Friday, 30 May 2014

T 631/08 - (too?) many non-technical features (to be) ignored?


Photo by Xuan Che obtained via Flickr.

This is an appeal lodged by the applicant against the decision of the examining division late 2007. Oral proceedings were held on 7 March 2014. On 7 March 2014, the Board of Appeal dismissed the appeal, as the Board considered the claims to lack inventive step. 

The Board seems to consider a plurality of differences with the prior art to be non-technical, for different reasons, and did not acknowledge any contribution to inventive step from any of the distinguishing features. In my opinion, the decision shows in particular how difficult such analysis is - and in my opinion, the decision could easily have been different.

Before presenting the decision and the background of the case, let me cite some paragraphs of the Guidelines, as not all readers may be familiar with examination of claims comprising a mix of technical and non-technical features and/or computer-implemented inventions, and also because the Guidelines were considerably redrafted as to this topic in the 2013 edition.

GL G-II, 2: Examination practice
In considering whether the subject-matter of an application is an invention within the meaning ofArt. 52(1), there are two general points the examiner must bear in mind. Firstly, any exclusion from patentability under Art. 52(2) applies only to the extent to which the application relates to the excluded subject-matter as such (Art. 52(3)). Secondly, the subject-matter of the claim should be considered as a whole, in order to decide whether the claimed subject-matter has a technical character. If it does not, there is no invention within the meaning of Art. 52(1).
It must also be borne in mind that the basic test of whether there is an invention within the meaning ofArt. 52(1) is separate and distinct from the questions whether the subject-matter is susceptible of industrial application, is new and involves an inventive step. Technical character should be assessed without regard to the prior art (see T 1173/97, confirmed by G 3/08).

It should be noted that the assessment of technical character should not stop as soon as it has been established that the claim as a whole is not excluded from patentability under Art. 52(2) and (3)In claims comprising technical and non-technical aspects, each aspect has to be evaluated to see if it contributes to the technical character of the claimed subject-matter, since this is relevant for assessing inventive step (see G-VII, 5.4).

GL G-VII, 5.4: Claims comprising technical and non-technical aspects 
It is legitimate to have a mix of technical and "non-technical" features appearing in a claim, and the non-technical features may even form a major part of the claimed subject-matter.

Inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non
-technical features, to the extent that they do not interact with the technical subject-matter of the claim for so
lving a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing inventive step.
In applying the problem-solution approach to this type of claim, in particular for computer-implemented inventions, the steps below should be followed:
  1. The non-technical aspects of the claim(s) are identified; a requirements specification (see G-VII, 5.4.1) is derived from the non-technical aspect(s) set out in the claims and the description so that the person skilled in the art of a technical field (e.g. an expert in computer science) is informed of the non-technical concept.
  2. The closest technical prior art is selected on the basis of the technical aspects of the claimed subject-matter and the related description.
  3. The differences from the closest prior art are identified.
    1. If there are none (not even non-technical differences), an objection under Art. 54 is raised.
    2. If the differences are not technical, an objection under Art. 56 is raised. The reasoning for the objection should be that the subject-matter of a claim cannot be inventive if there is no technical contribution to the art, i.e. if there is no technical problem solved by the claimed subject-matter vis-vis the closest prior art.
    3. If the differences include technical aspects, the following applies: firstly, the objective technical problem is formulated, taking into account the requirements specification as under point (i) above; the solution of the objective technical problem must comprise the technical aspects of the identified differences; secondly, if the solution of the technical problem is obvious to the person skilled in the art, an objection under Art. 56 is raised.
GL G-II, 3.5: Schemes, rules and methods for performing mental acts, playing games or doing business
[...]
However, if the claimed subject-matter specifies an apparatus or a technical process for carrying out at least some part of the scheme, that scheme and the apparatus or process have to be examined as a whole. In particular, if the claim specifies computers, computer networks or other conventional programmable apparatus, a program therefor, or a storage medium carrying the program, for executing at least some steps of a scheme, it may comprise a mix of technical and non-technical features, with the technical features directed to a computer or a comparable programmed device. In these cases, the claim is to be examined as a "computer-implemented invention" (see below).

GL G-II, 3.4: Aesthetic creations
Subject-matter relating to aesthetic creations will usually have both technical aspects, e.g. a 'substrate' such as a canvas or a cloth, and aesthetic aspects, the appreciation of which is essentially subjective, e.g. the form of the image on the canvas or the pattern on the cloth. If technical aspects are present in such an aesthetic creation, it is not an aesthetic creation ‘as such’ and it is not excluded from patentability.
A feature which might not reveal a technical aspect when taken by itself could have a technical character if it brings about a technical effect. For example, the pattern of a tyre tread may actually be a further technical feature of the tyre if, for example, it provides improved channelling of water. On the contrary, this would not be the case when a particular colour of the sidewall of the tyre serves only an aesthetic purpose.
The aesthetic effect itself is not patentable, neither in a product nor in a process claim.
For example, features relating solely to the aesthetic or artistic effect of the information content of a bookor to its layout or letterfont, would not be considered as technical features. Neither would features such as the aesthetic effect of the subject of a painting or the arrangement of its colours or its artistic (e.g. Impressionist) style be technicalNevertheless, if an aesthetic effect is obtained by a technical structure or other technical means, although the aesthetic effect itself is not of a technical character, the means of obtaining it may be. For example, a fabric may be provided with an attractive appearance by means of a layered structure not previously used for this purpose, in which case a fabric incorporating such structure might be patentable.
GL G-II, 3.6: Programs for computers
[....]
A further technical effect which lends technical character to a computer program may be found e.g. in the control of an industrial process or in the internal functioning of the computer itself or its interfaces under the influence of the program and could, for example, affect the efficiency or security of a process, the management of computer resources required or the rate of data transfer in a communication link.The processing of data which represents physical entities (such as an image stored as an electric signal), resulting in a change in those entities (208/84), also denotes a further technical effect.
GL G-II, 3.7: Presentations of information
feature relating to a presentation of information defined solely by the content of the information does not have a technical character. This applies whether the feature is claimed as a presentation of the information per se (e.g. by acoustical signals, spoken words, visual displays, books defined by their subject, gramophone records defined by the musical piece recorded, traffic signs defined by the warning thereon) or as relating to processes and apparatus for presenting information (e.g. features of indicators or recorders defined solely by the information indicated or recorded would not be technical features).
A feature which relates to the manner in which cognitive content is conveyed to the user on a screen normally does not contribute to a technical solution to a technical problem. An exception would be if the arrangement or manner of presentation can be shown to have a credible technical effect (T 1741/08,1143/06).
With this background, the reader is invited to develop and share his thoughts to the decision below. Did the examining division and the Boards follow the principles set out in the Guidelines, (where) did they deviate from it, why did they not refer to "presentation of information", is the claim inventive or not, is a better inventive step argumentation possible in support of inventive step? Please feel invited to post your comments to this blog!

