Tuesday, 15 September 2020

T 1030/19 - Plants filed before 1 July 2017

In the present case,  the examining division held, in its decision dated 28 November 2018, that the subject-matter of the set of claims of the main request and of auxiliary requests 1 to 4 fell under the exclusions from patentability as defined by Rule 28(2) EPC and that, consequently, the application did not meet the requirements of Article 53(b) EPC. In the grounds of appeal of 28 March 2019, the applicant referred to T 1063/18 which decided that Rule 28(2) is in conflict with Art.53(b) as interpreted by the Enlarged Board in G 2/12 and G 2/13 and that the refusal in that case based on Rule 28(2) should be set aside. While the current appeal was pending, the President referred questions to the Enlarged Board. The Board waited until G 3/19 was decided before ruling on this case.

Tuesday, 1 September 2020

T 2214/15 - Ordinary, not exceptional

According to Article 13(2) of the revised Rules of Procedure of the Boards of Appeal (RPBA 2020), any amendment to a party’s appeal case made after notification of a summons to oral proceedings (or after a deadline set by the Board with an express invitation to file observations) shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned. The basic principle of this third level of the new "convergent approach" applicable in EPO appeal proceedings is that, at this stage of the appeal proceedings, amendments to a party’s appeal case are not to be taken into consideration. Only if a party can present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular case. For example, if a party submits that the Board raised an objection for the first time, it must explain precisely why this objection is new and does not fall under objections previously raised by the Board (or a party). The Board may decide to admit the amendment in the exercise of its discretion. 

In the present examination appeal case, the appellant had filed Auxiliary Request 2 after notification of the summons to oral proceedings. During oral proceedings, the appellant argued that this late-filed request should be admitted, as the Board had raised a number of new issues in the summons to which auxiliary request 2 represented a good faith reaction. Indeed, the Board accepted that in the present case this represented exceptional circumstances within the meaning of Article 13(2) RPBA 2020.
Unfortunately, the Board found that Auxiliary Request 2 does not comply with Articles 84 and 123(2). 

Auxiliary Request 3 filed subsequently during oral proceedings was however not admitted. While the appellant asserted that a further request should be admitted because the Board had raised new objections in connection with the second auxiliary request that the appellant could not have been expected to anticipate, the Board was not persuaded by these arguments. According to the Board, the topics of discussion in view of auxiliary request 2 did not differ in substance from those identified in the summons; the identification of newly introduced problems when attempting to solve issues discussed in the procedure up to that point is rather to be seen as the ordinary development of the discussion, rather than an exceptional circumstance justifying the admittance of a further auxiliary request. In the view of the Board, if such newly introduced problems would represent exceptional circumstances, this would imply that the appellant would have to be given repeated opportunity to file amended claims until no new problems were introduced. Such a procedure could only be characterised as a continuation of the first-instance examination proceedings and would thus be at odds with the primary object of the appeal proceedings of a judicial review of the impugned decision.

If amendments intended to overcome objections of lack of support and lack of clarity raised in the summons give rise to further objections concerning clarity or added subject-matter, pointing out these further objections does not represent exceptional circumstances within the meaning of Article 13(2) RPBA 2020, but rather an ordinary development of the discussion which does not go beyond the framework of the initial objection. See reasons 5.3 and 5.4.

Wednesday, 26 August 2020

T 2210/16 - Careful with predetermined values

This patent was opposed as not disclosing the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Claim 1 as granted states (in my translation)

Method for reducing microphone noise (feature A) in an input signal (x) of a hearing aid (10, 46) by filtering the input signal (x) by means of a Wiener filter (26) if a Noise Performance (NPSD) determined from the input signal (x) is less than a predetermined limit value (G) (feature C1) and deactivating the Wiener filter (26) if the Noise Performance (NPSD) is greater than or equal to the limit value (G) (feature D1).

The problem that was raised is that if the skilled person happened to select a microphone with good Noise Performance and a high predetermined limit value, then the Wiener filter would never be activated and the aim of reducing microphone noise would not be realized. 

Below is a translation of the German decision, with help from the DeepL Translation tool. Below the cut is the German original.  


