- The applicant filed amended claims with an undisclosed disclaimer (and with very limited arguments), presumably on D1 being possibly an accidental anticipation.
- However, D1 belongs to the same technical field, and hence is not an accidental anticipation within the meaning of G 1/03.
- The disclaimer would also remove more than necessary, and is also for this reason not allowable.
- The Board also considers the effect of G 1/16: " It could, therefore, be argued that proceedings in the present case should be stayed until the questions now pending as case G 1/16 have been answered. [] Staying the proceedings would mean, however, that the inclusion of the disclaimer in claim 1 of the first auxiliary request - an amendment made after the Board arranged oral proceedings - raises an issue which the Board cannot deal with without adjournment of the oral proceedings. This is a situation which strongly suggests that the first auxiliary request should not be admitted into the proceedings under Article 13(1) and (3) RPBA."
- " This argument of lateness could perhaps be countered with the argument that at the time of filing the appeal there was no doubt - in view of the case law - that the disclaimer infringed Article 123(2) EPC, whereas the [later] referral made in decision T 437/14 has at least some potential to change this situation [justifying the filing of the request after the summons].
The Board finds this counterargument not necessarily persuasive [.] [The] appellant has not raised this counterargument or any other relevant argument in support of the admissibility or of the allowability under Article 123(2) EPC of the first auxiliary request; it has left it entirely to the Board to investigate whether and for what reason the disclaimer may be allowable."
5. First auxiliary request - admission
5.1 Admission into the proceedings of the first auxiliary request is again within the Board's discretion under Article 13(1) and (3) RPBA.
5.2 Claim 1 of the first auxiliary request does not include the phrase "for any selected code rate" that was added to the main request. Instead, in claim 1 the text "the method comprising the steps of" has been replaced with "the method, for code rates other than 3/4, comprising the steps of".
According to the appellant, this amendment is intended as a disclaimer, limiting the claimed method to code rates other than 3/4. The appellant has not indicated a basis in the original application for this amendment or given arguments why the disclaimer is an allowable undisclosed disclaimer.
5.3 The Board has not been able to identify in the original application any mention of a code rate of 3/4, let alone a specific indication that code rate 3/4 may be excluded from the scope of the invention. The disclaimer is therefore a so-called undisclosed disclaimer, disclaiming subject-matter which is not specifically disclosed in the original application.
5.4 The appellant may have considered the disclaimer to be allowable under the conditions set out in decision G 1/03 (OJ EPO 2004, 413). Indeed, it noted that only the "Code Rate = 3/4" example could be detrimental to novelty and that "the inventors of D1 have failed to appreciate the benefits of the specific limitations as specified in the claim", which could be understood as a suggestion that the "Code Rate = 3/4" example is an "accidental anticipation".
5.4.1 According to the order of decision G 1/03, "an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention". The fact that the disclosure belongs to a remote or unrelated technical field may be important, but it is not decisive; the anticipation must be such that it "has nothing to do with the teaching of the claimed invention" (G 1/03, reasons 2.2.2).
In the present case, document D1 and its examples relate to LDPC codes and thus belong to the same technical field as the claimed invention. Both document D1 and the claimed invention concern the problem of constructing an LDPC parity-check matrix having advantageous properties by expanding a suitable base matrix. It cannot be said that document D1 "has nothing to do with the invention" or that the skilled person "would never have taken it into consideration when making the invention". It is thus not an accidental anticipation within the meaning of G 1/03.
5.4.2 Also, the present disclaimer does not satisfy the requirement of decision G 1/03 that it does not remove more than is necessary to restore novelty: it removes from the scope of claim 1 all parity-check matrices corresponding to a code rate of 3/4 and not just the specific parity-check matrix of the "Code Rate = 3/4" example.
5.4.3 Hence, the disclaimer included in claim 1 cannot be justified on the basis of decision G 1/03.
5.5 A further Enlarged Board of Appeal decision relating to disclaimers is G 2/10 (OJ EPO 2012, 376). This decision is concerned with amendments that disclaim subject-matter which is disclosed in the application as filed (see reasons 2.1). It is therefore not directly applicable to the present case.
5.6 Currently, further questions relating to the allowability of disclaimers are pending before the Enlarged Board of Appeal as case G 1/16, arising from a referral made in interlocutory decision T 437/14 of 17 October 2016. Essentially, the Enlarged Board is being asked whether the "gold standard" disclosure test is also to be applied to claims containing undisclosed disclaimers and, if so, whether the exceptions formulated in decision G 1/03 no longer apply. In case the exceptions relating to undisclosed disclaimers are to be applied in addition to the gold standard, the Enlarged Board is asked to consider whether the gold standard is to be modified in view of those exceptions.
This Board does not wish to speculate on the outcome of case G 1/16 but observes that it cannot be ruled out entirely that the Enlarged Board's answers will affect the test for the allowability under Article 123(2) EPC of undisclosed disclaimers - even those that do not strictly comply with the conditions set forth in decision G 1/03.
It could, therefore, be argued that proceedings in the present case should be stayed until the questions now pending as case G 1/16 have been answered.
5.7 Staying the proceedings would mean, however, that the inclusion of the disclaimer in claim 1 of the first auxiliary request - an amendment made after the Board arranged oral proceedings - raises an issue which the Board cannot deal with without adjournment of the oral proceedings. This is a situation which strongly suggests that the first auxiliary request should not be admitted into the proceedings under Article 13(1) and (3) RPBA.
In this context, the Board notes that the disclaimer was added to restore novelty over document D1, i.e. to overcome the very objection which formed the ground for refusal. The first auxiliary request could have been filed with the statement of grounds of appeal, if not earlier.
This argument of lateness could perhaps be countered with the argument that at the time of filing the appeal there was no doubt - in view of the case law - that the disclaimer infringed Article 123(2) EPC, whereas the referral made in decision T 437/14 has at least some potential to change this situation.
The Board finds this counterargument not necessarily persuasive, as it was always open to the appellant to argue that the disclaimer complied with Article 123(2) EPC, even if the case law may have suggested otherwise. In any event, the appellant has not raised this counterargument or any other relevant argument in support of the admissibility or of the allowability under Article 123(2) EPC of the first auxiliary request; it has left it entirely to the Board to investigate whether and for what reason the disclaimer may be allowable.
5.8 In these circumstances, the Board considers it appropriate not to admit the first auxiliary request into the proceedings.
6. Conclusion
Since the main request is not allowable and the first auxiliary request is not admitted into the proceedings, the appeal is to be dismissed.
Order
For these reasons it is decided that:
The appeal is dismissed.
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