Wednesday, September 26, 2018 T 2355/12 - the boundaries of claim interpretation

A prior art user equipment

In a novelty objection the terms of the claims might be given a broader reading then the applicant would like. This decision shows that there are limits on how broad a term may be constructed.

The invention concerns a "A method for measuring audience size information based on playbacks of a recorded program" in which programs are recorded on "user equipment of a plurality of audience members".  In his refusal, the Examiner found that the central playback facilities in a video distribution system anticipates the term; after all such equipment is in common use by the plurality of audience members. 

The board agreed with the applicant that this interpretation conformed neither to the normal meaning of the term nor to the description of the present application. Unfortunately, for the applicant his victory was short lived as the objection was turned into an inventive step objection upon remittal. The current status of the file is a deemed withdrawal, more than 18 years after the priority date.

Tuesday, June 20, 2017 T 2456/12 & T 0059/13 - Interpretation by the skilled persion

In two recent decisions in opposition appeal, the Board addressed how the skilled person interprets the claims. In interpreting the claims for assessing novelty and inventive step, the Board refers to established case law and emphasizes that "the patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding" and that "the skilled person should try with synthetical propensity, to arrive at an interpretation which is technically sensible and takes into account the whole of the disclosure of a patent". 

Sunday, October 02, 2016 T 1242/06 - Tomatoes III

After two referrals to the EBoA underlying G 1/08 and G 2/12 settling the Art. 53(b) issues relevant for the present case, the Opposition Appeal proceedings regarding the “Tomato” patent have reached their end: The patent is maintained in amended form with two claims relating to the Tomato fruit itself but no claims to the method of their production. The maintained claims are the claims of Auxiliary request I discussed in the below (highlighted in red and bolded). Depositing of the lines used to obtain the claimed Tomato fruit was not found necessary for enablement. The inventive step of the claimed tomato fruit was found to lie in the low expectation of success of the performed selection.

Friday, July 08, 2016 T 277/12 - Technical feature or particular use?

In this opposition appeal, the novelty of claim 1 is discussed, which reads as follows:

"A life support system for an aircraft, including a first oxygen supply apparatus operable to provide a limited supply of first product gas being one of pure oxygen and oxygen-enriched gas, to a breathing gas supply apparatus, and a second oxygen supply apparatus operable to provide a durable supply of second product gas which is an oxygen-enriched gas containing a lower concentration of oxygen than that in the first product gas to the breathing gas supply apparatus, wherein the second product gas is supplied at a pressure which is higher than that at which the first product gas is supplied to the breathing gas supply apparatus".

Of particular interest is the highlighted part: the Board deliberates whether this implies an actual technical limitation of the system, or merely pertains to a particular use of the system.

The Board considers the answer to lie in the specification: "the skilled person will need to interpret the claim by seeking to understand how the claimed pressure relationship is achieved in the rest of the specification".

Friday, January 23, 2015 1754/11: A fabric finished with a "mixture"

This appeal lies from a decision of the Opposition Division. There was an earlier appeal T0681/01 in this case. In decision T0681/01 the then pending third auxiliary request was remitted to the Opposition Division to decide on the issue of novelty over alleged prior use and the issue of inventive step. The Opposition Division decided to maintain the patent in accordance with the claims of the then pending main request, which are equal to the above mentioned third auxiliary request. Opponents 1 and 2 filed the appeal.
As the result of the submissions of the Appellants and the Respondent (patent owner) the
Board had to interpret the main claim, in particular the term "mixture". Also, the Board decided on inventive step and "for the sake of completeness" the Board discussed two inventive step approaches which each start from a different closest prior art.
The decision comprises also many other interesting points, like the admissibility of alleged public prior use and the apportionment of costs.  For those subjects, the interested reader is referred to the full text of the decision.

Summary of Facts and Submissions
 
(...) 

IV. Claim 1 according to said third auxiliary request reads as follows:"1. A pleated blind or roller shade comprising a fabric material having a first finish on a first side and a second finish on a second pearlescent side; said first finish comprising a mixture including a first pigment having a first particle size and said second finish comprising a mixture including said first pigment and a second, light reflective pearlescent pigment having a second particle size; said second particle size being larger than said first particle size; the particles of the first pigment being capable of permeating said fabric, whereas the particles of the second pigment remain substantially on the second side, and said second side of said fabric having substantially the same colour as said first side.".

Dependent claims 2 to 7 according to said request relate to specific embodiments of the pleated blind or roller shade of claim 1.

(...)

