T 1436/12 (Platform system/ERICSSON) of 21.7.2015

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division to refuse the European patent application no. 03739486.3 for lack of inventive step over the docu­ment D1 = WO 01/50282. In a section entitled "Obiter dictum", the decision also contained the finding that the claims were unclear.

II. A notice of appeal was filed on 14 March 2012, the appeal fee being paid on the same day. A statement of grounds of appeal was received on 10 May 2012. The appellant requested that the decision under appeal be set aside because the decision was insufficiently rea­soned, Rule 111 (2) EPC, and based on hindsight, and be­cause the inventive step assessment of the decision was incorrect. The board understood the appellant to request the grant of a patent based on the documents on file, namely:

description, pages

1-7, 9-11 as originally filed

8 received with letter of 10 November 2011

claims, no.

1-31 received with letter of 10 November 2011

drawings, sheets

1/4-4/4 as originally filed

Alternatively, the appellant requested that the case be re­mitted to the examining division for further examina­tion. The appellant also criticized the decision for not dealing with its so-called "change request", that is whether the amendment to the description on page 8 was allow­­able; this request was relevant for potential fur­ther clarification of the claims (see grounds of appeal, p. 7, 2nd para.).

III. Page 8 of the description as originally filed contained the follow­ing paragraph:

"Further specific features and details of the layered architecture, including the SwBP software structure that enables the internal communication between modules within the mobile platform assembly are described in commonly assigned, U.S. Patent Application Serial No. [Attorney Docket No. 53807-00023USPT] filed concurrently herewith, the disclosure of which is hereby incorporated by reference."

Page 8 as filed with letter dated 10 November 2011 was amended so that it now referred to a "[...] commonly assigned, PCT Patent Application [Attorney Docket No. 53807-00023USPT] filed concurrently herewith [...]".

IV. With a summons to oral proceedings, the board informed the appellant of its preliminary opinion, according to which no substantial procedural violation appeared to have occurred. The board also tended to consider that the "change request" could not be granted because amen­ded description page 8 contained matter that went beyond the application as originally filed, Article 123(2) EPC. As a consequence, amended claim 1 (relying for some fea­tures exclusively on the amended page 8) also appeared not to comply with Article 123(2) EPC. In addition, the board raised a number of clarity objections, Article 84 EPC 1973, questioned whether the claimed invention had any discernible technical effect, and raised an inven­tive step objection, Article 56 EPC 1973. The board also in­troduced three documents from a rela­ted case, T 160/09, into the procedure.

V. In response to the summons to oral proceedings, the appellant argued that the board should remit the case for further prosecution or, at least, to continue the appeal proceedings in writing. It also indicated its willing­ness to further amend the pertinent passage on page 8 to refer either to

"[...] commonly assigned, PCT Patent Application WO 03/069463 filed concurrently herewith, [...]", to

"[...] commonly assigned, PCT Patent Application claiming priority from Serial No US 60/357291 filed concurrently herewith, [...]", or to

"[...] commonly assigned, U. S. Patent Application Serial No US 60/357291 filed concurrently herewith, [...]".

The appellant added that US 60/357291 was the applica­tion with docket number No. 53807-00023USPT as cited on page 8 as originally filed. The appellant did not pro­vide any arguments regarding the board's objections un­der Articles 84 or 56 EPC 1973.

VI. During oral proceedings, the appellant maintained its request as summarized above. In particular, it confirmed its request that the patent should be granted based on a description containing amended page 8.

VII. At the end of the oral proceedings, the chairman announced the decision of the board.

Reasons for the Decision

Alleged insufficient reasoning, Article 11 RPBA

1. According to Article 11 RPBA, the board shall, absent spe­cial reasons to the contrary, remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings.

2. The appellant argued (see grounds of appeal, p. 7, 4th para.) that the decision under appeal was insufficiently reasoned, contrary to Rule 111(2) EPC, because it

i) relied on an inappropriate number of alleged im­plicit disclosures in D1 (grounds of appeal, p. 4, 6th para.), and

ii) did not deal with the appellant's "change request", i.e. its request to accept the amendment on page 8 as the correction of an error (see the grounds of appeal, p. 7, 2nd para.; and the letter of 10 No­vember 2011, p. 1, 3rd para. - p. 2, 3rd para.).

