T 1242/06 - Tomatoes III (After G2/12)

Key points

• This is the final decision on the Tomatoes case, after the second decision of the Enlarged Board in G2/12. The Board finds the claimed tomatoes to be inventive. It was not obvious to include a trait from desert tomato (a small wild shrub) into the agronomically relevant tomato L. esculentum.

T 1242/06 - link

http://www.epo.org/law-practice/case-law-appeals/recent/t061242eu3.html


Claims at issue (auxiliary request I)
"1. A tomato fruit of the species Lycopersicon esculentum which is naturally dehydrated, wherein natural dehydration is defined as wrinkling of skin of the tomato fruit when the fruit is allowed to remain on the plant after a normal ripe harvest stage, said natural dehydration being generally unaccompanied by microbial spoilage." 

"2. A dehydrated tomato fruit of the species Lycopersicon esculentum characterized by an untreated skin, which permits said dehydration of the fruit so as to obtain wrinkling of the skin, said dehydration being generally unaccompanied by microbial spoilage."

Reasons for the Decision

Procedural issues

[] Ratio decidendi

5. In its second interlocutory decision dated 31 May 2012 referring questions of law relating to the interpretation of Article 53(b) EPC to the Enlarged Board of Appeal (OJ EPO 2013, 42; see section XII, above), the board, in a different composition from the present one, held that the appellant's main request filed with letter of 7 September 2011 was not allowable. It decided that claim 1 complied with the requirements of Article 123(3) EPC, but claim 2 did not (see points 5 to 8 of the reasons for the decision). The board further held that both claims of auxiliary request I (filed during the oral proceedings on 8 November 2011, see section XI above) complied with the requirements of Rule 80 and Articles 84 and 123(2) and (3) EPC. The board was furthermore of the view that the exclusion of plant varieties in Article 53(b) EPC did not apply to the subject-matter of the claims of auxiliary request I.

T 1784/14 - Not substantiated is not filed

Key points

• Auxiliary requests were timely filed but without substantiation. They are therefore deemed not validly filed. The Board : " as set out in T 1732/10 (point 1.5), unsubstantiated claim requests which are not self-explanatory become effective only at the date on which substantiation is provided (see also 217/10; point 5). Their filing in and of itself plays no role, no matter when they are filed." 

EPO Headnote

If no substantiation is provided, at any stage during the appeal proceedings, for claim amendments which are not self-explanatory, the requests containing those amendments may be considered not validly filed (point 3 of the Reasons, T 1732/10 followed)

T 1784/14 -  link


Reasons for the Decision

First to third auxiliary requests

3. Admission

3.1 The first to third auxiliary requests were filed, or at least referred to, by the respondent in its response to the statement of grounds of appeal. These auxiliary requests correspond to the fourth to sixth auxiliary requests submitted during the opposition proceedings.

3.2 The only submissions the respondent made with regard to these auxiliary requests are those in its letter dated 10 March 2015:

"Furthermore, in the event that the Board of Appeal ultimately concludes that the Main Request cannot be granted, I request that the proceedings are remitted back to the Opposition Division for consideration of the Fourth to Sixth Auxiliary Requests as filed on 19 November 2009 [the present first to third auxiliary requests]. It will be appreciated that these claim requests have not previously been considered by the Opposition Division.Finally, in the event the Board of Appeal both concludes that the Main Request cannot be granted and decides against remittal, I request consideration in the present appeal proceedings of the Fourth to Sixth Auxiliary Requests as filed on 19 November 2009" (insertion in square brackets by the board).

Consequently, the respondent has not provided a single argument to substantiate why the amendments in the auxiliary requests have overcome the objections made by the appellants against the main request.

T 1513/11 - Second non-medical use

Key point

• The present decision illustrates how second non-medical use claims can be successfully used for obtaining patent protection for a new insight and to claim around inherent anticipation.
• The board is not convinced by this argument. As already pointed out by the opposition division, the claim feature "use ... to oxidise polluting substances in the presence of light, air and environmental humidity" must be interpreted as a technical feature in the sense of G2/88 (OJ EPO 1990, 93). D1 deals with improvements of the aesthetic appearance of the concrete surface by the addition of titanium dioxide as a pigment and is silent on using TiO2 for the oxidation of polluting airborne substances.

T 1513/11 -  link

http://www.epo.org/law-practice/case-law-appeals/recent/t111513eu1.html

Reasons for the Decision

3. Article 54 - Novelty

3.1 The appellant already conceded in first instance proceedings that D1 did not explicitly disclose the oxidation of polluting substances by titanium oxide in anatase form present in the bulk of the concrete. However, it maintained that such a photocatalytic activity was an inherent property of the TiO2-doped concrete composition, and that therefore the claimed use was anticipated by D1.

The board is not convinced by this argument. As already pointed out by the opposition division, the claim feature "use ... to oxidise polluting substances in the presence of light, air and environmental humidity" must be interpreted as a technical feature in the sense of G2/88 (OJ EPO 1990, 93). D1 deals with improvements of the aesthetic appearance of the concrete surface by the addition of titanium dioxide as a pigment and is silent on using TiO2 for the oxidation of polluting airborne substances.

T 2554/11 - Underpayment appeal fee

Key points

• The appellant had filed a notice of appeal in Dutch and payed a reduced appeal fee in 2011 (under then Rule 6(3) EPC), without being entitled. The opponent pointed out the underpayment in 2015. The full appeal fee was paid thereafter.
• The board follows T 595/11 and T 1037/11 and considers the appeal admissible based on the principle of legitimate expectation.
• The Board finds that " the Office had a duty to inform the appellant about the deficient fee payment within a reasonable time frame after expiry of the Article 108 EPC time limit but did not do so. The three years and some three months cannot be regarded as a reasonable time frame. [] Weighing up the legitimate interests of both sides and also that of third parties, and considering the overall circumstances of the case, the Board concludes that the original error might have had serious and inequitable consequences through the Office's failure to discover it. Therefore, it is equitable that the Office's failure is made good and the error is now allowed to be remedied, as far as possible. The Board further considers that the possibility of a real, but otherwise in itself not necessarily decisive setback for a party is more preferable than a certain decisive loss of all rights for another party. Therefore the Board accepts, through the application of the principle of protection of legitimate expectations, that the appeal fee has been timely and fully paid. Similarly, it also accepts that the English translation of the notice of appeal in Dutch was the original notice of appeal. The Board considers that in this manner overall least harm is done to all parties and in the end the appeal can be decided on its merits."

