Friday, 11 September 2015

T 1155/11: the Board introduces a new document - unravelling a web of priority claims

 

The Board of appeal introduced an additional document that was not mentioned before in the Examination procedure. I didn't see this before and I was surprised. The Board writes in its "Communication of the Board" (dated 3/2/15, sent to the appellant (applicant) together with the invitation to attend oral proceedings):
"The Board notes that in addition to D1 and D2, there are several European patent applications from the same applicant describing subject-matter very close to that of the present application. [...] At least some of those European patent applications have earlier priorities than the second priority date of the present application, 16 April 2003, and describe similar subject-matter. Such applications may be relevant under Article 54(3) EPC in case the first priority date is found to be invalid or to cover only part of the claimed subject—matter."
Subsequently a new document D9 is introduced in the proceedings which claims priority from three priority documents and one of these documents is also a priority application of the patent application that is subject of this Appeal. It seems that, in this decision, the Board tries to unravel the web formed by multiple applications of the same Applicant that claim priority of a multitude of priority applications.
In this decision the subsequent priority claims are relevant:
The patent application that is subject of this appeal is filed on 1 Oct 2003 and claims priority from Korean priority patent application P1 of 17 Feb 2003 and P2 of 16 Apr 2003.
Document D9 (EP1573723), as introduced by the Board, is filed on 1 Oct 2003 and claims priority from Korean priority patent application P3 of 21 Feb 2003, P4 of 3 Mar 2003 and also of P2 of 16 Apr 2003.
If the priority claim from P1 for some of the features of the amended claims from P1 is not valid, and these features are described in D9 and also in one of P3 and P4, then document D9 is an Art. 54(3) EPC document for the amended claims. In the decision a certified translation of P4 and P2 is introduced in the proceedings as respective documents D10 and D11.


Summary of Facts and Submissions

[...]

II. The present patent application No. 09165318.8 was filed as a divisional from European patent application No. 03815869.7 granted as European patent No. 1 595 251. The parent application originated from international application No. PCT/KR2003/002025 filed on 1 October 2003 and published as WO 2004/072963. Each of these applications claimed priority from the following Korean applications and respective filing dates
- KR 10-2003-0009895 of 17 February 2003, and
- KR 10-2003-0023876 of 16 April 2003.

III. The European search report and search opinion, issued together, cited four documents including the following two documents considered to be relevant prior art under Article 54(1) and (3) EPC:
D1: EP 1 547 066 A; this is the publication number of European patent application No. 03798601.5, filed by LG Electronics Inc. and derived from international application No. PCT/KR2003/002010 filed on 30 September 2003, which claimed two Korean priorities of 30 September 2002 and 11 January 2003 and was published as
WO 2004/029942 (D1') on 8 April 2004;
D2: EP 1 547 065 A; this is the publication number of European patent application No. 03798600.7 filed by LG Electronics Inc. and derived from international application No. PCT/KR2003/002009 filed on 30 September 2003, which claimed two Korean priorities of 30 September 2002 and 25 February 2003 and was published as
WO 2004/029941 (D2') on 8 April 2004.
For each of the applications D1 and D2, one European divisional application has been filed.

[...]

VI. The appellant was invited to oral proceedings. In a subsequent communication sent in advance of the oral proceedings, the Board expressed its preliminary opinion that the subject-matter of claim 1 did not appear to be obvious over the prior art cited in the application and used as closest prior art by the Examining Division.
[...]
The Board furthermore introduced the following document into the proceedings:
D9: EP 1 573 723 A; this is the publication number of European patent application No. 03815979.4 filed by LG Electronics Inc. and derived from international application No. PCT/KR2003/002027 filed on 1 October 2003, which claimed the Korean priorities
- KR 10-2003-0010925 of 21 February 2003,
- KR 10-2003-0013200 of 3 March 2003 and
- KR 10-2003-0023876 of 16 April 2003,
and was published as WO 2004/075180 (D9') of 2 September 2004.
Euro-PCT application D9 led to the grant of a patent. Its divisional application was refused.
The Board informed the appellant that the second priority application of 3 March 2003 of D9 seemed to already disclose all the relevant features. Depending on the validity of the priorities with regard to the features of the claim for both that application and the present application, application D9 could be detrimental to the novelty of the claimed invention under Article 54(1) and (3) EPC.