The Opposition Division decided, inter alia,
- to admit documents D7 and D11 despite their belated filing,
- not to admit documents E20 to E25 in view of their very late filing, their lack of prima facie relevance and their lack of completeness, in the sense that they did not prove up to the hilt the alleged public prior use of a fabric according to sample E5;
- that the fabric "Dapple SPC Ecru" belonged to the prior art under Article 54(2) EPC;
- that, however, the public prior use of the fabric "Dapple SPC Ecru" was not novelty destroying for the subject-matter of claim 1 at issue since said fabric did not comprise a second finish on the second side containing a mixture of pigment particles as required by claim 1;
- moreover, the claimed subject-matter was inventive with regard to the public prior uses of the fabric "Dapple SPC Ecru" and of fabrics for shower curtains corresponding to those of samples E3 and E4;
- hence the claimed subject-matter was novel and involved an inventive step over the cited prior art.
The Opposition Division also considered that the second oral proceedings of 1 April 2011 had to be held because of the late filing by Opponent 01 of documents E20 to E25, but that "no voluntary abuse of the proceedings was intended" by Opponent 01. Hence, for reasons of equity, the Opposition Division decided an apportionment to Opponent 01 of 70% of the costs endured by the Patent Proprietor in connection with the second oral proceedings of 1 April 2011.

VI. Appellants 01 and 02 (Opponents 01 and 02) submitted in their statements of grounds of appeal that the claimed subject-matter lacked novelty or at least inventive step in view of the alleged prior uses.
In particular they invoked :
- lack of novelty over the alleged public prior use of a fabric according to sample E5;
- lack of novelty or inventive step over the alleged public prior use of a fabric "Dapple SPC Ecru" and of other Louver-Lite SPC fabrics mentioned in exhibit SWB1; and
- lack of inventive step starting from the public prior uses of a fabric according to samples E3 or E4.
Appellant 02 also submitted as further evidence inter alia
D14: Declaration by Mr. Barratt dated 14 October 2011 including exhibits BLB3 to BLB5;
D15: Extracts from the Oxford Dictionary of Chemistry, fourth edition 2000, page 364, relating to the definition of "mixture"; and
D16: Printout (11/10/2011) of four web pages (1/4 to 4/4) from the Online Free Dictionary, relating to the definition of "mixture".
Appellant 01 also contested the decision on apportionment of costs.

VII. The Respondent (Patent Proprietor) re-submitted with its reply of 2 March 2012 the sets of claims (labelled "main request claims - filed 23 January 2009") held allowable by the Opposition Division, and also filed further sets of amended claims as auxiliary claim requests 1 to 11. It contested also the admissibility of documents that had been filed belatedly during the opposition and appeal proceedings by the Appellants and maintained that the claimed subject-matter was novel and inventive over the cited prior art. Moreover, it also contested the decision on apportionment of costs.

(...)
Reasons for the Decision
 
(...) 

Respondent's main request - Construction of claim 1

1. Interpretation of the term "mixture" in claim 1

1.1 Claim 1 concerns a "pleated blind or roller shade comprising a fabric material having a first finish comprising a first pigment on a first side and a second finish on the second pearlescent side". As regards said second finish the wording of the claim requires that it comprises "a mixture including said first pigment and a second, light reflective pearlescent pigment".
As regards the meaning to be given to the term "mixture" within the context of claim 1 there was no agreement among the parties. Therefore, the Board must decide which is the proper meaning of this term in the context of claim 1, in order to establish the breadth of the claim to be considered in the assessment of novelty and inventive step.

1.2 It is established jurisprudence of the Boards of Appeal of the EPO that claims should be read giving the words the meaning and scope which they normally have in the relevant art unless the description gives the words a special meaning by explicit definition (see e.g. decision T 620/08, point 3.8 of the reasons).

1.3 It is undisputed that in the present case there is no explicit indication in the description of the patent in suit of any such special meaning to be attributed to the term "mixture" within the context of claim 1. Therefore, the term "mixture" has in the present case the meaning and scope that it normally has in the relevant art.

1.4 The Board agrees in this respect that dictionaries containing definitions for the term "mixture", as illustrated in documents D15 and D16, are a suitable basis for the correct interpretation of this term within the context of claim 1 insofar as the definitions are applicable to the specific technical field, which is the chemical technical field of pigment comprising compositions.

1.4.1 The Board remarks also that the admissibility of D15 and D16 was not contested by the Respondent (see point IX supra) despite their late filing. The Board has also no reason for disputing their admissibility.

1.4.2 Moreover, even though the filed pages of D15 and D16 relate to versions of dictionaries published after the priority date claimed by the patent in suit, it was not disputed that the definitions contained therein were already applicable at said priority date.