Reasons for the Decision

1. Deemed filing and admissibility of the appeal

1.1 Pursuant to Article 14(4) EPC, legal persons registered in a Contracting State having an official language other than English, French or German, may file documents which have to be filed within a time limit in an official language of that State (admissible non-EPO language). They shall, however, file a translation in an official language of the European Patent Office ('Office'). If a document is not filed in the prescribed language, or if any required translation is not filed in due time, the document shall be deemed not to have been filed.

1.2 Pursuant to Article 108 EPC, second sentence, the notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid. Article 8 RFees, first sentence stipulates that the time limit for payment shall in principle be deemed to have been observed only if the full amount of the fee has been paid in due time. Under Rule 6(3) EPC a reduced appeal fee is payable where a person files an appeal in an admissible non-EPO language under Article 14(4) EPC. In the present case, the time limit for filing the notice of appeal and thereby the time limit for paying the appeal fee expired on 5 January 2012. A reduced appeal fee pursuant to Rule 6(3) EPC was paid on 13 December 2011, and a full appeal fee was paid on 3 June 2015 (see point III, fourth paragraph above).

1.3 It is undisputed that the appellant was not entitled to use Dutch in filing documents with the EPO. It is also undisputed that the filing of the notice of appeal in Dutch did not entitle the appellant to benefit from the fee reduction. Rather, appellant argues that the EPO should recognise the appeal as valid, i. e. as deemed filed, both with regard to the used language and the fee payment, through the application of the principle of the protection of legitimate expectations.

T 0141/14 - Correction of error

Key points

• The Board does not allow the amendment of "vanadium" to "vanadium oxide" under Rule 139. 
• " Appellant's argument that the system titanium oxide/ vanadium oxide was commonly known as solid acid and as SCR catalyst is accepted by the board. However, as long as there exists at least one further possibility of correction [] the criteria of Rule 139 EPC that "the correction must be obvious in the sense that nothing else would have been intended than what is offered as the correction" is not fulfilled."  The Board deciteds that " a combination of vanadium and sulfate is clearly one of the options envisaged by the application as filed" and is thus the a further possibility rendering the correction under Rule 139  EPC unallowable. 

T 0141/14 - link

Reasons for the Decision

1. Main request - Amendments

1.1 For the board, the amendment of the feature "vanadium" to "vanadium oxide" does not meet the requirements of Rule 139 EPC, because the proposed correction is only one of several options which would occur to the skilled person.

1.1.1 According to the passage bridging pages 2 and 3 of the application as filed, the "solid acid system of titanium oxide and vanadium" is described as optionally further containing "at least one component selected from the group consisting of tungsten oxide (WO3), molybdenum oxide (MoO3), silicon dioxide, sulfate and zeolites", so a combination of vanadium and sulfate is clearly one of the options envisaged by the application as filed.

1.1.2 Appellant's argument that the system titanium oxide/ vanadium oxide was commonly known as solid acid and as SCR catalyst is accepted by the board. However, as long as there exists at least one further possibility of correction - for instance the one indicated in point 1.1.1 above - the criteria of Rule 139 EPC that "the correction must be obvious in the sense that nothing else would have been intended than what is offered as the correction" is not fulfilled.

1.2 Since there is no basis either in the application as filed for the amendment by which "vanadium oxide" replaces "vanadium", the subject-matter of claim 1 at issue extends beyond the content of the application as filed (Article 123(2) EPC).

1.3 It follows from the above considerations that the main request cannot be allowed.

T 1890/13 - In time but not admitted

Key points

• D28 was filed with the Notice of opposition, but is not admitted into the appeal proceedings.
• In response to the summons before the Board, the appellant had based a new line of argument on D28. "Hence, this new line of argument based on D28 was submitted after the appellant had filed its statement setting out the grounds of appeal and after the board had arranged oral proceedings, i.e. at a very late stage in the overall proceedings. Therefore, the question of admitting the substantiated document D28 into the appeal proceedings is subject to Article 13(1) and (3) RPBA in the present case." 

T 1890/13 - link

4. Novelty and inventive step (Articles 54 and 56 EPC)

At the oral proceedings before the board, the appellant did not challenge the novelty of the opposed patent's independent claims (Article 54 EPC). For the purpose of attacking inventive step, the appellant relied essentially on three prior-art documents, namely D28, D19 and D29. Since the appellant first requested that D28 be introduced into the appeal proceedings, this issue was discussed and decided first.

4.1 Admission of D28 as substantiated into the appeal proceedings

4.1.1 Document D28 was initially filed with the notice of opposition. Thus, it was filed in due time within the meaning of Article 114(2) EPC. However, it was discussed neither during the oral proceedings before the opposition division nor in the impugned decision.

4.1.2 As regards appeal proceedings, Article 12(2) RPBA clearly states that the statement setting out the grounds of appeal or the corresponding reply shall contain a party's complete case, and in particular should specify expressly all the facts, arguments and evidence relied on.

4.1.3 Concerning substantiation of the filing of D28, the statement setting out the grounds of opposition made the following reference to it (cf. page 11, second paragraph, third sentence; emphasis added by the board):

"Documents D27, D28 and D29 provide specific proposals for consideration. D27 and D28 develop the D23 and D24 approaches respectively ...",

while the statement setting out the grounds of appeal (cf. page 6, last paragraph, third sentence; emphasis added by the board) includes the following statement:

"D19 provides a worked-out scheme for managing key refresh in transitions ... and discusses a number of alternative approaches for providing nonce or counter (as noted in D28, a counter is merely a specific example of a nonce) data to achieve key refresh."

The board concurs with the respondent that this kind of incidental citation of D28 within a line of argument in support of lack of patentability amounts to mentioning a prior-art document merely as background information for standardisation developments, but fails to deliver any information as to whether it is intended to be used, for example, as a starting point for attacking inventive step or as evidence of common general knowledge or anything else. Moreover, no specific passage of D28 had been cited in the written procedure. Thus, D28 remained unsubstantiated throughout the entire written proceedings.

It was only at the oral proceedings before the board that the appellant argued for the very first time that D28 [] was extremely relevant for the assessment of inventive step, since it demonstrated on page 2, first paragraph, that a number used only once, i.e. "NonceUE", could indeed be derived from a counter, i.e. "CountNASint" here. Hence, this new line of argument based on D28 was submitted after the appellant had filed its statement setting out the grounds of appeal and after the board had arranged oral proceedings, i.e. at a very late stage in the overall proceedings. Therefore, the question of admitting the substantiated document D28 into the appeal proceedings is subject to Article 13(1) and (3) RPBA in the present case.

