T 1931/14 - Preamble of method claim

EPO Headnote
In the context of a method it is important to differentiate between different types of stated purpose, namely those that define the application or use of a method, and those that define an effect arising from the steps of the method.

Where the stated purpose defines the specific application of the method, in fact it requires certain additional steps which are not implicit in the remaining features, and without which the claimed process would not achieve the stated purpose.

On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, such a technical effect has no limiting effect because it is not suitable for distinguishing the claimed method from a known one.

Comments

• The Board indicates that the holding of T 848/93, that the feature "for remelting" was a distinguishing feature, does not contradict the finding in T 304/08, that the feature "for reducing malodor" was not limiting a method claim. In T 304/08, the "for" feature indicated a technical effect. In T 848/93, the "for" feature "required that the method actually be carried out by melting a galvanic layer on a circuit board."
• Compare the different approach in recent decision T 2170/13. 

EPO T 1931/14 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Main request - Novelty

2.1 Claim 1 as granted defines a process for producing oxygen to fuel an integrated gasifier combined cycle power generation system. Thus the process concerns the production of oxygen for the purpose of fuelling a power generation system of the integrated gasifier combined cycle type, commonly referred to by its acronym IGCC.

The impugned decision concluded that the process defined in claim 1 lacked novelty on the consideration that claim 1 is merely related to a "process for producing oxygen" that is restricted to the production of oxygen in a cryogenic air separation system, while the stated use "for fuelling an IGCC plant" did not limit the claimed method but merely indicated its suitability for that purpose.

2.2 Claim 1 explicitly refers to a process and therefore belongs to the category of method claims that define their subject-matter in terms of physical activities (cf. G 2/88, OJ EPO 1990, 93, Reasons 2.2).

T 1539/14 - Citrate cleaning benefit

Key points

• This case is about novelty of a second non-medical use claim. The claim is for using citric acid in a (clainging) composition for treating a hard surface to provide a "next time cleaning benenefit". The prior art teaches a composition comprising citric acid that is used for the same purpose. However, the prior art does not identify citric acid as being the component responsible for the "next time cleaning benefit" .
• According to the Board, this does not provide for novelty.
• The Board cites T 892/94: " it can be inferred from decision G 2/88 that no novelty exists, if the claim is directed to the use of a known substance for a known non-medical purpose, even if a newly discovered technical effect underlying said known use is indicated in that claim".
• Regarding the present case: "  the newly discovered technical effect of citric acid is not the purpose of the claimed use. [The] claimed use comprises the (activity of) treating a hard surface with a composition as defined in claim 1, whereby the citric acid ingredient of the composition provides (or contributes to providing) the treated surface with Next Time Cleaning Benefit. Thus, the actual purpose of the claimed use (activity) is that of providing NTCB to a hard surface. This is exactly the same purpose that is disclosed in D12 "

EPO T 1539/14 -  link

Reasons for the Decision

Main Request of the Proprietor

1. Interpretation of claim 1

1.1 As explicitly stated in the Proprietor's reply of 26 January 2015 (see page 1, paragraph "Interpretation of claim 1"), its interpretation of claim 1 (full wording under III, supra) is the one adopted by the Opposition Division (see IV, supra), namely that this claim defines

- the use of citric acid in a composition comprising a surfactant and citric acid
- in which a hard surface is treated with the composition
- to provide an NTCB [next time cleaning benefit] (i.e. to facilitate the removal of soil deposited on the surface previously treated with the composition).

In other words, the claimed use (activity) comprises treating a hard surface with a composition as defined in claim 1, whereby the citric acid ingredient of the composition provides (or contributes to provide) the treated surface with an NTCB.

1.2 The Board holds that this interpretation is correct. Considering that based on this interpretation also adopted by the Proprietor, the Board reached a negative conclusion as regards the novelty of the claimed subject-matter, no further details regarding the reasons for adopting this interpretation need to be given.

2. Lack of novelty - claim 1

2.1 The Board notes preliminarily that the wording of claim 1 at stake implies the ability of citric acid to provide a certain technical effect. Said effect is that when a hard surface is treated with a composition containing surfactants and citric acid, this latter ingredient provides (or at least contributes to provide) an NTCB to the treated surface.

2.1.1 It is undisputed among the Parties that the prior art does not disclose as such that citric acid may provide or contribute to providing this technical effect.

T 0360/13 - German law from 1925

Key points

• In this opposition appeal, the patentee filed a new auxiliary request just after the break for deliberation of the Board and just before the Board announced its decision (about clarity of the pending requests).
•  The Board does not admit the request, which does not seem very surprising under Article 15(5) RPBA. However, for some reason, the Board supports this decision by quoting a German book about procedural law published in 1925. I don't know the book, but it is described as "a classic monograph on German procedural law". 
• As a comment, Article 125 EPC refers to the "principles of procedural law generally recognised in the Contracting States", not to German procedural law. Furthermore, the book does not seem to be in the EPO file, and I personally would be a bit surprised if a book about national law is quoted for the first time in the written decision (though, of course, perhaps the book was discussed earlier in the case at issue). 

