T 2360/17 (Buffer status reporting/INNOVATIVE) of 7.7.2022

Summary of Facts and Submissions

I. The appeals by the patent proprietor and the opponent lie from the interlocutory decision of the opposition division maintaining the present European patent in amended form on the basis of an "auxiliary request 2a" filed during the oral proceedings before the opposition division on 27 June 2022.

II. Oral proceedings were held before the board on 7 July 2022 by videoconference during which the patent proprietor withdrew its appeal (i.e. implying a partial reimbursement at 25% under Rule 103(4)(a) EPC) and a number of auxiliary requests.

The parties' final requests were as follows:

- The opponent requested that the appealed decision be set aside and that the patent be revoked.

- The proprietor requested that the opponent's appeal be dismissed, i.e. that the patent be maintained on the basis of auxiliary request 2a as maintained by the opposition division (main request), or that the patent be maintained as amended on the basis of one of auxiliary requests 2b and 1c filed with the reply to the board's communication under Article 15(1) RPBA 2020.

At the end of the oral proceedings, the board's decision was announced.

III. Claim 1 of the main request reads as follows (board's labelling):

(a) "A method of handling buffer status reporting in a wireless communication system, the method comprising:

(b) providing a first buffer size level table having a first maximum buffer size value (402); and

(c) providing a second buffer size level table having a second maximum buffer size value greater than the first maximum buffer size value (404);

characterized by

(d) using an indication in a Radio Resource Control message, in the following referred to as RRC message, to indicate whether to use the second buffer size level table or the first buffer size level table (706); wherein the RRC message is an RRCConnectionReconfiguration message."

IV. Claim 1 of auxiliary request 2b differs from claim 1 of the main request in that feature (c) now reads as follows (board's labelling and highlighting of amended text):

(c1) "providing a second buffer size level table

having a second maximum buffer size value greater than the first maximum buffer size value (404);

wherein the first maximum buffer size value is 150 Kbytes;"

V. Claim 1 of auxiliary request 1c differs from claim 1 of auxiliary request 2b in that feature (d) now reads as follows (board's labelling and highlighting of amended text):

(d1) "the eNode B, eNB, using an indication in

one of a Radio Resource Control message, in the

following referred to as RRC message, a Medium

Access Control Control Element, in the following

referred to as MAC Control Element, or a

corresponding subheader of the MAC Control

Element to indicate whether to use the second

buffer size level table or the first buffer size

level table (706)[deleted: ; wherein the RRC message is an]

[deleted: RRCConnectionReconfiguration message]."

Reasons for the Decision

1. Main request (auxiliary request 2a) and auxiliary request 2b - added subject-matter (Article 123(2) EPC)

1.1 Feature (d) of the main request and of auxiliary request 2b includes the step of using an indication in an RRC message to indicate whether to use the second or the first buffer size level table, wherein the RRC message is an RRCConnectionReconfiguration message.

1.2 The underlying description as originally filed refers to an RRCConnectionReconfiguration message only in paragraph [0044] as filed which reads as follows (board's underlining):

"According to another embodiment shown in FIG. 8, a method 600 of handling buffer status reporting for a UE is shown, which similar to the embodiment of FIG. 6, includes providing a first buffer size level table at 402 having a first maximum buffer size value and providing a second buffer size level table at 404 having a second maximum buffer size value greater than the first maximum buffer size value. The method then includes at 606 using an indication in a RRC message to indicate whether the second buffer size level table should be used or to indicate which buffer size level table should be used. The RRC message is also used to configure or reconfigure CA. Also, the RRC message is used to configure or reconfigure UL MIMO. The RRC message may be a RRCConnectionReconfiguration message. The RRC message may be used to enable UL MIMO or enable CA. Referring to FIG. 5, all of the above operations of the method 600 may be performed by the CPU 308 of the UE 300 executing one or more program codes 312 stored in the memory 310."

1.3 Hence, paragraph [0044] as filed refers to an embodiment in which an RRC message is used

(i) "to indicate whether the second buffer size level table should be used or to indicate which buffer size level table should be used",

wherein the RRC message is further specified in that

(ii) "[t]he RRC message is also used to configure or reconfigure CA", that

(iii) "[a]lso, the RRC message is used to configure or reconfigure UL MIMO", and that

(iv) "[t]he RRC message may be an RRCConnectionReconfiguration message".

1.4 Feature (iv) refers to a specific RRC message ("the RRC message may be ..."), namely the RRC message characterised by the preceding features (ii) and (iii). Paragraph [0044] as filed thus discloses that an RRCConnectionReconfiguration message is an RRC message invariably comprising features (ii) and (iii). An RRC message being an RRCConnectionReconfiguration message without features (ii) and (iii) therefore amounts to an unallowable intermediate generalisation.