4.1.4 In the light of the above and in accordance with the respondent's request, the board decided to exercise its discretionary power to refuse the appellant's request that D28 be introduced into the appeal proceedings under Article 13(1) RPBA, for the following reasons:

- the late substantiation of D28 was not an appropriate and immediate reaction to unforeseeable developments in the proceedings which did not lie in the responsibility of the appellant, rather it was submitted by the appellant entirely of its own volition;

- the teaching of D28 was not prima facie more relevant than the other prior-art documents on file or highly likely to prejudice the maintenance of the opposed patent, since the use of a counter for NAS integrity protection, i.e. CountNASint, in no way corresponds to a sequence number associated with uplink transmissions of NAS service request messages as claimed;

- admitting into the appeal proceedings such a new line of argument based on D28 would run counter to the principle of procedural economy and fairness.

T 1612/13 - Evidence of improvement

Key points

• In this opposition case, both parties had filing evidence regarding whether the invention provided an improvement over the art.
• " For the Board, considering the wealth of experiments and the more complete information provided, the Appellant's test reports have a higher probative force and are thus more convincing than those of the Respondent. The Respondent's evidence is thus not sufficient for diminishing substantially the cogency of the experimental evidence and statistical analyses submitted by the Appellant/Patent Proprietor. Consequently, the Board is satisfied that the Appellant has convincingly demonstrated that pigments prepared by a method according to claim 1 as granted have improved gloss."

T 1612/13 - link
Reasons for the Decision

8. Success of the solution

Various items of evidence were submitted by the parties with regard to the question of whether or not the improvements invoked by the Appellant are actually achieved when performing the claimed subject-matter. As regards the evidence on file the Board observes the following.

8.4 Probative force of documents D4, D5 and D10

8.4.1 The Board remarks that

- whereas the Appellant, in carrying out the tests as described in D5, measured each paint sample at three separate times (see points 3.1 and 4.1), and even increased the number of readings in D10 (point 11),

- the Respondent did not even indicate the number of readings for each sample tested according to D4.

8.4.2 Moreover, the statistical evaluation of the readings carried out by the Appellant in its experimental reports was not reworked by the Respondent, which only stated that the consideration of the standard deviation would be more significant for the evaluation of the experimental results than the statistical analysis of the Appellant. Even though the consideration of the standard deviation is undoubtedly of importance in the measurements of gloss, as confirmed by norms D11 (point 11) and D12 (point 10 and Table D.1), the Respondent's statement is, however, not supported by further evidence. Moreover, it is directly apparent that the statistical analysis carried out by the Appellant takes also into consideration standard deviation values (see, for example, D5, Tables 2, 5 and 6 and D10, point 12.5.

8.4.3 For the Board, considering the wealth of experiments and the more complete information provided, the Appellant's test reports have a higher probative force and are thus more convincing than those of the Respondent.

The Respondent's evidence is thus not sufficient for diminishing substantially the cogency of the experimental evidence and statistical analyses submitted by the Appellant/Patent Proprietor.

Consequently, the Board is satisfied that the Appellant has convincingly demonstrated that pigments prepared by a method according to claim 1 as granted have improved gloss.

T 0658/13 - Sufficiency by product-by-process feature

Key point

• The present decision illustrates how a product-by-process feature may provide for sufficiency of disclosure.

T 0658/13 - link


Summary of Facts and Submissions

XIV. Opponent 1 and opponent 2's arguments, as far as relevant to the present decision, were essentially as follows:

(a) According to the Guidelines for Examination at the EPO, the product-by-process formulation of claim 1 was meaningless. The subject-matter of claim 1 was to be read as being directed to the compositions per se i.e. compositions "obtainable by using" a catalyst system as defined in claim 1, which did not exclude that those compositions could be prepared using a different catalyst system. The only catalyst system which was shown to possibly lead to the combination of features specified in claim 1 was that of paragraph 41 of the patent in suit, which was the same as that used in examples 1-4 of the patent in suit. Considering that the patent in suit did not teach how to produce the compositions of claim 1 when using a different catalyst system than that mentioned in claim 1, the requirements of Art. 83 EPC were not met. In that respect, the argument put forward in respect of other requests dealt with at the oral proceedings and based on example 15 of D5 was also valid.

Reasons for the Decision

1. Sufficiency of disclosure

1.1 In order to meet the requirements of Art. 83 EPC, an invention has to be disclosed in a manner sufficiently clear and complete for it to be carried out by the skilled person, without undue burden, on the basis of the information provided in the patent specification, if needed in combination with the skilled person's common general knowledge. This means in the present case that the skilled person should be able to prepare a bimodal polyethylene polymer composition according to any of claims 1-6 and/or to make a pipe according to claim 7.

1.2 The bimodal polyethylene polymer composition of claim 1 is defined by

- the combination of five parameters as defined in features (a) to (c) as well as in terms of tensile stress at break and PENT failure time under a load of 3.8 MPa (hereinafter "high-stress PENT" which, as indicated in paragraph 57 of the patent specification is a lab-scale test for determining the resistance to slow crack growth);
- the requirement that it comprises less than 1 weight percent of total non-polymeric additives
- the product-by-process feature directed to a catalyst system "wherein the composition is produced using a catalyst composition comprising A and B (...) with sulfated alumina as the activator-support and with tri-isobutylaluminum as the cocatalyst".

1.2.1 During the oral proceedings before the Board it was disputed by the parties whether or not the product-by-process feature identified above was a limiting feature of claim 1 or not.

1.2.2 During the oral proceedings before the Board, the patent proprietor argued that it would not be technically possible to completely eliminate from a polyethylene composition according to claim 1 any trace of the catalyst system that has been used to prepare it, either in the form of the catalyst itself or of its derivated products (should it be e.g. deactivated as argued by opponent 2), even if the composition was to be submitted to a purification step to wash out the catalyst. That argument was not contested by the opponents.

Besides, it is accepted in the art that the catalyst system has an impact on the chemical structure of the polymer composition prepared therewith (e.g. chain length, (co)monomer distribution) and, therefore on the properties of those polymers. In the present case, it is in particular noted that it was not shown that a bimodal polyethylene composition satisfying the five parameters of claim 1, in particular a density higher than 0.952, a TNDR according to feature (c) and a high-stress PENT of higher than 7000 hours could be obtained using a different catalytic system. Therefore, it appears credible that, as argued by the patent proprietor, the use of the catalyst system according to operative claim 1 effectively leads to polyethylene compositions having a very specific structure (e.g. in terms of chain arrangement and monomer distribution) which can only be obtained with the catalyst system defined in claim 1.