1.4.3 D15 is an excerpt from a chemical dictionary and defines a "mixture" as "a system of two or more distinct chemical substances" and specifies that there exist "homogenous mixtures...in which the atoms or molecules are interspersed" and "heterogenous mixtures which have distinguishable phases".

1.4.4 D16 is a collection of excerpts from various dictionaries. The definitions of the term "mixture", which are at first sight applicable also to the chemical technical field of pigments are the following:
- "1.a. The act or process of mixing: An alloy made from the mixture of two metals;
and
"5. Chemistry A composition of two or more substances that are not chemically combined with each other and are capable of being separated"
(excerpt from "The American Heritage Dictionary of the English Language", page 1 of D16);
- "1. the act of mixing or state of being mixed;
and
"3. (Chemistry) Chem A substance consisting of two or more substances mixed together without any chemical bonding between them"
(excerpt from "Collins English Dictionary - Complete and Unabridged", page 1 of D16);
- "A composition of two or more substances that are not chemically combined with each other and are capable of being separated"
(excerpt from "The American Heritage Science Dictionary" page 1 of D16);
- "(chemistry) a substance consisting of two or more substances mixed together (not in fixed proportions and not with chemical bonding)"
(excerpt from "Based on WordNet 3.0, Farlex clipart collection", page 2 of D16).
From the definitions listed above it can thus consistently be derived that the term "mixture" indicates normally in the chemical technical field a homogenous or heterogenous system formed by mixing together two chemical entities which do not bind chemically with each other.

1.5 Appellant 02 invoked inter alia the following special definition:
"lamellar mixture - a mixture in which substances occur in distinct layers"
(excerpt from "Based on WordNet 3.0, Farlex clipart collection", page 2 of D16).

1.5.1 However, it is clear for the Board that this definition concerns a very specific system occurring only under particular circumstances, which system would always be referred to in the relevant art as "lamellar mixture" and not simply as "mixture". Hence, this definition cannot be considered to represent the normal meaning that a skilled person would apply to the term "mixture" in the relevant art, let alone in the context of claim 1.

1.5.2 The Board remarks in particular that the wording of claim 1 requires said first pigment particles and said second pearlescent pigment particles to be present in a "mixture" comprised in one and the same finish.
Therefore, the Board concludes that the wording of claim 1 does clearly not encompass, on a proper interpretation, a mixture wherein said two types of pigments particles are not contained in the same layer but in different layers.

1.5.3 Consequently, a fabric comprising on one side a coloured first pigment and a pearlescent pigment in different layers, wherein both pigments are, in combination, responsible for the visual colour effect perceived by the observer on said side of the fabric, does not, for the Board, meet the criterion of claim 1 at issue, which requires instead two individual types of pigment particles mixed together in one and the same finish composition.

1.6 As regards the Appellants' submission that the "mixture" according to claim 1 at issue would also encompass embodiments wherein the pearlescent pigment comprises a coating consisting of a first pigment of smaller particle size, the Board remarks that such an interpretation is also not in agreement with the normal meaning to be given to the term "mixture" as set out above.

1.6.1 In such a case the pearlescent pigment is coated onto the particles of the first pigment but not "mixed" with the first pigment.

1.6.2 Moreover, the fact that at a microscopic level some admixing of the first pigment with the pearlescent pigment could anyway occur is irrelevant since the coating is an integral part of the pearlescent pigment and a pearlescent pigment comprising a coating is, on a proper interpretation, also clearly distinct from a mixture of a first pigment and a second pearlescent pigment.

1.6.3 This is confirmed by the use of the term "pearlescent pigment" in the prior art as, for example, shown in the brochure BLB3, submitted by Appellant 02 with the declaration D14, concerning the commercially available pearlescent pigments of the Iriodin® series, consisting of mica coated with titanium dioxide. This document reads, in fact, on page 2: "The mica serves as a carrier for the transparent titanium dioxide layer, which is solely responsible for the pearl lustre".

1.7 Therefore, the Board accepts the argument of the Respondent that a "mixture" of a first pigment with a pearlescent pigment in the sense of claim 1 must be understood to concern a composition comprising two types of distinct, individual pigments particles of different particle size mixed together (as opposed to one particle type coating the particles of the other type) within said finish composition without formation of any chemical bond between them.

Respondent's main request - Novelty and inventive step

2. Objections and evidence

2.1 Allegation of prior use relying on sample E5

(...)

2.1.2 The Board also sees no reason for calling into question the finding decision of the Opposition Division that said allegation of public prior does not meet the strict standard of proof applicable. Hence, this alleged prior use is not further considered as prior art in the following reasons.

2.2 Public prior uses of fabrics according to samples E3 and E4

(...)
2.2.2 These fabrics may thus be taken into consideration as prior art in the assessment of inventive step.

