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since both requests for maintenance of the patent in amended form underlying the decision were rejected and the patent was revoked.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.