1.2.3 The opponents' argument according to which the product-by-process feature was meaningless (i.e. non limiting) is based on section F.IV.15.4.12 of the Guidelines for Examination in the EPO (November 2015), in which it is stated that a claim defining a product in terms of a process is to be construed as a claim to the product as such.

However, it cannot be agreed that said section of the Guidelines implies that a product-by-process formulation as such can only be meaningless. Rather, as is explicitly indicated in the paragraph of the Guidelines cited above related to T 205/83, when novelty of a claim defined using a product-by-process formulation is to be assessed, the question is to be answered whether the product so defined may be distinguished from other known products i.e. it has to be clarified if the "by-process" element of that claim effectively characterises the subject-matter being claimed. 

In the Board's view, this is the case for the polyethylene compositions according to present claim 1 for the reasons indicated in section 1.2.2 above. Besides, in the Board's view, the same conclusion is also to be drawn independently of whether the product-by-process feature of claim 1 reads "produced using a catalyst composition ..." or "obtainable using a catalyst composition ..." (as proposed by opponent 1 during the oral proceedings before the Board) since in both cases the catalyst is mandatorily present in the claimed composition and has to be used in order to obtain a composition meeting the parametric definition set out in claim 1.

Therefore, the opponents' objection based on the argument that the subject-matter of claim 1 encompassed compositions obtained using a different catalyst system than that specified in that claim did not convince.

1.3 [...] Therefore, examples 1 and 4 are held to illustrate the subject-matter of operative claim 1 and to exemplify specific ways to carry out the invention.

1.4 According to EPO case law an objection of insufficient disclosure presupposes that there are serious doubts, substantiated by verifiable facts and the burden of proof is primarily on the opponent(s) (Case Law of the Boards of Appeal of the EPO, 8th. Ed., 2016, II.C.8).

1.4.1 In the present case, the opponents' assertions that it would not be possible to prepare the claimed compositions with either an homopolymer, with other comonomer(s) than 1-hexene or with different amounts thereof are not supported by any evidence. Therefore, the opponents have not discharged their burden of proof and their objection has to be rejected.

1.4.2 During the oral proceedings before the Board and in the first instance proceedings, example 15 of D5 was addressed in respect of sufficiency of disclosure.

Example 15 of D5 deals with the production of bimodal polyethylene compositions using as catalyst system []. Such a catalyst system corresponds to that indicated in paragraph 36 of the patent in suit []. The polyethylene prepared in example 15 of D5 exhibits a PENT under a load of 2.4 MPa of 613 h, which implies that it would have a high-stress PENT (i.e. under a load of 3.8 MPa) outside the range defined in operative claim 1, as agreed by the patent proprietor during the oral proceedings before the Board. However, although the catalyst composition used in said example 15 falls under the general disclosure of the patent as granted, it does not correspond to the catalyst composition now indicated in claim 1 (and corresponding to that disclosed in paragraph 41 of the patent in suit and used in the examples of the patent in suit) because it neither comprises metallocene catalyst A nor tri-isobutylaluminum. Considering the conclusion drawn in section 1.2 above, example 15 of D5 does not constitute evidence that operative claim 1 lacks a sufficient disclosure.

1.5 In the Board's view, the patent proprietor has in the present case overcome the sufficiency objections put forward by the opponents by amending the claims, thereby changing the "invention" referred to in Art. 83 EPC so that it no longer encompasses the insufficiently disclosed previously claimed aspects (Case Law of the Boards of Appeal of the EPO, 8th Ed., 2016, II.C.1).

1.6 For those reasons, the main request meets the requirements of sufficiency of disclosure pursuant to Art. 83 EPC.

T 0088/12 - Conceivable but not disclosed

Key points

• The issue is basis in the application as filed for the claimed drying machine. Original claim 1 was for a laundry machine (i.e. washing or drying). Washing machines were described throughout, an embodiment with a drying machine was only mentioned in passing in a single sentence (in paragraph 73). The Board finds that this provides no basis.
• " The Board has no doubt that in the light of the cited problem and on the basis of paragraph 73, original claim 1 and the details of the disclosed preferred embodiment of a drum type washing machine the skilled person was able and could have conceived without difficulty a drying machine incorporating the combination of features as defined by claim 1. This is however not the issue to be dealt with when regarding whether the requirement of Article 123(2) EPC is met or not. In this regard, only subject-matter which is directly and unambiguously derivable from the application is to be considered and not subject-matter which the skilled person might arrive at upon further reflection, even if this were only based on the skilled person's common general knowledge."

T 0088/12  - link

Reasons for the Decision

11.1 Paragraph 73 contains a general introduction to the first embodiment of a laundry machine according to the invention, i.e. a drum type washing machine. It lists some of its features, some but not all of which being also defined in original and granted claim 1 and its amended version considered here.

11.2 The paragraph finally states that "[i]n the case that the laundry machine is a drying machine, the tub, in which washing water is received, is not necessarily provided for the drying machine".

11.3 In the Board's view this statement per se does not disclose anything explicit in regard to the features a drying machine should comprise apart from that it might or might not comprise a tub.

Taken in its context in which it addresses an alternative to a laundry machine according to the first preferred embodiment of the invention, its teaching with respect to the features of such alternative embodiment being a drying machine still remains, to say the least, ambiguous. This is so because the immediately preceding disclosure of features of the drum type washing machine as an embodiment of the invention recites features, a tub and a water inlet pipe, which are not defined in claim 1. According to the respondent, claim 1 as filed defined the features which all embodiments of the invention, and hence also drying machines as part of the class of laundry machines covered by the claim, had to have in common. The Board notes, that contrary to the tub, which is not defined in claim 1 and is presented explicitly in the cited paragraph as being optional for drying machines, nothing similar in this respect is stated in regard to the water inlet pipe in paragraph 73. The Board concludes, that the skilled person is already left in doubt whether a drying machine as mentioned in paragraph 73 does or does not comprise a water inlet pipe.

12. The question concerning which features of such a drying machine could be considered as being directly and unambiguously derivable from the application as filed is also not clarified, even when taking the specific problem identified in paragraphs 23 to 25 for drying machines into account. It is nevertheless noted that the statement in paragraph 73 contains no link to this anyway.