3.7 For the, in the field of hearing aids, realistic case  that already the noise power of the microphone noise is higher than the claimed "predetermined limit" according to features C1) and D1), the Wiener filter remains deactivated. Thus, in the opinion of the Board, the hearing aid professional cannot achieve the "reduction of microphone noise" on the basis of the original disclosure of the patent in dispute.

3.8 In particular, the following two aspects would, in the opinion of the Board, present the person skilled in the art with insurmountable difficulties in the execution of the claimed invention

3.8.1 Firstly, with regard to feature A), it should be noted that neither the description nor claim 1 of the patent in suit contain an explicit or implicit reference to limit the claimed process to a microphone with low microphone noise - however "low" should be defined.

3.8.2 On the other hand, the wording of the claim regarding feature C1) in no way indicates a setting of the "predetermined limit value" dependent on the microphone noise, as claimed by the respondent. Accordingly, the argument put forward by the respondent with reference to paragraph [0031] (in particular page 5, lines 33-38 and paragraph [0039]) of the patent specification, that the realization that the setting of the limit value is the "only possible adjustment screw" of the claimed method, which would cause the skilled person to set the limit value appropriately under consideration of the microphone noise to be reduced, cannot be applied in this generality.

3.9 With regard to the feasibility of these two aspects, i.e. the microphone with low self-noise and the selection of the predetermined limit value, the patent in dispute teaches that the microphone should be designed in the form of a condenser microphone and that the limit value should be set at 30 dB (see page 2, lines 16-31; page 10, lines 31-32 in connection with Figs. 2 and 3 of the original application).

In this context, the Board cannot share the respondent's view that the value of 28 dB used by the appellants in an illustrative example represents the absolute limit for the inherent noise of a microphone. For example, the Shure condenser microphone "Beta 98A", available before the priority date of the patent in dispute, has a microphone noise of 30 dB. The microphone noise of its predecessor "Beta 98" is even 5 dB higher. Consequently, within the scope of the patent in dispute, it would be quite plausible and realistic for the skilled person to apply the claimed method in a microphone with high microphone noise, for example with a microphone noise of about 30 dB. According to features D) and D1) of claim 1, however, the Wiener filter is permanently deactivated for such a microphone with a microphone noise in the range of the limit value (e.g. 30 dB) and therefore cannot be used to reduce the microphone noise according to feature A).

Tuesday, 4 August 2020

T 1414/18 - Don't ask and ye shall nevertheless receive, as long as equitable

The central issue in this appeal was the decision to refuse the EP application on the grounds of non-unity. The applicant paid an additional search fee, then requested that it be refunded when submitting responses to the Examining Division and arguments in defense of the unity of the claims. The Board found in favour of the applicant and ordered a refund of the additional search fee, commenting that the decision to refuse the application contained an implicit refusal of the request for the refund, even though a decision on the refund of further search fees should be indicated in the order of the written decision.

The Board was critical of the reasoning given for the need to perform two searches and, in particular, of a communication from the ED in which the applicant was informed, "The next procedural step will be summons to oral proceedings during which the application will be refused (Article 97(2) EPC)". The applicant withdrew the request for oral proceedings and requested a decision according to the state of the file.

The phrase "will be refused" was found to be in contradiction with the principles of the right to be heard under Art. 113(1), as it implied that there were no arguments that could be presented that would not lead to a final refusal of the application. The Board held this to be a substantial procedural violation, which necessitated the applicant's request for a decision according to the state of the file and thus the filing of the appeal. Reimbursement of the appeal fee was ordered on the Board's own motion.

Tuesday, 14 July 2020

T 1378/16 - Oral proceedings before the Board held by videoconference

The oral proceedings in the present case took place on 8 May 2020 and were the first held by videoconference in the history of the Boards of the Appeal of the EPO. Unlike some national legal systems, the EPC does not stipulate explicitly the form(s) in which oral proceedings under Article 116 EPC shall take place. For these reasons, the Board considers it appropriate to address briefly the legal basis for oral proceedings within the meaning of Article 116 EPC.