2.1 Regarding i) The examining divi­sion gave its arguments as to why it considered some of the claimed features to be im­plicitly disclosed in D1. In the board's view, these arguments were suffi­ciently detailed and, more­over­­­, sufficient to enable the appellant to address them in its grounds of appeal. There­fore, the board con­siders the deci­sion to be suffi­ciently reasoned in this regard. It is immate­ri­al for this finding whether or not the board agrees in sub­stance with the examining divi­sion on this point.

2.2 Regarding ii) The board first notes that the EPC does not provide for a "change request" separate from the re­quest for the grant of a European patent based on a spe­cific set of application documents (see Article 78(1) EPC). Any amendment to the application documents must comply with Article 123(2) EPC. However, this issue need not be assessed in every deci­sion, but may be left un­answe­red if the deci­sion does not depend on it. This was presently the case. The examining division correctly lis­ted page 8 amongst the application docu­ments on file but, since it came to the con­clu­sion that the applica­tion lacked an in­ventive step, could leave the question of whether it con­si­dered amended page 8 to comply with Article 123(2) EPC or not unanswered.

3. Furthermore, the appellant argued that the decision was based on hindsight because the examining division had overstated the similarities between the claimed archi­tec­ture and figure 2 of D1 and had read more into D2 than was already there, as was evident from its in­appro­priate assumptions about what D2 implicitly disclosed (see grounds of appeal, p. 2, 3rd para. - p. 4, 4th para.). The board however cannot see any indication that the rea­sons given by the examining division were based on hind­sight. In particular, the fact that the exami­ning division dis­agreed with the appellant on the explicit or implicit dis­closure of D1 and on the overall assess­ment of inventive step is insufficient to estab­lish this.

4. In summary, no fundamental deficiency in the first in­stance proceedings is apparent to the board. Therefore, ­the board decided not to remit the case to the first instance under Article 11 RPBA, i.e. without assessment of its merits.

Request for remittal or for continuation of the appeal proceedings in writing

5. In response to the board's summons, the appellant requested that the case be remitted to the examining division. It argued as follows:

a) In its summons, the board had established that the decision under appeal was wrong to assume that cer­tain features were implicitly disclosed in the prior art (see letter dated 29 June 2015, p. 2, 3rd para.).

b) The examination procedure was the appro­priate place for the appellant to take into account the new prior art cited by the board in its summons (p. 2, 5th para.).

c) The application would, in view of the newly raised objections, require extensive amend­ments for which the appeal proceedings gave little opportunity, as it was "aimed at wrapping up cases not to dis­cuss them in detail" (p. 2, 4th and 6th para.). Under the special circumstances of the case, the appellant's right to be heard, Article 113(1) EPC, could not be properly exercised if the case was not remitted.

d) During the oral proceedings, the appellant also argued that the prohibition of reformatio in peius barred the board from deciding the case based on Article 123(2) EPC, an issue that had not been dis­cussed, let alone decided, by the examining divi­sion.

Alternatively, the appellant requested that the procee­dings before the board be continued in writing (p. 2, 7th para.).

6. The board notes that, since a direct remittal under Ar­ticle 11 RPBA was not required under the circumstances, the only possible basis for a remittal could be Article 111(1) EPC 1973. According to Article 111(1) EPC 1973, the board shall decide on the appeal, and then may ei­ther exercise any power within the competence of the de­part­ment which was responsible for the decision or remit the case to that department for further prosecution. More­over, under Article 114(1) EPC 1973, the board is not restricted to the facts, evi­dence and arguments provided by the appellant. Once the board has raised new objections, indicating that the appeal might not be allow­able, a remittal would be inappropriate. Inter alia, the board's objections raised in ­the summons would normally not be part of the ratio decidendi of a deci­sion to re­mit, and would therefore not be binding on the exa­mi­­ning division, Article 111(2) EPC 1973. In case of a remittal at this point, it could therefore not have been guaranteed that the board's objections were dis­cussed in the first instance at all.

6.1 In addition to this, the board considers the following on the appellant's individual points.

6.2 Regarding point a) As expressly stated in the summons to oral proceedings, all observations made therein were made without prejudice to the final decision of the board. Moreover, the board did not take a firm position on the impli­cit disclosure of the fea­tures in question (see point 25 of the summons). Thus, the summons were insufficient for the appellant's con­clusion that the appeal was successful in this regard.

