Friday, October 14, 2016 T 497/11: Revert an amendment after 9 years

In this opposition appeal admissibility is initially an important subject of the discussion. About one month before the oral proceedings (2016) the Appellants filed amended claims which would, according to the Board, "effectively revert to the method claims they had filed in 2007". The amendment comprises the deletion of "by using a computer".
When reading also the inventive step discussion of one of the requests, it seems that the Appellants would like to delete this features from the claims to enforce the choice of the closest prior art into another direction. The selected closest prior art was generic prior art in the field of air traffic control: "A system including a processor, memory, display and input device, for an aviation system, the system further comprising means (e.g. radio) for communicating to said aircraft."
If this amendment is accepted, the board had to start a discussion of the technicality of the claims. One of the arguments of the Appellants was that the recently filed claims were filed because the representation of the Appellants changed. Is that argument enough to get the amendments into the procedure?

This decision is also interesting because a number of features of auxiliary requests are considered to be a mere automation of mental acts, for example, performed by a flight controller. Thus, although the claims are technical with the feature of "by using a computer", most features do not contribute to the inventiveness of the claims because they are not technical.

Summary of Facts and Submissions

[...]

 Reasons for the Decision

1. Main request and auxiliary requests 1 and 2

1.1 Admittance (Article 13(1) RPBA)

The independent method claims of the requests filed with the appellants' statement of grounds of appeal contained the amendment that the second method step (processing) was carried out "by using a computer", thus addressing by amendment the objection under Article 52(2)(c) EPC in the decision under appeal. Consequently it was not necessary for the respondents, in their replies to the appeal grounds, or the board in its communication accompanying the summons to oral proceedings, to address the issue of technicality within the meaning of that Article.

Only with their letter of 19 May 2016 (i.e. approximately one month before the oral proceedings before the board) did the appellants file the amended main request and auxiliary requests 1 and 2 in which the phrase "by using a computer" had again been deleted, thus effectively reverting to the method claims they had filed in April 2007 in response to the original oppositions. With this letter they also presented arguments in favour of technicality of these claims.

The admittance of the new main request and auxiliary requests 1 and 2 would thus result in the need to re-open, at a very late stage in the procedure, discussion of conformity with Article 52(2)(c) EPC, which had been rendered unnecessary by the amendments made at the time of filing the appeal grounds. This is contrary to the requirement of Article 12(2) RPBA that the statement of grounds of appeal shall contain a party's complete case. It is also contrary to the requirement for procedural economy. There was moreover no reason justifying this late filing, because the board's communication raised no new objections. A change of representative is not a valid reason for the late filing of the requests either (Case Law of the Boards of Appeal, 7th edition 2013, IV.E.4.6.2).

Therefore, the board exercises its discretion under Article 13(1) RPBA not to admit the main request and auxiliary requests 1 and 2 into the procedure.

2. Auxiliary request 3

2.1 Admittance (Article 13(1) RPBA)

Independent system claim 1 of present auxiliary request 3 is identical to independent system claim 1 of auxiliary request 3 as filed with the statement setting out the grounds of appeal. With respect to the claimed system, the subject-matter of auxiliary request 3 has thus not changed during the appeal procedure. The fact that, compared to auxiliary request 3 as filed with the statement setting out the grounds of appeal, computer program product claims 3 and 4 have been deleted in present auxiliary request 3, does not influence the subject-matter claimed in system claims 1 and 2. Given this, the points raised by two of the parties concerning decision T 0179/09 were not relevant for the question of admittance of this request.

The board thus exercises its discretion under Article 13(1) RPBA to admit auxiliary request 3 into the procedure.

2.2 Inventive step (Article 56 EPC)

2.2.1 Prior art

During the proceedings generic prior art in the field of air traffic control has been identified, which comprises the following features:

A system including a processor, memory, display and input device, for an aviation system, the system further comprising means (e.g. radio) for communicating to said aircraft.

The board considers that this prior art represents the most promising starting point for the assessment of inventive step, as already established in the decision under appeal. The appellants stated that D1 should be used instead, but presented no arguments as to why that was the case.

2.2.2 Case Law

It is established case law of the boards of appeal that where the subject-matter of a claim comprises a mixture of technical and non-technical features, only the technical features can contribute to the presence of an inventive step (see e.g. T 0641/00), whereas the non-technical features can be taken into account when formulating the technical problem.

Thus, first of all, the board will analyse which of the features of claim 1 that are not known from the generic prior art referred to above are to be considered as technical.