13. The Board has no doubt that in the light of the cited problem and on the basis of paragraph 73, original claim 1 and the details of the disclosed preferred embodiment of a drum type washing machine the skilled person was able and could have conceived without difficulty a drying machine incorporating the combination of features as defined by claim 1. This is however not the issue to be dealt with when regarding whether the requirement of Article 123(2) EPC is met or not. In this regard, only subject-matter which is directly and unambiguously derivable from the application is to be considered and not subject-matter which the skilled person might arrive at upon further reflection, even if this were only based on the skilled person's common general knowledge.

14. Moreover, if for the sake of argument it were admitted - which the Board nevertheless does not accept - that the skilled person would have understood the cited sentence in paragraph 73 as referring specifically to drying machines identical in their major components required for the drying function to those disclosed for the drum type washing machine, concluding thus that such drying machine comprised the features explicitly defined in original claim 1, whereas for example the dampers shown in all figures of the preferred drum type washing machine embodiments or the previously mentioned water inlet pipe, could be dispensed with in a drying machine, a drying machine with a drum rotatable around a horizontal axis could still not be directly and unambiguously derived from the application as filed.

14.1 Firstly because the orientation of the drum's axis is not linked to the specific problem for drying machines. The skilled person would thus have had no reason to select this particular feature, if it were disclosed (see below) in combination with the other features to solve such problem.

14.2 Secondly, and as indicated, the feature "horizontal axis" per se is not directly and unambiguously derivable from the application as filed. As pointed out by the appellant, the skilled person knew as part of common general knowledge that a front access laundry machine could well have a drum axis which was slightly inclined. The respondent did not contest this argument. The Board further accepts the appellant's argument that the precise angle of the drum's axis of rotation cannot be derived from the schematically drawn figures of the application referred to by the respondent as a basis for this feature. The Board thus concludes that the schematic drawings in Figures 1 to 4, 10 to 16 and similarly the description of a front opening in paragraphs 74 and 79 do not allow to directly and unambiguously derive a drum rotatable around a horizontal axis.

14.3 The respondent had in this respect also pointed to paragraph 2.

This paragraph contains the only reference in the application of a horizontal drum axis. It mentions, in the section concerning background art, as an example of a general laundry machines with such a horizontal axis a "drum type washing machine". A washing machine is indeed the type of laundry machine according to the preferred embodiments of the invention. The Board finds however that the general classification of paragraph 2 would not have been understood by the skilled person to constitute a definition of what should fall under a "drum type washing machine". The Board finds that this paragraph would in particular not be understood by the skilled person to exclude embodiments with slightly inclined axes from falling in the class of "drum type washing machine", as referred to by the appellant. Furthermore, the statement does not relate unambiguously to drying machines, but merely to laundry machines in general.

15. The Board thus concludes that the skilled person would not directly and unambiguously derive a drying machine with the features defined by claim 1 from the description and the figures taken as whole. The subject-matter of the claim thus extends beyond the content of the application as originally filed, contrary to Article 123(2) EPC.

16. As a consequence, the patent cannot be maintained with the claims found allowable by the opposition division.

T 0584/10 - Technical effect and objective technical problem

Key points

• The decision relates to the formulation of the objective technical problem for a claim directed to (effectively) an input device for a navigation system.
• The Board can not acknowledge that the distinguishing feature provides a more intuitive or user friendly input device, because that effect is not provided directly by the feature. The Board holds, as established case law, that the objective technical problem should follow from objective physical, chemical or similar effects which are associated directly and causally with the technical features of the claimed invention and which also are derivable from the application as filed. 

T 0584/10 - link

Entscheidungsgründe

1. HAUPTANTRAG

Dieser Antrag entspricht der Aufrechterhaltung des Streitpatents auf Basis des der angefochtenen Entscheidung zugrunde liegenden "Hilfsantrag 3".

Anspruch 1, wie aufrechterhalten, umfasst folgende einschränkenden Merkmale:

Verfahren zur Eingabe einer Zeichenfolge in eine Recheneinheit, wobei
A) in einer Speichereinheit Zeichenfolgen gespeichert werden und von der Recheneinheit durch einen Vergleich bisher eingegebener Zeichen mit den gespeicherten Zeichenfolgen auswählbare Zeichen für ein nächstes, einzugebendes Zeichen der Zeichenfolge ermittelt werden;
B) die auswählbaren Zeichen in einer Anzeige hervorgehoben angezeigt werden;
C) eines der auswählbaren Zeichen als ein einzugebendes Zeichen angezeigt und als ein nächstes Zeichen der Zeichenfolge durch eine Bestätigungseingabe eingegeben wird;
D) die Zeichen in einem zweidimensionalen Feld angezeigt werden;
E) von dem eingebbaren Zeichen über eine Richtungseingabe zu einem in der eingegebenen Richtung in dem zweidimensionalen Feld zu dem eingebbaren Zeichen liegenden auswählbaren Zeichen gewechselt wird;
F) als eine Richtung jede der Richtungen unten, oben, rechts und links über das Bedienelement in Form einer Kreuzwippe oder eines Joysticks ausgewählt werden kann und eine der Richtungen unten, oben, rechts oder links ausgewählt wird;
G) das auswählbare Zeichen, zu dem gewechselt wird, als eingebbares Zeichen angezeigt wird.

T 2177/11 - Configured and capable, basis

Key points

• In the Board's judgement (for Article 123(2) EPC), the expressions "configured to" and "capable of" are equivalent and imply, in the context of the invention, that the  device is " able to carry out the recited functionalities without requiring any modification of any kind, i.e. neither necessitating an adaptation of the structure of the testing device (hardware) nor a change in the way it has been programmed (software)".
• The Board also finds that the steps of method claim 1 as filed provide basis for corresponding "means for" features, because "the reference to these functionalities implies the existence of corresponding means, considering that the context of the invention makes it abundantly clear that these operations are not to be performed by human operators."

T 2177/11 - link

Reasons for the Decision

1. Applicable law

It is noted that the revised version of the Convention (EPC 2000) does not apply to European patent applications pending at the time of its entry into force (13 December 2007), unless otherwise provided. In the present decision, where Articles or Rules of the former version of the EPC apply, their citation is followed by the indication "1973".

2. Admissibility of the appeal

2.1 The notice of appeal and the statement of grounds of appeal comply with the requirements of Articles 106 to 108 EPC and Rule 99 EPC.