6.3 Regarding point b) The newly in­tro­duced prior art was cited from a related case by the same applicant for which a decision on appeal had al­rea­dy been issued (T 160/09, not published) and was meant for possible future reference in the interest of coming to a consis­tent de­ci­sion in both cases. The objections raised in the summons, however, did, for the most part, not depend on these documents. The intro­duction of the new prior art thus did not prevent the appellant from addressing the board's objections which were based on the docu­ment relied on by the exami­ning division or on no docu­ment at all (Articles 84 EPC 1973, Ar­ticle 123(2) EPC, and Ar­ticle 56 EPC 1973 for lack of a tech­ni­cal contribution over common knowledge in the art).

6.4 Regarding point c) The board considers that the time between the summons to oral pro­ceedings, dated 21 April 2015, and the oral procee­dings held on 21 July 2015, was sufficient for the appellant to address the board's objections. Moreover, had it turned out that the case was not ready for a decision at the conclusion of oral proceedings, no decision would have been issued, see Article 15(6) RPBA. The board therefore concludes that the appellant's right to be heard was not infringed by holding the oral proceed­ings as summoned.

6.5 Regarding point d) The prohibition of reformatio in peius is based on the principle that a decision may not be reached which would put the appellant in a worse posi­tion than it was in before it appealed (see G 1/99, OJ EPO, 2003, 381; reasons 2.1). The appeal was against the decision to refuse the European patent appli­cation. The appellant can therefore not be worse off after the board's decision to dismiss the appeal. That a dismissal might be based on different rea­sons than the decision under appeal, as is presently the case, is not excluded by the prohibition of refor­matio in peius.

The amendment on page 8, Article 123(2) EPC

7. The amendment on page 8 relates to a document in which "[f]urther specific features and de­tails of the layered architecture are described" and "the disclosure of which is [to be] incorporated by reference" into the applica­tion as originally filed.

7.1 It is established jurisprudence of the boards of appeal that the content of a European patent applica­tion may, in principle, be supplemented by information incorpora­ted by reference from a cross-referenced do­cument, if only under very limited conditions (see in particular T 689/90, OJ EPO, 1939, 616, headnotes; and T 737/90, not published, reasons 3).

7.2 Since the content of the present application as origi­nally defined depends, at least in part, on the dis­clo­sure of the document referred to on page 8 of the de­scrip­tion, any amendment to that reference is governed by Article 123(2) EPC.

7.3 According to established jurisprudence of the Enlarged Board of Appeal (see e.g. G 3/89, OJ EPO 1993, 117 and G 2/10, OJ EPO 2012, 376), an amendment to a European patent appli­cation is only allowable under Article 123(2) EPC if it is made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the do­cuments as filed.

7.4 The appellant requested that the amendment be accepted as the correction of an obvious error (see the letter dated 10 November 2011). The board notes that correc­tions are a special form of amendment so that the cited general requirement for allowable amendments still applies (see also G 3/89, OJ EPO 1993, 117; headnote 1). More­over, Rule 139 EPC requires that a request for correc­tion may only be allowed if the correction is obvious in the sense that it is immediately evident that nothing would have been intended other than what is offered as the correction.

8. On page 8 as originally filed, a document to be "incor­po­rated by reference" was identified as a "U.S. Serial Patent Application No." and referred to by its "Attorney Docket Number". Even though, according to the USPTO, U.S. patent applications can be searched and retrieved by their docket number, this only applies under the general rule that U.S. patent applications are con­fi­dential before publication (35 U.S. Code §122).

9. The present application was originally filed as Inter­na­tional Application No. PCT/EP2003/001429 on 13 Februa­ry 2003.

9.1 Therefore, the reference on page 8 of that International Application to a U.S. patent appli­cation "filed con­currently herewith" refers to a U.S. patent application filed on 13 February 2003, too.

9.2 At that date, its filing date, the U.S. patent applica­tion cannot have been available to the public from the USPTO, via its docket number or otherwise.

10. The appellant argues that the cross-reference on page 8 constituted an obvious error.

10.1 The appellant explained that it was common practice before the USPTO to use docket numbers to refer to U.S. patent applications for which, at the day of filing, no filing number was yet avai­lable. It was therefore clear that the docket number cited on page 8 was specific for the prosecution before the USPTO and should have been re­placed for prosecution before the EPO. The fact that this had not been done when the International applica­tion was filed at the EPO consti­tu­ted an obvious error.

10.2 The board is not convinced by this argument. As the appellant explained, patent applications meant for prosecution in different jurisdictions will often, in the interest of efficiency, only be drafted once.

