T 1866/15 - Rule 137(5) case

 Key points

• The Examining Division did not admit a claim request under Rule 137(3) because of non-compliance with Rule 137(5) first sentence.
• The Board follows T 2431/19 that Rule 137(5) pertains to allowability. 
• “For this reason alone, the decision not to admit under Rule 137(3) EPC is incorrect and the auxiliary request is to be taken into account in accordance with Article 12(4) RPBA 2007.”
• “the board does not agree with the decision as regards Rule 137(5) EPC.”
• “The board agrees with the general statement (see also Guidelines H-II, 6.2) that, in order to assess whether or not amended claims fulfil the requirements of Rule 137(5) EPC, first sentence, it needs to be established whether or not an objection of lack of unity would have been raised if the amended claims had been present in the set of claims on file at the time of the search.”
• This is indeed established case law, see my article in epi Information 2018/2. 
• “The board takes the view that there cannot be a lack of unity between two claims where one strictly limits the subject-matter of the other. Accordingly, original claim 1 cannot lack unity with present claim 1, which is a strict limitation of original claim 1.”
• As a comment, I'm not sure what a ‘strict limitation’ is in this context.
• The Board: “ If, for example, claim 1 lacked novelty a posteriori and a "special technical feature" of the original set of claims was contained in claim 2, then the amendment of claim 1 by incorporation of another "special technical feature" with an unrelated effect could lead to the situation that amended claim 1 and original claim 2 lacked unity and that, accordingly, the amendment could not be allowed under Rule 137(5) EPC. ”
• As a comment, I'm not sure what lack of novelty 'a posteriori' means here (I guess it is opposed opposed to lack of novelty 'a priori', but I don't know what that means in this context). 
• But I agree that the amendment can not be allowed in this case.
• “If, however, the original "special technical feature" was contained in original claim 1, then the addition of another, even unrelated, "special technical feature", could not introduce a lack of unity between original and amended claim 1. Accordingly, such an amendment cannot be objected to under Rule 137(5) EPC.”
• Lack of novelty 'a posteriori' suggests to me that claim 1 contains a special technical feature, but then the claim would be novel and inventive over 'the prior art at hand' (Rule 44(1): “The expression "special technical features" shall mean those features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art.”).
• The Board: “if an amendment introduces a feature with an effect entirely unrelated to the effects of the original claims, this might well be a sound basis for the examining division to deny its consent under Rule 137(3) EPC”
• “since amended claim 1 is a strict limitation of original claim 1, there cannot be a lack of unity and thus there is no violation of Rule 137(5) EPC.”
• “Therefore, the board considers the subject-matter of claim 1 of auxiliary request 1 to involve an inventive step over D2.”
• The case is remitted for an additional search. “Since the board considers it probable that the search for present claim 1 did not cover the additional feature taken from the description ([58]), it is not in a position to order the grant of a patent. ”
• The purpose of Rule 137(5)(s.1) is precisely to avoid  (unpaid) additional searches being necessary if the applicant takes a feature from the description that was correctly not searched during the search stage.

(edited 16.10.2021)

T 1866/15 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t151866eu1.html

3. Admittance of auxiliary request 1 under Rule 137(5) and (3) EPC

3.1 The examining division decided not to admit the main request under Rule 137(3) EPC because it did not meet the requirements of Rule 137(5) EPC (first sentence).

3.2 The board considers that Rule 137(5) EPC, first sen­tence, constitutes a substantive requirement on amended claims, and endorses the findings of T 2431/19 on this point. If an amendment does not comply with Rule 137(5) EPC, it is not allowable on that ground alone and the examining division no longer has discretion whether or not to admit it under Rule 137(3) EPC.

3.3 For this reason alone, the decision not to admit under Rule 137(3) EPC is incorrect and the auxiliary request is to be taken into account in accordance with Article 12(4) RPBA 2007.

3.4 On the substantive requirement, and in contrast to the decision (sections 4-6), the board is of the opinion that claim 1 of current auxiliary request 1 (i.e. the then main request) does comply with Rule 137(5) EPC.

3.5 The examining division (middle of page 8) referred to the Guidelines H-II, 6.2 which state, in pertinent part, that "an objection under Rule 137(5), first sentence, would [...] arise if a technical feature taken from the description which has an effect unrelated to the effect(s) of the features of the originally claimed invention(s) were added to a claim".

3.6 The board does not agree with the finding in the decision (see section 5.2 a.) that original claim 9 implies that access is denied altogether. However, even if that were to be the case, and if, therefore, the effect of "allowing access" were to be "unrelated to" the effects of "denying direct access", the board does not agree with the decision as regards Rule 137(5) EPC.

3.7 The board agrees with the general statement (see also Guidelines H-II, 6.2) that, in order to assess whether or not amended claims fulfil the requirements of Rule 137(5) EPC, first sentence, it needs to be established whether or not an objection of lack of unity would have been raised if the amended claims had been present in the set of claims on file at the time of the search.

