Friday, September 21, 2018 T 525/13 - Generalizing from US provisional application

Cat on Microwave

This opposition appeal illustrates the limitations when claiming priority from a US provisional application. While a 'manual cook button' is considered to be implicitly, yet unambiguously and directly derivable from the US provisional application, the claimed microprocessor was considered to represent a different invention as the US provisional application only described a microcomputer.

(In this case, the Board also considers an alleged substantial procedural violations to be merely "a number of unfortunate events", which was communicated by the Board to the parties earlier:

"... it appears to the Board that the alleged substantial violations are rather to be seen as a number of unfortunate events. It is in particular unfortunate that the opposition division did not react sooner to the special request of the representative of the appellant. On the other hand the Board cannot read from the appellant's letter of 13 December 2012 that if the EPO would not be able to accommodate the representative of the appellant, she would not be able EPO Form 3350 6/7T0525/13-3.5.02 to attend the oral proceedings. It is also unfortunate that the respondent, even though there is no legal obligation to do so, did not forward a copy of its submission of 13 December 2012 directly to the appellant, knowing that the appellant would have to obtain a translation and that it would not be unlikely that the letter was not received by the appellant from the EPO before the Christmas holidays. Finally it is standard practice that examiners do not speak directly with a party in inter partes proceedings and all communication with the EPO goes via the formalities officer.")

Reasons for the Decision

1. The appeal is admissible.

2. Right of priority

The discussion as to whether the right of priority from first priority document, US provisional application 60/115,744, is valid concentrated on the question whether the first priority document disclosed the claimed features "MANUAL COOK button" and "microprocessor".

2.1 "MANUAL COOK button" (Article 88(4) EPC)

It was disputed whether the first priority document discloses directly and unambiguously a manually entered control algorithm executed in response to user manipulation of a manual cook button, the control algorithm being defined by a user selected total cook time and a user selected one of a number of power level settings for a microwave cooking unit and one of a number of power level settings for at least one radiant cooking unit.

There was no dispute about the fact that the above mentioned features are not explicitly disclosed in the first priority document in the context of entering the control algorithm in response to user manipulation of the manual cook button. There was further no dispute about the fact that the first priority document discloses the disputed features in the context of adjusting a control algorithm in response to user manipulation of a power level button.

The first priority document discloses on page 3, lines 13 and 14 that figures 11 to 14 "illustrate messages displayed when adjusting/entering the power level and cooking time". The figures themselves contain text in relation to the values to be both entered or adjusted, namely "select upper power", "select lower power", "select micro power", and "adjust time or start". Further, on page 5, lines 19 and 20 it is disclosed in relation to the speed cook manual key pad that "Selecting this pad enables an operator to manually enter speed cooking time and power levels". Regarding the function of the power level key pad, page 5, lines 13 and 14 discloses "Selecting this pad enables adjusting the power levels for speed cooking and microwave cooking". In that context the wording "adjusting" is directed to manually adjusting. Therefore, the disclosure on page 5 is equivalent regarding the power levels for both the power level key pad and the speed cook manual keypad. Regarding the cooking time, however, only the speed cooking manual button is pertinent.

Page 10, lines 9 to 11 discloses that a microcomputer can execute a manually entered speed cooking program. Finally, on page 12, lines 13 to 27, it is disclosed how to adjust the power level of the upper lamps, the lower lamp, and the microwave during operation.

In summary, the mentioned parts of the disclosure of the first priority document disclose that the speed cooking manual button is used to manually enter the power levels of the upper and lower radiant cooking units and the microwave cooking unit as well as the cooking time.

The board therefore concludes that for the person skilled in the art, the disputed feature "MANUAL COOK button" is directly and unambiguously disclosed in the first priority document as a whole, Article 88(4) EPC.

2.2 "Microprocessor" (Article 87(1) EPC)

The respondent further contested in their reply to the appeal that the claimed feature "microprocessor" is disclosed in the first priority document.

In the view of the board there is not a single mention of a microprocessor in the first priority document. Only a microcomputer is disclosed. Since a microcomputer comprises more components than a microprocessor, namely in addition to the same at least a memory and minimal I/O circuitry, the claimed feature "microprocessor" has no basis in the first priority document.

Consequently, the subject-matter of claim 1 does not relate to the same invention as the first priority document. For this reason alone, the right of priority of the patent is invalid, Article 87(1) EPC.

2.3 Consequently, the date of priority of the first priority document cannot be considered as the date of filing of the European patent application within the meaning of Article 89 EPC. Since document D8 has a publication date before the date of filing of the European patent application, document D8 forms prior art under Article 54(2) EPC, albeit not for the reasons provided in the contested decision.

3. Inventive step (Articles 100(a) and 56 EPC)

It was not disputed that the features distinguishing the subject-matter of claim 1 over the disclosure of document D1 are the following:

"said control panel comprising at least a MANUAL COOK button (64);

said microprocessor being configured to execute a manually entered control algorithm in response to user manipulation of said MANUAL COOK button (64); and

said manually entered control algorithm being defined by a user selected total COOK TIME and a user selected one of said number of POWER LEVEL settings for said microwave cooking unit (154) and one of said number of POWER LEVEL settings for said at least one radiant cooking unit (150, 152)."

The respondent asserted that document D8 disclosed on page 14, figure 19, in the central one of buttons 8, a combination of radiant and microwave cooking symbols. Thus, the central button 8 corresponded to the claimed manual cook button.

The board does not agree with this assertion. In particular, according to figure 19 of D8, separate buttons and separate dials are used in order to manually enter parts of the control algorithm regarding the radiant cooking units and the microwave cooking unit. Dial 2 and buttons 4 relate to the microwave cooking unit and dial 11 and buttons 8 relate to the grill and the convection cooking unit.

However, the board considers this additional technical difference, namely to arrange a single button/dial combination instead of more such combinations, for entering a control algorithm, to lie within the field of ordinary skill from which the person skilled in the art selects without any inventive effort.

Therefore, the subject-matter of claim 1 does not involve an inventive step, even though not all of the features distinguishing the subject-matter of claim 1 over the disclosure of document D1 are known from the disclosure of document D8.

With respect to independent method claim 9, the above reasoning applies mutatis mutandis.

4. Therefore the patent cannot be maintained as granted, so that the appeal has to be dismissed, in accordance with the request of the respondent.

5. Reimbursement of the appeal fee (Rule 103 EPC)

The appellant requested reimbursement of the appeal fee under Rule 103 EPC on the basis of an alleged substantial procedural violation, namely the violation of their right to be heard according to Article 113(1) EPC.

According to Rule 103(1)(a) EPC the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

Since the appeal is not allowable, it would go beyond the power of the board to examine the question of whether the reimbursement of the appeal fee is equitable by reason of a substantial procedural violation.

Nonetheless, for the sake of completeness, it is noted that an explanation as to why the board considered the alleged substantial procedural violations to be merely a number of unfortunate events was communicated to the parties before the oral proceedings.

Order

For these reasons it is decided that:

The appeal is dismissed

This decision T 525/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T052513.20180622. The file wrapper can be found here. Photo "Cat on Microwave" by David Shane obtained via Flickr under CC BY 2.0 license (no changes made).