T 0685/14 (Compiler directives/PACT) 21-10-2014

Decision in the appellant's absence

1. According to Article 15(3) RPBA the board is not ob­liged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned. Therefore, and further in accordance with Article 15(3) RPBA, the board treats the appellant as relying only on its written case.

Alleged violation of a fair procedure and of Article 109 EPC 1973; Remittal to the examining division; Reimbursement of the appeal fee

2. Rule 76(4) EPC 1973 lays down that the parties shall be pro­vided with a copy of the minutes of oral procee­dings. The EPC does not specify when this is to happen. How­ever, as the minutes serve to document in particular the essen­tials of the oral proceedings and the relevant state­ments made by the parties, Rule 76(1) EPC 1973, and might have to be correc­ted, the board deems it evi­dent that the minutes should be transmitted as soon as possible after the oral proceedings while the deciding body and the parties involved still have a fresh memory of what happened during the oral proceedings. The corres­­ponding instruction in the Guidelines for Exami­nation (E-II, 10.1; version as currently in force) is, to the best of the board's know­ledge, generally observed, mi­nutes being trans­mitted often well before the written decision, or along with it.

2.1 The appellant reports not having received a copy of the minutes of the oral proceedings by the end of the time period for filing the statement of grounds of appeal, nor a copy of the auxiliary request which was attached to the minutes but not to the decision under appeal.

2.2 The appellant argues that the fact that he was not pro­vided with a copy of the minutes violated its right to a fair procedure because the minutes are necessary for a review of the decision (grounds of appeal, p. 2, 5th para.). The appellant was "forced to present ar­gu­ments in the grounds of appeal without having access to the minutes" (letter of 18 Septem­ber 2014, p.1, 3rd pa­ra.) and, in particular, without knowing the auxilia­ry re­quest which formed a basis of the decision (grounds of appeal, p. 2, 1st para.). The appellant's represen­ta­­tive explained that, in order to make sure that he re­fers to the exact claims subject to the refusal, he "usu­ally refers to the Official file ... rather than to his own file wrapper ... while drafting submissions"but that this was not possible in the present case "for rea­­sons en­tire­ly caused by the EPO" (letter of 18 Sep­tember 2014, p. 2, last para.).

2.3 The appellant also raises the suspicion that the exa­mi­ning division may deliberately not have drawn up the minutes so as to hamper a review of the deci­sion.

3. Article 11 RPBA provides that the board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance pro­cee­dings, unless special reasons present themselves for do­ing otherwise.

3.1 The board takes the view that the failure to transmit the mi­nutes within the appeal period contrary to the provisions of Rule 76(4) EPC 1973 is a procedural defi­cien­cy. How­­ever, the board does not consider that this is, per se, a fun­da­mental one.

3.2 In the board's view, it can be expected from a party to oral proceedings, and certainly from professional re­presentatives, that they take their own notes and do not rely exclusively on the minutes provided by the EPO. Such personal notes will typically reflect the par­ty's perspective on what were the essentials of the oral proceedings and what were the final requests or the relevant statements made during the oral procee­dings. Thus they are, inter alia, useful for the repre­sen­ta­tive to assess the accuracy of the official minutes. Under normal circumstances, therefore, a party should be in a position to file an appeal, even without the official minutes, based on its own notes.

3.3 The board concedes that a decision may suffer from a substantial procedural deficiency if it does not - or leaves room to suspect that it does not - address the parties' requests; in such a case, the decision would at least be considered to be insufficiently reasoned, Rule 68(2) EPC 1973.

3.4 The fact that the auxiliary request not admitted by the examining division was not trans­mitted to the appellant is relevant in this respect.

3.5 The decision under appeal states that the auxiliary re­quest was not admitted because it did not overcome the objection raised to the main request under Article 83 EPC, that one added feature was unclear, and that another feature offended against Article 123(2) EPC. Al­though the complete wording of claim 1 of the auxil­iary request was not contained in or attached to the de­ci­sion, the two latter features were re­pro­duced ver­batim. In the board's view this should have allowed the appellant to assess whether these reasons applied to its personal copy of the auxiliary request filed during oral proceedings.

3.6 The appellant does not argue that these reasons were in­consistent with the auxiliary request according to its own notes.

3.7 Moreover, on receipt of the written decision the appellant should have noticed that the auxiliary request to which the decision referred was not on file. More specifically, if, as the appellant's represen­ta­tive states, he generally does not refer to his own file wrapper but to the offi­cial file in order to assess the decision and to decide whether to file an appeal, he should have no­ticed this deficiency well before the end of the appeal period, in particular that for filing the state­ment of grounds of appeal, see Article 108 EPC. Moreover, any doubt as to whether the decision referred to the auxiliary request actually sub­­mitted during the oral pro­ceedings should have arisen by then.

