T 0745/03 22-09-2005

1. The appeals are admissible.

2. Auxiliary Requests - Sets of claims

2.1 The patent proprietor presented thirteen sets of claims to the board for decision. For the auxiliary requests 1 to 12, there were 51 independent claims presented in claims sets occupying 56 pages, the independent claims, in part, bridging typewritten pages. In order to give a perspective on the volume of material involved, the board observes that the entire typewritten part of the published patent application (description and claims) amounted to 30 pages. Filing of an excessive number of auxiliary requests is unwelcome because it is open to the danger of unnecessarily increased complexity and may lead to the wood not being seen for the trees. In particular, if an auxiliary request contains only some reworded claims, it is not helpful, as in the present case, to reproduce the full text of identical claims from higher order requests; instead it is sufficient to refer to the identical claims at the relevant point in the auxiliary request. A reason for this is that otherwise each and every, possibly voluminous, claim requires separate checking by the parties and the board to confirm that it is indeed identical (as for example the ten identical claims listed in section VII(c) of the facts and submissions above). There is even then a residual possibility of an error.

2.2 Generally speaking, it is up to a party to decide on presentation of its case, and, a party can be assumed to know in the final instance proceedings upon what requests it requires a decision. When filing several sets of claims, a party usually lists them in order of preference (auxiliary request I, II, etc). Parties tend to file the least limited claims as a main request and more limited versions as auxiliary requests. The idea behind this approach is that if a higher order request should fail, then a lower more limited request would still have a chance of success. Although the patent proprietor in the present proceedings began with the usual approach, this changed in moving down the requests, to an approach which could more aptly be designated as "pick and mix", as independent claims present in higher order requests are also to be found in lower order requests in differing permutations of independent claims, some of which are exclusive of others. Apart from a possibility of giving an impression of fishing around for something patentable, this "pick and mix" approach can give rise to a situation where the final decision given does not refer to some independent claims because if even just one of the independent claims in a particular request repeated from a higher order request does not meet the requirements of the Convention, the particular request concerned fails for this reason without a decision being necessary on the other independent claims, whatever the board may think of the merits of those other independent claims.

2.3 In the present case, all the sets of claims submitted in the requests up for decision contain at least one of the claims under heading (a), (b) or (c) as set out in section VII of the facts and submissions above as confirmed by the schedule of claims submitted by the patent proprietor during the oral proceedings. For the reasons given in section 7 below, it turned out that a decision on patentability of these claims led to all the requests up for decision being considered and this is the reason why the wording of only these claims is given in that section.

3. Patentability of the subject matter of independent claim 1 as granted.

3.1 Document D7 has, in the board's view, correctly been considered by the parties and the opposition division as the closest prior art to the subject matter claimed. Document D7 discloses a testing device (see Figure 3) which can determine open circuit voltage V0 while a selector switch is set to V0 and is arranged for manually adjusting a variable attenuator in accordance therewith. Such variable attenuator means could actually be inserted at many points in the signal-flow chain, e.g. open circuit voltage and battery rating input can be interchanged (see column 8, lines 6-10). The dynamic parameter (conductance) is measured upon switching the selector switch to a Gx position, the user then dynamically testing the battery with the adjusted attenuator to provide normalised dynamic conductance Gx(V0)/Gx(12.6) according to a solid curve shown in Figure 2 and described by a second order polynomial equation

Gx(V0)/Gx(12.6)=-{78.1963}+{12.3939}V0-{0.4848}V02.

No argument was presented in the appeal proceedings which might refute the novelty of the subject matter of claim 1 as granted over document D7, which novelty is given by features pertaining to correction means directly electrically coupled to means for sensing said open circuit voltage and for responding to said open- circuit voltage. The board also sees no reason to diverge from the corresponding position of the opposition division on novelty. While the underlying theory is known from document D7, the user no longer has to enter manually the open circuit voltage, which means that the objective problem solved by the novel features is dispensing with operator involvement, in other words automation.

3.2 While not wishing to exclude particular exceptions, the board agrees with the opponent and the opposition division that automating is a general desideratum for the skilled person. A wish for automation can usually be assumed without, in general, involving hindsight or making a contribution to inventive step. In the present case this is all the more so as the problem is known from document D9 disclosing a microprocessor based battery testing device, albeit using an iterative algorithm but to which open circuit voltage and a dynamic parameter are input. Moreover, document D7 itself also mentions in column 13, lines 6 and 7 that the correction could, for example, be implemented with a microprocessor, which reinforces the obvious nature of automation to the board. As Figure 2 of document D7 concerns empirical state of charge correction, and correction is to be implemented by a microprocessor, the board considers it obvious to provide normalised dynamic conductance according to Figure 2 and the equation given implemented in the microprocessor logic.

3.3 With due respect to the recollection of the present inventor, who was also named inventor in document D7 as expressed in document D11, the board considers that when making an objective assessment of inventive step, it is more appropriate simply to rely on what the disclosure of document D7 teaches to a "person skilled in the art" in the sense of Article 56 EPC. The board naturally accepts that the personal approach of the inventor involved replacing the attenuator 34 of document D7 by a nonlinear amplifier and chopper, replacing these items by a microprocessor so that it received open circuit voltage and provided a digital output to control the alternating signal at line 30, and moving the microprocessor forward in the circuit to permit it to sense the dynamic conductance. Nevertheless, this approach is not consistent with the teaching of document D7 to the skilled person, in view of, for example, the absence of teaching of a nonlinear amplifier and chopper, meaning the skilled person would have applied the teaching of using a microprocessor according to column 13 to the attenuator actually disclosed, which document D7 already teaches can be moved forward to 44 in the dynamic conductance line.