VII. With a letter of reply the appellant filed a new set of claims 1 to 9.
The appellant argued that the two priority documents of application D2 did not disclose certain features of the newly claimed subject-matter.
The appellant submitted certified English translations of the text of two Korean priority applications:
D10: translation of KR 10-2003-0013200, filed on 3 March 2003;
D11: translation of KR 10-2003-0023876, filed on 16 April 2003.
Document D10 is the translation of the description and claims of the second priority application of D9. Document D11 is the translation of the text of the third priority of D9 and the second priority of the present application, which are the same.
The appellant argued that document D10 did not disclose some of the features of the claimed invention and that therefore application D9 did not enjoy the second priority of 3 March 2003 for the claimed subject-matter and was not detrimental to the novelty of the independent claims. The appellant submitted that consequently remittal was not necessary.

[...]
 
Reasons for the Decision

[...]

The invention

2. The invention relates to recording defect management information on a write-once optical recording medium, for example the Blu-ray Disc Write-Once (BD-WO), having two layers.
3. According to the description, a prior art Blu-ray Disc Rewritable (BD-RE) is divided into a lead-in area (LIA), a data area and a lead-out area (LOA). The data area includes an inner spare area (ISA) in the front, a user data area, and an outer spare area (OSA) in the rear (paragraph [0004], figure 2 of the published patent application). The lead-in and lead-out areas include defect management areas (DMAs) where defect information, including a list of defect areas, is recorded. The spare areas are used as a replacement for writing the data of the defective areas (paragraph [0006]). A BD-RE dual-layer disc is also described as background art (Figure 3B, paragraph [0009]).
4. The invention is directed to the allocation of defect management areas in a two-layered write-once optical disc, or DB-WO double-layer (figure 7). In the write-once optical recording medium according to the invention, each of the recording layers includes an inner zone, a data area, and an outer zone. The lead-in and lead-out areas, located in the inner zones, and the outer zones include final or permanent defect management areas (DMAs) where defect management information is stored when the BD-WO is finalised.
Additionally, areas are allocated for temporarily storing defect management information until the recording medium is finalised. There are two types of such areas: temporary defect management areas (TDMAs) of fixed size allocated in the lead-in and/or lead-out areas, and interim defect management areas (IDMAs), of variable size, allocated in spare areas of variable size, e.g. N x 256 clusters (0 <= N <= 32). The IDMAs are used for storing defect management information when the TDMA is full.

Amendments - Articles 76(1) and 123(2) EPC

[...]

9. The Board is hence satisfied that the claims comply with Articles 123(2) and 76(1) EPC.

Clarity - Article 84 EPC

10. The minor clarity objections raised at the oral proceedings before the Board have been overcome by amendments. The description has been adapted to the claims. The claims therefore meet the requirements of Article 84 EPC.

State of the art under Articles 54(3) and 153(5) EPC

11. The present application has a filing date of 1 October 2003 and claims priority from two Korean applications with filing dates of 17 February 2003 and 16 April 2003 (see section II above).

12. Euro-PCT applications D1 and D2 were cited in the search report as prior art under Article 54(3) EPC, since they claim a first priority date of 30 September 2002 which is earlier than that of the present application (see section III).
In its communication the Board raised doubts about the validity of the earliest priority of the present application and introduced Euro-PCT application D9 as possible state of the art under Article 54(3) EPC. The first two claimed priority dates of application D9 are earlier than the second claimed priority date of the present application (see section VI above).
The Board is also satisfied that each of the Euro-PCT applications D1, D2 and D9 meets the conditions mentioned in Article 153(5) EPC. Therefore, depending on the validity of priority rights, each of those three applications may constitute relevant state of the art for the present application under Articles 54(3) and 89 EPC.