EPO T 0360/13 - link

2.5 Den Stand des Verfahrens betreffend kommt im vorlie­gen­den Fall erschwerend hinzu, dass der neue Hilfs­antrag in der mündlichen Verhandlung vor der Kammer erst nach Beendigung der sachlichen Debatte eingereicht wurde, als die Sache bereits entscheidungsreif war.

2.5.1 Der Vorsitzende der Kammer hatte nämlich nach der De­batte über die Klarheit des Merkmals (i) die Antrags­lage festgestellt und erklärt, dass sowohl Anspruch 1 des Hauptantrages als auch Anspruch 1 des damals vor­lie­gen­den Hilfsantrages dieses Merkmal enthielten. Daher wären beide Anträge nicht gewährbar, falls die Kammer zu dem Schluss käme, dass das Merkmal nicht klar wäre. Je nach Beratungsergebnis könnte es somit zu einer Endentscheidung kommen. Erst nach der Beratungs­pause, jedoch vor der Verkündung einer Entscheidung erklärte die Beschwerdeführerin, dass sie den damaligen Hilfs­antrag dahingehend ändern wolle, das diskutierte Merk­mal (i) zu streichen.

T 0976/11 - Surprise in OP before ED

Key points

• During oral proceedings before the ED, the ED took another document as closest prior art.
• "The [applicant] challenged the [examining] division's new inventive step objection, presented for the first time at the oral proceedings, by arguing that a high number of features of claim 1 [] such as "use of digital TV, [etc.]"  were not disclosed in the new closest prior art D7." " The examining division thereupon gave a break after which they announced that the division concluded that all features not explicitly mentioned in D7 were [considered trivial]"
• " Thus, at this point in time, the examining division already closed the discussion on all requests then on file, without hearing the [applicant]'s comments as to which feature[] established an inventive step over D7 and how. [] Therefore the examining division has committed a substantial procedural violation through the violation of the appellant's right to be heard. " 

EPO T 0976/11 - link

Reasons for the Decision

1. Substantial procedural violation

1.1 The appellant submits in the statement setting out the grounds of appeal that it was not expecting the examining division to change at the oral proceedings the closest prior art from D1 to D7[]

1.2 The board however does not agree that the change of the closest prior art alone can constitute a substantial procedural violation. An examining division has the procedural discretion to revise its objection of inventive step, including the choice of the closest prior art, at any stage of the examination proceedings including the oral proceedings. Furthermore, even if one were to assume for the sake of argument that the division's reading of D7 is incorrect, misinterpretation of a document does not constitute a procedural violation (see "Case Law of the Boards of Appeal", Eighth Edition, IV.E.8.4.5, pages 1196 and 1197 of the English version).

1.3 It is however a different matter whether the change of the closest prior art was followed by actions safeguarding the appellant's right to be heard under Article 113(1) EPC, i.e. whether the appellant was given an opportunity to present its comments on the examining division's revised inventive step objection.

1.3.1 The board understands from the minutes of the oral proceedings that the appellant challenged the division's new inventive step objection, presented for the first time at the oral proceedings, by arguing that a high number of features of claim 1 of the then main request such as "use of digital TV, a data content delivery system, a plurality of TV servers, use of a single fast Ethernet, a firewall, a headend, content streaming" (see the minutes of the oral proceedings, page 1, last paragraph) were not disclosed in the new closest prior art D7.

J 0013/16 - Restoration of priority by dO

EPO Headnote

1. If, in the international phase, a receiving Office (RO) has restored a right of priority under the "unintentional" criterion of Rule 26bis.3(a)(ii) PCT, the restoration is not effective in proceedings before the EPO acting as designated Office, since the EPO applies the "due care" criterion (Rule 49ter.1(b) PCT). In such cases [] the applicant must file a (new) request for restoration of a right of priority under Rule 49ter.2 PCT with the EPO acting as designated Office [within the period specified in Rule 49ter.2(b)(i) PCT] [i.e. within one month from the 31-month time limit or from the date of early entry]. For the purposes of Rule 49ter.2 PCT, the request filed with the RO under Rule 26bis.3(b) PCT cannot be taken into account in the proceedings before the EPO acting as designated Office.

2. In proceedings before the EPO, re-establishment of rights under Article 122 EPC is ruled out in respect of the period under Rule 49ter.2(b)(i) PCT for filing a request for restoration of a right of priority.