2.3 Alleged public prior uses of SPC fabrics

(...)


2.3.4 Therefore, in the following, the prior uses based on SPC fabrics are all dealt with by referring to the fabric "Dapple SPC Ecru" only.

3. Novelty

3.1 As confirmed by Appellant 02 at the oral proceedings, the fabric "Dapple SPC Ecru", which can be used in a roller blind or shade as disclosed in SWB1 (see e.g. page 3, section Solar Protective Coating (SPC); section "Shades of Perfection"; sub-section "Roller Blinds" and Figure; Table on page 4), comprises a dyed fabric material containing a first pigment permeating the fabric, an intermediate heat-sealable layer coated on one side of the dyed fabric and a white layer of titanium dioxide coated mica (a pearlescent pigment) as outer layer on the heat-sealable layer.

3.2 Based on its interpretation of the term "mixture" as used in claim 1 (point 1.7 supra), the Board concludes that this SPC fabric does not contain on a second side a finish comprising a "mixture" of a pearlescent pigment and a first pigment of smaller particle size.

3.3 Hence, the subject-matter of claim 1 and, consequently, of claim 2 to 7 dependent thereon, is novel over a roller blind comprising the fabric "Dapple SPC Ecru" or any other SPC fabric made available to the public by prior use.

3.4 Since no other prior art was cited against the novelty of claim 1 according to the main request (see point XI supra), the Board concludes that the subject-matter of claim 1 and, consequently, that of claims 2 to 7 dependent thereon is novel (Articles 52(1) and 54(1)(2) EPC).

4. Inventive step

4.1 The invention

4.1.1 The invention concerns a pleated blind or roller shade.

4.1.2 As explained in the patent in suit (paragraph [0002]), pleated blinds and roller shades of the prior art usually incorporated fabric material coloured on the first side to enhance the decorative function of such window covering product, while being metallized on the opposite second side for reflecting sunlight or heat.

4.1.3 Therefore, according to the patent in suit (see paragraphs [0009], [0011] and [0016]), the invention aimed at providing alternative pleated blinds or roller shades which have substantially equal heat and light reflective properties as conventional metallized fabrics, have an improved resistance against damage and wear during use, may be prepared in a more economical way in a single operation and wherein both sides may have substantially the same colour.

4.2 Closest prior art

4.2.1 The Respondent considered the known metallized pleated blinds described in paragraph [0002] of the patent in suit as the most appropriate starting point for the evaluation of inventive step, i.e. pleated blinds which incorporate fabric material that is coloured on the first side to enhance the decorative function of such window covering product, while being metallized on the opposite second side to reflecting sunlight or heat.

4.2.2 For the Board, the starting points indicated by Appellant 01, i.e. the prior used fabrics according to samples E3 or E4 are a less appropriate starting point than the prior art cited by the Respondent, since they were made for use in shower curtains, i.e. they belong to a different technical field than that of the patent in suit and were not intended to have substantially equal heat and light reflective properties as conventional metallized fabrics.

4.2.3 As regards a roller blind according to SWB1 comprising the allegedly prior used fabric "Dapple SPC Ecru", the advertisement SWB1 clearly describes on its last page under the heading "Solar, Optical and Colour Fastness Properties" the outstanding heat and light reflective properties of the SPC fabrics described.
Therefore, the Board accepts that the public prior use of such a fabric, if proven, could well be considered to represent a suitable starting point for the evaluation of inventive step.

4.2.4 In the following assessment of inventive step the Board thus follows, for the sake of completeness, each of the two possible approaches, which, however, both lead to the same conclusion that the claimed subject-matter is not obvious. Approach A starts from a roller blind containing the fabric "Dapple SPC Ecru" (assuming for the sake of argument that it belongs to the state of the art to be considered) and approach B starts from a pleated blind comprising a metallized fabric as mentioned in the patent in suit.

Approach A

4.3 Technical problem underlying the invention

4.3.1 According to Appellant 02, the technical problem underlying the claimed invention, in the light of a roller blind comprising the fabric "Dapple SPC Ecru", consisted only in the provision of an alternative roller shade having a fabric of substantially the same colour on both sides.

4.4 The solution
As the solution to the technical problem indicated above, the patent in suit proposes the roller shade according to claim 1 at issue, which is characterised in that it comprises " a fabric material having a first finish on a first side and a second finish on a second pearlescent side; said first finish comprising a mixture including a first pigment having a first particle size and said second finish comprising a mixture including said first pigment and a second, light reflective pearlescent pigment having a second particle size; said second particle size being larger than said first particle size; the particles of the first pigment being capable of permeating said fabric, whereas the particles of the second pigment remain substantially on the second side, and said second side of said fabric having substantially the same colour as said first side".