The background of the case

The examining division refused the application pursued by the applicant on the basis of a main set of claims and a further limited auxiliary set of claims. According to the reasons for the decision given in writing and posted on 24 July 2007, neither the main set nor the auxiliary set of claims included subject matter inventive over prior art document D1 (WO 00/02389 A1 published in January 2000). The claimed invention, as argued in the decision, was distinguished from the prior art by "analysis means (76) for analysing a preference of a target user on the basis of the input information of a similar user" (claim 1 of the main request) and "the added feature of 'value added content'" (claim 1 of the auxiliary request). The invention was to be considered as an obvious computer implementation of non-technical business rules. Profiling data of similar users for determining preferences and giving recommendations on the basis of such information did not solve any technical problem. Speeding up the process of sending data to users, an advantage promoted by the applicant, was at best a side-effect of the implementation of the business rules.


In the oral proceedings before the Board of Appeal, held on 7 March 2014, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of this new main request.
Claim 1 reads as follows:
"An information processing apparatus for providing content data to a terminal device, said information processing apparatus comprising:
content data storage means (71) for storing a plurality of pieces of content data;
communication means (73) for transmitting the content data stored in said content data storage means to a plurality of terminal devices (1) and for receiving input information of each user for the transmitted content data; and
input information storage means (75) for storing said input information received by said communication means for each user;
the apparatus being characterised by:
analysis means (76) for analysing a preference of a target user on the basis of the input information of a similar user, which resembles the input information of said target user stored in said input information storage means; and
processing means (72) for processing content data itself to be transmitted to said terminal device into value-added content for said target user according to the analysis results by said analysis means, wherein said content data storage means (101) stores a plurality of pieces of image data, and said communication means (103) receives positional information within said image data indicated by each of said users, said positional information indicating the centre of an area of said image data comprising features which are of interest to each of said users, and said analysis means (106) comprises extraction means for extracting said positional information of said similar user, which shows that an image area comprising features resembling the features comprised within an image area indicated by said positional information of the target user, stored in said input information storage means (105), is indicated, and said processing means (102) improves the image quality of a part of the image data specified on the basis of said positional information of said similar user, extracted by said extraction means (106), more than the image quality of the other parts of the image data."
According to the appellant, the subject matter of claim 1 involved an inventive step over the prior art. The claimed invention provided an innovative way of choosing the parts of an image which were likely to be of most interest to a (target) user and for which the quality should be improved. These parts of the image were specified on the basis of the positional information of a similar user. The positional information of the similar user showed an image area comprising features resembling the features comprised within an image area indicated by the positional information of the target user. The positional information and features of interest were determined by the analysis means that analysed the click data from the target user as well as the click data from a similar user, i.e. from a user having the same preferences. Improving only specific parts of the image had the technical effect and advantage of allowing the amount of image data to be transmitted to be reduced whilst, at the same time, ensuring that features of the image data which were likely to be of interest to the target user were maintained in high-quality. This went above and beyond the common general technical knowledge related to image quality and data reduction and the teachings provided by the cited prior art. Document D1, cited as the closest prior art, was merely related to the transmission of individually targeted advertisements; it did not provide any form of image processing affecting the image quality, let alone the specific image quality processing arrangement of the present invention.

Reasons for the Decision


1. The appeal, although admissible, is not allowable for lack of inventive step in the subject matter of claim 1, in particular, as already decided by the examining division in the first instance proceedings.
2. Claim 1 defines an information-processing apparatus for providing content data to a terminal device, i.e. essentially a content server. Its functions encompass, in a first stage, the storage of features of image data which are of interest to certain users connected via a terminal device to the content server, including an exemplary "target user" and a "similar user" as defined in the claim. Subsequently, this information is used to improve the image quality of a part of an image transmitted to the target user. The improved image part comprises features which resemble those that have been found to be of interest to the similar user, and which can thus be assumed to be of interest to the target user. The improvement is relative, namely "more than" the image quality of the other parts of the image data. Hence, according to the appellant, a reduction of the amount of the image data to be transmitted to the target user is achieved since only the areas of interest have to be transmitted in high-quality.
3. Document D1 is undisputedly an appropriate starting point for assessing inventive step. It discloses an information processing apparatus (e.g. D1, figure 5: master server 1 in a content and data processing centre and D1, claim 1) that comprises a content data storage means (e.g. D1, claim 1, feature (a)), an input information storage means (e.g. claim 23, feature (b)), and a communication means (D1, figure 5, communication lines 15, T1, DS3 etc). According to a variant disclosed in D1, the content data provided to the terminal devices (D1: receiver equipped with an interactive receptor) are image data like graphics or slow motion video (see D1, page 5, line 18). The prior art system allows to insert information (text, entertainment material, etc) that is of specific interest for a user into the content data transmitted to the user (see e.g. D1, page 2, lines 1 to 8 and 15 to 18, and page 8, line 17 f. "the content server ... process [sic] the insertion material, be it ... information content as requested by users").
4. Present claim 1 defines, as differences to the prior art, a specific profiling of user preferences and a processing step for improving image quality. The preferences of the target user for particular features of image data are determined by analysing the input information delivered from a similar user, i.e. by analysing and storing the input of another user who has similar interests as the target user regarding the features extracted from the image data.
5. Determining and storing user profiles is typically done for promotion and marketing purposes and does per se not involve the use of technical means or any other technical aspects. Compilation and analysis of data concerning human behaviour and interests are activities closely related to business methods which are excluded from patentability. The Board considers that such activities as profiling of human behaviour for promotion or other business purposes lack technical character and are as such not able to contribute to inventive step even if carried out as a computer implemented process. The appellant has argued that the invention provides an innovative way of choosing the parts of an image that are likely to be of interest to a user. The Board cannot accept this argument since the claimed process performs the same steps a human being might choose [note from Roel: thus, the Board seems to consider it -in part- a mental act] to take in the same circumstances, viz. collect information about users' interests (non-technical), group the users accordingly (non-technical), and present information to a target user on the assumption of similarities of personal interests (non-technical). Merely automating this process involved no inventive step.
6. There remains in claim 1 the step of improving the image quality. Unlike profiling, the improvement of image quality (resolution etc) is possibly, but not necessarily, a technical process. An improvement of image quality for aesthetic purposes, for example, would normally not contribute to the technical solution of a technical problem and thus not qualify as technical in terms of a patentable invention. Present claim 1 defines that the image quality of the image parts likely to be of interest according to the target user's preferences is improved "more than the image quality of the other parts of the image data" (see the claim wording). Hence, the improvement is only a relative improvement between parts of the image, and can in fact be achieved by decreasing the quality of other parts of the image without any improvement of image quality at all (see eg dependent claim 8). Hence, the claimed processing means does not necessarily improve the technical image transmission and rendering process but is simply employed to attract the user's attention to certain information contents, i.e. a kind of "value-added content" as referred to in claim 1. The image improvement as defined in claim 1 is thus not a technical function or feature of the invention and does consequently not contribute to inventive step.
7. For these reasons, the technical contribution provided by the claimed invention to the prior art system of document D1 does not go beyond the normal computer implementation of a non-technical concept of user profiling and content presentation. The requirement of inventive step is thus not fulfilled.
Order
For these reasons it is decided that:
The appeal is dismissed.
Please share your thoughts about the decision by posting your comments.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T063108.20140307. The whole decision can be found here. The file wrapper can be found here.