[...]

Novelty - Article 54(1) and (3) EPC

14. Euro-PCT applications D1 and D2 disclose very similar subject-matter to the present application and, as explained above, may be relevant for the examination of novelty depending on the validity of the claimed priorities.

[...]

14.3 However, neither D1 nor D2 discloses at least two features of the claimed method: allocating a second inner spare area (ISA1) with a size that is not predetermined and the IDMA being used for storing defect management information when the TDMA becomes full.

[...]

14.5 Therefore, the claimed method is novel over each of the Euro-PCT patent applications D1 and D2 (Article 54(1) and (3) EPC). Furthermore, the same conclusions apply with regard to the European divisional applications of D1 and D2.

15. During the appeal proceedings the Board introduced Euro-PCT patent application D9, and corresponding international publication D9', which appeared to be relevant for the question of novelty of the claimed subject-matter.

15.1 The first priority date claimed in relation to the application in suit is prior to the earliest priority of application D9 (see sections II and VI and point 12 above). However, in its communication the Board raised doubts regarding the validity of that first priority of the present application according to Articles 87 and 88(3) EPC. In particular, the Board noted that the figures of the first priority document did not depict the temporary and interim defect management areas (TDMAs and IDMAs), whereas those of the second priority document of 16 April 2003 did. It was not clear whether those and other features were disclosed in the first priority document.
On the other hand, the Board pointed out that application D9 appeared to disclose all the features of claim 1 then on file in Figure 5, and on page 7, line 21 to page 12, line 14. The second priority application of 3 March 2003 of application D9 appeared to depict the relevant embodiment in the figures and be a valid priority for those features.
The Board noted that if the priority of 3 March 2003 was valid for Euro-PCT patent application D9 with regard to the features described in Figure 5 and in the cited passages of D9, and the earliest valid priority date for the corresponding claimed features of the present application was 16 April 2003, then application D9 could be novelty-destroying for the claimed invention under Article 54(1) and (3) EPC.

15.2 In its letter the appellant submitted certified translations D10 and D11 of the two Korean priority applications of 3 March 2003 and 16 April 2003, respectively. As explained in section VII above, document D10 is the second priority application of D9 and document D11 is the third priority of D9 and the second of the present application.
According to the appellant, the claimed subject-matter was supported by priority document D11. On the other hand, document D10 failed to disclose that "the interim defect management information (IDMA) is used for storing defect management information when the temporary defect management area (TDMA) becomes full". Referring to paragraph [48] of document D10, the TDMA was a temporary DMA for recording the most recent defect management information at the time when the recording medium was ejected, while IDMA was an interim DMA for recording defect management information detected while the recording medium was in use. Furthermore, document D10 disclosed in paragraph [73] that the TDMA could record temporary disc definition structure (TDDS) information only when the recording medium was ejected. Therefore, application D9 could not enjoy the priority date of 3 March 2003 and was not novelty-destroying for the claimed subject-matter.

15.3 The Board agrees with the appellant that document D10 does not disclose the mentioned features. It does not indicate that the IDMA is used when the TDMA becomes full. The Board notes furthermore that it does not mention the disc being finalised. Throughout the description document D10 refers only to the "defect management area of using" and "defect management area of ejecting" into which the defect management information is transferred when ejecting (see for instance paragraphs [35] to [39], [44] and [45], the passages cited by the appellant and the closing paragraphs [99] and [100]). The same is described in paragraphs [71] to [73], [96] and [97] for the most relevant embodiments of figures 6 and 18 of the application of D10, and in several claims (for example, claims 1, 2, 6 to 8, 10 and 13 to 16). Even though it may be assumed that a finalisation of the disc often occurs when the disc stops being "in use" or is ejected, the features are not necessarily the same. Therefore the second priority of 3 March 2003 is not valid for the relevant subject-matter of Euro-PCT application D9.