In particular, the appellant is adversely affected by the decision of the examining division in the sense of Article 107 EPC since both requests for maintenance of the patent in amended form underlying the decision were rejected and the patent was revoked. The fact that, later on in the course of the appeal proceedings, the appellant requested, as its main request, that the patent be maintained as granted does not affect this finding.

2.2 The appeal is thus admissible.

3. Admissibility of appellant's main request

3.1 The appellant requested, as a main request, that the decision under appeal be set aside and the patent be maintained as granted. This request was filed on 7 June 2016 in the letter of reply to the communication of the Board pursuant to Article 15(1) RPBA.

3.2 The Board observes that the granted version of the patent had never been defended by the patentee in opposition proceedings. In this respect, a summary of the relevant events which took place in the course of the opposition proceedings and ensuing appeal proceedings appears to be expedient.

3.2.1 In response to the communication of the opposition division, dated 18 December 2009, requesting the patentee to file its observations to the notices of opposition, the patentee merely commented in its letter of reply of 19 April 2010 on the objections raised against dependent claim 2 of the granted patent. Since no formal request had been formulated in the patentee's letter of reply, it was assumed, at that stage of the proceedings, that the patentee implicitly requested maintenance of the patent as granted.

In the annex to the summons to attend oral proceedings, the patentee was informed of the assumption made by the opposition division with regard to the patentee's request.

In response to the summons, the patentee filed, in a letter of 20 May 2011, a set of amended claims 1 to 10 "as a basis for the oral proceedings" in which independent claims 1 and 6 had been amended by incorporating features of original claim 2. The patentee further indicated that it fully concurred with the favourable findings of the opposition division expressed in the annex to the summons regarding original claim 2. The letter of 20 May 2011 did not contain any further indication concerning the patentee's requests.

During the oral proceedings before the opposition division, the patentee stated that the (implicit) request of 20 May 2011 represented its main request and that it intended, in the meantime, to replace said request by a new main request. The new main request consisted of claims 1 to 9, claim 1 being an almost exact combination of granted claims 1 and 2 (cf. minutes of the oral proceedings before the opposition division, point 5). This request was then admitted into the opposition proceedings by the opposition division and defined the main request underlying the decision in suit.

3.2.2 The claims of the main request filed with the statement of grounds of appeal differ from the claims of the request underlying the impugned decision, for the essential, in that the expression "capable of" in independent claim 5 has been replaced by the expression "configured to".

3.3 It thus appears that the patentee never commented on the objections raised by the opponents against claim 1 of the granted patent and that it never explicitly filed any request for maintenance of the patent as granted. By filing a request for maintenance of the patent as granted at a late stage of the appeal proceedings, the patentee sought to open a debate on questions which it deliberately abstained to address in the course of the opposition proceedings.

Article 12(2) RPBA specifies that "The statement of grounds of appeal and the reply shall contain a party's complete case." A discretion is recognised to the Board to admit and consider amendments to a party's case after it has filed its grounds of appeal under Article 13(1) RPBA. Such discretion shall be exercised in view inter alia of the current state of the proceedings and the need for procedural economy.

Under the present circumstances, the Board notes that the appellant's new main request was filed at a particularly late stage of the appeal proceedings. The admission of the main request into the appeal proceedings would be, in view of the present circumstances for which the appellant is the sole responsible, in direct contradiction with the principle of procedural economy referred to in Article 13(1) RPBA. It could indeed imply a remittal of the case to the opposition division in order for the respondents to benefit from two instances. Moreover, the admission of the main request into the appeal proceedings would require that the parties, the opposition division and/or the Board debate, for the first time, on aspects that have never been addressed before.

3.4 For these reasons, the appellant's main request is not admitted into the appeal proceedings.

4. Appellant's first auxiliary request

4.1 Added subject-matter

4.1.1 Expression "configured to"

The respondents objected to the use of the expression "configured to" in claim 5 of appellant's first auxiliary request. Said expression replaced "capable of" in the corresponding claim decided upon by the opposition division but was not to be found in the original application documents when associated with various functionalities of the test environment. In the respondents' view, the new amended wording thus contradicted the requirements of Article 123(2) EPC.

In a previous decision (cf. decision T 667/08, not published), the present Board, in a different composition, expressed the view that literal support is not required by the wording of Article 123(2) EPC. It is namely essential, when deciding on issues of added subject-matter, to identify the actual teaching conveyed by the original disclosure.

Original claim 6 constitutes the basis for claim 5 of appellant's first auxiliary request. Original claim 6 comprises the feature of "a first testing device different from the second IED [...] capable of reading a standardized description of implemented device functions of the second IED and capable of reading network messages indicative of the behaviour of the second IED ...". In the Board's judgement, the expressions "configured to" and "capable of" are equivalent and imply, in the context of the invention, that the first testing device is able to carry out the recited functionalities without requiring any modification of any kind, i.e. neither necessitating an adaptation of the structure of the testing device (hardware) nor a change in the way it has been programmed (software).

Moreover, original claim 2, which depends on original claim 1 as to a method of performing a system level test, explicitly comprises the step of "detecting by the testing device (30), the IEDs installed in the test environment". This step to be performed by the testing device implies that it has been conceived accordingly, i.e. that it has been "configured to" detect IEDs installed in the test environment, as now recited in claim 5 of appellant's first auxiliary request. Similarly, the step of "sending by the testing device, network messages indicative of the behaviour of IEDs of the SA system not installed in the test environment" in original claim 2 constitutes a sufficient basis for the testing device being "configured to" send said network messages, as recited in claim 5 of appellant's first auxiliary request.

4.1.2 Expression "means for"

The respondents further objected to the use of the expression "means for" in claim 5 of appellant's first auxiliary request in association with the functions of identifying IEDs of the SA system not installed in the test environment and of monitoring a behaviour of the first IED in response to said network messages. The description did not disclose such means as recited in claim 5. There was no support in the original documents for such broad definitions. In particular, the expression "means for" appeared to constitute an unallowable generalisation of the testing device disclosed throughout the original application.

The Board, however, observes that original claim 1, which concerns a method of performing a system level test, comprises the step of "monitoring a behaviour of the first IED in response to said network messages". Similarly, original claim 2 includes the step of "identifying IEDs of the SA system not installed in the test environment". The reference to these functionalities implies the existence of corresponding means, considering that the context of the invention makes it abundantly clear that these operations are not to be performed by human operators. In this respect, the broad definition in claim 5, as it results from the use of "means for", i.e. without specifying any dedicated structural elements, merely reflects the evocation in original claims 1 and 2 of the corresponding functionalities.