Tuesday, 27 May 2014

J 1/13 - Re-establishment of right



Appelant: " In view of such a huge company, a letter which is sent only to the address of the headquarters with no further indication (no service, no recipient's name) would certainly never reach the concerned person and would be lost",
"It did not amount to a lack of due care if letters not arriving from the representative were not forwarded to the competent person or were disregarded. This could be regarded as a way of sorting out potential junk mail that arrived in the Appellant's mail room."

EPO Board of Appeal: "'Quite why an official-appearing letter, even in the English language, should be regarded as junk mail was not explained".

For a Euro-PCT application, the European representative Cab did not pay the renewal for the 3rd year. The EPO sends a notice drawing attention to Rule 51(2) EPC, Article 2, No. 5 of the Rules relating to fees (EPO Form 2522)  to Appellant's representative. No renewal fee and additional fee (50% of the renewal fee) was paid. The EPO send  a notice of loss of rights pursuant to Rule 112(1) EPC (EPO Form 2524) informing that the application was deemed to be withdrawn under Article 86(1) EPC due to non-payment of the 3rd year renewal fee and the additional fee within the time limit.
Cab files a request for re-establishment in respect of the period for payment of the renewal fee pursuant to Article 122 EPC. A statement setting out the grounds on which the request was based and the facts on which the request relied was included. The fee for re-establishment was paid and the omitted act (payment of the third renewal fee plus additional fee) was completed on the same day. As a precautionary measure, oral proceedings were requested in the event that the EPO rejected the request for re-establishment.
As regards all due care and the cause of non-compliance, the following facts were submitted: had received a letter from Han (a foreign agent) requesting that a European patent application be filed for applicant Chem. The responsible person, despite a double-check, erroneously indicated in the database that the instructions for paying renewal fees had to be obtained from Chem and not from Han, who had sent the filing instruction.
A first and a second reminder of the time-limit for paying the third renewal fee was automatically generated by the database system and sent - due to the wrongful entry in the database - not to the professional client, Han, but to Chem. Two further reminders were sent always to the same address. Finally, Cab dismissed the file and closed it
The loss of rights communication was sent to the address of Chem too. When at a later moment, the EPO reimbursed the search and examination fees, Cab realized the error and requested re-establishment.
The Receiving Section decided to reject the request, since the 2 month period from the removal of the cause of non-compliance had expired; the removal being triggered by the loss of rights communication and not by the reimbursement.
In appeal, the Board went into the role of the applicant and ruled that the applicant, who had not reacted to any of the letters forwarded to it, had not taken due care.