15.4 The Board concluded from an inspection of the first priority document of application D9 that it does not describe an embodiment corresponding to the claimed subject-matter either.

15.5 Since the remaining third priority of application D9 and the second priority of the present application are the same, and the two applications enjoy the same filing date, it is irrelevant for the question of novelty under Article 54(1) and (3) in connection with Articles 89 and 153(5) EPC whether the common priority date of 16 April 2003 is valid for the subject-matter in each of the applications. European application D9 may become relevant solely for the question of double patenting (see T 123/82 of 30 August 1985, point 9).

15.6 Therefore, the Board concludes that application D9 is not detrimental to the novelty of the subject-matter of the present application. The same conclusions apply to the European divisional application of D9.

16. From the above reasoning the Board concludes that the present application fulfils the requirements of novelty under Article 54(1) and (3) EPC.

Novelty and inventive step - Articles 54(1) and (2) and 56 EPC

17. The most relevant prior art for novelty pursuant to Article 54(1) and (2) EPC and inventive step is document D6.

[...]

17.2 [...] Therefore, document D6 does not disclose any defect management area corresponding to the IDMA of the invention. It does not describe either the details of allocation of defect management areas in a recording medium having two recording layers as defined in the claim. The distinguishing features provide for an advantageous flexible allocation of defect management areas in a dual-layer disc.

[...]

20. It follows that the subject-matter of claim 1, and that of corresponding independent claim 4, is novel and involves an inventive step over the available prior art. By virtue of their dependency upon the independent claims, the same applies to claims 2, 3, 5 and 6. Therefore, the claims meet the requirements of Articles 54(1) and (2) and 56 EPC.

Double patenting

[...]

22. As explained in a recent decision, issues of double patenting of the same invention may occur in three different types of combinations of European applications by the same applicant: two applications filed on the same day, parent and divisional applications, or an application and its priority application (T 2461/10 of 26 March 2014, points 6 and 11).
In the present case, the question of double patenting could arise with respect to either European patent No. 1 595 251 granted for the parent application of the present application, or to European patent No. 1 573 723 granted for application D9. The present application and those patents have the same effective filing date (see point 15.515.5 above) and designate the same contracting states.

22.1 However, none of those patents defines the same invention as the claims of the present application. In particular, none of the granted claims specifies that the IDMA is used to store defect management information when the TDMA becomes full, a feature which is defined in each of the independent claims of the present application.

[...]

24. Therefore, the Board is satisfied that granting the present application does not go against the principle of prohibition of double patenting.

[...]
 
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 with the order to grant a patent on the basis of the following documents:
- Description: pages 1 to 3 as originally filed, and pages 4 to 18 as submitted during the oral proceedings;
- Claims: 1 to 6 as submitted during the oral proceedings;
- Drawings: Figures 1 to 8 as originally filed.

This decision T 1155/11 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2015:T115511.20150325. The file wrapper can be found here. Photo "Spider on web"  is obtained from freedigitalphotos.net.

1 comment :

  1. When looking at the various files, it interesting to note that the original search for the parent and for D 9 was carried out by the Austrian office who, as usual, only found two A documents.
    At least when it came to the divisional application the SE at the EPO found some E documents, but not all of them. This should not have happened.
    What the Board did is manifestly to look for applications which claim related priorities. Why was this not done by the SE?
    It is not very frequent that BA quote new documents, but this has occurred twice recently.
    See T 305/12, in which 2 documents were added by the Board, which lead to the MR not being allowable, but the 6th AR, which was already deemed allowable by the ED. In other words, without the new documents, MR should have been granted.
    In T 2389/13, two documents were also added D7(cited in D2 and D3) and D8. Eventually the application was refused on the basis of D7.
    In view of the tremendous production pressure in DG1 such occurrences might become more frequent.

    ReplyDelete

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