10.3 In the board's view this implies that a patent applica­tion to be filed may contain parts which are only rele­vant for the prosecution in one jurisdiction but not in another.

10.4 Given that the incorporation by reference of features from a cross-referenced document falls under a different regime before the EPO than before the USPTO, the board deems it to be conceivable that the incorporation of the reference on page 8 was meant only for the prosecution before the USPTO and was, therefore, deliberately not amended when the International application was filed at the EPO.

10.5 Thus the board is not convinced that the reference to a docket number in an application filed at the EPO must generally be considered to have been made in error. For that reason alone, the amendment cannot be allowed under Rule 139 EPC.

11. Even if it was assumed, for the sake of argument, that it was obvious that an error had occurred, the board con­siders that it would not be immediately evident what the correction should be.

11.1 In its letter of 10 November 2011 (p. 1, last para. - p. 2, 2nd para.), the applicant states that the passage on page 8 was "clearly meant to indicate that a Euro-PCT application was to be filed claiming priority from the US provi­sional indica­ted by the Attorney docket number given" and that "a co-pending Euro-PCT application (WO 03/069463) was in fact concurrently filed with the present application claiming priority from the US provisional application indicated".

11.2 The board disagrees. From the passage on page 8 as origi­nally referring to a "U.S. Patent Application [...] filed concurrently herewith" it is not immediately evi­dent that a corres­ponding (Euro-)PCT application was to be filed, let alone which one, or what priority it might claim. With regard to the third alternative for­mulation proposed by the appellant (see point V above), the board notes that it was also not immediately evident from ori­ginal page 8 that US 60/357291 was meant.

11.3 Assuming, still for the sake of argument, that the re­ference to a concurrently filed application in an In­ternational application had to be construed as the re­ference to a concurrently filed International applica­tion, the board notes that there were at least three of these: WO 03/069463 entitled "Layered architecture for mobile terminals", WO 03/069469 entitled "Mobile mul­ti­media engine", and WO 03/069472 entitled "Middle­ware ser­vices layer for platform system for mobile ter­mi­nals". The appellant argued that it would have been ob­vious for the skilled person that the first of these applications was the intended one since its title re­ferred to a "layered architecture" and because its pub­li­cation num­ber was next to the publication number in the present case (WO 03/069464).

11.4 The board however disagrees, noting that all three appli­cations relate to the layered software architecture at issue in the present application and that the state­ment on original page 8 gives no preference to one application over another, depen­ding on the application number.

11.5 The board therefore comes to the conclusion that the requested amendment to page 8 identifying the cross-referenced application as a "PCT Patent Application" cannot be allowed as a correction under Rule 139 EPC. The same applies for the alternative formulations proposed by the appellant.

12. It remains to be determined whether amended page 8 might be allowable, if not as a correction under Rule 139 EPC, then as a general amendment under Article 123(2) EPC.

12.1 The appellant argued that the skilled person, trying to establish which document original page 8 referred to, would have had to identify concurrently filed appli­ca­tions by the same applicant, retrieve them at the USPTO, obtain their associated docket numbers, identify the one disclosed on page 8, and then identify the associated International application. The appellant further argued that for an amendment to be allowable it did not have to be simple for the skilled person to establish whether it was original disclosed, provided that it was unambigu­ous­ly possible.

12.2 The board notes that the procedure proposed by the appellant required that the U.S. patent application iden­tified by the docket number was published. However, since it was not published until 18 months after the filing date, the U.S. application was not available, to the public or only the EPO, on the filing day of the pre­sent application. Hence, the amendment would not have been derivable by the skilled person, directly and un­am­b­i­guously, from the application on its day of filing.

12.3 The board agrees that it need not be simple to establish whether an amendment is allowable under Article 123(2) EPC. However, any allowable amendment must not only be un­am­bi­guously derivable from the application as origi­nally filed, but also be directly so. Likewise, for a correc­tion under Rule 139 EPC to be allowable, it must not only be clear what the correction should be but it must be imme­diately evident. Even if, therefore, the procedure pro­posed by the appellant were to work, it would not satis­fy the strict standards for amendments under Article 123(2) EPC, let alone those for correc­tions under Rule 139 EPC.

12.4 The board therefore comes to the conclusion that neither the amendment on page 8 as presently on file nor any of the proposed alternatives (see point V above) comply with Article 123(2) EPC.

Order

For these reasons it is decided that:

The appeal is dismissed.