Summary of Facts and Submissions
(...)
VIII. As regards the request for re-establishment of rights, on 30 August 2012 the Receiving Section, having sent two communications on 17 August 2011 and 25 April 2012, respectively, decided to reject this request as inadmissible, holding that with the receipt of the loss of rights notice by the docket service and the renewal department within the Appellant's representative's office the error ought to have been discovered, thus removing the cause of non-compliance. The request for oral proceedings was also rejected, with reference to the Board of Appeal decision J 17/03 in which the Board had noted that the Receiving Section had given the appellant - as in the present case - ample opportunity to present its case, during which several letters and communications had been exchanged.
IX. On 26 October 2012 the Appellant filed a notice of appeal. In the statement of the grounds of appeal of 21 December 2012 it claimed that the appealed decision lacked adequate reasoning and the Receiving Section had not respected the Appellant's right to be heard. The Appellant claimed that the decision gave no explanation why the Applicant's submissions were not considered as convincing by the Receiving Section.
X. The Board summoned the Appellant to oral proceedings to take place on 27 November 2013. On 1 October 2013 the Board sent a communication (transmitted via fax on the same day) pointing out, inter alia, that the cause of non-compliance was removed either when the representative or when the Appellant itself should have noticed the non-observance of the time limit. This might have been the case when the loss of rights notice was received but not submitted to the responsible patent attorney. As to the question whether the Appellant itself ought to have discovered the error the Board indicated that the questions to be considered in this context included:
- Whether an organisational fault did not exist if four reminders and - probably - a notice according to Rule 51 EPC regarding a specific patent application had not been forwarded by the receiving department of the Appellant to the competent unit within the Appellant's organization;
- Whether the Appellant's internal organization should at least have ensured that a letter stating the loss of rights in respect of a specific patent application was forwarded to a competent person;
- Whether letters should at least have been sent back to the EPO if a competent person within the organisation
XIII. During oral proceedings that took place on 27 November 2013 the Appellant's representatives explained that ….
XIV. As to the Appellant itself, it was to be noted that it never dealt directly with the EPO but always employed local firms who worked together with foreign firms to handle their patent applications. Thus, it was fair to expect mail regarding patents to arrive only through those channels which, in the case at hand, was the appointed representative Han. It was not known to the Appellant's representatives what exactly had happened to the letters sent to the Appellant. But it did not amount to a lack of due care if letters not arriving via the correct channel (i.e., via Han) were disregarded. This could be seen as a way of dealing with junk mail that arrived in the Appellant's mail room. In the decision J 22/92 the Board had decided "in dubio pro reo" that incoming letters had been taken for copies of letters already received by the appointed representative. Therefore, with regard to the Appellant itself, the cause of non-compliance had never been removed at any relevant time.
Reasons for the Decision
4. The cause of non-compliance with this time limit was twofold. The first cause was the fact that the Appellant's representatives in Europe, Cab, were of the opinion, when not paying the renewal fee and the additional fee, that they were executing their client's wish to let the patent application lapse. The second cause was the fact that the Appellant thought its wish to pursue the patent application was being carried out by its Korean and European authorised representatives, Han and Cab, respectively.
5. These errors were caused by the mistake which had happened at the beginning of the procedure, when the relevant data were entered into Cab's data base: at that time Mrs S erroneously entered the information that instructions for payment of the renewal fees had to be obtained from the Appellant (Chem) instead of the professional client (Han). This resulted in sending the renewal fee reminders to the Appellant, which reminders remained unanswered and thus lead to the erroneous assumption by Cab that the fee was intended not to have been paid.
6. The cause of non-compliance with a time limit is not just removed when the underlying error is actually discovered by the person concerned but when he or she ought to have noticed the error, taking all due care (J 27/88, point 2.7 of the Reasons). This line of argument has been followed in many cases, e.g. J 5/94, J 27/01 and T 1486/11.
7. So far as concerns Cab's knowledge, is it well recognised that within a law or patent attorney's firm the relevant person to discover the error is the representative and not his or her employee:
"It must be his responsibility to decide whether an application for re-establishment of rights should be made and, if it is to be made, to determine the grounds and supporting facts to be presented to the European Patent Office"
See T 191/82 of 16 April 1985 (OJ EPO 1985, 189), point 1 of the Reasons. See also J 7/82 (OJ EPO 1982, 391), J 9/86 and T 381/93. On the other hand it is not up to the representative to extend the time period of Rule 136(1) EPC at will by keeping him- or herself intentionally uninformed, as set out in T 1985/11, point 6 of the Reasons, where the board found it irrelevant that the representative had not read the letter when acknowledging its receipt.
8. It needs to be considered, therefore, whether all due care required that Mrs S, the representative in charge of the application, should have taken steps such that she was informed of an incoming loss of rights notice, especially in cases where her firm's employees had inferred the client's wish to let the application lapse only from the fact that all reminders concerning the due time of the fee had remained unanswered. As to this, the Appellant argued that even if Cab's systems had been set up in this way it is not the case that Mrs S would have discovered the error. ….
9. The fact that the decision whether or not to pursue a patent application is up to the applicant and not to the representative - who is dependent on instructions received from the client - has to be taken into account. Assuming that even professional clients such as Han not infrequently choose the way of not giving any express instructions when they intend to let an application lapse, the Board can accept that the - here foreseeable - receipt of a loss of rights notice only gave reason to check the database system for inconsistencies (such as forgotten reminders or returned mail) but was not to be seen as the same red alert as the - non expected - receipt of such a notice under other circumstances.
10. It cannot therefore be assumed that the error would have been discovered if the notice of loss of rights had been forwarded to Mrs S.
11. The loss of rights notice received by the representative's office is therefore considered by the Board not to have constituted the removal of the cause of non-compliance so far as concerns the representative.
12. Although most cases regarding the removal of the cause of non-compliance deal with the point in time when a representative discovered (or ought to have discovered) the error, it is recognised that the person whose knowledge is relevant may also be the applicant itself (see e.g. J 27/88, point 2.3 of the Reasons, J 27/90 (OJ EPO, 1993, 422), point 2.4 of the Reasons; T 840/94, OJ EPO 1996, 680, point 2 of the Reasons; and T 32/04, point 2 of the Reasons).
13. Therefore, it has to be decided whether, and if so when, the cause of non-compliance was removed as regards the Appellant itself, taking all due care. On the one hand, an applicant employing a professional representative to pursue a patent application may rely upon his agent to act diligently and according to its will (J 22/92, T 381/93). On the other hand, even if a representative has acted correctly this does not exempt his client from suffering the consequences of his own mistakes. See J 3/93, point 2.1 of the Reasons, where the board noted that accepting the opposite would mean conceding more rights to a represented applicant than to an applicant acting on its own.
15. The Board accepts that an applicant may quite properly rely primarily on an outside patent firm to see that its interests are being looked after. Circumstances may also show that an applicant who receives a notice from the EPO may bona fide and reasonably believe that it has also been sent to its representative, who is dealing with it. The Board also does not doubt that the Appellant had carefully selected and appointed Han and Cab as its representatives.
16. However these considerations do not address the critical points so far as concerns the Appellant in the present case, namely what happened to the loss of rights notice dated 7 October 2009 which was forwarded to the Appellant by Cab, and/or why the Appellant did not react to it. No doubt there could be many plausible accounts for the Appellant's apparent inaction but if a party wishes to establish that it did not notice, or for some reason did not react to an omission notified to it by a loss of rights notice despite taking all due care it must produce some evidence dealing with the issue and not merely rely on assertions.
17. The Board notes that it was originally said on behalf of the Appellant (see request for re-establishment dated 2 April 2010, pages 4 and 5):
" In view of such a huge company, a letter which is sent only to the address of the headquarters with no further indication (no service, no recipient's name) would certainly never reach the concerned person and would be lost",
This argument was not pursued in such bald terms by the Appellant before the Board (the representative said that she did not know what exactly had happened to the letters forwarded by Cab). The reality is that the Appellant is a large organisation with worldwide activities. Presumably it has some system whereby incoming post at its head office is sorted and directed to the relevant departments, even when such mail is in the English language. No evidence was provided as to what this system was and therefore what might have happened to the loss of rights notice (and indeed the previous renewal-fee reminders which Cab had forwarded). This was despite the fact that the Board in its communication had raised very specific questions about the Appellant's systems. Rather, the answer of the Appellant to this communication was not to provide evidence of what did or might have happened to the loss of rights notice or what was decided to be done about it but largely to rely on general observations and assertions (see Point 14, above).
18. Reliance was also placed on the decision in J 22/92. There, however, the Board appears to have accepted as a fact that the applicant had assumed that documents it received were copies of those already sent to its attorneys and that the applicant was entitled to think in all good faith that the attorneys had already dealt with the problem (see point 3.3.2 of the Reasons). If there had been evidence in the present case that someone within the Appellant's organisation, having considered the loss of rights notice, had for good reason made a similar assumption, then the Board might well have been prepared to accept this. In the absence of such evidence, however, what the consequences of such an assumption might have been do not need to be considered.

