T 0192/96 () of 15.10.1997

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse the application on the grounds that claims 1 and 10 of the main request contained added subject-matter (Article 123(2) EPC) and the subject-matter of claims 1 and 6 of the first auxiliary request lacked "essential features" (Article 84 and Rule 29(1) and (3) EPC).

II. At the oral proceedings, the examining division announced its intention to grant a patent on the basis of the second auxiliary request. A communication under Rule 51(4) EPC was subsequently issued to this effect. In a letter in response the applicant indicated disapproval of the text and maintained the higher requests. The letter also contained a statement suggesting that the correct procedure was for the examining division to issue a separately appealable interlocutory decision under Article 106(3) EPC as regards the main and first auxiliary requests. The examining division thereupon refused the application.

III. The appellant (applicant) lodged an appeal against the decision and paid the prescribed fee. A statement of grounds of appeal was filed in due time, together with a new set of claims of a main request; the second auxiliary request was maintained. The appellant requested reimbursement of the appeal fee on the grounds that a substantial procedural violation had been committed by the examining division. A request for oral proceedings was also filed.

IV. Following a communication from the Board, the appellant filed a revised set of claims of the main request.

V. Oral proceedings were held on 15 October 1997. At the oral proceedings the appellant requested that the decision under appeal be set aside and a patent granted on the basis of claims 1 to 26 as received on 11. September 1997 (main request), the same set of claims with claims 13 and 26 to be amended (first auxiliary request), and claims 1 to 12 as accepted by the examining division (second auxiliary request). The request for reimbursement of the appeal fee was maintained.

VI. Claim 1 of the main and first auxiliary requests reads as follows (omitting reference numerals):

"A method for enforcing referential constraints in a database management system, each referential constraint involving a primary key and a foreign key, the database management system including at least one primary key index that allows a record to be quickly located given the primary key for that record, the method comprising the steps of:

loading two or more records and extracting from each loaded record the primary and foreign key information related to referential constraints involving that record;

storing the extracted foreign key information and using the extracted primary key information to update the primary key indexes; and

enforcing referential constraints using the stored foreign key information and the updated primary key indexes."

Independent system claim 14 of the main and first auxiliary requests corresponds in substance to method claim 1.

Claim 1 of the second auxiliary request reads as follows:

"A method for enforcing referential constraints in a relational data-base management system, each referential constraint involving a primary key and a foreign key, there being an index for each primary key, the method comprising the steps of:

loading two or more records;

storing for each loaded record information relating to the primary key in that record and for each foreign key in that record information relating thereto;

ordering the stored information, with information on primary keys preceding information on foreign keys;

updating the primary key indexes using the stored primary key information for each record; and

enforcing the referential constraints using the ordered information for each foreign key and the updated primary key indexes."

Independent system claim 7 of the second auxiliary request corresponds to method claim 1.

VII. The appellant argued as follows:

The ordering of the stored information was only one way of ensuring that index updating preceded constraint checking, which was the essential idea of the invention. The second embodiment did not require any ordering and nowhere in the description was the ordering feature described as essential. Moreover, the separate loading, extracting and updating steps of the claim were clear and covered both the first and second embodiments.

The request for a refund of the appeal fee was justified because the examining division did not inform the appellant in advance that it would not follow the suggested procedure and give an interlocutory appealable decision on the main and first auxiliary requests. Consequently, the appellant was denied the opportunity to comment on the examining division's reasons for not doing so. This amounted to a substantial procedural violation.

Reasons for the Decision

1. The appeal is admissible.

2. Background to the invention

2.1. A typical database contains a number of tables, the example given in Figure 1 of the application being an employee table and a department table. Each table has a field containing primary keys relating to the main subject of the table, for example employees in the case of the employee table. Other fields contain foreign keys which refer to primary keys in other tables; in the example given the department number of the employee refers to the department table. The primary keys for a table are normally stored in an index, called the primary index, used to improve the access time of a record in that table. For internal consistency all the foreign keys in a given table must be shown to have corresponding primary keys in some primary key index of another table. The application is concerned with achieving this condition, which is referred to as referential constraint enforcement.

2.2. In the prior art, the referential constraints are enforced every time a new record is loaded. New records must therefore be sorted prior to updating the tables, since inputting a new foreign key value before the corresponding primary key has been updated could cause a temporary inconsistency. All data input operations must therefore be checked, which is said to be difficult and time-consuming. In the application the primary key indexes of all records to be loaded are updated before enforcing referential constraints. If all the primary keys have been updated, the checking process will find primary keys corresponding to all consistent foreign keys. In the preferred embodiment, primary and foreign key information is extracted from each record and ordered so that the primary keys come before the foreign keys. The enforcement phase uses the ordered key set and therefore finds and updates the primary keys before the foreign keys.

3. Clarity

3.1. The independent claims of the main request correspond in scope to those of the first auxiliary request as refused by the examining division for lack of clarity. The examining division took the position that to construct indexes for constraint checking it was first necessary to sort, or order, the information so that primary keys preceded foreign keys; this was held to be an "essential technical feature" and its absence to offend Article 84 EPC. Reference was made to Figures 3 and 5 and the description at page 4, lines 13 to 19 of the application. Although the examining division accepted that a second embodiment was present, it appears that they considered that in this embodiment there was in effect a sorting process during the data load phase in that the updating of the primary indexes was carried out as the records were loaded. The Board understands that the examining division took this to imply that information on the primary keys is required before constraint checking using the foreign keys is possible, implying preliminary sorting prior to data load.

