EPO Case Law Week 21

Notewhorty decisions published 18.05-22.05.2015

T 0755/09 - Examination appeal of (US originating) application with inventors as co-applicants, appeal mentions only company as appellant, appeal inadmissible (appellant did not attend oral proceedings and did not request correction under R 139)

T 0359/11 - Notorious computer - EPO Headnote: " Where the relevant search authority has stated, either in a search report or in a declaration that no search report will be established, that it is not necessary to cite any documentary evidence of the prior art on the grounds that all of the technical features of the claimed invention are notorious, it is always incumbent upon the examining division to consider whether an additional search is necessary. The criterion to be applied is that if the invention as claimed contains at least one technical feature which is not notorious, the application should normally not be refused for lack of inventive step without performing an additional search."

T 1211/10 - Invention about online shopping not excluded - "Although the examples given in the description relate principally to commercial applications, in particular to online shopping, the board considers the invention not to fall under the exclusions listed in Article 52(2)(c) EPC. In particular, the board does not accept the reasoning in the appealed decision that the problem to be solved by the computing devices used in the invention is "not a technical problem but a business one"; see point 1.5 of the reasons. The board considers that, contrary to the finding in the decision, the aim of the invention is token-based authentication by means of a mobile phone, which is a technical problem. The particular application context in which this problem is solved, i.e. online shopping, does not detract from the technical nature of this problem."

T 0297/11 - Implicit disclosure - " The Board observes that it is a generally applied principle that for concluding lack of novelty, there must be a direct and unambiguous disclosure in the state of the art which would inevitably lead the skilled person to subject-matter falling within the scope of what is claimed. In this context an "implicit disclosure" on which the novelty attack of the Appellant is based means no more than a clear and unambiguous consequence of what is explicitly disclosed (see T 1523/07)." (A123(2) EPC)

Update with decisions of 22.05.2015

T 0335/14 - clarity - " The Board therefore considers that the explicit recitation of something which is implicit is not required as it amounts to a mere tautology."

T 1710/13 - A 123(2) / A 84  trap - application as filed uses "mindestens als 60 mN/m" in claim 1. Correction into " mindestens 60 mN/m contravenes A 123(2), amendment into "mehr als 60 mN/m" contravenes A 123(2) as well, "mindestens als 60 mN/m" contravenes A 84. Patent revoked.

T 1539/11 - case law about parameters applies to other features as well. Feature claim 28: "the channeling agent forms passages for moisture transmission through the composition" -
"The question whether the skilled person will always be able to unambiguously distinguish a composition "containing throughgoing channels as defined in Claim 28 at issue from a composition not containing them or containing only a very small amount of them is an issue of clarity (Article 84 EPC) rather than an issue of sufficiency of the disclosure.

Even assuming for the sake of argument that a problem of this type would arise in the case of structures prepared using a relatively low amount of the channeling agent, it has not been shown that such problem would actually "permeate the whole claim" and hence "deprive the skilled person of the promise of the invention" (see e.g. decision T 0608/07).