20. In the submissions at the oral proceedings before the Board it was asserted in effect that the Appellant had perfectly reasonably chosen to receive mail only via specific channels, i.e. in patent cases via the appointed main representative in Korea (Han). While it was not known to the Appellant's representatives what exactly had happened to the letters forwarded by Cab, it did not amount to a lack of due care if letters not arriving from Han were not forwarded to the competent person or were disregarded. This could be regarded as a way of sorting out potential junk mail that arrived in the Appellant's mail room. Quite why an official-appearing letter, even in the English language, should be regarded as junk mail was not explained. In any event, however, before a decision to disregard a formal letter of this kind can be taken, it has to land on the desk of a relevant and responsible person who can then take such a decision. It cannot amount to the taking of due care if someone in the post room takes it upon themselves to do so. Again, however, no evidence was provided about how the loss of rights notice was or might plausibly have been disregarded in this way.
21. In the absence of any such evidence the Board concludes that the loss of rights notice should have landed on the desk of someone within the Appellant's organisation (presumably someone within the Patent Management Team) and alerted them to the omission to pay the renewal fee, which in turn should have caused that person at least to contact Han and thus Cab. In this way the omission to pay the renewal fee should have come to light. Therefore the Board can only conclude that the cause of non-compliance in the person of the Appellant was removed in the days or weeks after its European representative, Cab, had forwarded the loss of rights notice to the Appellant on 12 October 2009. It does not have to be decided on what precise day the error ought to have been noticed, since the request for re-establishment was not filed until 2 April 2010. There is no evidence suggesting that in a properly run organisation such as the Appellant it would have taken at least until after 2 February 2010 (ie two months before the request was filed) for the error to have been revealed.
22. Thus, the cause of non-compliance was removed more than two months before the request of 2 April 2010 was filed. In consequence, not having met the time period of Rule 136(1) EPC, the request is inadmissible and the Receiving Section's decision to reject it was correct.

This decision has European Case Law Identifier: ECLI:EP:BA:2013:J000113.20131127.
The whole decision can be found here. The file wrapper can be found here

Friday, 23 May 2014

T 1147/11 - Added subject matter after grant

Closing the hole
Photo by Asparukh Akanayev obtained via Flickr.


This is an Opposition appeal. The proprietor tried to overcome added subject matter objections by amending the description and figures. 


Claim 1 as granted, which is in the main request, concerned a multistage gas generator. The relevant parts are:  

A multistage gas generator (101) for an airbag (103),  (...)
g) wherein the inner shell (4) is of cylindrical shape and is provided with an opening portion (5) which is to be opened by combustion of the gas generating means (52,62) in one of the combustion chambers  (...)
i) said opening portion (5) is closed with a shielding plate (7) before actuation, wherein
j) the opening portion (5) can be opened by detaching the shielding plate (7) only by actuation of the combustion chamber (60) defined inside the inner shell (4) so that gas flows out from the combustion chamber (60) defined inside the inner shell (4), and
(...)

Feature g) comes from the claims a filed, but features i and j do not.

The opposition division found that the shielding plate caused the granted patent to extended beyond the content of the application as file. An inescapable trap looms...


The applicant found an original way to deal with this added subject matter objection: the Main Request comprises amended description and amended drawings. The amendments include, inter alia, deletion of all passages relating to the term "shielding plate" in the description and deletion of Figure 31, the only figure showing a "shielding plate" covering a through-hole which is already closed by a separate member.

The idea is that this would force the skilled person to conclude that the shielding plate corresponded to the stainless plate or breaking plate of the description, as these plates already provided a "shielding function". And thus, claim 1 of the Main Request would not contain subject-matter extending beyond the content of the application as filed.

We'll only discuss the main request.

Reasons for the Decision
(...)
3. Main Request - added subject-matter in the granted claims (Article 100(c) EPC 1973)

3.1 Claim 1 as granted is a combination of claims 1, 5 and 54 as originally filed (features a) to h)) and comprises the additional features i) to k), allegedly stemming from the description. Moreover, the description and drawings of the granted patent have been modified by deleting any reference to the term "shielding plate".

3.2 According to the jurisprudence of the Enlarged Board of Appeal (see G 2/10, OJ EPO 2012, 376, point 4.3 of the Reasons, referring to the standards already set in decisions G 3/89 and G 11/91 (OJ EPO 1993, 117 and 125)), it is required that "any amendment to the parts of a European patent application or a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed" (emphasis added by the board). This means that the test for an amendment must be "that after the amendment the skilled person may not be presented with new technical information" (see G 2/10, point 4.5.1 of the Reasons, emphasis added by the board). With regard to a positive feature introduced into a claim (see G 2/10, point 4.5.2 of the Reasons), "it can be examined whether the subject-matter of that feature was disclosed in the application as filed. With respect to the new combination of features which is claimed after the introduction of that feature, it can be examined whether that combination was disclosed in the application as filed" (emphasis added by the board). The standard of comparison when judging any amendment therefore has to be the application - i.e. claims, description and drawings - as originally filed.