Wednesday, 1 July 2020

T 1294/15 - A business method claim without claiming the business is still a business method

A rose by any other name would smell as sweet
In affiliate reward programs, rewards might need to be divided among different participants; in the claim between a content manager and an introduction page manager. Instead of dividing up each reward among the parties, the application proposes to sometimes award the full amount to one single party and sometimes to another single party. Overtime this balances out so that the rewards are are about equal to exact division. The new scheme is more efficient since it needs fewer divisions. 
The board doesn't like the claim, as it represents a business method. However the applicant makes an interesting argument. By stripping all the business aspects of the claim, one is left with merely an improved division algorithm. If the stripped claim is technical and inventive then surely further restricting is can't remove patentability? Unfortunately for the applicant this argument is not accepted. 

Friday, 19 June 2020

T 2133/14 - Skilled person resolving a clarity problems in the claim

Sending an interrogation signal

How much can the skilled person bring to the table when establishing the meaning and enablement of a claim? This application was refused by the Examining division for being neither clear nor sufficiently disclosed. But the board has a higher opinion of the skilled person, and consider him capable enough to bridge the gaps.

The claims relate to a first device that stores 'multiple versions of application software'. The first device want to communicate with a second device, but its software may not be compatible. This is solved according to Claim 1 by sending 'an interrogation signal' to the second device and receiving back 'identification information'. The first device's method then comprises, based on the identification information:
correlating (225) thereto a version of the application software from among the multiple versions of application software associated with the first electronic device that is compatible with the recognized version of the application software currently being utilized by the second electronic device, wherein the correlating step utilizes a look-up-table."
An auxiliary request restricts claim 1 to a control device and an implantable medical device. Although the board reverses the Examining division on clarity and sufficient disclosure, in the end the claims are found to be non-inventive. 

