T 0497/11 - Inventive step and Art. 69 EPC

Key points

• For the assessment of inventive step, there is according to the Board no reason to take the description into account for interpretation of the claims, given that the claims as such are clear.
• The Board:  " All differences over the generic prior art identified above can be carried out by a human, e.g. a flight controller, without involving any further technical means. Thus, these identified differences may be regarded as mental acts. Therefore, the board concludes that claim 1 merely defines the automation of a mental act by known means, which is obvious for the person skilled in the art. Thus the subject-matter of claim 1 does not involve an inventive step in the sense of Article 56 EPC. [...] The appellants argued in the context of several of the features discussed above that a greater degree of complexity (e.g. larger number of aircraft, complicated goal function, longer time-scales) was implicit if the claim was interpreted in the light of the description in accordance with Article 69 EPC. However, that article concerns the determination of the scope of protection of the claims, such that there is no reason to take the description into account for interpretation, given that the claims as such are clear."

EPO T 0497/11 - link

IV. Claim 1 of the appellants' main request reads as follows:

"A method for an aviation system to temporally manage the flow of a plurality of aircraft with respect to a specified system resource, based upon specified data and operational goals pertaining to said aircraft and system resource, said method comprising the steps of:
- collecting and storing said specified data and operational goals,

- processing, at any given initial instant, said specified data applicable at that instant to said aircraft so as to predict an initial arrival fix time for each of said aircraft at said system resource,
- specifying a goal function whose value is a measure of how well said system resource and plurality of aircraft meet their operational goals if said aircraft achieve given arrival fix times,
- computing an initial value of said specified goal function using said predicted initial arrival fix times, and
- utilizing said goal function to identify those arrival fix times to which said predicted, initial arrival fix times can be changed and result in the value of said goal function indicating a higher degree of attainment of said operational goals, wherein said identified arrival fix times are set as the targeted arrival fix times,
- communicating information about said targeted arrival fix times to said aircraft so that said aircraft can change their trajectories so as to meet said targeted arrival fix times and
- monitoring the ongoing temporal changes in said specified data so as to identify temporally updated specified data, processing said temporally updated specified data to predict updated arrival fix times, computing an updated value of said specified goal function using said updated arrival fix times, comparing said updated and optimized goal function values to determine whether said optimized value continues to be met or exceeded, if said updated value continues to meet or exceed said optimized value, continuing to use same targeted arrival fix times, if said updated value does not meet or exceed said optimized value, repeat above step utilizing said goal function so as to identify new, updated targeted arrival fix times."

Reasons for the Decision

1. Main request and auxiliary requests 1 and 2

1.1 Admittance (Article 13(1) RPBA)

The independent method claims of the requests filed with the appellants' statement of grounds of appeal contained the amendment that the second method step (processing) was carried out "by using a computer", thus addressing by amendment the objection under Article 52(2)(c) EPC in the decision under appeal. Consequently it was not necessary for the respondents, in their replies to the appeal grounds, or the board in its communication accompanying the summons to oral proceedings, to address the issue of technicality within the meaning of that Article.

Only with their letter of 19 May 2016 (i.e. approximately one month before the oral proceedings before the board) did the appellants file the amended main request and auxiliary requests 1 and 2 in which the phrase "by using a computer" had again been deleted, thus effectively reverting to the method claims they had filed in April 2007 in response to the original oppositions. With this letter they also presented arguments in favour of technicality of these claims.

The admittance of the new main request and auxiliary requests 1 and 2 would thus result in the need to re-open, at a very late stage in the procedure, discussion of conformity with Article 52(2)(c) EPC, which had been rendered unnecessary by the amendments made at the time of filing the appeal grounds. This is contrary to the requirement of Article 12(2) RPBA that the statement of grounds of appeal shall contain a party's complete case. It is also contrary to the requirement for procedural economy. There was moreover no reason justifying this late filing, because the board's communication raised no new objections. A change of representative is not a valid reason for the late filing of the requests either (Case Law of the Boards of Appeal, 7th edition 2013, IV.E.4.6.2).

Therefore, the board exercises its discretion under Article 13(1) RPBA not to admit the main request and auxiliary requests 1 and 2 into the procedure.

2. Auxiliary request 3

2.1 Admittance (Article 13(1) RPBA)

Independent system claim 1 of present auxiliary request 3 is identical to independent system claim 1 of auxiliary request 3 as filed with the statement setting out the grounds of appeal. []

The board thus exercises its discretion under Article 13(1) RPBA to admit auxiliary request 3 into the procedure.

2.2 Inventive step (Article 56 EPC) 

[] 2.2.4 Conclusion

All differences over the generic prior art identified above can be carried out by a human, e.g. a flight controller, without involving any further technical means. Thus, these identified differences may be regarded as mental acts.

Therefore, the board concludes that claim 1 merely defines the automation of a mental act by known means, which is obvious for the person skilled in the art. Thus the subject-matter of claim 1 does not involve an inventive step in the sense of Article 56 EPC.

2.2.5 Other matters

The appellants argued in the context of several of the features discussed above that a greater degree of complexity (e.g. larger number of aircraft, complicated goal function, longer time-scales) was implicit if the claim was interpreted in the light of the description in accordance with Article 69 EPC. However, that article concerns the determination of the scope of protection of the claims, such that there is no reason to take the description into account for interpretation, given that the claims as such are clear.

7. Conclusion

Since none of the requests of the appellants which have been admitted into the procedure are allowable, the board has to accede to the request of the respondents to dismiss the appeal.

[]

Order

For these reasons it is decided that:

The appeal is dismissed.