4.5 Success of the solution
The parties did not contest that the technical problem indicated above was successfully solved by means of the claimed solution. The Board has also no reason to doubt the success of this solution.

4.6 Non-obviousness of the solution

4.6.1 It remains thus to be decided whether it was obvious for the skilled person, starting from a roller blind comprising the fabric "Dapple SPC Ecru", to modify such a fabric in such a manner as to arrive at a roller shade falling within the terms of claim 1 at issue.

4.6.2 As already noted above (point 3.1 supra) the fabric "Dapple SPC Ecru" has an intermediate heat-seal layer between the dyed fabric and the outer SPC pearlescent layer. Moreover, SWB1 explicitly discloses that (emphasis added) "As the SPC backing (the pearlescent outer layer) is white, blinds will always give a uniform appearance to the outside of a building irrespective of the colours chosen for individual work area".

4.6.3 Therefore, SWB1 does not induce the skilled person to modify the colour of the pearlescent outer layer. Consequently, it does also not suggest to modify the structure of the SPC fabrics, for example, by removing the intermediate heat-sealing layer in the attempt to allow the coloured first pigment present on the other side and in the fabric to migrate till the SPC layer, or by using a different pearlescent pigment which contains an appropriate coloured coating matching the colour of the other fabric side.

4.6.4 Furthermore, even if the skilled person were to consider replacing the white pearlescent pigment of "Dapple SPC Ecru" with a differently coloured one, the resulting fabric would still be different from the fabric of the roller shades according to claim 1 at issue, since it would not contain a finish comprising a mixture of a first pigment with a pearlescent pigment.

4.6.5 As was submitted by Appellant 02 the skilled person, faced with the technical problem mentioned above, could, in theory, try to modify the fabric "Dapple SPC Ecru" by maintaining the white pearlescent backing whilst replacing the coloured pigment used for dying the fabric with, for example, a white pigment like titanium dioxide (which is the coating material of the pearlescent pigment). According to Appellant 02, this approach was suggested by the listing of a product "Dapple SPC White" on the last page of SWB1.
However, the Board observes that further details of said fabric are not given in SWB1 and were not provided by Appellant 02. Moreover, even if the skilled person were to consider putting said theoretically possible concept into practice, the resulting fabric would still be different from the one defined in claim 1 at issue, since the latter must contain a mixture of two different pigments in the pearlescent finishing layer.

4.6.6 Therefore, the Board concludes that the skilled person, starting from a roller blind comprising "Dapple SPC Ecru" (or any of other SPC fabrics invoked), would not, without considerations based on hindsight, arrive in an obvious way at a roller shade falling within the terms of claim 1 at issue.

Approach B

4.7 Technical problem

4.7.1 In the light of the pleated blinds containing a metallized fabric (see paragraph [0002] of the patent in suit) taken as closest prior art, the technical problem was stated to consist in the provision of pleated blinds having improved properties and which can be produced in a more economical way (see point 4.1.3 supra).

4.7.2 In the following assessment, the Board considers, purely for the sake of argument and in favour of Appellant 01, that this technical problem was not convincingly solved.

4.7.3 Therefore, the technical problem formulated, accordingly, in less ambitious terms, can be seen in the provision of alternative pleated blinds having heat and reflective properties and comprising a fabric of substantially the same colour on both sides.

4.8 The solution

4.8.1 As the solution to this technical problem, the patent in suit proposes a pleated blind according to claim 1 at issue (see 4.4 supra as regards all the characterising features) wherein one side of the fabric is provided with a finish comprising a mixture of the first pigment, which is also present in the finish on the other fabric side, with a pearlescent pigment.

4.8.2 The parties did not contest that the stated technical problem is successfully solved by the claimed solution. The Board has also no reason to doubt this.

4.9 Non-obviousness of the solution

4.9.1 It remains thus to be decided whether it was obvious for the skilled person, starting from a pleated blind comprising a metallized fabric, to modify the metallized fabric side in a manner leading to a pleated blind falling within the terms of claim 1 at issue.

4.9.2 In the Board's judgement the skilled person faced with the less ambitious technical problem posed (point 4.7.3 supra), would not even take into consideration a fabric according to sample E3 or E4, intended to be used for a very different technical application which does not require the fabric to have solar and heat reflective properties.

4.9.3 Consequently, the argument invoked by Appellant 01 that such fabrics were prepared on the same machine by the same companies as fabrics for pleated blinds and roller shades, as allegedly derivable from document E14, is of no relevance. In fact, even if this would be the case, it would not amount to a suggestion to the skilled person to try the application of said fabrics, prepared for complying with the technical requirements of a shower curtain, in products belonging to a different technical field, requiring different technical properties.