2.2.3 Analysis of features

A means for collecting and storing is already present in the memory of the generic prior art. The remainder of this feature is "collecting and storing said specified data and operational goals". Since neither the "specified data" nor the "operational goals" are defined, these may be considered to comprise non-technical "specified data", like overall costs, and non-technical "operational goals", like reduction of the overall costs. Thus, the first feature of claim 1 does not contribute any technical content.

Means for processing said specified data, as defined in the second feature of claim 1, are already present in the processor according to the generic prior art. The remainder of the second feature is "processing, at an initial instant, said specified data applicable at that instant to said aircraft so as to predict an initial arrival fix time for each of said aircraft at said system resource". As neither the number of aircraft nor the specified data is further defined in claim 1, such a processing could be carried out as a mental act. For example, a flight controller at a small airport could read the position and speed of two aircraft from the radar monitor and estimate the arrival times for those aircraft based on their speed and current position. Thus, the second feature of claim 1 does not contribute any technical content.

The third feature of claim 1, "a goal function whose value is a measure of how well said system resource and plurality of aircraft meet their operational goals if said aircraft achieve given arrival fix times", could also be carried out as a mental act. For example the goal function could return a positive value after an aircraft has landed as scheduled and return zero if not. If the flow of only a small number of aircraft, for example two aircraft as argued by the respondents, is to be managed, a human could without doubt perform the sequencing. Thus, the third feature of claim 1 also does not contribute any technical content.

Regarding the fourth feature of claim 1, means for computing are already known from the processor of the generic prior art. The remainder of the fourth feature "computing an initial value of said specified goal function using said predicted initial arrival fix times" could also be carried out as a mental act. For example a flight controller could determine the goal function based on his estimate made for the third feature of claim 1 as discussed above. Thus, the fourth feature of claim 1 also does not contribute any technical content.

Of feature five, the "means for utilizing" can be regarded as disclosed in the generic prior art. What is left is the function "utilizing said goal function to identify those arrival fix times to which said predicted, initial arrival fix times can be changed and result in the value of said goal function indicating a higher degree of attainment of said operational goals, wherein said identified arrival fix times are set as the targeted arrival fix times". This function could easily be carried out by a flight controller controlling merely a small number of aircraft. The mental act to be carried out by the flight controller would be to simply determine with which landing sequence the arrival schedule can be matched best. Thus, the remainder of the fifth feature does also not contribute any technical content.

The sixth feature contains the definition "means for communicating information about said targeted arrival fix times to said aircraft so that said aircraft can change their trajectories...". The board is satisfied, that any communications means communicating with aircraft is suitable to transfer such information. Thus, the sixth feature is known from the generic prior art.

Regarding the seventh feature "means for monitoring the ongoing temporal changes in said specified data", the board notes that this feature is extremely broad. It could for example be a radar monitoring system as provided at almost every airport. Following this interpretation, the seventh feature is known from the generic prior art. On the other hand the seventh feature could be a loop in software code which monitors for changed memory entries. Overall, the board considers that the seventh feature also does not contribute any technical content over the generic prior art.

2.2.4 Conclusion

All differences over the generic prior art identified above can be carried out by a human, e.g. a flight controller, without involving any further technical means. Thus, these identified differences may be regarded as mental acts.

Therefore, the board concludes that claim 1 merely defines the automation of a mental act by known means, which is obvious for the person skilled in the art. Thus the subject-matter of claim 1 does not involve an inventive step in the sense of Article 56 EPC.

2.2.5 Other matters

The appellants argued in the context of several of the features discussed above that a greater degree of complexity (e.g. larger number of aircraft, complicated goal function, longer time-scales) was implicit if the claim was interpreted in the light of the description in accordance with Article 69 EPC. However, that article concerns the determination of the scope of protection of the claims, such that there is no reason to take the description into account for interpretation, given that the claims as such are clear.

Since the board is not bound by decision T 0179/09, a response to the procedural issue raised by the appellants in this respect during the discussion of this request and auxiliary request 4 is neither necessary nor appropriate.

3. Auxiliary request 4

3.1 Admittance (Article 13(1) RPBA)

Similarly to auxiliary request 3, the independent system claim 1 of present auxiliary request 4 is identical to the independent system claim 1 of auxiliary request 4 as filed with the statement setting out the grounds of appeal.

Therefore, the same reasoning as stated above for the admittance of auxiliary request 3 applies to auxiliary request 4.

Respondent 1 argued that claim 1 of auxiliary request 4 lacked clarity. However, the features "position of an airport" and "airport" to which they referred were already present in the claims as granted. Thus, auxiliary request 4 is not open to an examination of clarity.

The board thus exercises its discretion under Article 13(1) RPBA to admit auxiliary request 4 into the procedure.