Key points

• Rule 49ter.2 PCT allows for the filing of a request fo restoration of priority with the dO within 1 month from the 31-month time limit (for EPO) or from the date of early entry; independently of whether restoration of priority was requested with the rO during the international phase. The Board considers this to be analogous to RE (for the priority periond, Rule 136(1), second sentence, EPC , and because Rule 136 EPC rules out RE for the period for RE, the same applies to Rule 49ter.2 (following G 5/93, 1.1.3). 

EPO J 0013/16 (J 13/16) - link

3. Restoration of the right of priority claimed in the present application

3.1 An international application for which the EPO acts as designated Office and which has been accorded an international filing date is equivalent to a regular European application and is referred to as "Euro-PCT application" (Article 11(3) PCT and Article 153(2) EPC). However, this principle of equal treatment between a regular European application and a Euro-PCT application has to be applied in the light of Article 150(2) EPC. This provision stipulates that international applications filed under the PCT may be subject to proceedings before the EPO (first sentence) and that in such proceedings, the provisions of the PCT and its Regulations are to be applied, supplemented by the provisions of the EPC (second sentence). However, in the case of conflict, the provisions of the PCT and its Regulations prevail over the provisions of the EPC (Article 150(2), third sentence EPC).

3.2 Where the international application was not filed within the period of 12 months from the date of filing of the priority application, Rule 26bis.3 PCT stipulates that the applicant may file a request for restoration of the right of priority up to two months after expiry of the priority period.

In the international phase, restoration of the right of priority can be granted under both the "due care" and "unintentional" criteria (Rule 26bis.3(a)). This means that the receiving Office (RO) ascertains whether the failure to file the international application within the priority period

- occurred in spite of due care required by the circumstances having been taken ("due care" criterion), or

- was unintentional ("unintentional" criterion).

Rule 49ter.1 PCT foresees in its paragraph (a) that, where the RO has restored a right of priority under the "due care" criterion, that restoration must, subject to its paragraph (c), be effective in each designated State. However, in accordance with Rule 49ter.1(b) PCT), a decision by a RO to restore a right of priority based on the "unintentional" criterion is effective only in those designated States the applicable laws of which provide for restoration of the right of priority based on that criterion or on a criterion which, from the viewpoint of applicants, is more favorable than that criterion.

T 2101/12 - Non-technical features

Key points

• Catchword: "Article 54(2) EPC does not exclude non-technical disclosures from the prior art, in disagreement with Catchword 2 of T 172/03." 
• T 172/03, Headnote "  anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56" 
• The present decision makes me wonder what happened in T 172/03 to cause the Board in that decision to decide that disregard a prior art document, and to pronounce it as a rule in a headnote.
• The Board in T 172/03 was certainly not applicant-friendly and was in fact refusing a patent application for a business method. The written decision T 172/03 is however somewhat difficult to follow. In para. 5, the Comvik approach is briefly discussed. In para. 6, it is emphasized that the skilled person is a software engineer and not a businessman. In para. 7, this is connected to the Examining Division being composed of technically qualified Examiners. The core of the decision is however in para. 8. Therein, the Board disagrees with the ED, who took as closest prior art an existing "order placing mechanism", i.e. a known business method. The Board then recalls that in T 641/00 (Comvik), r. 2, it was said that the FR and DE version of Article 56 refer to (in English) that inventive step means that " if a skilled person cannot derive it in an obvious manner from the state of technology." The Board decides that the closest prior art is " a distributed information system comprising multiple general purpose computers at different locations and connected by a communication network". The distinguishing features are functional features, and the functional features of the claim are accodingly put in the "requirements specification" of the Comvik approach. The Board then finds that "the claimed technical solution does not go beyond the concept of a mere automation of constraints imposed by the business-related aspects. Such automation using conventional hardware and programming methods must be considered obvious to a skilled person." 
• In the present case, the Board starts from what it considers to be common general knowledge of what a notary does, and reasons that the way of automation specified in claim 1 is obvious. The Board cites no document evidencing the work procedures of notaries. "The board however observes that the appellant has at no moment disputed that the [notary work process] above is indeed common general knowledge." 
• As a comment, in the present case, claim 1 is apparently a 1:1 automation of a known business method. But perhaps a next time the business method is slightly adapted to the use of internet. The advantage of the normally used Comvik approach is that any business method features are put in the requirements specification, even if the (notional) business person has come up with a quite creative business method. I don't think that Comvik requires disregarding business method features of the prior art. Taking into account that a claim is not inventive if it is obvious from any document, it is not necessary to exclude "business method" prior art to say that a general purpose computer is the " closest" prior art (i.e. suitable starting point) for the problem-solution approach, more in particular for the Comvik approach. 

