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. 

T 2189/14 - Something you can do late

Key points

• " A party may, at any time, argue against the other party's case by engaging with that party's arguments, for example by finding flaws in the logic. In the present case however, the respondent's submissions go far beyond that. they constitute a fresh case, and are clearly late." (emphasis added).  

EPO T 2189/14 -  link

Reasons for the Decision

1. In the course of the oral proceedings, the respondent argued that feature A - one of the differentiating features between the invention and D2 - had the technical effect that the gears could be used as part of a modular system. The appellant submitted that this line of argument should not be admitted into the proceedings, as it amounted to a fresh case, was made far too late in the proceedings and the appellant did not have sufficient time to prepare a counter-argument.

The respondent did not make any written submissions in the appeal proceedings which had commenced in November 2014. This has the procedural consequence that the appeal proceedings are based only on the notice of appeal, the statement of grounds of appeal and the Board's communication (Art. 12(1) RPBA).

For the first time at the oral proceedings, the respondent presented a line of argument as to the technical effect of an alleged distinguishing feature between the invention and the prior art; by doing so they effectively presented their own case as an alternative to the appellant's. A party may, at any time, argue against the other party's case by engaging with that party's arguments, for example by finding flaws in the logic. In the present case however, the respondent's submissions go far beyond that. they constitute a fresh case, and are clearly late.

The Board sees no justification for admitting them into the proceedings. The respondent gave no reasons as to why it had presented its case only at the oral proceedings before the Board. The appellant had no time to consider the line of argument and considering it solely during an interruption of the oral proceedings appears in the circumstances insufficient. Therefore, the Board decided not to admit the respondent's line of argument into the proceedings.

T 2245/12 - Why consult D2?

Key points

• In this examination appeal, the Board sets aside the refusal as being insufficiently reasoned.
• "Section 11 [of the decision of the ED] prima facie provides arguments why the subject-matter of claim 1 of the main request is not inventive, as required by Article 56 EPC. The board can however detect no logical chain in the reasoning." 
• " In section 11.5, [the ED] introduce document D2. The reasoning is apparently that the skilled person would consider [D2] because it "has already in the title an indication that a person should be included in the architecture" [] and because 'D1 and D2 are also both Philips patent applications'. There is however no explanation why a skilled person would look for prior art where a person is included in the architecture, nor why the fact that the applicant is the same for both D1 and D2 is relevant." 
• The lack of reasoning is a substantial procedural violation.

EPO T 2245/12 - link

Reasons for the Decision

1. The admissibility of the appeal

The appeal is admissible.

2. No reasoned decision; Rule 111(2) EPC

2.1 According to Rule 111(2) EPC, the decisions of the European Patent Office open to appeal shall be reasoned. The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision taken by a first instance department (see inter alia T 34/90 (OJ EPO 1992, 454), headnote I, and G 9/91 (OJ EPO 1993, 408), reasons 18, for the inter partes case). A reasoned decision issued by the first instance department meeting the requirements of Rule 111(2) EPC is accordingly a prerequisite for the examination of the appeal.

2.2 Section 11 of the grounds for the appealed decision prima facie provides arguments why the subject-matter of claim 1 of the main request is not inventive, as required by Article 56 EPC. The board can however detect no logical chain in the reasoning.

2.3 Section 11.2 lists the differences between the subject-matter of claim 1 and the disclosure of D1:

[....]

2.4 Section 11.3 states that these differences have the technical effect that when a user leaves a home-domain, the device is not able to use the user-licenses anymore.
ISection 11.4 then concludes that the problem to be solved is how to prevent a user from losing rights he or she paid for. Such would however be a problem caused by the listed differences, rather than one solved by it, as would be required in the context of the "problem and solution" approach, which should in principle be used for the assessment of inventive step at the European Patent Office.

T 0591/17 - Decision state of the file

Key points

• Another "decision according to the state of the file", another substantial procedural violation. 
• The present application was filed in 2003, and is remitted back to the ED. The age of the case " does not constitute a special reason for not remitting the case", taking into account that the applicant is not in a hurry. 
• The refusal of the ED is a form referring to a Communication of 4 March 2016. That communication in turn "refers to the communication of 22 March 2005 and the telephone conversation of 27 July 2015. In each of these instances, a different set of claims was before the examining division. It is, thus, not clear to what extent the reasons in the earlier communication and telephone conversation still applied to the claims on file when the decision was taken and to what extent they were overcome by the appellant's arguments put forward in the meantime." 
• The refusal was based on lack of inventive step over D1 with D9. "As regards D9, the communication refers to three entire pages and a complete figure of D9 to show that all the "security" features of claim 1 were known from that document. The communication does not, however, define the " security features" [and therefore does neither] state which features the examining division considered to be disclosed in D9. [] Also the broad brush reference to large parts of D9 is an obstacle to determining which features of claim 1 the examining division considered to be known from D9 and why. " 
• The refusal is therefore insufficiently reasoned and this is a substantial procedural violation. 

