T 0091/06 (Function card/MINOLTA) of 16.9.2008

Summary of Facts and Submissions

I. European patent application No. 00 122 339.5 claims priority from a national patent application filed in 1999 for an invention related to function cards for use in an electronic equipment.

II. In the examination proceedings, after repeated efforts to meet objections raised by the examining division, the applicant finally filed a main and an auxiliary set of amended claims, the main request by letter dated 31 May 2005.

III. The examining division refused the application in oral proceedings held in absence of the applicant. According to the reasons of the decision given in writing by letter dated 8 August 2005, the subject-matter of claim 1 did not meet the requirement of inventive step in the light of prior art document D1 (US-A-5 481 276 published in 1996) and the general technical knowledge in the field.

IV. An appeal was lodged by the appellant (applicant) against the refusal of the application on 10 October 2005. By a letter dated 7 December 2005, the appellant filed the statement setting out the grounds of appeal, including a further set of amended claims replacing the previous claims on file. Amended claim 1 reads as follows:

"1. A card (92a-92f) comprising storage means (920) for storing software information provided for expanding capabilities of any of a plurality of models of electronic equipment including a microprocessor-operated digital camera (1), when said card (92a-92f) being attached to card slot means (17) of any of said plurality of models of electronic equipment including digital camera (1),

said storage means (920) of said card (92a-92f) comprising storage area for storing both

(i) model information of said plurality of models of electronic equipment including digital camera (1) capable to comply with said card (92a-92f); and

(ii) a plurality of software drivers respectively related to said plurality of models of electronic equipment including digital camera (1) included in said model information;

wherein

said model information of said plurality of models of electronic equipment including digital camera (1) and stored in said storage area includes information of addresses where said plurality of software drivers are stored in said storage area of said storage means (920) of said card (92a-92f);

when said card (92a-92f) is attached to the card slot means (17) of any specific electronic equipment including digital camera (1), said model information which is stored in said storage area of said storage means (920) of said card (92a-92f) enables to be searched through for judging whether said specific electronic equipment including digital camera (1) corresponds to a model of electronic equipment including digital camera (1) included in said model information which is stored in said storage area of said storage means (920) of said card (92a-92f); and

when it is judged that said specific electronic equipment including digital camera (1) complies with one of said plurality of models of said model information, the related address of said model information enables to identify the software driver related to said address and stored in said storage area of said storage means (920) of said card (92a-92f) among the plurality of software drivers stored in said storage area of said storage means (920) of said card (92a-92f) so as to be suitable to be installed to said specific electronic equipment including digital camera (1) via said card slot means (17)".

V. The appellant requested that the decision under appeal be set aside, a patent be granted on the basis of the amended claims, and as an auxiliary request a term be set for oral proceedings.

VI. Regarding the amendments of claim 1, the appellant made the following comments:

"The amended claim 1 mainly is based on claim 1 of the earlier version filed on May 31, 2005 according to the earlier main request, but differs therefrom particularly as follows:

- In view of the general teaching of claim 1 of the version as originally filed, it appears to be justified to refrain from specifying in the amended claim 1 a list of types of cards, contrary to claim 1 of said earlier version of May 31, 2005 including said list of types of cards in view a respective request expressed on behalf of the Examining Division.

- In the amended claim 1 the teaching with regard to the content of the storage means (920) of card (92a-92f) was specified on the basis of disclosure included particularly in Figs. 11 and 13 and the related description parts, and on page 36, line 10, of the description where the term "plurality of models" is expressly disclosed.

In the amended claim 1, said amendments were introduced in view of support by disclosure included in Fig. 15 and related description part on page 21, lines 23-25, of the present application. It is apparent for any skilled reader that in the model information, the terms "Camera A", "Camera B", "Camera Z" ) are representative for product names, preferably brand names of various camera models. ...

VII. The Board summoned the appellant to oral proceedings. In a communication annexed to the summons, the Board indicated its provisional opinion that the examining division was essentially right on the law and facts in refusing the application for lack of inventive step. Considering the appellant's letter setting out the grounds of appeal, the Board gave reasons why it was not convinced by the appellant's submissions. In addition, the Board raised the objection that amended claim 1 contained ambiguous and obscure definitions.

VIII. By letter dated and received on 11 July 2008, the appellant informed the Board that it would not attend the oral proceedings. The appellant withdrew its request for oral proceedings, stated its intention to refrain from filing further written submissions and requested that a decision should be taken according to the state of the file.

IX. The Board cancelled the oral proceedings and closed the debate.

Reasons for the Decision

1. The appeal is admissible.

2. Amended claim 1 lacks clarity (Article 84 EPC 1973) in particular for the following reasons:

Various definitions given in claim 1 (" when said card (92a-92f) is attached...", " when it is judged ..." etc.) refer to the use of the card in a manner which leaves doubts about the technical features defining the card. It is also unclear which technical features are defined by the definition that "the model information ... enables to be searched through for judging ...".

3. Therefore, the Board determines that already for these reasons amended claim 1, and thus the request to grant a patent on the basis of the amended claims are not acceptable so that the appeal cannot be allowed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.