T 0929/18 - Refusal without prior art search

Key points

• This is an appeal against a refusal decision.
• The invention is about "mobile location data sharing". The filing date is in 2009; the search report was established in 2009; the first Communication was issued in 2012; next action: summons oral proceedings in 2017, refusal decision in 2017. The Board's preliminary opinion was negative. 
• The search report did not cite any documents but rather stated that "the technical aspects identified in the present application are considered part of common general knowledge" (link). 
• The Board: "The appellant's request that a patent be granted on the basis of the main request, or one of the first to third auxiliary requests, cannot be allowed because no patent can be granted without a prior art search (Article 52(1) in combination with Article 92 and Rule 61(1)EPC)."
• The independent claims as filed indeed seem to broadly specify location sharing in a group by a mobile phone [user device] for a limited time, i.e. with instructions to share the information for a limited time and to stop sharing the information thereafter. 
• I note that in 2009, the previous version of Rule 63 applied, and Rule 137(5), second sentence, accordingly does not apply to the present application. However, as the searched claims recited technical means, such as a user device and an output interface, no declaration under R.63 is issued; instead, a search report not citing any document is established (OJ 2007, p.592; T1411/08; T1242/04 r.9.2)
• "The examining division refused the application for lack of inventive step without referring to any document. Essentially, they considered that the technical character of independent [method] claim 5 resided solely in the implementation of an administrative scheme on a notoriously known electronic data processing system"
• I note that the claims as pending at the time of the refusal decision were significantly amended compared to the claims pending at the time of the search.
• "The Board does not see a problem with the practice of referring to notorious knowledge in such cases; it has the obvious benefit of avoiding the need to prove facts that are self-evident or indisputably well known."
• "According to the Boards' jurisprudence (see e.g. T 1242/04 [...]), it is possible to raise an objection of lack of inventive step without documentary prior art if the technical features of the invention are notorious, i.e. so well known that it cannot reasonably be contested that they are prior art."
• "Claim 5 refers to mobile user devices in a "peer-to-peer" data sharing group."
• " In its communication accompanying the summons to oral proceedings, the Board had misgivings about the peer-to-peer aspect of the invention. Firstly it did not appear to be part of the inventive concept in the sense that it contributed to the problem that the application set out to solve. It also rather appeared from the way in which the application presented the invention that "peer-to-peer" was part of the background framework or at least technically irrelevant." 
• "At the oral proceedings, the appellant argued that the application did not describe the claimed aspects of peer-to-peer networking as known, and moreover that limiting the time period during which the devices shared data was particularly advantageous in mobile peer-to-peer networks."
• "The Board considers that, taken together, the features of the mobile device, peer-to-peer, group data and address arrangement and the relay or router [...] define details of an electronic communication architecture that cannot be dissected into non-technical and technical parts. "
• "Although the Board still has doubts about the significance of the peer-to-peer feature it would be unfair to judge such issues without proper prior art. This would be to put the cart before the horse by putting the substantive examination before the search (see e.g. T 1515/07 []). Indeed, a search may reveal prior art which puts the invention in a perspective that is different from what was originally set out in the application."
• " Also, there has been a lot of development in mobile communication networks since the filing date of the application. Thus, what is self-evident now might not have been so in 2009. Therefore, the Board judges that a search is necessary."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t180929eu1.html

Reasons for the Decision

1. Summary of the invention

1.1 The invention concerns the sharing of mobile location data in a peer-to-peer data sharing group. For privacy reasons or other reasons (paragraph [0005]), the location data sharing is limited to certain time periods (e.g. the next 30 minutes or specific days - see paragraphs [0037] to [0039]). The user can select those time periods via a user interface of the mobile device (see Figures 4B, 5A to 5C, and 6A to 6C).

2. Main request and first to third auxiliary requests

2.1 The appellant's request that a patent be granted on the basis of the main request, or one of the first to third auxiliary requests, cannot be allowed because no patent can be granted without a prior art search (Article 52(1) in combination with Article 92 and Rule 61(1)EPC).

3. The request for remittal

3.1 The appellant further requested that the case be remitted to the examining division for a search. The Board allows this request for the following reasons.

3.2 The examining division refused the application for lack of inventive step without referring to any document. Essentially, they considered that the technical character of independent claim 5 resided solely in the implementation of an administrative scheme on a notoriously known electronic data processing system comprising a local and a remote computer communicating over a network and exchanging data.

3.3 The Board does not see a problem with the practice of referring to notorious knowledge in such cases; it has the obvious benefit of avoiding the need to prove facts that are self-evident or indisputably well known.

According to the Boards' jurisprudence (see e.g. T 1242/04 - Provision of product-specific data/MAN, T 1411/08 - Pairing providers with consumers/In-Development, and T 2467/09 - Custom stores/APPLE), it is possible to raise an objection of lack of inventive step without documentary prior art if the technical features of the invention are notorious, i.e. so well known that it cannot reasonably be contested that they are prior art.

3.4 The Board does not doubt that the data processing systems envisaged by the examining division are examples of notorious prior art. Hence, no document is needed to prove their existence.

