T 1981/11 - Feature description covered by search?

Key point

• If in a search report only background prior art is cited for a claim with a broad feature, it must be assumed that the specific embodiments in the description have been searched. 

T 1981/11 
Dated 04.05.2015, published 01.06.2015. For the decision, click here.

Possible remittal, Article 111(1) EPC 1973, in view of the scope of the search

13. For the present application an international search was carried out which produced no documents other than D1 and D2, D1 being prior art under Article 54(3) EPC and 54(4) EPC 1973 and D2 being classified as an "A" docu­ment lacking particu­lar relevance for novelty or inven­tive step for all the ori­ginal claims.

13.1 While this search must be assumed to have been complete for the claims as origi­nally filed, it is necessary to determi­ne whether this assumption still applies to the present amen­­­ded claims. Should doubts remain in this res­pect, the board would have to remit the case to the first instance in order for it to con­sider whether an additional search would have to be carried out.

13.2 Pursuant to Article 15(3) PCT, the international search must be assumed to have been made ­on the basis of the claims, with due regard to the description and drawings (if any). According to Article 157(1) EPC 1973, the in­ternational search re­port takes the place of the Euro­pean search report. It is noted that Article 92 EPC 1973 defines the scope of the European search in essen­tially the same words as Article 15(3) PCT.

13.3 Original claim 7 specified that the user-attributed rights and the received DRM rights constitute two sets of rights that are "linked" together. No further de­tails of "linking" were originally claimed. However, alter­na­tive ways to achieve such "linking" were dis­closed in the application as originally filed (see p. 15, line 13 - p. 16, line 29; p. 5, lines 21-25).

13.4 Hence, in accordance with Article 15(3) PCT, the search must be assumed to have covered the concept of linking two sets of rights, interpreted in view of the alterna­tive em­bo­diments on pages 15 and 16 of the description. It must therefore have been clear to the search examiner that any document relevant for novelty or inventive step of any of these alter­na­tive embodiments would ipso facto have been relevant for original claim 7.

13.5 From the fact that the search did not reveal any docu­ment of particular relevance for the broad original claim 7 it must therefore be concluded that the search was extended to the above-mentioned, narrower embodi­ments and that it did not reveal any documents of parti­cular relevance for any of these embodiments either.

13.6 Therefore, the board concludes that the search per­formed for the present application must be considered to have also covered the present independent claims 1 and 11.

13.7 A remittal for further prosecution is therefore not justified.

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 with the order to grant a European patent with the following documents: