T 0268/13 - Preamble limiting for production method

Key points

• The Board considers the identification of the product in the preamble of a claim for a production method, to be limiting. Hence, even if the method steps are disclosed, the claim can still be novel by virtue of the feature " Verfahren zur Herstellung eines mehrlagigen Dekorbandes" .
• The Board indicates that it can  not follow the Guidelines F-IV 4.13 (2016), in particular the paragraph based on T 304/08. 
• " [T 304/08]  beschäftigte sich mit der Angabe einer bestimmten Wirkung (Verringerung von üblem Geruch) in einem Verfahrensanspruch. Merkmale, die die Herstellung eines bestimmten Gegenstands betreffen, sind aber von Wirkungsangaben zu unterscheiden" .
• The paragraph of the Guidelines at issue is changed in the 2017 version, although I can not say if the present decision indicates the same as the new wording of the Guidelines. 

Changes in Guidelines F-IV 4.13
A distinction does however have to be made where theA claim which is directed to a method or process aiming at a certain purpose, when it comprises physical steps which result infor the production of a product ("method of manufacture") (i.e. the claim is in fact directed towards the production of a product). In this case, the indication of the intended purpose of the method (production of a product) ishas to be understood in the sense that the method or process has to be merely suitable for that usethe production of the product, rather than comprising the use as an integral method step. Consequently, a prior disclosure of the same method, which is suitable for producing said specific product but does not indicate that the specific product is produced with it, anticipates without an indication of the particular purpose (product production), although the method is nevertheless suitable for it, would anticipate a claim to the method for that particular purpose (see T 304/08)the production of that specific product.

V. Antrag 1 des Hauptantrags lautet wie folgt (die von der Kammer benützte Merkmalsgliederung ist in eckigen Klammern angegeben):

"[A] Verfahren zur Herstellung eines mehrlagigen Dekorbandes [B] mit reliefartiger Struktur [C] aus Text oder graphischem Symbol, umfassend [D] eine Oberlage (12) [E] aus Metall, vorzugsweise Aluminium, wobei das Verfahren die folgenden Schritte umfasst:

Entscheidungsgründe

2.8 Bedeutung der Produktmerkmale für die Auslegung des Verfahrensanspruchs

Die Kammer kann sich dem Argument der Beschwerdeführerin, dass das Verfahren gemäß Anspruch 1 nur durch die Verfahrensschritte definiert wird, nicht aber von dem herzustellenden Produkt, nicht anschließen. Laut Oberbegriff betrifft Anspruch 1 ein Verfahren zur Herstellung eines mehrlagigen Dekorbandes mit reliefartiger Struktur aus Text oder graphischem Symbol, das eine Oberlage umfasst. Nur solche Verfahren werden vom Anspruch erfasst, und nur Verfahren, die zur Herstellung eines solchermaßen definierten Dekorbandes führen, können - wenn sie auch die eigentlichen Verfahrensschritte umfassen - den Anspruch neuheitsschädlich treffen. Die Rechtsprechung betreffend Produkte für einen bestimmten Zweck lässt sich insofern in der Regel nicht auf Verfahren zur Herstellung von Produkten anwenden.

In diesem Zusammenhang kann sich die Kammer den Ausführungen in den "Richtlinien für die Prüfung", Abschnitt F-IV 4.13 (Fassung vom November 2016) und insbesondere ihrer Auslegung der Entscheidung T 304/08 nicht anschließen. Diese Entscheidung beschäftigte sich mit der Angabe einer bestimmten Wirkung (Verringerung von üblem Geruch) in einem Verfahrensanspruch. Merkmale, die die Herstellung eines bestimmten Gegenstands betreffen, sind aber von Wirkungsangaben zu unterscheiden (siehe auch die Entscheidungen T 1384/08 vom 16. Dezember 2010, Punkte 5.1.3-4 der Entscheidungsgründe, und T 2111/13 vom 22. Juli 2014, Punkt 3 der Entscheidungsgründe).