3.8 At this point, the appellant could easily have informed the EPO of the deficiency and requested that it be correc­ted. In fact, however, the appellant's complaint about the lack of minutes was only received with the state­ment of grounds of appeal, a mere two days before the end of the pertinent time limit.

4. Beyond that, the board considers the following.

4.1 The appellant did not state that the auxiliary request addressed was different from the one actually submitted during oral proceedings, nor did it express a reasoned suspicion that it might be.

4.2 The appellant was able to respond, in the grounds of appeal, to the objection un­der Article 83 EPC on the basis of which the main request was refused and which was main­tained for the auxiliary request, if according to a pri­ma facie assessment (see decision, reasons 2). Nor did it maintain the dismissed auxiliary request on appeal.

4.3 Not even when the appellant, after filing the appeal, received the minutes did it challenge their accuracy or their consistency with the decision under appeal, nor did it extend its case by any con­siderations which it had not been able to submit be­fore because it lacked the minutes and their annex.

4.4 The appellant did not substantiate its suspicion that the examining division may have deliberately not written or may have withheld the minutes. Without any indication to this effect the board rather considers it entirely plau­sible - and certainly much more likely - that an unin­tentional mistake occurred.

5. In view of the foregoing, the board concludes that the appellant failed to establish that the failure to trans­­­mit the minutes and the annex consti­tuted a fun­damental procedural deficiency within the meaning of Ar­ticle 11 RPBA - or, indeed, a substantial proce­dural violation which, according to Rule 67 EPC 1973, is a precondition for the reimbursement of the appeal fee.

6. By letter dated 20 March 2014, a copy of the minutes was sent on behalf of the examining di­vi­sion.

6.1 By letter dated 11 April 2014, the appellant argued that this late transmission of the minutes did not heal the initial procedural violation caused by the failure to transmit the minutes in time. Rather, it contended, the trans­mission of the minutes amounted to a "comment" as to the merits of the appeal, which was pro­hi­bited un­der Ar­ticle 109(2) EPC 1973 and thus con­stituted a se­parate violation of the EPC (letter of 11 April 2014, p. 2, 4th-7th para.).

6.2 The board notes that the appellant gave no other rea­sons as to why the examining division might have pro­vi­ded comments on the merits of the appeal. In par­ti­cu­lar, the appellant did not cite a passage in the minutes which could be construed as such a comment, nor has the board for its part noticed any such passage.

6.3 The appellant appears to argue that the examining divi­sion, by sending the minutes after receipt of the state­­­ment of grounds of appeal, conceded that the mi­nutes had not been sent before. The appellant's further argument seems to be that this concession allows the conclusion to be drawn that the examining division con­sidered the appeal to be without merit not because the alleged fact was untrue but only because it dis­agreed with the appellant's legal assessment.

6.4 The board however considers that the transmission of the minutes cannot be construed as a concession by the examining division that the minutes were not sent earlier. The letter of 20 March 2014 does not contain any reference to the alleged fact, i.e. neither concedes nor contradicts it. It is also conceivable that the minutes were sent as a matter of courtesy in response to the appellant's request, without ruling out that another copy had in fact been sent be­fore.

6.5 For this reason alone, the board concludes that the transmission of the minutes cannot, as such, be con­strued as a comment as to the merits of the appeal as mentioned in Article 109(2) EPC 1973.

7. The board cannot exclude the possibility that an action by the examining division other than a written state­ment may have to be construed as a "comment" in the sense of Article 109(2) EPC 1973.

7.1 Even if, however, in the present case the examining division's action were construed as such a comment and to the extent that Article 109(2) EPC prohibits such comments, this would nei­ther be a de­ficiency in the pre­ceding examination procedure nor have had an impact on the drafting of the appeal.

7.2 Hence, even if a deficiency were to be established it would not, in the board's view, justify an immediate remittal of the case to the department of first instance under Article 11 RPBA.

No referral to Enlarged Board of Appeal

8. The appellant has not argued that a decision by the Enlarged Board is required in order to ensure a uniform application of the law due to, in particular, a diver­gence in the jurisprudence of the boards of appeal. Fur­thermore, the board is in no doubt that it is in a po­si­tion to come to its own conclusion in the present case and that, hence, a decision by the En­larged Board of appeal is not required. Question (i) was answered in the affirmative for the pre­sent case (see point 5 above), question (ii) therefore need not be answered, and question (iii) was answered in the nega­tive (see point 6.4 above). Since, therefore, a referral to the En­larged Board of Appeal is not required under Article 112(1)(a) EPC, the corresponding request is rejected.