EPO T 0591/17 -  link

Reasons for the Decision

1. Rule 111(2) EPC provides that decisions of the EPO which are open to appeal shall be reasoned. The decision must contain, in logical sequence, those arguments which justify the tenor. All facts, evidence and arguments which are essential to the decision must be discussed in detail (see, for instance, T 278/00, point 2 of the reasons, and T 897/03, points 2 and 3 of the reasons).

2. For its reasons, the decision under appeal refers to the communication dated 4 March 2016. It is established jurisprudence of the boards of appeal that such decisions are in principle accepted, but that a decision "by reference" is only reasoned within the meaning of Rule 111(2) EPC if the communication referred to itself contains the required reasons (see, for instance, T 963/02, point 2.1 of the reasons).

3. The communication referred to states that the then claims lacked inventive step both in view of D1 and D2 and in view of D9.

3.1 As regards D1 and D2, the communication itself refers to the communication of 22 March 2005 and the telephone conversation of 27 July 2015. In each of these instances, a different set of claims was before the examining division. It is, thus, not clear to what extent the reasons in the earlier communication and telephone conversation still applied to the claims on file when the decision was taken and to what extent they were overcome by the appellant's arguments put forward in the meantime. The examining division appears to concede this by stating in the communication of 4 March 2016 that only "similar" reasoning applied to the claims pending at the time, without however explaining to what extent the earlier reasoning still applied and to what extent it had to be adapted.

T 1307/15 - What lacks inventive step?

Key points

• " The board concludes that the only distinguishing feature in question must be considered to lack inventive step over the prior art D2 and D7, Article 56 EPC." 
• I am nitpicking, but inventive step is about the subject-matter as claimed, i.e. the combination of features. Not about individual features of a claim. The Board could have said e.g. that the distinguishing feature does not provide for an inventive step over D2 and D7. 

EPO T 1307/15 -  link

18. The board concludes that the only distinguishing fea­ture in question must be considered to lack inven­tive step over the prior art D2 and D7, Article 56 EPC.

T 2340/12 - Experimental results and "space energy"

Key point

• In this examination appeal, the title of the application is "A space energy implosion unit and energy amplification unit using the same". 
• For this case, I will just refer to the EPO headnote shown below.
• As a bit of context, the Examining Division said in the Communication of 06.11.2010, point 2.3, that the applicant tries to prove the existence of a "torsion field"  and its medical properties with a single scientific paper as evidence, "torsion field" being essentially synonymous with "space energy" in the application at issue. D3 cited by the ED was an article titled "Pseudoscience. How does it threaten science and the public?".

EPO headnote
The filing of experimental results is not to be seen as an obligation resulting from the EPC imposed on the applicant but, in contrast, as a right, recognised by the practice and the case law of the boards of appeal, providing the applicant with the opportunity to convince the examining division or board of appeal that it erred in its initial findings.

Claim 1 at issue

"1. A torsion field implosion unit comprising:

• a planar structure (1) having a regular pentagonal shape;
• a cubic structure (2) which is installed to be separated from an upper portion of the planar structure (1) and has a regular pentagonal pyramid shape; and
• a separation structure (3) which separates the planar structure (1) and the cubic structure (2) from each other and has a smaller area than areas of the planar structure (1) and the cubic structure (2)."

EPO T 2340/12 - link

3. Main Request - Sufficiency of disclosure

3.1 It is, firstly, observed that the board does not understand how the torsion field or space energy are to be measured. In particular, it is not straightforward for the skilled person to identify which devices or systems could possibly be used for such measurements. Similarly, in the description (cf. paragraph [97]) reference is made to the frequency of the radiated space energy. In the absence of direct measurements of the torsion field or space energy, the board does not understand how the frequency of the radiated space energy could actually be measured.

[...] 

3.4 The appellant contested the findings of the examining division regarding the absence of proof of the effects achieved by the claimed devices. It was emphasised, in this respect, that the EPC does not contain any requirements for such experimental evidence to be provided. The appellant further questioned the competence of the examining division to require such evidence.