4.1.3 It follows that claim 5 of appellant's first auxiliary request derives directly and unambiguously from claims 6 and 2 of the original disclosure.

4.1.4 Appellant's first auxiliary request thus meets the requirements of Article 123(2) EPC.

T 1473/11 - Effect of partial non-search ISR

Key points

• In this examination case, the ISR was restricted to the embodiments of some of the figures, because of lack of clarity of the claims (under Article 17(2)(a)(ii) PCT).
• The Board rejects the Main Request as not admissible under Rule 137(5) EPC for being directed to a non-searched emodiment of one of the other figures.
• As a comment, the present decision of Board 3.4.02 illustrates a possible difference between the first and second sentence of Rule 137(5) EPC. Recently, in T 0779/11, Board 3.5.07 had noted that  " Rule 137(5), second sentence, EPC [] states that amended claims "may [not] relate to subject-matter not searched in accordance with Rule 62a or Rule 63". The EPC contains no provision providing for a similar legal effect of a declaration under Article 17(2)(a) PCT. [] Rather than having legal consequences, the issuing of the declaration under Article 17(2)(a) PCT had the practical effect that no results of a prior-art search were available when the examination proceedings commenced." Hence, in case of a complete refusal to search, this would have had no legal effect, according to T 0779/11. The partial search under Article 17(2)(a)(ii) is brought under the first sentence of Rule 137(5) EPC in the present decision, thereby having a legal effect. 
• However, I doubt whether Rule 137(5), first sentence, EPC, is not restricted to partial search reports for lack of unity of invention of the claims as filed. The provision was inserted as Rule 86(4) EPC 1973, in 1994, and complemented decision G 2/92 (OJ EPO 1995, 420) in order to ensure that search fees are paid. Arguably, the first sentence is restricted to subject matter not searched for lack of unity of invention. This is also consistent with the need for a second sentence to cover Rule 62a and 63 EPC. Edit 08.10.2017: the previous sentence is not entirely correct, because for partial search reports under Rule 64 EPC, G 2/92 applies and not Rule 137(5), see Guidelines H-II 7.2. Still, the holding of G 2/92 is limited to non-unity and does not extend to lack of clarity. In conclusion, I don't agree with T 1473/11.

T 1473/11 - link

Reasons for the Decision

1. The appeal is admissible.

2. Main Request

2.1 In its communication of 27 April 2016 the board objected that it doubted that the sets of claims according to the Main and First Auxiliary Requests filed with the letter of 13 April 2016 complied with Rule 137(5) EPC.

2.2 This provision reads:

"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. Nor may they relate to subject-matter not searched in accordance with Rule 62a or Rule 63."

2.3 The "single general inventive concept" requirement is defined in Article 82 EPC and elaborated on in Rule 44(1) EPC (unity of invention) which reads:

"Where a group of inventions is claimed in a European patent application, the requirement of unity of invention under Article 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. 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."

2.4 Concerning the subject-matter on which the search had been based for the present patent application, an international preliminary report on patentability had been issued. In its Box III "Non-establishment of opinion with regard to novelty, inventive step and industrial applicability" of this report, the box "no international search report has been established for the whole application or for said claims Nos. 1-162" had been ticked.

In the accompanying international search report, the following objection was made under Box II, with reference to sheet PCT/ISA/210:

"Continuation of Box II.2
Claims Nos.:
The present independent claims 1 and 82 are unclear and, additionally, relate to an extremely large number of possible methods/devices. Support and disclosure in the sense of Article 6 and 5 PCT is to be found however for only a small proportion of the apparatus/methods claimed; see Figures 3-5 and corresponding pages 7-10 of the application. The non-compliance with the substantive provisions is to such an extent, that the search was performed taking into consideration the non-compliance in determining the extent of the search of claims 1 and 82 (PCT Guidelines 9.19, 9.23 and 9.25).
The search of claims 1 and 82 was restricted to those claimed apparatus/methods how they are understood and which appear to be supported. The extent of the search was consequently limited to the clearly defined examples in the description; see above-mentioned figures" (emphasis by the board).

2.5 It therefore appears that the search had been restricted to the apparatuses and/or methods disclosed in the context of Figures 3 to 5 and addressed on pages 7 to 10 of the published patent application. This is confirmed by paragraph 2 of section "Re Item V." of the written opinion of the international searching authority, which reads:

"2. The subject-matter of Claims 1 and 82, as far as the claims are understood, is anticipated from D1, or D2 or D3; see citations in the international search report. Also the embodiments corresponding to Figures 3 to 5 are known from these documents ...."

2.6 The citations in the international search report refer, inter alia, to document D3 (US2004/179202) citing paragraphs [0019] to [0034] and Figure 1. Indeed, Figure 1 of this document discloses an apparatus for analyzing optical properties of an object as defined in claims 1 and 82 of the original patent application in the context of Figure 5, i.e. comprising a Linnik interferometer, see in particular Figure 1 and paragraph [0021] of document D3. Therefore original claims 1 and 82 examined in the context of the embodiments of Figures 3 to 5 did not include any "special technical features" within the meaning of Rule 44(1) EPC, since their features were anticipated by prior-art document D3.

2.7 Amended claim 1 of the Main Request filed with the letter dated 13 April 2016 addresses the embodiment disclosed in the context of Figure 1 and page 5, final paragraph to page 6, second paragraph. Unlike the apparatus for analyzing optical properties defined in original independent claim 82 and searched in the context of Figures 3 to 5, present claim 1 is related to an apparatus for analyzing optical properties defined according to the embodiment of Figure 1 which includes a particular modulator as defined in the characterising portion of claim 1.

The embodiment of Figure 1 and the corresponding part of the description were not part of the original search. Furthermore it appears that the particular modulator defined in the characterising portion of claim 1 does not have a "same or corresponding feature" as regards the embodiments that were the subject of the international search (i.e. the embodiments of Figures 3 to 5), since these embodiments do not include such a modulator. Furthermore, as pointed out by the board in point 1.4 of its communication of 27 April 2016, the feature "modulator" was not defined in any of the original claims. Therefore, irrespective of whether the particular modulator defined in claim 1 of the Main Request defines a "special technical feature" over the prior art (which cannot be established, since such a claim was not part of the international search), the amended claim does not combine with the originally claimed invention "to form a single inventive concept" as prescribed by Rule 137(5) EPC, because the new feature does not have a corresponding feature in either the original claims or in the embodiments of Figures 3 to 5.

