Thursday, 29 January 2015

T 1480/12 - A lesson for a lazy representative


The Examining Division refused the application (main request, first and second auxiliary requests) for lack of an inventive step. A third auxiliary request of the appellant for the grant of a patent on the basis of a new claim 1 consisting of a merge of claims 1 and 19 according to the second auxiliary request was not admitted into the procedure under Rule 137(3) EPC, as such a claim was not considered to overcome the Article 56 EPC objection. The examining division held that the request, though not presented in writing, was sufficiently clear for the division to decide on admissibility. The applicant appealed the decision - with the statement setting out the grounds of appeal the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of (substantially) the same main, first, second and third auxiliary request. The applicant did however not present the third auxiliary request as amended application documents in accordance with the formal requirements of Rule 50 EPC, despite being informed of the necessity. As he did not, the Board did not give consent to admit it into the procedure. The decision gives no clue why the representative was too lazy to make a true third auxiliary request.



Summary of Facts and Submissions
I. The appeal is against the refusal of application [...] for lack of an inventive step, Article 56 EPC, (main request, first and second auxiliary requests) over documents [...].
A third auxiliary request of the appellant for the grant of a patent on the basis of a new claim 1 consisting of a merge of claims 1 and 19 according to the second auxiliary request was not admitted into the procedure under Rule 137(3) EPC, as such a claim was not considered to overcome the Article 56 EPC objection. The examining division held that the request, though not presented in writing, was sufficiently clear for the division to decide on admissibility.
II. With the statement setting out the grounds of appeal of 19 June 2012, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the following:
Main request, first and second auxiliary request:
Claims 1 to 19 according to the appellant's main request titled "Requête principale" / Première requête subsidiaire" /  Deuxième requête subsidiaire" filed with letter dated 18 November 2011, or
Third auxiliary request:
Claim 1 recited in the statement setting out the grounds of appeal dated 19 June 2012 on pages 27 and 28.
III. A summons to oral proceedings was issued by the board, provided with an annexed communication in which a provisional opinion of the board on the matter was given.
Regarding the appellant's requests in the statement setting out the grounds of appeal, the appellant was informed that, in order to be considered, new requests should be provided with amended application documents in accordance with Rule 50 EPC. No such amended application documents were filed in respect of the third auxiliary request.
Furthermore, the appellant was informed that it appeared that claim 1 according to the appellant's main request, as well as the first and second auxiliary requests lacked clarity, contrary to Article 84 EPC, and doubts existed as to whether the requirements of Article 83 EPC were met.
Moreover, the appellant was informed that it appeared that the subject-matter of claim 1 of all requests lacked an inventive step in the sense of Article 56 EPC over document D1. In particular, claim 1 was considered to contain both technical features and non-technical features pertaining to the fields of schemes for doing business and administrative schemes, the features making no contribution to the technical character of the invention not supporting the presence of an inventive step.
IV. With a letter dated 1 December 2014, the board was informed that the appellant would not be attending the oral proceedings.
No arguments were provided by the appellant in response to the board's observations.
V. Oral proceedings were held on 10 December 2014 in the absence of the duly summoned appellant.
VI. Claim 1 of the appellant's main request [...]
VII. Claim 1 of the appellant's first auxiliary request [...]
VIII. Claim 1 of the appellant's second auxiliary request [...]
IX. The appellant submitted with the statement setting out the grounds of appeal in substance the following arguments:
[...]
Moreover, the examining division should have accepted the third auxiliary request for the reasons already stated for the other requests.
Reasons for the Decision
1. The appeal is admissible.
2. Absence of the duly summoned appellant
The duly summoned appellant did not attend the oral proceedings, as announced. The proceedings were continued without him, as provided for in Rule 71(2) EPC 1973.
In accordance with Article 15(3) RPBA, the appellant was treated as relying only on its written case.
The board was in a position to decide at the conclusion of the oral proceedings, since the case was ready for decision (Article 15(5) and (6) RPBA) and the voluntary absence of the appellant was not a reason for delaying the decision (Article 15(3) RPBA).
3. Main request
3.1 Clarity, sufficiency of disclosure
Claim 1 of the main request defines "a comparator, to compare the entered profiling information to selections made by other users with similar profiles".
It is, however, unclear how profiling information (such as age etc. (cf description, page 19, lines 11 to 13)) should be compared to selections (eg songs) made by other users with similar profiles.
Accordingly, claim 1 lacks clarity, contrary to Article 84 EPC.
Moreover, as the above does not become clear from the description and drawings either, the application as a whole does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, contrary to the requirement of Article 83 EPC.
The above was noted in the communication annexed to the summons to oral proceedings. The appellant did not submit any arguments in response.
In view of the above, the appellant's main request is not allowable.
4. First and second auxiliary requests
The above also applies with respect to claim 1 and the remaining application documents according to the appellant's first and second auxiliary requests.
Accordingly, the appellant's first and second auxiliary requests are not allowable either.
5. Third auxiliary request
As a third auxiliary request, the appellant requested the grant of a patent on the basis of a claim 1, consisting of a merge of claims 1 and 19 according to the second auxiliary request, recited in the statement setting out the grounds of appeal on pages 27 to 28.
In the communication annexed to the summons to oral proceedings before the board, the appellant was informed that, in order to be considered, new requests should be provided with amended application documents in accordance with Rule 50 EPC.
No such amended application documents were filed in respect of the third auxiliary request, neither before the examining division, nor with the statement setting out the grounds of appeal, nor in response to the communication of the board annexed to the summons to oral proceedings.
Rule 50(1) EPC, in particular in conjunction with Rule 49 EPC, requires amended application documents, such as amended claims, to be presented on separate sheets and meeting certain form requirements. This is essential for further processing of the application, and, not least, avoids any doubts about what exactly is requested to be granted. As such, the board views critically the procedure followed by the examining division, deciding on the third auxiliary request based merely on an indication of the applicant of a merging of claims without any concrete claim being actually filed. In particular, in view of the fact that no amended application documents were filed at all in respect of the third auxiliary request in the first-instance proceedings, the board deemed it necessary in the present case to insist on the filing of proper amended application documents before proceeding to consider any such request. As noted above, no amended application documents were filed in respect of the third auxiliary request in response to the communication of the board annexed to the summons to oral proceedings.
Moreover, it is noted that since claim 1 as recited in the statement setting out the grounds of appeal contains the same unclear feature as claim 1 of the main request, it does not overcome the above objections under Articles 84 and 83 EPC.
For the above reasons, no consent is given to the amendment according to the appellant's third auxiliary request, in accordance with Rule 137(3) EPC.
Order
For these reasons it is decided that:
The appeal is dismissed.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T148012.20141210. The whole decision can be found here. The file wrapper can be found here. Photo "Lazy day"by Mike Norton obtained via Flickr under CCBY 2.0 license.

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