T 1437/10 - Double patenting

Key points 

• The Board does not admit a set of claims defining subject-matter being essentially identical to the scope of protection of the granted divisional filed from the present parent, as a decision thereon is "superfluous".
• US provisional without claims as priority document - the Board analyzes that sections 1 and 2 of the priority document disclose an invention in the sense of Article 87(1) EPC, and that sections 4 and 5 do not disclose essential features. Hence, the claims do not need to include the features of sections 4 and 5 for valid priority. 

This post has been prepared in advance.

T 1437/10 - 20.04.2015

Dated 12.02.2015 -Board 3.5.02 (Ruggiu, Bronold, Muhlens) - publication C - for the decision, click here

Reasons for the Decision

1. Admissibility of the amended requests

The Revised New Main Request includes the feature that the turbo interleaver is of size 2**(m). Thus, this request at least partially overcomes an objection of the decision under appeal and was therefore admitted into the procedure.

New auxiliary requests 1 and 2 filed during the oral proceedings claim, in alternative wording, subject-matter essentially identical to the scope of protection of the granted European Patent EP 2 173 036 B1 for which the appellant is the proprietor and for which the present application is the earlier application in accordance with Article 76(1) EPC. Consequently, the subject-matter of new auxiliary requests 1 and 2 is already decided in favour of the appellant and a second decision on the same subject-matter is superfluous. The board therefore exercised its discretion under Article 13(1) RPBA to not admit new auxiliary requests 1 and 2 into the procedure.

2. Right to priority - Article 87 EPC

2.1 In assessing whether a claimed subject-matter is entitled to a right to priority it needs to be established whether the claimed subject-matter concerns the same invention as disclosed in the priority document.

According to opinion G 0002/98 the right to priority is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.

2.2 In the present case, the priority document is US provisional application US60/096,807 which was filed without patent claims. Where no claims are present, it may be more difficult to establish whether the priority document discloses the same invention since a comparison of the subject-matter of the claims is not possible. Nevertheless, the above identified principles equally apply to an application filed without claims.

2.3 The priority document is structured in five sections. The first section being an introduction and the second section being the disclosure of a "General Turbo Interleaver Design Procedure". The first section identifies as driver to the disclosure that the known interleaver methods "lack a general rule that can be used to specify a turbo interleaver of any size N". Thus, the overall aim of the disclosure of the priority document is to produce a general rule that can deliver interleavers of any size N. This aim maybe regarded as the statement of the problem underlying the invention. A solution to this problem is offered in section 2, where the priority document discloses how to design interleavers of any size N by puncturing pre-designed interleavers of size 2**(m). Section 2 also provides an example starting from a pre-designed interleaver of size 2**(m), without any indication that it should be based on Galois field arithmetic.

2.4 Section 4 of the priority document does not contain any further detail regarding the method of puncturing defined in section 2. Thus, it is clear that section 4 does in fact not provide further details to the method of puncturing defined in section 2 but delivers details of other aspects of the turbo interleaver which are unrelated to puncturing. The other aspects are that the interleaver is two-dimensional, that the interleaver is filled row by row, that the intra-row permutation of each row is based on Galois Field arithmetic, that the shuffling of the rows is carried out by bit-reversal indexing, and that the content of the interleaver is read out column by column.

In practice there exist a plurality of possibilities to perform the intra-row permutations of an interleaver, Galois field arithmetic being merely one of those possibilities. The same is true for the shuffling of the rows of an interleaver or the way of writing or reading the data into and from the interleaver. Consequently, the features of section 4 do not form part of the invention disclosed in section 4 [read: 2] nor are they technically necessary for carrying out the invention of section 2. The same argumentation applies even more to the optimisation disclosed in section 5, which is based on the details of the interleaver of section 4.

2.5 Therefore, the additional features in sections 4 and 5 do not contain any details as to how the puncturing is carried out and thus do not limit the method of puncturing according to section 2 of the priority document.

2.6 The board is therefore satisfied that sections 1 and 2 of the priority document disclose an invention in the sense of Article 87(1) EPC, namely to provide interleavers of any size N by puncturing pre-designed interleavers of size 2**(m) according to design steps 1 and 2 specified on pages 2 and 3 of the priority document.

As a consequence, the right to priority according to Article 87(1) EPC for the subject matter claimed in claim 1 of the main request is valid. Therefore, claim 1 enjoys the effect of the right of priority according to Article 89 EPC. Thus, document D1, whose date of publication is after the filing date of the priority document US60/096,807, does not constitute prior art under Article 54(2) EPC for the subject matter of claim 1 of the main request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.