4.10 Hence, in the Board's judgement, irrespective of the starting point considered (approach A or B), the subject-matter of claim 1 at issue and, consequently, of claims 2 to 7 dependent thereon, involves an inventive step (Articles 52(1) and 56 EPC).

(...)

Order

For these reasons it is decided that:
The appeals are dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T175411.20141112. The whole decision can be found here. The file wrapper can be found here. Photo obtained from FreeDigitalPhotos.net.

Friday, September 19, 2014 T 1259/08 - Masking a delay technical?

Should a non-technical feature being the sole difference over the prior art be dealt with under novelty or inventive step?

The Board in the present case takes both approaches, namely arguing a lack of novelty due to the difference feature being a subjective feature and therefore not having a limiting effect on the claim. With this lack of novelty reasoning, the Board appears to follow T 553/02 which states in reason 1.3 that "(...) nontechnical features providing no technical contribution to the claimed product (...) do not limit in any way the scope of such a claim".

The Board subsidiarily argues that even if the difference feature were to limit the claim, the claim would lack inventive step based on the difference feature failing to provide a technical solution to a problem. Here, the Board appears to directly follow the approach set out in GL G-VII 5.4.

Summary of Facts and Submissions

I. This is an appeal against the decision of the Examining Division to refuse the European patent application No. 98957085.8. The application concerns the masking of network delay in a networked, user-interactive software application.

II. The Examining Division refused the application according to the state of the file essentially because the idea of masking the delay using a cinematographic technique was not new in view of Capps M. and Stotts D.: "Research Issues in Developing Networked Virtual Realities: Working Group Report on Distributed System Aspects of Sharing a Virtual Reality", Sixth IEEE Workshop on Enabling Technologies: Infrastructure for Collaborative Enterprises, Cambridge, MA, USA, 18-20 June 1997, pages 205-211 (D6).

(...)

IV. In the communication accompanying the summons to oral proceedings, the Board expressed doubts whether, even with the new amendments, claim 1 was novel over D6. Furthermore, the Board considered that, even if the feature of distracting a user with a cinematographic effect were considered to be a difference, this appeared to be a matter of human perception and therefore subjective and not technical. In a reply, the appellant informed the Board that it would not be attending the oral proceedings.

(...)

VI. Claim 1 reads as follows:

"A software agent (114, 116, 118) for local use at a user in a user-interactive software application (112) for running in a distributed system (100) with multiple data processing machines (102, 104, 106) connected via a data network (110), the software agent (114, 116, 118) comprising

an input (203) for receiving information about a delay in the network (110), and

an effector (224) for locally at the user masking the delay by selectively creating an effect dependent on the delay,

the effector being arranged for creating the effect and diverting the user from parts of the application (112) affected by the delay using a cinematographic technique to manipulate an image displayed to the user, sounds supplied to the user or tactile feedback to the user."

Reasons for the Decision

1. The invention

1.1 The invention concerns a networked, user-interactive software application, such as a virtual environment or a multiplayer video game (page 1, lines 2 to 4 of the published application). Such software applications are generally sensitive to delay caused by network latency. In a networked video game, where multiple users are interacting in real time, the network delay may spoil the interactivity of the game (page 1, lines 8 to 12).

1.2 The software agent of the invention seeks to mask the delay by creating a distracting effect that diverts the user from the parts of the application affected by the delay (page 2, lines 3 to 6, 13 and 14). The effect is created using a "cinematographic technique" to manipulate an image displayed to the user, sounds supplied to the user, or tactile feedback to the user (page 2, lines 10 to 14). The cinematographic technique may be, for example: zooming in or zooming out; a dummy object blocking the view; an "interlude"; or switching to another scene (page 2, lines 17 to 24).

1.3 Figure 3 shows an example of a networked video game according to the invention, involving two avatars engaged in hand-to-hand combat. Each avatar is controlled by respective users at networked machines (Figure 1: 102 and 104). When either machine detects an unacceptable network delay, it switches to a close-up (zoomed in) representation of the avatars showing their facial expressions but not the blows that are affected by the delay (page 6, lines 21 to 31). This results in the claimed effect of "diverting the user from parts of the application affected by the delay".

(...)

3. Novelty - claim 1

3.1 The appellant argued that in the invention the delay and the adverse effects were accepted as they were and the cinematographic technique was used to divert the user from these adverse effects. In contrast, the aim of the temporal warping in D6 was to compensate for the delay such that the end of the ball's trajectory was reached without delay. Thus, the temporal warping in D6 was not "diverting the user from parts of the application affected by the delay".