3.2. However, at page 10, lines 15 to 20 the description states that, whilst the primary indexes must be constructed before constraint checking is performed, it is a matter of design choice whether the primary indexes are updated during the Data Load phase or subsequently. A similar passage appears at page 20, lines 26 to 28. In other words, the sort phase, which is a subsequent phase in the preferred embodiment, is not essential to the invention. The Board can see no necessity for a sort phase to be invoked to account for the manner in which the key indexes are updated and accordingly takes the view that it is not necessary to mention explicitly the sorting feature in independent method claim 1 and system claim 14.

3.3. The examining division argued that updating the primary indexes during the Data Load phase would render redundant the claimed extracting and updating steps. The Board considers however that the claimed separate loading, extracting and updating steps may be performed either separately or simultaneously; the examples given in the description are of a direct update or an update after a sorting step.

3.4. However, the term "persistent structure", used in claims 13 and 26, is considered unclear. It is noted that these claims purport to amend the independent claims to which they are appended by replacing the primary index by the so-called "persistent structure". The term itself is not a term of art; It is not even defined in the 1994 edition of the appellant company's own "Dictionary of Computing". It therefore appears that claims 13 and 26 are unclear, Article 84 EPC, as are independent claims 1 and 14 as amended by these claims. Since for the reasons given below the application is remitted to the examining division for further prosecution and in view of the appellant's first auxiliary request it has not been necessary for the Board to pursue this objection further, but it will be necessary for the examining division to address this question.

4. Patentability and Inventive Step (Articles 52(2) and 56 EPC)

4.1. Although clarity was the only substantive issue arising from the examining division's decision, the Board has noted that there are other issues which do not appear from the application file to have been fully addressed.

4.2. In the communication of 25 May 1993, point 1, the examining division stated that "The application appears to comprise patentable subject-matter". It is not clear whether this was intended to mean that no objection was considered to arise under Article 52(2) EPC; even if it was, the subsequent objections of lack of clarity against the claims and consequential amendments lead in the Board's view to a situation where it is unclear whether patentability has been evaluated in respect of the present claims. In order to preserve two instances it is considered necessary to remit the application to enable this to be done.

4.3. Similarly, it is not clear whether inventive step has been fully considered in respect of claims having the scope of the present independent claims. This matter will also have to be examined by the examining division.

5. Procedural Violation

5.1. As noted at point II of the Summary of Facts and Submissions the applicant indicated disapproval of the text on which the examining division intended to grant a patent and maintained the higher requests. The following statement was made:

"The applicant believes that the correct procedure now is for the Examining Division to issue a separately appealable interlocutory decision under Article 106(3) EPC as regards the main and first auxiliary requests. This approach conforms with the recommendation in T 47/90 (see paragraph 5), which indicates that an appeal should be allowed in respect of any refused request".

5.2. The appellant alleges that because the examining division not only failed to follow the "recommended procedure" but issued a final decision, and also failed to inform the appellant as to the grounds why this was done, there was a violation of Article 113(1) EPC constituting a substantial procedural violation.

Article 113(1) EPC states that "The decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments". In the present case, the decision to refuse was apparently based on the grounds that the main and first auxiliary requests were not patentable and that the applicant did not agree to the second auxiliary request within the four-month time limit. Although these grounds were known to the applicant from the protocol of the oral proceedings and, indirectly from page 2, full paragraph 3 of the communication under Rule 51(4) EPC, they were never the subject-matter of a reasoned decision.

5.3. The Board observes that the appellant's statement quoted at point 5.1 above arguably has the character of an observation on procedure rather than a formal request for a decision. Be that as it may, the appellant's position is apparently that Article 113 EPC applies to decisions on any request by a party. In the present case, the examining division did not respond to the appellant's suggestion of an interlocutory decision.

5.4. In the Board's view the appellant's belief that he had a right to a decision specifically on the main and first auxiliary requests is incorrect. His remaining request, the second auxiliary request, was allowed by the examining division. If a decision was desired on either of the other requests the correct procedure would have been to withdraw the remaining request from consideration. By not doing so until the examining division had reached a decision to grant on the basis of this text, i.e. by disapproving the text at the Rule 51(4) stage, the appellant ensured that the only decision which could be taken by the examining division was that the application be refused for lack of an approved text.

Nor can any right to a decision on the procedure per se be derived from the EPC. Except in the case of a request for oral proceedings in accordance with Article 116 EPC, the proceedings are under the control of the responsible organ, in this case the examining division.

5.5. In the course of the oral proceedings before the Board the appellant raised a further argument in support of the proposed procedure: the examining division having in the present case allowed the second auxiliary request, interlocutory revision would avoid a situation in which the request would come within the Board's competence and could give rise to reformatio in peius, contrary to the case law of the boards of appeal. However, this situation was considered by the Enlarged Board in G 10/93, OJ EPO 1994, 740, see in particular paragraphs 6 and 7, where it was stated that the boards of appeal have the power to examine in accordance with Article 114(1) EPC whether an application meets the requirements of the EPC, including requirements which the examining division did not take into consideration.

5.6. The appellant refers to T 47/90 (OJ 1991, 486) in support of his case. This decision does not suggest issuing an interlocutory decision but merely states that, to streamline the procedure and possibly avoid an appeal, the applicant may present one or more subsidiary requests which the examining division decides upon.

5.7. Finally, although the examining division did not issue a formal decision including reasons for refusal of the main and first auxiliary requests, the applicant did not ultimately lose any rights.

5.8. The Board therefore concludes that the failure to give reasons was not a substantial procedural violation. Under these conditions there can be no reimbursement of the appeal fee under Rule 67 EPC.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the first instance for further prosecution of the application with regard to patentability under Article 52(2) EPC and inventive step under Article 56 EPC.

3. The request for reimbursement of the appeal fee is refused.