Moreover, according to the established case law of the boards of appeal, a claim should be read giving the words the meaning and scope which they normally have in the relevant art. Nevertheless, a patent, being a legal document, may be its own dictionary and may define technical terms and determine how a skilled person has to interpret a specific term when used in the description or the claims. If it is intended to use a word which is known in the art to define specific subject-matter to define a different matter, the description may give this word a special, overriding meaning by explicit definition (see e.g. T 500/01, point 6 of the Reasons, and T 61/03, point 4.2 of the Reasons).

3.3 The mere deletion of passages in the description or deletion of Figure 31 in the documents according to the present Main Request has not been objected to by the respondent. Claim 1 according to the Main Request, which is identical to claim 1 as granted, was amended before the grant of the present patent. In this respect, the board notes that, for examining the ground for opposition under Article 100(c) EPC 1973, it has to be assessed whether claim 1 contains subject-matter which extends beyond the content of the divisional application as filed, in particular (see above) in comparison with the whole of the documents (i.e. claims, description, drawings) as filed. In this regard, the meaning of the term "shielding plate" incorporated in features i) and j) plays a crucial role.

3.4 The term "shielding plate" defines as structural feature a "plate" which is further characterised by its function of "shielding". Moreover, in the context of features i) and j), the term "shielding plate" is associated with further functions, i.e. the "opening portion is closed with a shielding plate" and "can be opened by detaching the shielding plate" when the combustion chamber is actuated. The fact that an opening portion which is closed and opened by detaching a closing element is originally disclosed has not been put into question by the parties. However, it has to be assessed whether it is originally disclosed that said closing element might provide a shielding function as well and might be realised as a plate.

3.5 A plate as such closing a through-hole is disclosed in paragraph [0099] of the A-publication ("the through-hole 1110 is closed by the stainless plate 1111"; "instead of closing the through-hole 1110 by the stainless plate 1111, a breaking plate which is broken, peeled, burnt or detached by pressure or the like due to the combustion of the second gas generating agent may be welded, adhered or heat-sealed to close the through-hole 1110"). As regards the claimed shielding function, when reading claim 1 on its own, the skilled person would understand that a shielding function normally describes a protective function with respect to a further part which has to be protected or shielded from external influences.
If the skilled person were in doubt as to whether - in addition to the closing/opening function as described in features i) and j) - the term "shielding" has any further meaning or limiting effect at all, he would consult the description to interpret the specific term "shielding" used in claim 1 because the patent may be its own dictionary as mentioned above. In different passages of the application as filed, the "shielding plate" is consistently described as an additional part providing the function of shielding, i.e. protecting a member which closes the opening portion, whereby said closing member already forms part of the opening portion. In particular:

- Claim 8 as filed specifies that "a shielding plate is disposed outside of the opening portion", i.e. the plate providing the shielding function is clearly situated "outside" and therefore separated from the part or portion providing the opening function.

- According to pages 7 and 8 as originally filed (corresponding to paragraph [0017] of the A-publication), the "opening portion may be formed by forming a plurality of holes in the peripheral wall of the inner shell, and by closing the holes using breaking members. ... A shielding plate can be disposed outside of the opening portion". The opening portion as defined in this passage comprises holes closed by a breaking member (note: the term "opening portion" would not make sense when describing a part which is always open). The shielding function is further described as to "prevent flame generated in the combustion chamber provided outside the inner shell from coming into direct contact with the opening portion". In the board's view, the skilled person, when reading this passage, would derive only that the shielding plate is an additional part "outside of the opening portion" which protects the breaking member which closes the holes of the opening portion and which is opened (see paragraph [0017]) e.g. by "detaching the breaking member".

- Page 34 of the application as originally filed (paragraph [0053] of the A-publication) describes that "the opening portions 5 comprise a plurality of holes 6 formed in the peripheral wall of the inner shell 4 and a breaking member 7 for closing these holes. As for the breaking member 7, a stainless seal tape is used." The breaking member is formed such that it is not broken by combustion of the first gas generating agent. As a further alternative, it is mentioned that "alternatively, as another way to prevent the opening portions ... it is also possible to cover the opening portions 5 of the inner shell 4 with a shielding plate". Again, the skilled person, reading this passage, will recognise that the opening portion comprises holes and a breaking member, and the shielding plate is an additional part ("to cover the opening portions") which might be provided in addition if the breaking member cannot resist the combustion of the first gas generating agent.

- The embodiment described on page 60 as originally filed (corresponding to paragraph [0099] of the A-publication) shows "a substantially ring-like shielding plate 1186" as shown in Figure 31 and "disposed such as to cover the through-hole 1110 formed in the inner cylindrical member 1104". As depicted in Figure 31 and explicitly mentioned, a "seal tape which closes the through-hole 1110 is protected by the shielding plate 1186". Again, the shielding plate represents an additional part for protecting another part (a "seal tape") which closes the through-hole.

- Page 104 as originally filed (corresponding to paragraph [187] of the A-publication) mentions "a peripheral wall thereof provided with an opening portion 660", and the "opening portion is closed by a seal tape 622", which according to the appellant should suggest that the opening portion is represented only by a communication hole. However, elsewhere in the said passage, it is said that the "opening portion 660 is formed so that it does not open by combustion of the gas generating agent 609a in the first combustion chamber 605a". Since the function of "opening" is again attributed to the opening portion in this embodiment, the opening portion cannot be represented by a hole alone but must include a closing member, i.e. the seal tape 622 forms part of the opening portion.