1.5 The patent proprietor argued as follows:

- Not too much emphasis was to be put on the linguistic analysis of paragraph [0044] but rather its strong correspondence with original claims 8 to 11 was to be considered. First, a concise description of the RRC message and its use for indicating which table to use was given (independent claim 8) and, in the following dependent claims, options were provided that could be combined with each other or with the teaching of claim 8 alone. From claims 8, 10 and 11 as filed, it would become obvious that the RRC message for indicating which table to use could be employed independently for the different uses (features (ii) and (iii)) set out in paragraph [0044] as filed which correspond to the features of dependent claims 10 and 11. Consequently, limiting the RRC message to an RRCConnectionReconfiguration message was just another option.

- The definite article "The" in paragraph [0044] as filed referred to the message in method 600 and not to the preceding sentences. If weight was given to the term "also" in the sentences relating to the configuration of CA and UL MIMO, the same weight should be given to its absence in the sentence relating to the limitation of the RRC message to an RRCConnectionReconfiguration message.

- It was also apparent that it made no sense to have all of these options included together in the RRC message and to require that the RRC message indicating which table to use had to be used at the same time to configure CA and UL MIMO.

- Further, if it was intended to link all options with the limitation of the RRC message being an RRCConnectionReconfiguration message, paragraph [0044] would first have indicated the latter limitation and then the other options. From this, and Fig. 8, the skilled reader would understand that the feature of limiting the "RRC message" to an "RRCConnectionReconfiguration" message could also be used independently with each of these features.

- Finally, the following teaching in paragraph [0047] as filed showed that the indication of which table to use was not linked to the configuration of CA or UL MIMO, and that the intention was to decouple them:

"According to the embodiments shown in FIG. 8 and FIG. 9, whether to use the new buffer size level table is not coupled to CA or UL MIMO. Compared with the alternative proposed in R2-102805, the embodiments of FIGS. 8 and 9 provide more flexibility to let network to control which table should be used."

1.6 The board is not convinced by these arguments for the following reasons:

- In view of the structure of original claims 8 to 11, the features of dependent claims 10 and 11 as filed, i.e. the use of the RRC message for (re)configuring CA and UL MIMO (features (ii) and (iii)), are indeed not linked firmly to the use of the RRC message for indicating which table to use. Thus, the above claims as filed could arguably be regarded as a "direct" disclosure for the feature in question. This, however, does not imply or provide a basis for the conclusion that also feature (iv) is optional. In other words, even if feature (d) was considered to be "directly" disclosed in view of the original claims, it would not be "unambiguously" disclosed having regard to the original description.

- Furthermore, features (ii) and (iii) relate to the (re)configuration of the radio resources. If paragraph [0044] as filed first specifies that the RRC message is used for the (re)configuration according to features (ii) and (iii) and then optionally limits the RRC message to the specific type of RRCConnectionReconfiguration message, it is conclusive for the skilled reader that an RRC message of the type RRCConnectionReconfiguration is also used for the respective (re)configurations according to features (ii) and (iii). In view of the relation between the type of message and its use, there is no reasonable doubt that the RRC message according to paragraph [0044] as filed is indeed limited by all features (i) to (iv). In particular, the board sees no reason why the appearance of feature (iv) at the end could cast doubts on the link between features (ii) and (iii) to the specific RRC message which is used for indicating which table to use and to which feature (iv) refers.

- As to the teaching of paragraph [0047], the board understands that it implies that the indication which table to use is not coupled to the (re)configuration of CA or UL MIMO rather than to the way of communicating that indication, i.e. by which message this is to be done.

1.7 Hence, the main request and auxiliary request 2b are not allowable under Article 123(2) EPC.

2. Auxiliary request 1c - admittance (Article 13(2) RPBA 2020)

2.1 Auxiliary request 1c was filed in response to the board's communication pursuant to Article 15(1) RPBA 2020. Hence, its admittance is in principle subject to Article 13(2) RPBA 2020.

2.2 The single method claim of this request is identical to method claim 1 of auxiliary request 1b pending during the opposition proceedings and "maintained" without further substantiation with a letter dated 15 May 2018. More specifically, new claim 1 no longer requires that the RRC message is an RRCConnectionReconfiguration message but now includes feature (d1), i.e. requiring that it is the "eNode B" that indicates via an RRC message whether to use the second or first buffer size level table (cf. point V above). The other claims of auxiliary request 1b, i.e. claims 2 to 12, among them apparatus claims including features not included in method claim 1, were deleted.

2.3 The crucial issue here is therefore whether the filing of the claim set according to auxiliary request 1c constitutes an "amendment" of the proprietor's appeal case within the meaning of Article 12(4) in conjunction with Article 12(2) RPBA 2020. In other words, the first question to be answered is whether the board has any discretion at all to disregard that claim request under Article 13(2) RPBA 2020 ("Any amendment to a party's appeal case ...").

2.4 The board is aware of the current divergence in the jurisprudence of the Boards of Appeal as to whether or not deletions of claims in certain claim requests amount to such an "amendment". One strand of jurisprudence holds that, if the deletions of claims in a previously filed claim request do not change the "factual and legal framework of the case" or "the subject of the discussions" and does not lead to a

"re-weighting of the subject of the proceedings", such deletions are not to be considered an "amendment" within the meaning of Article 12(4) RPBA 2020 (see as representatives of that strand e.g. T 1480/16-3.2.01, T 1857/19-3.3.05 or T 2201/19-3.5.05; also labelled "non-applicability approach"). According to another strand of jurisprudence, any deletion of claims from a previous set of claims amounts to an "amendment" of the applicant's or proprietor's appeal case and thus confers discretion to a board to disregard the claim request at issue. This discretion has then to be exercised in a reasonable manner according to a

so-called "two-step examination approach" (see as representatives of that strand e.g. J 14/19-3.1.01, T 494/18-3.3.06, T 2091/18-3.2.05, T 2920/18-3.3.03).

This board endorses the conclusions drawn by the latter line of jurisprudence on the basis of a systematic interpretation of the notion of "amendment", mainly for the reasons indicated in the above-cited decisions. In addition, this board holds that neither from the wording of Article 12(2) RPBA 2020 nor from the explanatory remarks to the RPBA 2020 can it be deduced that a party's appeal case has to be directed to the "factual and legal framework" or the "subject of the discussions" relating to the party's submissions (such as claim requests) on which the decision under appeal was based, or that "re-weighting of the subject of the proceedings" shall not entail. This provision rather requires simply that a party's appeal case is directed to the "requests, facts, objections, arguments and evidence on which the decision under appeal was based". As a consequence, the submission of auxiliary request 1c constitutes an "amendment" to the proprietor's appeal case, and Article 13(2) RPBA 2020 indeed applies here.

2.5 According to Article 13(2) RPBA 2020, any amendment to a party's appeal case made after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned. Furthermore, in the application of Article 13(2) RPBA 2020, the criteria applicable under Article 13(1) RPBA 2020 may be relied on. In accordance with Article 13(1) RPBA 2020, "[the] Board shall exercise its discretion in view of, inter alia, the current state of the proceedings, the suitability of the amendment to resolve the issues which were [...] raised by the Board, whether the amendment is detrimental to procedural economy, and, in the case of an amendment to a patent application or patent, whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by [...] the Board and does not give rise to new objections" (board's emphasis).

2.6 In the present case, as to the reasons for this late amendment, the patent proprietor maintained and referred to the related arguments concerning previous auxiliary request 1b, and argued that there was no necessity to add more at this stage, in particular, since the opponent did not raise an objection under Article 123(2) EPC with respect to this claim request.

However, the maintenance of the arguments related to auxiliary request 1b does not address the late-filing of auxiliary request 1c, let alone constitutes a justification for this amendment (see Article 13(1), first paragraph, RPBA 2020). Moreover, the mere lack of an objection under Article 123(2) EPC by the opponent cannot justify such late-filing either. The patent proprietor thus failed to provide "cogent reasons" for the belated submission of auxiliary request 1c.

2.7 Furthermore, claim 1 of auxiliary request 1c includes the feature that it is the "eNode B" that indicates whether to use the second or the first buffer size level table. The term "eNode B" or its abbreviation "eNB" appears in the application as filed solely in paragraphs [0020], [0040], [0041], [0046] and [0047]. However, none of these paragraphs discloses that added feature. Claim 12 and paragraph [0047] as filed may provide a basis for a downlink transmission of the indication which table to use, and a respective control by the network, but, contrary to the patent proprietor's arguments, not necessarily for the

"eNode B" performing this transmission. Auxiliary request 1c is therefore, prima facie, not allowable under Article 123(2) EPC.

2.8 In view of the above, the board, in exercising its discretion, decided not to admit auxiliary request 1c into the appeal proceedings (Article 13(2) RPBA 2020).

3. As there is no allowable set of claims on file, the patent is to be revoked.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.