3. First Auxiliary Request

In its communication of 27 April 2016 the board observed that claim 1 of the First Auxiliary Request defined an apparatus comprising the features of claim 1 of the Main Request (addressing the embodiment in Figure 1) and comprising additional features of the embodiment in Figure 3 (page 8, second paragraph), namely a lens having high chromatic aberration. However, the original patent application did not provide a basis for combining the features of the embodiments in Figure 1 (disclosing an apparatus with an SLM effecting different optical path differences to portions of a wavefront) and Figure 3 (employing a high chromatic aberration lens and an array of small holes).

Therefore claim 1 of this request, and similarly claim 10, appeared to infringe Article 123(2) EPC.

Furthermore, in addition to the claimed subject-matter apparently not being disclosed in the application as originally filed, it also appeared doubtful that this embodiment had been part of the international search, because the embodiment in Figure 1 related to unsearched subject-matter within the meaning of Rule 137(5) EPC (see also point 2 supra).

3.2 With its communication of 27 April 2016 the board informed the appellant that it doubted that the appellants' two requests were admissible in view of Rule 137(5) EPC. The appellant did not provide any counter-arguments against the position of the board, nor did it file any further requests. The board sees also no reason to depart from the preliminary opinion expressed in its communication.

4. In view of the above, the board considers that neither the Main Request nor the First Auxiliary Request is admissible in view of Rule 137(5) EPC.

5. In the absence of any allowable request, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0690/13 - Support and basis

Key points

• The Board rejects a Second auxiliary request under Article 84 EPC as lacking support by the description because "there was a contradiction between the wording of claim 1 and the disclosure in figure 3 [invoked as support] and the associated description".
• I wonder whether the request was not rejected as lacking basis under Article 123(2) EPC.

T 0690/13


Reasons for the Decision
[] Second auxiliary request - Article 84 EPC 1973

14. Claim 1 of the second auxiliary request differs from claim 1 of the main request by the features underlined in section XII supra, in particular by the feature that "the pupil location means includes masking means for providing an output from which the influence of the reference spot and additional spots has been removed prior to selection of those parts of the gradient of said image portion in the pupil tracking window which have a gradient greater than the threshold value" (emphasis added by the board).

15. The appellant submitted the above feature was supported by figure 3 and the associated description of the application as filed.

16. The board, however, notes that according to figure 3 and the last four lines on page 7 of the description, the masking step (58) takes place after the gradient threshold comparison (52). It is thus the opposite of the above additional feature of claim 1, which states that the spots are masked prior to the selection of the image portions which have a gradient greater than a threshold value.

17. The appellant did not dispute that there was a contradiction between the wording of claim 1 and the disclosure in figure 3 and the associated description.

18. For the above reasons, claim 1 according to the second auxiliary request does not meet the requirement of Article 84 EPC 1973 that the claims be supported by the description.

T 2255/12 - Overly formalistic

Key points

• The Board confirms as established case law, that "the assessment of the requirements of Article 123(2) EPC should be done from the standpoint of the skilled person". The Board adds that "this helps to avoid an overly formalistic approach to the assessment of this requirement in which more emphasis is given to the literal content of the original application rather than the technical information that it conveys."

T 2255/12 - link

Reasons for the Decision


Main request


1. Article 123(2) EPC


The respondents [opponents] raised objections under Article 123(2) EPC against all the independent claims of the main request, namely claims 1, 9, 13 and 14. []


1.1.3 The respondent objected to the amendments under Article 123(2) EPC, arguing that original claim 9 referred back to claim 1 but not to claims 5 and 7. Hence, in the respondent's opinion, the combination of the features of original claims 1, 5, 7 and 9 was not disclosed in the original application. It furthermore observed that the list of film-forming agents was arbitrarily restricted to substances disclosed as preferred or most preferred agents.


In this context, the Board observes that, according to the established jurisprudence of the Boards of Appeal, the assessment of the requirements of Article 123(2) EPC should be done from the standpoint of the skilled person (see e.g. T 99/13 of 14 January 2016, point 2.3, and T 667/08 of 20 April 2014, point 4.1.4). This helps to avoid an overly formalistic approach to the assessment of this requirement in which more emphasis is given to the literal content of the original application rather than the technical information that it conveys.

T 1179/11 - Lacking an essential feature

 Key points

• In this examination appeal (against a refusal issued in 2010), the Board refuses the Main Request under Article 84 EPC because an essential feature is missing in claim 1.
• According to the Board, this follows from the application. The application does not expressly identify the feature as essential.

T 1179/11 - link



Reasons for the Decision
1. Applicable law
It is noted that the revised version of the Convention (EPC 2000) does not apply to European patent applications pending at the time of its entry into force (13 December 2007), unless otherwise provided. In this decision, where Articles or Rules of the former version of the EPC apply, their citation is followed by the indication "1973".[]


 3. Main request
3.1 Admissibility
The main request was submitted with the grounds of appeal. Therefore, it is in the appeal proceedings (Article 12(1)(a) RPBA).


3.2 Clarity
3.2.1 In the Board's judgement, an essential feature of the claimed transponder is missing in claim 1 of the main request. As recited in claim 1, the second circuit, which is coupled to the antenna assembly, is configured to receive a progression of response signals from said antenna assembly, said response signals having an identifying characteristic. There is, however, no mention in the claim of the fact that the progression of response signals results from transmission of a detection signal progression.
According to a preferred embodiment of the invention, the detection of a transponder in the read range of the transponder detector is performed by evaluating the decay rate of each response signal (cf. published application, paragraph [0075], Figures 6A and 6B). In effect, according to this preferred embodiment, the response signals are constituted by the detection signals themselves possibly distorted because of the electromagnetic coupling resulting from the presence in the read range of the transponder detector of the resonating circuit of a transponder.
While it is acknowledged that the description envisages other techniques for detecting the presence of a transponder in the read range (cf. paragraph [0074]), it does not suggest that the response signals could possibly be generated spontaneously, i.e. independently of any detection signals or in response to signals of a different origin. In other terms, the application as a whole is consistent about the fact that the response signals are signals that result from the generation and transmission by the transponder detector of the detection signal progression (cf. Figure 5, blocks 142, 144). It is further emphasized that it is also not disclosed how the identifying characteristic could be determined in the absence of any causal link between detection signals and response signals.


3.2.2 At the oral proceedings, the appellant did not comment on this issue.


3.2.3 It follows that claim 1 of the main request does not fulfill the requirements of Article 84 EPC 1973. Therefore, the main request is not allowable.