3.6 The board therefore concludes that the "shielding" function, according to the application as originally filed, designates a specific function in addition to the closing function that is realised by a closing member (e.g. breaking member or seal tape), i.e. always relating to a separate part (i.e. the "shielding plate") which does not close the holes provided in the inner shell but which is provided "outside of the opening portion" or which "covers the opening portion" in order to protect the opening portion. In particular, there is no disclosure in the application as filed which would suggest that the shielding plate covers the opening portion entirely in a sense that the opening portion would be "closed" by the shielding plate. Therefore, the "shielding plate" feature as claimed is to be construed as meaning a part which is provided in addition to another part which closes the holes.

3.7 To summarise, the application as filed discloses an inner shell of the multistage gas generator that comprises - as part of the opening portion - a breaking member (e.g. a stainless plate, breaking plate or seal tape) which closes the holes of the inner shell. The breaking member is either, due to its design or characteristics, resistant to the flames of the combustion of the first gas generating agent (without the need to provide a further protective part), or is protected by an additional shielding plate outside to cover the opening portion, corresponding to alternatives a and b as identified by the appellant.

As basically admitted by the appellant with regard to the description of the granted patent, it is not originally disclosed that the shielding plate, optionally used as an additional protective part, might be used to close the holes. Such shielding plate, as now claimed by the combination of features i) and j) in claim 1 according to the Main Request, would contain the new technical information that, in addition to the seal tape or breaking member or breaking plate or stainless plate closing the holes in the inner shell originally described as closing members, the shielding member would be a further closing member, i.e. the holes would be closed by two parts. However, the term "shielding plate" already - due to the functional feature "shielding" - has a specific meaning in the context of the application as originally filed and cannot be used for defining a part which closes an opening portion and detaches as specified in features i) and j).

Therefore, the board judges that the amended subject-matter according to claim 1 of the Main Request is not directly and unambiguously derivable by the skilled person from the application as filed.

3.8 The appellant cited paragraphs [0076] and [0077] of the A-publication to show that parts were interchangeable and different parts could be used in combination. However, said passages explicitly relate to "the AIM, the communication hole, the connector, the self-contracting type filter or a combination thereof", not addressing modifications with regard to the member closing the hole. The general remark in paragraph [0076] that "the gas generator can also be realized by combining other parts described in the present specification" is not suitable for deriving directly and unambiguously that a breaking member or plate, which closes the holes of the inner shell, might be replaced by a shielding plate as described in the application as filed, in particular because the shielding plate is originally described only to be an additional protective part protecting the member which closes the hole and not described to be a part which is designed to close the holes.

3.9 The appellant also argued, referring to the deletion of the term "shielding plate" from the description and the deletion of Figure 31 in the documents forming the basis for its Main Request, that the description of the Main Request was clarified so that it no longer referred to any feature in addition to the feature for closing the opening portion. The skilled person was therefore forced to interpret the term "shielding plate" in the light of the remainder of the description, concluding that the shielding plate as claimed corresponded to the breaking plate and the stainless plate listed as members for closing the through-hole.

Without further reference to an additional or optional shielding plate in the description or figures, it has to be assessed whether the term "shielding plate" according to claim 1 describes nothing more than a plate preventing "a flame caused by combustion of the first gas generating agent 1109a from flowing into the second combustion chamber 1105b through the through-hole 1110 to burn the second gas generating agent 1109b", as described on page 60 of the description according to the Main Request for the "stainless plate" or the "breaking plate". However, as regards the requirements of Article 100(c) EPC 1973, it has to be examined whether the claimed subject-matter of the European patent in the light of the amended description was disclosed in the application as filed, i.e. by taking into account the disclosure of the claims, description and drawings of the divisional application as filed.

Page 50 of the amended description, starting with the description of the corresponding example ("Example of AIM 1") of page 60 of the amended description, explicitly refers to "another example of the gas generator for an air bag, which does not form part of the invention but which is useful for a better comprehension thereof". This suggests to the reader of the amended description that the "stainless plate" or "breaking plate" as mentioned on page 60, referring to this example, also does not form part of the claimed invention. Therefore, the board is not convinced by the appellant's argument that the "shielding plate" of claim 1 means nothing more than one of the two plates mentioned on page 60 of the amended description. On the contrary, since the breaking plate is also described on page 60 to be "broken, peeled, burnt or detached ...", or "the inner cylindrical member 1104 may be provided with a notch", the shielding plate as defined in claim 1 according to the Main Request - in the context of the amended specification - cannot be unambiguously equated to a plate described with respect to an example not forming part of the invention. In the board's view, even in the light of the amended description, the feature "shielding plate" as claimed does still relate to an additional part (in addition to the stainless plate or breaking plate, or even the notch provided in the inner cylindrical member) for closing the through-hole. 

In particular, the functional feature "shielding" attributed to the "shielding plate" is considered to have a technical meaning within the meaning of a protective part, e.g. preventing the breaking plate which might be burnt from coming into contact with a flame caused by combustion of the first gas generating agent.
Moreover, the example described with reference to Figure 1 (see page 26 ff. of the amended description), under the headline "Mode for Carrying Out the Invention", in which the opening portions comprise a plurality of holes and a breaking member which is specified to be a "stainless seal tape" (see page 34 of the amended description), is also defined as not forming part of the invention, i.e. again a shielding plate as claimed relates to a part which is provided in addition. As to the amended "Brief Description of the Drawings" (see pages 22 to 24 of the amended description), it is explicitly stated (in particular with reference to Figs. 1, 8, 18, 19, 22 to 25, 28 and 32 where a single closing member is shown) that the example shown does not form part of the invention.

Therefore, also in view of the amended description, it must be assumed that a shielding plate as defined in claim 1 according to the Main Request is provided in addition to the breaking members described with regard to the examples not forming part of the invention. However, as already stated above (see point 3.7), it is not directly and unambiguously derivable from the application as filed that a shielding plate is provided as further closing and detaching member in addition to one of the breaking members according to the examples described in the amended description.

3.10 In view of the above, claim 1 of the Main Request contains subject-matter which extends beyond the content of the divisional application as filed. Therefore the ground for opposition under Article 100(c) EPC 1973 prejudices the maintenance of the present patent according to the Main Request. Consequently, the Main Request is not allowable.





This decision has European Case Law Identifier:  ECLI:EP:BA:2013:T114711.20131129. The whole decision can be found here. The file wrapper can be found here.