3.8 The board takes the view that there cannot be a lack of unity between two claims where one strictly limits the subject-matter of the other. Accordingly, original claim 1 cannot lack unity with present claim 1, which is a strict limitation of original claim 1.

3.9 The board agrees with the quoted passage of the Guidelines (section 3.5 above) insofar as that the effect of an originally claimed invention could be that of a feature of a dependent claim. If, for example, claim 1 lacked novelty a posteriori and a "special technical feature" of the original set of claims was contained in claim 2, then the amendment of claim 1 by incorporation of another "special technical feature" with an unrelated effect could lead to the situation that amended claim 1 and original claim 2 lacked unity and that, accordingly, the amendment could not be allowed under Rule 137(5) EPC. If, however, the original "special technical feature" was contained in original claim 1, then the addition of another, even unrelated, "special technical feature", could not introduce a lack of unity between original and amended claim 1. Accordingly, such an amendment cannot be objected to under Rule 137(5) EPC.

3.10 However, if an amendment introduces a feature with an effect entirely unrelated to the effects of the original claims, this might well be a sound basis for the examining division to deny its consent under Rule 137(3) EPC.

3.11 Returning now to amended claim 1, the applicant (see decision, 5.1, points 2-3 and grounds of appeal, points 5.3-5.5) argued in support of unity that current claim 1 contained more features than original claim 9 (namely "allowing indirect access") and therefore was unitary with it.

3.12 The board prefers to compare current claim 1 with original claim 1 instead of original claim 9 (as in the decision), since current claim 1 does not contain the feature of a "plurality of beta environments" of original claim 9 (see decision, 5.2 b.) but notes that the examining division came to its conclusion even under the assumption that claim 1 was a limitation of original claim 9 (again, see the decision, 5.2 b.).

3.13 Hence, since amended claim 1 is a strict limitation of original claim 1, there cannot be a lack of unity and thus there is no violation of Rule 137(5) EPC.

4. Inventiveness of claim 1 of auxiliary request 1

4.1 Claim 1 of auxiliary request 1 differs from claim 1 of the main request in that (indirect) access from the beta environment to the alpha environment may be provided via a specific class-loader (20).

4.2 According to the appellant, this makes it possible to test a beta application which has been enriched with calls to alpha capabilities that are not present in the beta environment. Developers can carry out testing of enriched beta applications (and of their alpha capabilities) in the existing beta environment without changing it, before deciding whether to implement them in an enriched beta environment.

4.3 Although this scenario is not mentioned in the description, the board finds it plausible and cannot deny the advantages of the claimed invention in such a scenario. In the board's view, this also explains why one would not simply run the enriched beta applications in the alpha environment (notwithstanding various possible compatibility issues between the two environments), namely because the goal is to eventually enrich the beta environment.

4.4 The problem to be solved by the present invention may therefore be regarded as how to integrate alpha capabilities in the beta environment.

4.5 Starting from D2, the straightforward way to solve this problem would be to program the desired alpha capabilities directly into the beta environment.

4.6 However, the invention saves the work of reprogramming the alpha capabilities in the beta environment (at least for testing) and instead teaches installing both environments, running the beta application in the (yet) unchanged beta environment and forwarding calls to alpha capabilities to the alpha environment via a special additional class-loader (20).

4.7 Although additional user-defined class-loaders are known for accessing user-defined and remote sources/locations (as shown, for example, in description paragraphs [38] and [40]-[41]), they are only used according to these passages for loading external classes into the same environment. Here, however, the alpha capability is loaded into the alpha environment, not into the beta environment (see the last paragraph of the claim: "a request ... may access the alpha environment (7) via the beta ... class-loader (20)"). This allows the alpha code to be executed in the alpha environment, thereby avoiding the compatibility problems between the two environments that might arise when loading the alpha code into the beta environment. This methodology clearly goes beyond the normal utilisation of user-defined class-loaders to provide access to user-defined sources/locations (as argued in the summons, section 6.8).

4.8 Therefore, the board considers the subject-matter of claim 1 of auxiliary request 1 to involve an inventive step over D2.

4.9 However, in its decision (4 a., last sentence) the examining division "considers" that the additional feature of current auxiliary request 1 (i.e. the then main request), namely accessing the alpha environment (7) via an additional beta class-loader (20), was not searched. Since the search examiner was not part of the examining division, they could not be sure what was searched, and what was not.

4.10 Since the board considers it probable that the search for present claim 1 did not cover the additional feature taken from the description ([58]), it is not in a position to order the grant of a patent. Exercising its discretion under Article 111(1) EPC, it remits the case to the department of first instance for further prosecution. This will make it possible for the examining division to carry out any necessary additional search for claim 1 of auxiliary request 1 and to assess inventive step on this basis.

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.