3.4 In his submissions, the patent proprietor considers that, starting from document D7, the correction involves no more than manually entering the measured open circuit voltages, so the skilled person would have directly replaced the attenuator 34 with the microprocessor to provide a signal at line 30, there being no suggestion towards automation. However, since following the teaching of document D7 to use a microprocessor implies significant modification to a digital architecture such as introducing analogue to digital conversion and so on, the board does not accept this view but on the contrary that of the opponent, that it was very unlikely that such complication and expense would be taken on board just to replace a simple manually operated component at that particular point. Reading document D7 sensibly, attenuator 34 is frequently said to implement the correction, but of course correction only has any meaning when applied to the corrected battery test result which is said to comport with that of a full battery (see for example column 7, line 49) and provision of the result in the microprocessor logic is therefore what is suggested to the skilled person.

3.5 The subject matter of independent claim 1 as granted cannot therefore be considered to involve an inventive step within the meaning of Article 56 EPC.

4. Patentability of the subject matter of independent claim 2 of the first auxiliary request and identically worded claim 1 of the second auxiliary request.

4.1 The dynamic parameter specified in this claim is dynamic conductance which is the same dynamic parameter measured according to document D7. The board considers that that the opposition division was correct in its view that recitation of firmware amounts to no more than the well known operation of a microprocessor. As is apparent from section 3.2 above, the board is satisfied that it was obvious for the skilled person to implement the polynomial equation in the microprocessor which means algorithmically in its firmware. The contention of the patent proprietor, that a microprocessor receiving V and G is not disclosed, is directed to novelty and does not affect the board's negative view on inventive step.

4.2 The subject matter of independent claim 2 of the first auxiliary request and identically worded claim 1 of the second auxiliary request cannot therefore be considered to involve an inventive step within the meaning of Article 56 EPC.

5. Patentability of the subject matter of independent claim 2 of the third auxiliary request and identically worded claim 1 of the fourth auxiliary request, claim 2 of the fifth auxiliary request, claim 1 of the sixth auxiliary request, claim 2 of the seventh auxiliary request, claim 1 of the eighth auxiliary request, claim 2 of the ninth auxiliary request, claim 1 of the tenth auxiliary request, claim 2 of the eleventh auxiliary request and claim 1 of the twelfth auxiliary request.

5.1 This claim differs from the claim discussed in section 4. above by virtue of features deriving from the description of the patent and added at the end of the claim beginning "said firmware program suppressing...". The claim does not specify exactly how the predetermined minimum value in the condition for this suppression is quantified, but it must be less than a full charge to make sense of an indication being given to recharge. In essence, what is being provided is therefore a less than full and probably low or discharged battery warning to the user. An example of a battery state and charge measurement using a microprocessor with an iterative algorithm is however known from document D9 and this example teaches measurement of state of charge, displayed at the right as "1" (fully charged), "2" (partially discharged) or "3" (discharged). As the opponent explained, it follows that in display situation "3", the teaching of document D9 is to provide an indication to a user that the battery needs to be recharged. In other words, the bottom line is that both the patent and document D9 indicate to the user to charge a discharged battery.

5.2 The arguments of the patent proprietor draw on further limitations in the description, for example page 8, lines 53 to 55 and go in the direction that the predetermined value is selected in such a way as to ensure a low battery occasions a false test result to be suppressed. However, as argued by the opponent, it is part of the knowledge of the skilled person that no sensible measurement results can be achieved by measuring apparatus if a battery voltage is too low or completely discharged and that it has to be recharged. Consequently, realising this does not contribute to inventive step. It is true that display of the test result to the left of the display 24 is not suppressed in the case of document D9, but the board agrees with the opponent that the subject matter claimed solves no further technical problem leading to an inventive step in this respect. As emerged during the oral proceedings, the automation step using the microprocessor to suppress the display bears the price that the user has no possibility of making any judgement about whether recharging a bad battery would be a waste of time and effort. This marks a step back from document D9 where, as the patent proprietor says, the decision is left to the user, who the board considers, even if he charges a bad battery, to be no worse off than if the display had been suppressed. The board therefore reached the view that the step of suppression is different to document D9 but does not amount to an inventive step in relation thereto.

5.3 The board also considers the opponent correct in the view that the display is an add-on microprocessor function because the testing algorithm is independent thereof. There is therefore no barrier to considering the disclosure of an open voltage display in document D9 in the context of inventive step despite the dynamic testing algorithm being different from that used in document D7. The board thus considers not separate bites, but separate items to be concerned, so the argument of the patent proprietor in this respect failed to convince the board.

5.4 The subject matter of independent claim 2 of the third auxiliary request and identically worded claim 1 of the fourth auxiliary request, claim 2 of the fifth auxiliary request, claim 1 of the sixth auxiliary request, claim 2 of the seventh auxiliary request, claim 1 of the eighth auxiliary request, claim 2 of the ninth auxiliary request, claim 1 of the tenth auxiliary request, claim 2 of the eleventh auxiliary request and claim 1 of the twelfth auxiliary request cannot therefore be considered to involve an inventive step within the meaning of Article 56 EPC.

6. Since claims which lacked an inventive step were contained in the fifth to eighth auxiliary requests, it was not necessary to decide on compliance with Article 123(2) in connection with these requests, so that the condition for further amendment of these requests was not met and nor, consequentially, was there any need to deal with these requests in the present decision.

7. The board therefore reached the view that at least one claim directed to subject matter not considered to involve an inventive step in the sense of Article 56 EPC was contained in each of the requests presented by the patent proprietor to the board for decision.