Reasons for the Decision
The invention
1. The application is concerned with ensuring the compatibility of application software running on two communicating electronic devices, preferably an implantable medical device such as a cardiac pacemaker and an associated control device (see paragraphs 1 and 15).
1.1 More specifically, it is observed that the application software running on the implantable device (the "second" device in claim 1 of the main request) may be updated during its lifetime and stated that, for proper operation, the control device (the "first" device) will need to run a "compatible version of application software" (see paragraph 17).
1.2 According to a prior art solution, discussed in paragraph 4 (U.S. patent application 5,800,473), if it is detected that the implant runs a more recent version of the application software than the control device, then the more recent software "objects" are downloaded from the implant to the control device. In the application, this solution is stated to require an undesirably complex implantable device, too much energy and time, and to have the further disadvantage that the control device will at any point in time only run a single version of the application software, which may not be compatible with all implantable devices (see paragraph 4, lines 11-15, and paragraph 5). The invention is intended to overcome these disadvantages (see paragraph 9).
1.3 As a solution, it is proposed that a control device for communicating with a specific implantable device generate and transmit an "interrogation signal" to the implantable device. In response, the latter generates and transmits a "response signal" to the control device, the response signal comprising "identification information" including one or more of its type and a "unique identification number" and the version of the application software installed on it (see paragraphs 10, 20 and 23-30). The control device stores "multiple, preferably all, updates, versions or generations of the application software for the control device" in question (see paragraphs 16 and 34). Based on the received "identification information", the control device "correlates or maps" to the implantable device a compatible version of the application software using a lookup table (see paragraphs 21 and 22). Subsequently, the control device uses the so-determined compatible version (see para­graph 33). The procedure is depicted in figure 2.
Clarity and sufficiency of disclosure,
Articles 84 and 83 EPC
2. The examining division found the independent claims of both requests to be unclear for the following reasons (see the decision, points 19-22 and 25).
2.1 It was left open what kinds of interrogation and response signals could be processed by all possible electronic devices. At least for some pairs of elec­tronic devices, it would require inventive skill to provide suitable interconnection signals, while the description did not disclose further details. As a consequence, the independent claims were not supported over their full breadth by the description, Article 84 EPC, and, because "said clarity objection" could not be resolved using the description, their subject-matter was insufficiently disclosed, Article 83 EPC (see esp. the recitation of section on pages 6 and 7 of the decision).
2.2 The claimed invention presupposed that the different software versions all had different interfaces. Because this was an unrealistic assumption, the intended "system context" was unclear (see the recitation of sections to on page 7 of the decision).
2.3 The claims left open how the control device was meant to be "'equipped with multiple software versions initially' for all diverse types of 'second electronic devices', [and] for all their respective versions of software", and how it was avoided that the first electronic device had to be modified whenever the application software was changed (i.e. continuously or frequently). Also, for combinatorial reasons it was unrealistic to assume that each first electronic device could store all versions of the application software for all types of second electronic device. This rendered the claims unclear, Article 84 EPC, and meant that their subject-matter was insufficiently disclosed, Article 83 EPC, because "said clarity objection" could not be resolved using the description (see the recitation of sections to on pages 9 and 10 of the decision).
2.4 "Correlating" a version of the application software to the second device did not have a clear technical effect, since the "correlated version of [the] application software" was neither loaded nor used for communication (see esp. the recitation of section 9.1.3 on page 11 of the decision).
The board's view on clarity and sufficiency
3. The board does not share the conclusions of the examining division on clarity of the independent claims.
3.1 While the board agrees with the examining division's view that "correlating" has no clear technical effect (see point 2.4 above), this alone does not imply a lack of clarity.
3.2 The board also agrees with the examining division that the claims do not specify any details about the inter­rogation or response signals, or what it would mean for two devices to be compatible or incompatible. The claims further do not include any feature that would allow an estimate of the number of versions the first electronic device would have to store and when or how the first electronic device would have to be updated.
3.3 None of these omissions however implies, in the board's view, a lack of clarity - or an insufficiency of disclosure, for that matter.
3.3.1 The board considers that the skilled person would have no technical difficulty in implementing a form of interrogation/response-protocol in devices even in a "non-standard scenario" such as a smartphone communicating with a cardiac pacemaker (see paragraph bridging pages 6 and 7 in the decision).
3.3.2 The skilled person would interpret the notion of "compatibility" as used in the claims broadly. In the broadest reasonable sense, two pieces of software would be considered "compatible" if they are intended - and can, thus, be assumed - to interoperate properly. Apparently, this would not be the case if their interfaces did not match. However, even software with matching interfaces might not properly interoperate, for various reasons apparent to anyone skilled in the art of programming. The skilled person would understand that, effectively, "compatibility" is what the "correlating" step establishes, and - for the purposes of the claimed subject-matter - two pieces of software are compatible if the look-up-table "says so".
3.3.3 It would have been evident to the skilled person that the memory requirements on the first electronic device grow with the number of versions of the application software to be stored. The board also agrees with the examining division that this number might well be larger than what a typical such "first electronic device" can actually store (see also "all possible versions" in claim 2). However, while it might be undesirable or impracticable for various reasons, it would not be technically difficult to either enlarge the memory of the first electronic device or to limit the number of versions to some (the most recent say, or only those needed for some "second" device types) to the detriment of others.
3.4 The board takes the view that the skilled person would not need any explicit statement in the application to be able to handle the mentioned situations properly. Hence, in the board's view, the independent claims are neither unclear in the mentioned respects, nor insufficiently supported. Their subject-matter is also not insufficiently disclosed.
4. The findings in point 3 are further corroborated by the following considerations.
4.1 An objection that a claim is too broad to be supported by the description over its full breadth can be addressed by limiting the claim to a breadth which is. For that reason, the limitation of a claim covering standard and non-standard scenarios (claim 1 of the main request) to only the standard scenario of a control device and an implantable medical device (see the auxiliary request) is a valid attempt to overcome at least one of the objections regarding incomplete support by the description labelled "" (see paragraph bridging pages 6 and 7 of the decision).
4.2 Moreover, the board does not agree that the subject-matter of a claim which is not supported over its full breadth by the description or which is unclear is ipso facto insufficiently disclosed, as the examining division suggests (loc. cit.). Accordingly, the board considers that the objection under Article 83 EPC is not correctly reasoned in the decision.
5. In the following, the board takes the view that the skilled person would construe claim 1 of the auxiliary request as follows. The first electronic device (the control device), storing multiple versions of some application software, asks the second electronic device (the implantable medical device) for identification information which, inter alia, identifies the version of the application software it runs. This information is then used to identify a preferred version of the software to be run on the first electronic device. This version is identified using a look-up table and referred to in the claims as "compatible".

This decision T 2133/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2020:T213314.20200603. The file wrapper can be found here . Image by Stafford Green (staffordgreen0obtained under the Pixabay license