3.2 Inventive step (Article 56 EPC)

Claim 1 of auxiliary request 4 differs from claim 1 of auxiliary request 3 in the following features:

- "said specified data is chosen from the group consisting of the temporally varying positions and trajectories of said aircraft, the temporally varying weather conditions surrounding said aircraft and system resource, the flight handling characteristics of said aircraft, the safety regulations pertaining to said aircraft and system resource, the position and capacity of said system resource",

- "said specified system resource is chosen from the group consisting of an airport, an arrival fix, a runway, a gate, a ramp area, ground equipment or a section of airspace", and

- a "means for specifying a goal function" is claimed instead of a "goal function".

According to the wording of claim 1, as system resource an airport can be chosen and as specified data the position or capacity of the airport can be chosen.

The appellants argued that a technical effect would arise from the subject-matter of claim 1 since the safety would be increased and the fuel consumption would be reduced.

The board does not share this view. The position of the airport does not vary. It is not apparent how the invariant position of an airport could be used to determine the flow of aircraft and how it could have any influence on either safety or fuel consumption. Thus, the additional features regarding specified data and system resource do not add any technical effect to claim 1.

Regarding the last difference, "means for specifying a goal function", the board is of the opinion that, taking into account the originally filed application, no technical difference exists between a "goal function" and "means for specifying a goal function". The only difference lies in the wording of this feature. Neither claim 1 nor the description contains a passage defining the details of the "means for specifying a goal function". It may therefore be assumed that the "means for specifying a goal function" correspond to the feature "goal function" and the difference is merely a formal adaptation to the remainder of the features of system claim 1. Thus, no technical substance is added to the subject-matter of claim 1.

Therefore, the board concludes that claim 1 defines merely the automation of a mental act by known means. Thereby, no technical problem is solved and consequently the subject-matter of claim 1 does not involve an inventive step in the sense of Article 56 EPC.

4. Auxiliary request 5

4.1 Inventive step (Article 56 EPC)

Claim 1 of auxiliary request 5 differs from claim 1 of auxiliary request 4 by the following additional features:

- "a means for processing the temporally updated specified data to predict updated arrival fix times", and

- "a means for computing an updated value of the specified goal function using the updated arrival fix times, comparing the updated and prior goal function values to determine whether the prior value continues to be met or exceeded, and, if the updated value continues to meet or exceed the prior value, continuing to use same targeted arrival fix times, or, if the updated value does not meet or exceed the prior value, repeat above utilization step so as to identify new, updated targeted arrival fix times which will yield a higher attainment of the operational goals."

Notwithstanding any possible objections as to lack of clarity of this claim, the board considers that the two additional features may, depending on the value of the goal function, result in updated arrival fix times. However, as already discussed with respect to claim 1 of auxiliary request 3, no technical effect is involved in the communicated arrival fix times since it is not mandatory for the pilots of aircraft to change their trajectories based on the communicated arrival fix times.

Therefore, the two additional features also fail to add any technical substance to claim 1. Hence, the board concludes that claim 1 defines merely the automation of a mental act by known means. Thereby, no technical problem is solved and consequently the subject-matter of claim 1 of auxiliary request 5 does not involve an inventive step in the sense of Article 56 EPC.

5. Auxiliary request 6

5.1 Admittance (Article 13(1) RPBA)

Claim 4 of auxiliary request 6 is identical to claim 1 of auxiliary request 3 discussed above in section 2.2. The board concluded that claim 1 of auxiliary request 3 is not allowable since its subject-matter does not involve an inventive step in the sense of Article 56 EPC. This objection applies correspondingly to auxiliary request 6, so that the request is prima facie not allowable.

Therefore, the board exercises its discretion under Article 13(1) RPBA not to admit auxiliary request 6 into the procedure.

6. Auxiliary request 7

6.1 Admittance (Article 13(1) RPBA)

The subject matter of claim 1 of auxiliary request 7 is directed to a method using a suitably programmed computer for an aviation system. The expression "using a suitably programmed computer" is prima facie not originally disclosed. Further, in the four higher ranking requests the method claims had been deleted. The reintroduction of a method claim thus represents a further change of direction of the appellants' case at a very late stage of the proceedings.

Consequently, the board exercises its discretion under Article 13(1) RPBA not to admit auxiliary request 7 into the procedure.

7. Conclusion

Since none of the requests of the appellants which have been admitted into the procedure are allowable, the board has to accede to the request of the respondents to dismiss the appeal.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 497/11 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2014:T049711.20160622. The file wrapper can be found here. Illustration "Airplane Shipping Ariound the City" by Ohmega1982 obtained via FreeDigitalPhotos.net (no changes made).