3.2 However, in the Board's view, whether or not a cinematographic technique has the effect of diverting the user from parts of the application affected by the delay is a matter of human perception. The effect will depend on the user's visual system and state of mind, and is, therefore, also subjective. For example, the warping of the ball in D6 might serve to distract some users from other parts of the application, such as the throwing and catching at each end of the event. Other users might not be so distracted and might still notice the delay in all parts of the application. In the Board's view, such a difference cannot have a limiting effect on the claim.

3.3 Accordingly, claim 1 is not novel (Article 54(1) and (2) EPC).

4. Inventive step - claim 1

4.1 Even if the feature of diverting the user from parts of the application affected by the delay had been considered to distinguish the invention, the Board judges that it would not have involved an inventive step.

4.2 It is established jurisprudence of the boards of appeal that an allowable invention must be a technical solution to a technical problem. The appellant stated that the technical problem was how to deal with network delay. The technical solution was to divert the user with the effect. However, since as discussed above, this solution is a matter of human perception, it follows that it would be non-technical. Furthermore, it also follows that it would be unpredictable whether such a subjective feature would actually solve the technical problem. In this respect, the invention is somewhat analogous to showing a video clip to somebody waiting for a lift to arrive, which is also using a cinematographic technique to deal with a delay. Thus, there would be no technical solution to the problem.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T125908.20140506. The whole decision can be found here. The file wrapper can be found here. Photo from European patent application No. 98957085.8

Tuesday, August 12, 2014 T 0958/11 - 'leaving respondent in the dark'

This appeal decision relates to admissibility of certain arguments regarding a reworked prior art experiment in the context of novelty and relates to sufficiency of disclosure. This is an appeal that lies from the decision of the Opposition Division. In this appeal case one of the opponents is the appellant, the patent proprietor the respondent.
 
The novelty of the product as granted was contested on the basis of two experiments in which a prior art process was reproduced. There was no discussion about the first experiment. Already in response to the ground of appeal the respondent expressed severe doubts regarding the proper reworking of the second prior art example, in particular as regards the concentration of the starting materials before mixing. Not earlier than at the oral proceedings, the appellant contested these findings. The respondent expressed its surprise regarding the appellant's statements and requested an adjournment of the oral proceedings to carry out counter experiments in case the board would conclude to a lack of novelty on the basis of the second experiment. In this decision the board clearly expressed its annoyance about the behavior of the appellant. The board finds a solution in Art. 13 RPBA to end the discussion about the second experiment.

In this blog posting, the sufficiency of disclosure discussion is ignored but it is interesting for readers who look for case law in which claims are refused because of a lack of sufficiency of disclosure.



Citations from the decision:

[...] 

Reasons for the Decision

1. Main request - Novelty

1.1 The novelty of the product according to claim 1 as granted was contested on the basis of two experiments in which the process disclosed in example 2 of D1 was reproduced.

1.2 Regarding the first experiment, the board agrees with the findings of the opposition division that this reworking is manifestly not acceptable, as it does not correspond to the strict reproduction of said example, the mixing having been carried out in an agitated reactor while in D1 it occurred in a reactor having a Y form.

1.3 Concerning the second experiment, the respondent expressed severe doubts regarding the proper reworking of example 2 of D1, in particular as regards the concentration of the starting materials before mixing.
The appellant contested these findings and stated that the concentrations of the starting materials cerium nitrate and zirconyl nitrate were conventionally expressed in g/l of CeO2 and ZrO2. The concentrated starting materials were then diluted with water so as to exactly obtain the same concentrations before mixing as in example 2 of D1.
The respondent expressed its surprise regarding the appellant's statements and requested an adjournment of the oral proceedings to carry out counter experiments in case the board would conclude to a lack of novelty on the basis of the second experiment.
The board observes that the information provided at the oral proceedings by the appellant is of such an importance that it would have required an adjournment of the oral proceedings, because - as argued by the respondent - the concentration is one of the key features of the invention (see in particular claim 15 as granted which requires a low concentration of the starting materials).
Since the respondent's doubts had already been raised with its response to the grounds of appeal, i.e. almost three years ago, the board objects to the appellant's silence during the written procedure on this important feature. The oral explanations of the appellant revealed that it was perfectly aware of the obscure presentation of the relevant part of its test. Instead of redressing this defect, the appellant chose to leave the respondent in dark until the oral proceedings.
The appellant's behaviour not to comment during the written procedure on this relevant issue could - if done with the intention to surprise the respondent during oral proceedings - amounts to an abuse of procedure.
At least its explanations during the oral proceedings as to the concentrations of the starting materials and as to the calculation method used constitute an amendment to a party's case, the admittance of which lies within the board's discretion (Article 13(1) RPBA).
Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues that the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA). This is the case here. Having uncovered the concentration of the starting materials and the calculation method, the appellant questioned the relevance of the respondent's doubts as to the proper reworking of example 2 of D1. To show that these doubts prevail it would have now been up to the respondent to perform comparative tests. Whereas these could have been easily performed during the last almost three years, had only the appellant reacted directly to the respondent's response to the grounds of appeal, it is obvious that this is not possible on the day of the oral proceedings.
The Board therefore exercises its discretion not to admit the latest amendment of the appellant's case into the proceedings.
In the absence of a clear and unambiguous reproduction of example 2 of D1, and thus, of a direct and unambiguous disclosure of the claimed subject-matter, the board therefore decides to reject the evidence submitted for lack of novelty.