3. Klarheit

Die Kammer teilt die Auffassung der Beschwerdeführerin, dass es fast unmöglich ist, allgemein festzulegen, was als Text oder graphisches Symbol gelten kann [see the wording of claim 1 above]. Diese Schwierigkeit wurde von der Beschwerdeführerin mit mehreren Beispielen belegt. Sie rührt unter anderem davon her, dass der Symbolwert eines Zeichens von gesellschaftlichen Konventionen, technischen Normen, usw. abhängig ist. Ein Zeichen, dem kein symbolischer Wert beizumessen ist, kann zum Beispiel durch Festlegung einer Norm plötzlich Symbolwert erlangen. Ebenso kann ein Zeichen, das in einer Kultur ohne jeden Zweifel Symbolcharakter trägt, in einer anderen Kultur nicht als Symbol wahrgenommen werden.

Dennoch macht dieses Merkmal den Anspruch nicht völlig unklar. Zwar lässt sich nicht ganz allgemein und universell feststellen, was ein Symbol darstellt, aber im konkreten Anwendungsfall ist dennoch klar, ob ein bestimmtes Zeichen im gegebenen kulturellen, linguistischen oder technischen Kontext ein Symbol ist oder nicht. Der Anspruch stellt also weder die Person, die eine Patentverletzung vermeiden will, noch den Verletzungsrichter vor unlösbare Aufgaben, da sie sich ja des relevanten Kontexts bewusst bzw. Teil davon sind.

Daher ist die Kammer zum Schluss gelangt, dass das Merkmal den Erfordernissen von Artikel 84 EPÜ 1973 genügt.

T 0219/15 - Transfer opposition refused

Key points

• In this case, a request for transfer of the opposition was filed, but the Board refuses this because of lack of evidence that the relevant business assets were transferred. The original opponent remained opponent and is also appellant. His submissions remain valid in the appeal.
• " The representative of the opponent submitted information after commencement of the appeal proceedings to show the alleged transfer of the business relating to the opposed patent and had been at the same time authorised representative of the alleged new opponent. In agreement with T 423/11 [4], the board concludes that even if the situation were unclear this had no impact on the overall procedure, i.e. the appeal proceedings." 
• There is also an issue about inventive step, boiling down to "the unusual position of the opponent during oral proceedings before the opposition division in not commenting on inventive step". The Board sees no procedural violation in how the OD dealt with this. 

EPO T 0219/15 -  link

Reasons for the Decision

1. Party status and admissibility of the appeal of appellant I

The appeal was filed by the opponent Clariant Produkte (Deutschland) GmbH of Lenbachplatz 6 in Munich. A request for transfer of the opposition to Johnson Matthey PLC was filed by letter of 30 March 2015. The evidence provided does not conclusively establish that the entire rights and obligations relating to the appeal were transferred to Johnson Matthey PLC.

An opposition pending before the EPO may "be transferred or assigned to a third party as part of the opponent's business assets together with the assets in the interests of which the opposition was filed" (G 4/88 [order], G 2/04 [2.2.2]).

T 2416/12 - 17 years pending, remittal

Key points

• This is an examination appeal. 17 years after the filing date (Euro-PCT, not a divisional), the case is remitted back to the Examining Division.
• Filing date 12.02.1999, entry into the European phase 11.09.2000 , first Communication in 2006, second in 2008, summons in 2012, Notice of appeal also in 2012. Board remits the case. 
• The Examining Division has meanwhile issued an Intention to grant within a few months from the remittal. 
• " In the further prosecution of the case, the Examining Division may want to take into account the observations made in the Board's communication with regard to the prior art cited in the first-instance proceedings. The Board further notes that minor corrections of the claims may be required (e.g. "dependent" rather than "dependant" in claim 1)." The ED issued the Rule 71(3) directly  after the remittal, with the typographic error in claim 1. 

EPO T 2416/12 - link

Reasons for the Decision 
[...] 

Further prosecution

7. For the reasons given above, the Board does not uphold the clarity objections raised in the decision under appeal. Moreover, the Board is satisfied that the claims of the main request overcome the objections raised under Article 84 EPC in the appeal proceedings, fulfil the requirements of Article 123(2) EPC and define subject-matter which is new over document D1. It follows that the grounds on which the decision under appeal was based do not apply.