EPO T 2101/12 - link

6.3 Instead, the board considers that the most suitable starting point is common general knowledge. The board considers it common general knowledge that documents, such as a will or a contract between parties, may be signed at a notary's office. The notary in such a case has the function of a "trusted third party". It is considered well known, and has not been denied by the appellant, that the whole process in the notary's office would typically comprise the following steps:

(a) A notary receives a document, which will need to be signed, from its author;
(b) the notary authenticates the document, e.g. by providing it with a seal;
(c) the notary presents ("displays") the document to a signatory (not necessarily, and indeed typically not, the same as the author), so that the signatory can gain knowledge of the document's content before signing it;
(d) the signatory signs the document;
(e) the notary authenticates the document together with the signature, i.e. the notary authenticates the fact that the given document was signed by the given signatory, linking the document and the signature together.

6.4 The appellant has submitted, both in the response to the summons (under I.A.1(a)) and during the oral proceedings, that something can only be state of the art if it is related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03.

T 2020/13 - Don't ignore the opponent in appeal

Key points

• The Board does not admit experimental report D25, filed two days before the oral proceedings.
• " The indication by the Board in section 13.2 of the communication that it might be necessary to address the relation between the structural feature of the claims (structure of the catalysts) and their ability to solve the problem allegedly solved by the claimed subject-matter [] was not an invitation to file additional experimental data. The point raised by the Board [] refers not only to the usual and necessary analysis for assessing the success of the solution proposed by the patent under examination, but also stems from the criticism exercised by the opponent that claim 1 covers a very broad range, while some of the claimed catalyst composition had not been shown to solve the technical problem underlying the patent in suit. Accordingly, the patent proprietor should not have waited until two days before the oral proceedings and more than two and an half years after the last substantive submissions of the opponent to file experimental data D25, but submit it in a timely manner to allow the opponent sufficient time to provide a response thereto. " 

Admittance of D24 and D25

3. The filing of experimental reports D24 and D25, submitted after the summons to attend oral proceedings, respectively after the subsequent Board's communication, represents an amendment to a party's case and their admission to the proceedings is subject to the Board's discretion pursuant to Articles 13(1) RPBA taking into account the additional condition of Article 13(3) RPBA. Their late submission was, according to the patent proprietor, not only due to a change of the patent proprietor and responsibility within the company making it difficult to get experimental data to address the inventive step issue, but also triggered by the new focus brought by the Board in its communication on the question whether all catalyst packages falling within the ambit of claim 1 could provide polyurethane foams and/or provide the alleged reduction of VOC and FOG values.

3.1 The theoretical possibility that D24 would be a reaction to the communication of the Board must be excluded as D24 and its accompanying submissions were filed earlier than the Board's communication. The submission of D24 with letter of 2 June 2017 concerning the use of amino-ethyl-piperazine and N,N-dimethyl-dipropylenetriamine as gelling catalysts is rather in response to the submissions of the opponent of 29 December 2014 with experimental report D23, as confirmed in section 3.1 on page 11 of the letter of the patent proprietor of 2 June 2017 (those catalysts were referred to as catalysts G and H by the opponent) Hence, the difficulties related to the assignment of the present patent to another proprietor also cannot justify the filing of D24, since said assignment took place on 3 January 2017 as indicated with letter of the new patent proprietor of 23 March 2017, i.e. 2 years after the submission of D23 which let ample time for the former proprietor to submit an appropriate response thereto.

3.2 Therefore, the Board does not find any justification for the late filing of D24 and taking into account the relevant criteria, in particular the principle of procedural economy, finds it appropriate to exercise its discretion by not admitting document D24 into the proceedings (Article 13(1) RPBA).

3.3 Concerning D25, this experimental report provides additional data concerning the use of N,N,N'-trimethyl-N'-3-aminopropylbis(aminoethyl) ether as blowing catalyst in combination with the 3 gelling agents used in the examples of the patent in suit, but varying the catalyst concentration or the isocyanate index, and the use of N,N,N'-trimethyl-N'-2-hydroxyethylbis- (aminoethyl) ether together with dimethylaminopropyl-amine. Its purpose is to demonstrate that the combinations of blowing and gelling catalysts within the definition of the present claims result in reduced emissions expressed in terms of VOC and FOG values. The issue whether the catalyst packages falling within the ambit of claim 1 could provide polyurethane foams and/or provide the alleged reduction of VOC and FOG values, i.e. whether the problem mentioned by the patent proprietor could be considered to be successfully solved across the whole area claimed, is not only standard practice when assessing inventive step, but also as indicated in section 13.2 of the Board's communication a point raised by the parties in appeal proceedings (see letter of the opponent of 29 December 2014, pages 5 to 8, points 11 to 19). The indication by the Board in section 13.2 of the communication that it might be necessary to address the relation between the structural feature of the claims (structure of the catalysts) and their ability to solve the problem allegedly solved by the claimed subject-matter (ability to form foams and reduce emission values) was not an invitation to file additional experimental data.