Tuesday, 15 March 2016

T 1921/10 - No prominent role...

In this examination appeal, the applicant submitted auxiliary requests in response to the summons for oral proceedings. The amendments made to the auxiliary requests with respect to the main request had been derived from originally-filed claims 5 and 6. However, these claims had not played a prominent role in examination and appeal proceedings...

Summary of Facts and Submissions
I. European patent application 06 405 105.5 (publication No. EP 1 962 280) was refused by a decision of the examining division for the reasons of non-compliance with the requirements of Articles 52(1) and 56 EPC 1973 (for a main request then on file being based on the application documents as originally filed; and for a first auxiliary request then on file), of Article 84 (for the first and a second auxiliary request then on file) and of Article 123(2) EPC (for the second auxiliary request).
II. The applicant lodged an appeal against the decision.
With its statement setting out the grounds of appeal filed with a letter of 24 August 2010 the appellant requested, in accordance with the main request pursued in the examination proceedings, that the decision under appeal be set aside and that a patent be granted on the basis of the claims as originally filed.
III. The appellant was summoned to oral proceedings.
In a communication pursuant to Article 15(1) RPBA the Board doubted whether, in view of the prior art according to documents :
D1 : EP-A-1 526 505, and
D2 : EP-A-0 779 602,
the claimed subject-matter involved an inventive step and drew attention inter alia to the provision of Article 13(1) RPBA.
IV. In response, the appellant filed by letter of 14 June 2015 new independent claims 1 and 8 according to a first and a second auxiliary request, respectively.
V. In the oral proceedings which were held on 10 December 2015 the appellant maintained its requests as filed in writing.
VI. Independent claims 1 and 8 of the appellant's main request read as follows :
Claim 1 of auxiliary request 1 differs from claim 1 of the main request in that [...]
VII. The appellant's arguments presented in writing may be summarized as follows :
Reasons for the Decision
1. The appeal complies with the requirements of Articles 106 to 108 and Rule 99 EPC and is, therefore, admissible.
2. Main request - inventive step (Articles 52(1) and 56 EPC 1973)
2.1 [...]
2.2 [..,]
2.3 Based on this difference the objective problem to be solved can be considered as [...]
2.4 [...] 
Therefore, the skilled person would arrive at the subject-matter of claim 1 of the main request on file simply by upgrading the authentication method of D2 in an obvious and straightforward manner following the proposition of document D1 and thus without having to resort to inventive skills.
2.5 The appellant's arguments in support of inventive step are unconvincing.
2.6 For the above reasons, the subject-matter of claim 1 of the appellant's main request lacks an inventive step within the meaning of Article 56 EPC.
The main request is therefore not allowable.
3. Auxiliary requests - admission into the proceedings (Article 13(1) RPBA)
3.1 Compared to the claims of the main request submitted with the statement setting out the grounds of appeal, claim 1 of each of auxiliary requests 1 and 2 filed by letter of 14 June 2015 contains the limitation to a mobile end user terminal in the embodiment of a mobile phone and the definition of "steps of individually adjusting thresholds that determine the allowable matching differences for each biometric according to the value or importance of a transaction to be performed after authentication".
In addition, claim 1 of auxiliary request 2 contains the further definition "and comprising the steps of transferring an equipment identification of the end user terminal (23), such as the IMEI of the mobile phone, to the authentication server (15) for comparison with a value pre-stored for the concerned end user."
3.2 The limitations, which have been derived from originally-filed claims 5 and 6, respectively, did not play any prominent role during the examination and appeal proceedings.
3.3 Article 13(1) of the Rules of Procedure of the Boards of Appeal (RPBA) stipulates that "Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy." In accordance with consistent case law, if the amendments are not prima facie clearly allowable or if they lead to an excessive delay in the proceedings, it is likely that the amendments will not be admitted (see chapter IV.E.4.4.1 of the 7th edition (2013) of Case Law of the Boards of Appeal of the European Patent Office).
3.4 The appellant argued in favour of the admission of the auxiliary requests that the amendments further distinguished the claimed subject-matter from the prior art according to documents D1 and D2 and thus rendered the claimed subject-matter inventive. Notably, the prior art did not disclose an adjustment of threshold values according to the economic value of a transaction for which an authentication is performed. Moreover, the prior art did not teach a transfer of an equipment identification of the end user terminal to the authentication server, which transfer constituted an additional, independent safety feature further enhancing the security of the authentication process. Although a mobile phone normally sent its IMEI to a server in a telephone network it was quite unusual to do the same with respect to an authentication server as it was unknown in the prior art to register mobile phones in the authentication server.
3.5 In the present case, none of the independent claims of auxiliary requests 1 and 2 can reasonably be considered as prima facie clearly allowable.
Paragraph [0071] of the application description as published acknowledges that is was known in the prior art to use a mobile phone as the end user terminal by means of which an authentication is established.
Moreover, documents D1 (paragraph [0049]) and D2 (column 2, lines 30-32) both teach the use of thresholds in the authentication process. In this context, document D1 foresees a setting of different threshold levels, depending on whether high accuracy or a wide acceptance range for the authentication is desired. The claimed criteria of "value" or "importance of a transaction" are to be considered as special cases falling within the ambit of the teaching of document D1 and concern non-technical considerations anyway.
Finally, it appears safe to assume that, in analogy to a conventional telephone network, any practical authentication system has to keep a record of the individual end user terminals which are allowed to participate in the network.
For these reasons, none of the amendments made to the auxiliary requests on file renders the claimed subject-matter inventive and the auxiliary requests would clearly not be allowable.
3.6 As a result, in the oral proceedings the Board exercised its discretion under Article 13(1) RPBA and did not admit the appellant's auxiliary requests of 14 June 2015 into the proceedings.
For these reasons it is decided that:
The appeal is dismissed.

This decision T 1921/10 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2015:T192110.20151210, The file wrapper can be found here. Photo "who's the significant one?" by MelkiaID obtained via Flickr under CC BY 2.0 license (no changes made).

1 comment :

  1. The comment about according to which the claims 5 and 6, did not play "any prominent role" during the examination and appeal proceedings should not be given too much weight.
    What happened here is the same old story: do not consider a communication of the Board as an invitation to file further requests, e.g. T 145/11 or T 1932/12.
    There is thus no surprise that the BA dismissed the new requests as an amendment to a party's case, the more so, since it considered the requests prima facie not overcoming the objections raised.
    The comment above could however lead to the conclusion that even if the auxiliary requests would have been filed when entering appeal, they might have been not admitted under Art 12(4)RPBA.
    Lesson to be learned: as applicant proprietor, file auxiliary requests as early as possible, i.e. already in first instance.