8. The Board further concludes from the above discussion that the Examining Division incorrectly mapped the tracking and storage at the search engine to features of a browser or client. As a consequence, it did not take into account important features of the claimed invention, which have been further clarified in the appeal proceedings.

9. Under those circumstances, and in spite of the long duration of the proceedings thus far, the Board is not minded to assess inventive step in the appeal proceedings.

In accordance with Article 111(1) EPC, the case is therefore to be remitted for further prosecution by the first-instance department. This is in accordance with the procedural suggestion made by the Board in its communication and accepted by the appellant (see sections III and IV above). The decision can therefore be taken without oral proceedings.

10. In the further prosecution of the case, the Examining Division may want to take into account the observations made in the Board's communication with regard to the prior art cited in the first-instance proceedings. The Board further notes that minor corrections of the claims may be required (e.g. "dependent" rather than "dependant" in claim 1).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

T 0243/14 - Multiple independent claims in opposition

Key points

• Rule 43(2) does not apply in opposition. If claim 1 as granted is not inventive, you can split it up in two independent claims, with two different and unrelated features that each provide inventive step. The patentee did precisely this in the present case in Aux Req 1 before the OD. However, the procedural status becomes not so straightforward. 
• The OD did not admit AR-1, the Board does admit it. The OD found AR-2 with only one of the two independent claims (of AR-1) to be allowable. The opponent did not appeal. Therefore, in AR-1 with two independent claims, only the second independent claim (claim 3) is open to examination in appeal. 

IV. The decision was based on the claims of the patent as granted as main request and two auxiliary requests.

The differences in auxiliary request 1 compared to the main request, insofar as relevant to the present decision were that:

- Claim 1 specified the chemical nature of the initiating functional groups;

- Claim 3 - newly introduced as a further independent claim - differed from granted claim 1 by specifying that:

"said photoreactive polymer has at least five initiating functional groups on the dendritic polymer core".

Auxiliary request 2 differed from auxiliary request 1 in deletion of claim 3 with consequential renumbering of the remaining claims.

V. According to the decision the main request did not meet the requirements of Article 56 EPC. [] Auxiliary request 1, which had been filed during the oral proceedings was not admitted on the grounds that the amendment represented by claim 3 thereof, relying on features of the description, could not have been expected by the opponent.

Auxiliary request 2 also filed in the oral proceedings, but lacking claim 3 of the first auxiliary request was held to meet the requirements of Article 56 EPC since there was no incentive in the prior art to provide a photoreactive polymer having the defined initiator groups and co-initiators bound to a hyperbranched polymer core.

VI. The patent proprietor filed an appeal against the decision.

Reasons for the Decision

1. Admissibility of the main request.

T 0395/16 - Appeal and deemed withdrawn application

Key points

• In this examination appeal, the applicant requested a reimbursement of the appeal fee. During the appeal period, the application became deemed withdrawn due to failure to pay the renewal fee. Does the Board needs to decide on the request for reimbursement of the appeal fee?
• The Board finds that it does need to decide based on G 8/91. 
• The alleged procedural violation was that a decision was taken at the oral proceedings that the professional representative could not attend because " the lack of instructions from its client [the applicant] due to serious and unexpected health problems experienced by the [CEO] of the applicant during the period between the deadline for filing the written submissions and the oral proceedings" 
• The Board finds that "the examining division had no reason not to proceed in its absence and no substantial procedural violation was committed". The Board also recalls that " [where] oral proceedings are held the decision taken orally becomes effective by virtue of its announcement and cannot be amended even by the department that issued it" .

EPO T 0395/16 - link

Reasons for the Decision

1. The appeal is admissible.

2. As announced with email dated 25 July 2017 the appellant did not attend the oral proceedings. In accordance with Rule 115(2) EPC and Article 15(3) RPBA, the proceedings were continued in its absence.

3. According to Rule 103(1) (a) EPC, the appeal fee is reimbursed when a board deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

3.1 A review of the decision under appeal, as to its merits, is no longer possible as the European patent application no. 07710600.3 was deemed to be withdrawn under Article 86(1) EPC and hence the appeal to this respect is not allowable.

