T 1473/13 (I) - Unsearched claims

Key points

• This is the first post about this examination appeal, dealing with Rule 137(5). The second post will be about the request for stay and German constitutional proceedings.
• The Board applies Rule 137(5) EPC in my view entirely correctly.
• The Board, notes in connection with Rule 137(5): According to established case law [...], features added from the description to further define an element already a feature of the original main claim do not "affect the notion of unity of invention". Amended claims can only be refused if the subject-matter of the claims filed originally and that of the amended claims was such that, had all the claims originally been filed together, a further search fee would have been payable." 
• " The supplementary European search report was based on the claims as published. In the European search opinion, point 2.1, the search division objected that the claims did not meet the requirements of Article 82 EPC because the claims related to two separate inventions" 
• " The board agrees with the appellant that the features added from the description further specify rather than replace the originally claimed in-band signalling of the deterministic mapping and that these features do not affect the notion of unity of invention" 
•  the board is not convinced that if the claims underlying the appealed decision "had been present in claims at the search stage of the application it would have resulted in requesting an additional search fee" []. The claims of the main and first and second auxiliary requests relate to in-band signalling of deterministic mapping. Thus, they would have been included in the first group of claims identified in point 2.1.1 of the European search opinion. No further search fee was requested for claims within the first group. In view of the above, the examining division was incorrect in refusing the application for not meeting the requirements of Rule 137(5) EPC." 

EPO T 1473/13 - link

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division dated 19 February 2013 refusing European patent application No. 06751124.6 pursuant to Article 97(2) EPC. The application was published as international application WO 2006/113929 A2.

II. The documents cited in the decision under appeal included the following: [...]

III. The decision under appeal was based on the grounds that the independent claims of the main and the two auxiliary requests did not meet the requirements of Rule 137(5) EPC. In the section "Further Remarks" of the decision under appeal, the examining division noted that the independent claims of the main request did not meet the requirements of Articles 83, 84 and 56 EPC and that the independent claims of the auxiliary requests did not meet the requirements of Articles 84 and 56 EPC.

[...]

Reasons for the Decision

1. The appeal is admissible.

2. Main, first and second auxiliary requests - Rule 137(5) EPC

2.1 Rule 137(5) EPC provides that amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.

According to established case law (see Case Law of the Boards of Appeal of the EPO, 8th edition 2016 ("Case Law"), section IV.B.5.4), features added from the description to further define an element already a feature of the original main claim do not "affect the notion of unity of invention". Amended claims can only be refused if the subject-matter of the claims filed originally and that of the amended claims was such that, had all the claims originally been filed together, a further search fee would have been payable.

2.2 The originally filed claims included independent method claims 1, 3, 5 and 7, all relating to signalling a deterministic mapping with the mapping inserted in a reserved field of a vestigial sideband data frame (claim 1), transmitted through spread spectrum (claim 3), transmitted through a signalling channel (claim 5), or transmitted from a second provider (claim 7).

The supplementary European search report was based on the claims as published.

In the European search opinion, point 2.1, the search division objected that the claims did not meet the requirements of Article 82 EPC because the claims related to two separate inventions:

(a) in-band signalling of deterministic mapping using a single transmission channel for both, (ATSC) VSB frames and mapping information describing the frame structure, while retaining full (VSB frame) synchronisation between both (method claims 1 to 4);

and

(b) out-of-band signalling of deterministic mapping in which the actual service content is transmitted from one service provider (e.g. ATSC broadcaster), while mapping information to access data in the content from the first service provider is transmitted independently in a separate signalling channel from a second content provider (method claims 5 to 8).

2.3 Claim 1 of the main, first and second auxiliary request specifies "transmitting an information signaling a deterministic mapping in each VSB data frame of an ATSC data stream".

2.4 The board agrees with the appellant that the features added from the description further specify rather than replace the originally claimed in-band signalling of the deterministic mapping and that these features do not affect the notion of unity of invention (see point XIV(a) above).

2.5 Even though the added features had not been "hinted at in the original set of claims" and addressed "the different, unrelated problem of increasing resilience to long burst errors [...] by deeper than legacy ATSC interleaving", the board is not convinced that if the claims underlying the appealed decision "had been present in claims at the search stage of the application it would have resulted in requesting an additional search fee" (see point XIII(a) above). The claims of the main and first and second auxiliary requests relate to in-band signalling of deterministic mapping. Thus, they would have been included in the first group of claims identified in point 2.1.1 of the European search opinion. No further search fee was requested for claims within the first group.

2.6 In view of the above, the examining division was incorrect in refusing the application for not meeting the requirements of Rule 137(5) EPC.