Article 12(4) RPBA in appeal proceedings.

The board therefore decided to exercise it discretion to admit the main request.

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T 1086/07 – Presenting Information

This appeal was against the decision of the Examining Division (ED) to refuse the European patent application under consideration, which concerned the problem of indicating on a summary document where the summarised portions came from in the original document.

The ED found  that the subject-matter of claim 1 did not involve an inventive step.

Claim 1 of the sole request before the Board read:

A method for summarizing a document using a processor (12), the method comprising:

• extracting (S200) text from the document along with corresponding location information;
• identifying (S220) portions (82) of the extracted text that reflect the content of the document;
• generating (S230) a presentation file that includes the identified portions (82) and a first set of indicators (84) that identify each identified portion of text, the first set of indicators being placed adjacent to the corresponding extracted text; and
• presenting (S270) the presentation file, characterized by generating a second set of indicators (86) that correspond to the first set of indicators, the vertical positions of the second set of indicators (86) indicating the vertical locations of the corresponding extracted text in the document.

[4] The ED started from the method of automatically mapping a document abstract to its original sentences disclosed in D1. The subject-matter of claim 1 differed from this by the generation of the second set of indicators to indicate the “vertical locations” of the original text. The objective problem was seen as how to improve navigation between the document summary and the summarised document. The ED considered that the skilled person would try to solve this by providing more navigation information about the summarised document. Such data was already present in D1 in the form of the corresponding area table 410 in Figure 13,

the sentence score table 408, revealing the sentence length, in Figure 8

and the abstract sentence table 409, showing which original sentence corresponds to which abstracted sentence, in Figure 9.

The ED considered that the skilled person would “use this data and visualize it according to user requirements, the form of presentation of this information being only a mere choice for the skilled person”.

[5] The Board agrees with the appellant that the ED’s reasoning is rather terse, in particular the motivation to modify D1 to arrive at the invention. If the features in question were all of a technical nature, the Board might have some doubts about the conclusion of this argument. However, as the ED did acknowledge, albeit only at point 4.3 of the minutes, the “pure visualization of available information” cannot contribute to inventive step. In the Board’s view this consideration is decisive to the outcome of the present case.

[6] Moreover, the Board finds the ED’s statement of the distinguishing features slightly too generous. In the Board’s view, the sentence numbers (B2, B5, B7) shown in Figure 9 of D1 can be considered to be a second set of indicators that correspond to the first set of indicators (A1, A2, A3…), and indicate the vertical locations of the extracted text. Thus, strictly speaking the invention differs only in that these second indicators are displayed and that their vertical positions indicate the vertical locations of the text instead of using them to look up and display automatically the text.

[7] The Board considers that, in general, the idea of displaying and placing an indicator at a position to identify a location has no technical character. It is a presentation of information, namely the results of the summarising process, and has no interaction with the possibly technical function of producing it.

A similar conclusion was reached in decision T 603/89 [2.1(c)/(d), 2.6] in connection with a kind of template that displayed numbers on a card to represent notes on a keyboard instrument. Although the jurisprudence on A 52(2) was somewhat different at the time, the judgement of technical character was essentially the same. Thus, in the Board’s view the idea of this distinguishing feature cannot contribute to inventive step. As the ED stated, the skilled person would be able to implement some form of indicator based on the sentence number, and the claim gives no details of the implementation of these indicators that could contribute to inventive step either.

[8] Concerning the appellant’s absolute position argument, the Board considers that the claimed term “vertical locations” is not precise enough to define a position that is any more absolute than the sentence numbers in D1, in particular considering that the user must anyway make the connection between the indicator and the actual text. Since the claim does not define how the invention deals with non-text passages, this argument cannot be used to distinguish over D1.

[9] In the Board’s view the same conclusion can be reached starting from the general desire to refer to original sentences while reading the abstracts disclosed in the opening part of D1 at column 1, lines 23 to 26. The invention differs from this by identifying the extracted portions and providing the corresponding second indicators. Again these differences would be aspects of presentation of information having no technical character.

[10] Finally, even if the features were considered to have technical character, the Board cannot see how they could involve an inventive step. The claimed portions of extracted text and first indicators essentially cover the contents page of a document or book. The second indicators cover the use of sticky tabs that indicate the position in the book of relevant passages. In the Board’s view the skilled person would consider the idea of using such tabs on the contents page as an obvious possibility for keeping track of the original text using the contents page alone.

[11] Accordingly, the subject-matter of claim 1 does not involve an inventive step (A 56 EPC 1973), so that the appeal must be dismissed.

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