T 2324/14 - The meaning of "not admitting"

Key points

• In this examination appeal case, an auxiliary request was not admitted under Rule 137(3) EPC by the Examining Division because prima facie it did not overcome the deficiencies of the main request. The Board needs to decide whether the ED actually did  not "admit" the request in the sense of Article 12(4) RPBA, or did something else with the request. The issue is that the Examining Division that the auxiliary request "prima facie [... did] not overcome the objections" raised against the main request. However, it then indicated which specific objections were not remedied. 
• "The board considers that, contrary to the wording of the decision, the examining division did not limit its examination of the auxiliary request to prima facie considerations. It concludes that the discretionary decision was incorrect even though it was based on right principles (see G 7/93, reasons 2.6). In fact, the examining division considered the auxiliary request fully, since it was able to give sufficient reasons for its conclusion that a patent could not be granted on the basis of the auxiliary request. The examining division thus having considered the auxiliary request fully, the board takes the view that there was no discretion left for the examining division "not to admit" it." Therefore, the Board considers that Article 12(4) RPBA obliges it to take into account the request at issue.
• The Board makes some interesting observations about some basic terminology in the EPC. "The EPC does not define what it means for an examining division to give or deny its consent to an amendment under Rule 137(3) EPC." "[The] EPC also does not specify what it means for a submission to be "admitted"." 
• " The EPC also does not define how the examining division should exercise its discretion under Rule 137(3) EPC. The boards of appeal have, however, accepted that the examining division may base its decision to deny consent to an amendment on prima facie considerations and that it may deny its consent to an amendment with prima facie deficiencies. 
• "A prima facie judgment is one which is made at first sight and is commonly understood to be one assumed to be correct until proven otherwise."

EPO  T 2324/14 -  link

Reasons for the Decision

The decision of the examining division

not to admit the auxiliary request

1. The decision under appeal objected that claim 1 of the main request lacked clarity and sufficient disclosure (see reasons 1-1.1.2 and 2-2.4.2). It then observed that claim 1 of the (first) auxiliary request still contained at least some of the expressions found to be unclear (reasons 3.1) and did not remedy "in any way" the lack of disclosure (reasons 3.2). In view of this, the examining division found that the auxiliary request "prima facie [... did] not overcome the objections under Article 84 EPC and Article 83 EPC", and thus it did not give its consent under Rule 137(3) EPC to the auxiliary request (see reasons 3).

2. Under Rule 137(3) EPC, "No further amendment may be made without the consent of the Examining Division". The examining division therefore had discretion to deny its consent to the auxiliary request.

2.1 Like any other decision open to appeal, the discretionary decision to deny consent to an amendment must be reasoned (Rule 111(2) EPC). In giving reasons for its decision, the examining division acted correctly in this respect, too.

2.2 The EPC does not define what it means for an examining division to give or deny its consent to an amendment under Rule 137(3) EPC.

T 0630/11 - The notional business person

Key points

• In this well written decision in an examination appeal, the Board finds lack of inventive step for the claims of this application directed to online poker.
• " The description explains that the principal aim of the invention is to reduce the time players spend waiting. [] This aim is achieved by pooling players from a plurality of online casinos. "
" In CardinalCommerce [T 1463/11 of 27.04.2017] , the Board stated that the notional business person (more generally, the non-technical person) cannot normally require even notorious technical means. The reason is that the inventor may have obtained a technical effect using technical means, even notorious means, in a way that would not have been obvious to the skilled person. That is what a patent is meant to reward. To allow the notional business person to prescribe technical means would be to foreclose any discussion of whether they were used in a technically non-obvious way. This should not lead to a proliferation of patents for technically trivial inventions; they would be obvious to the skilled person. [The applicant] submitted that, in applying the Comvik approach, particularly in the light of CardinalCommerce, the business person cannot make requirements that have technical implications. The Board disagrees."

EPO T 0630/11 -  link

Reasons for the Decision

Introduction

1. The invention is about online gambling. It is described in terms of poker, but it could be any zero-sum game with (monetary) winnings and losses. In the variant considered, a game requires at least four players and has a maximum of eight. If there are only three players, they will have to wait for a fourth. If there are nine, one will be left waiting. The description explains that the principal aim of the invention is to reduce the time players spend waiting.