Tuesday, 20 May 2014

T 2026/10 - What discloses the prior art?




Photo obtained from FreeDigitalPhotos.net

This is an appeal against a decision of the Examining Division to refuse the patent because lack of novelty over document D1 (US4235716A).

D1 discloses an example that seems to fall within the scope of protection of filed claim 1. Consequenlty, Examining Division considered the filed claim not novel. It is undisputed that D1 discloses the example. However, according to the applicant, the material discussed in D1 is not enabled, and, thus, D1 does not belong to the prior art.

The Boards of Appeal decided to teach the parties to the Appeal and us (the reader) how the principle of “enablement of the prior art” works.

Citations from the decision:


Summary of Facts and Submissions

(…)

II. The European patent application was refused by a decision of the examining division, posted with letter dated 4 May 2010, on the ground of lack of novelty having regard to document 
D1: US-A-4 235 716.
Said document disclosed in example 2 a porous silica gel having an average particle size (d50) of 0.5 µm, a pore volume of 1.0 ml/g, a pore width of 10 nm, and a specific surface of 400 m2/g (see column 5, lines 1 to 10). Although D1 discloses neither a method of manufacturing nor a supplier for said porous silica gel, the examining division argued that the inventors of D1 had either bought the product or produced it themselves. It was therefore considered as comprised in the state of the art and anticipated the subject-matter of claim 1.

(…)

IV. Claim 1 of the main request reads as follows:

"1. A dispersion comprising porous inorganic oxide particles, wherein the particles have

a) a median particle size in the range of 0.05 to 3 mym; and

b) porosity such that when an aqueous dispersion of the particles is dried at least 0.5 ml/g of pore volume as measured by BJH nitrogen porosimetry is from pores having a pore size of 50 nm (600 Å) or smaller."

(…)

Reasons for the Decision

(...)

2. Novelty

2.1 Relevant content of D1

2.1.1 It is undisputed that D1 discloses in column 5, lines 1 to 19 (example 2), a porous silica gel having an average particle size (d50) of 0.5 µm, a pore volume of 1.0 ml/g a pore width of 10 nm and a specific surface of 400 m2/g.
It is also an undisputed fact that D1 neither explicitly nor implicitly teaches how to manufacture said porous silica gel and that D1 does not mention an origin of or a supplier for said porous material.

2.1.2 In the contested decision the examining division decided that the product in question, namely the porous silica gel, belonged to the state of the art. The porous silica gel had possibly been bought or produced by the authors of D1. Since they used it only as a reagent in their process, they had no reason to disclose how to manufacture it.

2.1.3 This reasoning is partly based on the assumption that the mention of a particular product having specific physical and chemical properties was sufficient to make it available to the public.

2.1.4 However according to the appellant the availability of the porous silica product was not self-evident.
The appellant pointed to the publication date of D1 and argued that in 1978 no method was known which could have resulted in such a material. Preparing the claimed product was a non-trivial task. It had taken the appellant's experts numerous years of research to develop a process for manufacturing it.
According to the appellant, claim 19 of the present application described for the first time a process for the preparation of the claimed dispersions of porous inorganic particles, which process includes the steps of forming a slurry, milling of said slurry, creating a supernatant phase and a settled phase and removing the supernatant phase to separate the two phases and to obtain the settled phase as a final product having the specified parameter values. The appellant stressed that in 1978 (date of filing of D1) no method was known which could have resulted in such a material. The appellant was also not aware of a product such as the silica gel of example 2 of D1 being offered or sold on the market. Consequently, the silica gel of D1 could not have been purchased.
As a consequence, D1 did not make available to the public a teaching helping the skilled person to manufacture said porous silica material.

2.2 Information gap in D1

2.2.1 Article 83 EPC states that a European patent application must disclose the invention in a manner sufficiently clear and complete to be carried out by a person skilled in the art. In accordance with the case law, for the requirement of Article 83 EPC to be met, the skilled person must be able to carry out the invention without undue burden and without the exercise of inventive skill, on the basis of what is disclosed in the application and by using the general knowledge, (see T 694/92, OJ EPO 1997, 408; and T 612/92 of 28 February 1996, Reasons points 11 to 13).

2.2.2 According to the jurisprudence (see for instance T 1026/02, of 5 March 2004, Reasons point 3; T 206/83, OJ EPO 1987, 5; and T 158/91 of 30 July 1991, Reasons point 2.2), the same criteria are to be applied for judging sufficiency of disclosure of a patent application or of a piece of prior art. A prior art document whose teaching does not meet the sufficiency criteria is not enabling and must be disregarded as a prior art (see T 1026/02 of 5 March 2004, Reasons point 10).

(...)

2.3 Objections against the interpretation of D1 by the examining division

2.3.1 Firstly, in the board's judgement, it is improper to brush aside the appellant's detailed arguments by saying that it was "most plausible" that the product in question was "simply purchased" (see the contested decision, page 4, lines 1 to 4). In the board's view, these statements are mere speculative assertions which are unsuited for refuting the appellant's arguments, which had been presented at the oral proceedings before the examining division and in earlier written submissions.
It would have been incumbent on the examining division to produce evidence for their assertions, for instance by showing that the product in question was indeed commonly available, or that its manufacture (or at least the manufacture of porous inorganic particles having very similar characteristics) belonged to the general knowledge. A decision on novelty should not be taken on the basis of plausibility considerations and assumptions which are not supported by evidence or arguments.

2.3.2 Secondly, even assuming the product was bought - for which there is no evidence -, it is clear that in the absence of information about the source, the document would still not be enabling.

2.4 Consequences
In view of the above, and on the basis of the information available to the board and judging from its face value, document D1 only mentions the particular porous silica gel, but neither allows to conclude that the particular porous silica gel was available on the market nor is the skilled person taught its manufacture. Therefore, in this case, D1 is not enabling and said particular porous silica gel does not belong to the prior art.
As a consequence, the subject-matter of claim 1 in accordance with the main request must be considered to be novel having regard to D1 (Article 54 EPC). The contested decision must therefore be set aside.

(...)

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.


This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T202610.20140502. The whole decision can be found here. The file wrapper can be found here.

 

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