3.5 However, in T 1411/08 (see paragraph 4.2), the Board interpreted "notorious" as implying that technical detail was not significant:

"The examination of a combination of features in relation to inventive step normally involves questions such as what advantages and disadvantages the combination is said to have, and in what technical areas it is used. This is the sort of information a search should uncover. On the other hand, a claim may be so drafted that such questions do not arise. It is prior art reflecting such generic features that the Board understands as "notorious". Thus a "computer for sending a message" is notorious, whereas a "32-bit computer for sending a message" would not be, when, for example, questions of advantages and disadvantages of 32-bit computers arise."

3.6 Claim 5 refers to mobile user devices in a "peer-to-peer" data sharing group. Each mobile user device of the data sharing group stores the shared data and maintains a list of the mobile user devices in the data sharing group. Messages from one mobile user device are directed to the respective members of the group through a relay or router, and the messages contain the addresses of the group members.

3.7 It appears from their decision that the examining division considered that the "peer-to-peer" data sharing group was administrative in nature (end of point 1.3) and that the implementation via the relay or router was an example of the above-mentioned insignificant technical detail, essentially being mapped onto the router in a conventional network (point 2.2).

3.8 In its communication accompanying the summons to oral proceedings, the Board had misgivings about the peer-to-peer aspect of the invention. Firstly it did not appear to be part of the inventive concept in the sense that it contributed to the problem that the application set out to solve. It also rather appeared from the way in which the application presented the invention that "peer-to-peer" was part of the background framework or at least technically irrelevant. Finally since the application did not go into much detail on how the peer-to-peer data sharing was to be implemented, there might have been some doubt whether the invention was sufficiently disclosed (Article 83 EPC).

3.9 At the oral proceedings, the appellant argued that the application did not describe the claimed aspects of peer-to-peer networking as known, and moreover that limiting the time period during which the devices shared data was particularly advantageous in mobile peer-to-peer networks. In other words, the peer-to-peer aspect was a significant technical detail and was part of the inventive concept.

3.10 The Board considers that, taken together, the features of the mobile device, peer-to-peer, group data and address arrangement and the relay or router given in paragraph 3.6 above define details of an electronic communication architecture that cannot be dissected into non-technical and technical parts. In other words, the Board considers that a mobile user device of a peer-to-peer data sharing group is a technical feature of the infrastructure of the system. The Board also considers that this implies the type of technical detail meant in T 1411/08 (supra) and thus goes beyond a notorious data processing system.

3.11 Although the Board still has doubts about the significance of the peer-to-peer feature it would be unfair to judge such issues without proper prior art. This would be to put the cart before the horse by putting the substantive examination before the search (see e.g. T 1515/07 - Cost estimate/SAP at point 6, last paragraph). Indeed, a search may reveal prior art which puts the invention in a perspective that is different from what was originally set out in the application. Also, there has been a lot of development in mobile communication networks since the filing date of the application. Thus, what is self-evident now might not have been so in 2009. Therefore, the Board judges that a search is necessary.

3.12 According to Article 11 RPBA 2020, the Board shall not remit a case to the department whose decision was appealed for further prosecution unless special reasons present themselves for doing so. Remitting the case for a search to be carried out is a special reason.

3.13 For these reasons, the Board remits the case to the examining division for an additional search to be carried out (Guidelines C-IV 7.2). The Board notes that the Guidelines do not define what such an additional search should cover. However, it goes without saying that, in a case like this where no search has been carried out, the additional search should be just as complete as a normal prior art search under Article 92 EPC. Furthermore, in the interest of proper administration, the results of the search ought to be presented in the public file, either in a separate document or in a communication of the examining division. At a minimum, the field of search and the relevant documents should be indicated. Should the search not reveal any relevant documents, a statement to that effect would allow the applicant, a Board of Appeal, and third parties to conclude that the search has been completed.

4. Reimbursement of the appeal fee

4.1 Under Rule 103(1)(a) EPC, the appeal fee shall be reimbursed where the Board deems the appeal to be allowable if such reimbursement is equitable by reason of a substantial procedural violation.

The jurisprudence holds that the failure of the examining division to carry out an additional search when this was "manifestly necessary" amounts to a substantial procedural violation which warrants the reimbursement of the appeal fee (see T 1242/04, supra and T 1515/07, supra). However, when judging whether a search was "manifestly necessary" a distinction must be made between a situation where the examining division failed to carry out a search despite realising that the feature was technical, and the situation where the division misjudged the feature's technical contribution (see T 1924/07 - FA Information/BRIDGESTONE CORP. referring to T 690/06 - Financial records/AUKOL and T 698/11 - Financial records/AUKOL). The latter is an error of judgement rather than a procedural error. In such cases, the appeal fee shall not be reimbursed since no procedural violation occurred.

In the present case the examining division considered that the "peer-to-peer" data sharing was non-technical and the relay or router was part of a notorious network infrastructure. The examining division gave reasons to this effect, and those reasons were coherent and logical. The Board, however, simply has a different interpretation of the same facts. Therefore, the Board judges that no substantive procedural violation occurred. Consequently, the criteria for reimbursing the appeal fee set out in Rule 103(1)(a) EPC are not satisfied.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for

further prosecution including a search.