1.4 The objection of lack of novelty was solely based on the reworked example 2 of D1. None of the documents cited during the opposition proceedings disclose the subject-matter of the four independent claims of the main request at issue. Therefore, the board is satisfied that these claims, and those which depend thereon, meet the requirements of Article 54(1) and (2) EPC.

[...]

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T095811.20140702. The whole decision can be found here. The file wrapper can be found here.
Photo by Vinoth Chandar obtained from Flickr.

Tuesday, December 13, 2011 The ‘Background of the invention’ in novelty and inventive step assessment

A patent application typically starts with a section called ‘background of the invention’. According to European patent law the application should indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention (Rule 42 EPC). The rule helpfully adds that, preferably, the documents reflecting such art should be cited.

A good background sets the context and makes it easy to understand the invention. For applicants that is generally a good thing. An Examiner who is convinced that you have an invention may be more sympathetic to your struggle to get the claims to accurately represent that invention. The background helps to ‘sell’ the invention.

On the other hand, ‘anything you say can and will be used against you’. If the background section is to represent state of the art, then your claims should be inventive when compared to it. If your claims are only a non-inventive variation of the prior art in your background, your invention is not looking good. After all, if even the applicant, who it may be assumed has the best interests of the invention in mind, states that something is known, then the public should be able to rely on that.

So can an Examiner cite your background section against you, or not? Reasoning from the EPC, one would think that he cannot. Art. 54(2) EPC defines the state of the art as everything made available to the public (...) before the date of filing of the European patent application. The patent application, of which the background is part, is not available until 18 months after the filing date, not before it.

This question recently played a role before the Court of appeal in The Hague, in a case between Sanofi and Ratiopharm. (Thanks to IEPT for the text of the decision). In section 11.3 the court considers this question as follows (my translation from Dutch):

In so far that the first-instance court must be considered to have only used the background section of the patent to draw conclusions about the teachings of the state of the art, that is not correct, because the background as such is not part of the prior art. In her statement of appeal, in section 5.20, Sanofi correctly points to case law of the EPO, which considers that using the background section in such as manner is deemed unacceptable. The case-law of the EPO acknowledges that the picture that the background section of a patent draws of the prior art may be based on personal prejudices or views of the inventor / patent attorney and so should be used reluctantly.

At least the Dutch court of appeal is of the opinion that your background section cannot be cited against you as part of the prior art. Unfortunately, the decision does not say which EPO case-law swayed the court.

One decision which, to some extent, supports the court’s point of view is T 654/92. A document was acknowledged in the patent. In the course of the oral proceedings it became clear though that it did not form part of the state of the art, but represented internal knowledge of the applicant's company. Any such art was to be ignored in an assessment of inventive step.

However, there is case law which has a stricter point of view. For example, in T 1073/02, the application contained a drawing "Fig. 6" with the title "background art", together with an explanation of the drawing. According to the applicant that figure did not relate to known prior art. However no explanation could be given why the figure was titled so. The board wanted to consider it as part of the prior art, and even as the closest prior art. The board required “sound evidence in support of the contention submitted by the appellants that said "background art" is not contained in the prior art”. The board then observes that no such evidence has yet been provided. After the case is remitted, the applicant succeeds in explaining the origin of the background art to the Examining division and obtains a grant after all.

Although the standard of proof appears to differ in these decisions, both of them seem to assume that an admission made in the background art is part of the state of the art until reasons are given why the admission was made erroneously.

For these reasons I would not agree to a blanket statement saying that before the EPO ‘background as such is not part of the prior art’. Likely the discussion before the court was more nuanced than can be gleaned from the decision alone. One should prudently assume that admissions made in the background may be cited against you. Good advice is given by Rule 42 itself: if you are going to describe prior art, then preferably, cite a document reflecting such art. It will stop you from disclosing anything that is not public.