Added matter, Article 123(2) EPC

9. Claim 1 specifies the empty function call to be passed to a later stage "while preserving the semantics of the internal representation over all compiler stages". For brevity, this will be referred to below as the "seman­tics pre­servation" feature.

9.1 This phrase was added to the claims during the oral procee­dings before the examining division. Amongst the passa­ges given as a basis for the original disclosure (see mi­nutes, p. 5, 1st para.) only that on page 9, under 3rd bullet point, applies. This states that "[f]unction calls are linked to the semantics of the programming language [which] must be preserved in the internal representa­tion over all compilation stages." According to the de­scription it is thus the se­mantics of the programming language which must be pre­served in the internal repre­sentation rather than the semantics of the inter­nal re­presen­ta­tion itself. The se­mantics of the in­ternal re­presentation or its pre­ser­vation are not defined­ any­where in the appli­cation. In fact, the term "se­man­tics" is mentioned in the appli­ca­tion only in the cited passage on page 9.

9.2 The board therefore concludes that the semantics preser­­­­vation feature con­stitutes subject-matter which goes beyond the con­tent of the application as filed and that, therefore, claim 1 of the main request does not comply with Ar­ticle 123(2) EPC.

Clarity, Article 84 EPC 1973

10. Notwithstanding the finding regarding Article 123(2) EPC, the board also considers the semantics preserva­tion feature to be unclear, Article 84 EPC 1973.

10.1 The board notes in passing that this feature is central to the invention. The description repeatedly discloses as an advantage of the invention that the association of a "hint or directive ... with a certain part of the program" must remain "intact in all stages of the com­pilation process" (see p. 7, 2nd para., but also p. 4, last four lines; p. 9, 3rd para.) and that the se­man­tics preservation is instrumental in achieving this goal (p. 9, 3rd para.).

10.2 The appellant argues (see letter of 18 September 2014, p. 6, 1st para.) that the term "semantics" as claimed must not be limited to­­ "the semantics of the pro­gram" but must be construed as "semantics of the [com­piler] internal re­presentation of the program" inclu­ding addi­tionally "the structure as expressed by data­flow and control graphs" (see letter of 18 Septem­ber 2014, p. 6, 1st para.). The appellant points out that "[t]hese data­flow and control graphs are subject to considerable changes during optimizations" during a "standard com­pi­ling process" (loc. cit.) and the board agrees.

10.3 However, as was already noted, the semantics of the internal re­presentation is not defined anywhere in the appli­ca­tion, nor, in the board's view, is the "seman­tics of the internal representation" clear on its own - in particular since it had to be defined in such a way that it is not affected by the "considerable chan­ges" which the internal representation undergoes during optimiza­tion. Literally, therefore, the semantics preservation feature is unclear.

10.4 The relevance of the term "semantics of the internal repre­sen­tation" within claim 1 remains unclear even if it is inter­preted as the "semantics of the pro­gramming language" being com­piled (as is disclosed on page 9, 3rd bullet point)­. The board considers the re­quirement that the compiler preserves the program se­man­tics to be redun­dant. A com­pi­ler trans­­lates a program from one language into another one - e.g., as claimed, a "high le­vel" language into object code - and, as a trans­lator, must maintain the pro­gram seman­tics at all times. In parti­cular, opti­mi­za­tions must not change the program seman­tics. Carrying out a specific optimiza­tion may (and is meant to) have an effect on runtime effi­cien­cy or me­­­mo­ry con­sump­tion but must not change what the program does. For example, a call of a func­tion with an empty definition can be dis­carded precise­ly because it does not matter semanti­cally whe­ther this call is executed or not. For the same reason, an empty function call can be moved anywhere in the pro­­­gram code without affecting the program's se­man­tics, irrespective of where it was located in the source code. Therefore, the board also cannot see why, as the descrip­tion states, the preservation of semantics alone should "make[] it possible to unique­ly identify the part of the internal represen­ta­tion, a hint or directive ... refers to".

10.5 In summary, the board concludes that the semantics preservation feature and its effects on the subject matter of claim 1 of the main request are un­clear, Article 84 EPC 1973, and that the written ar­gu­ments submitted by the appellant were insufficient to remedy this deficiency.

"Auxiliary claims likely to be filed at a later stage"

11. The claims filed with letter of 18 September 2014, which were marked, respectively, "Amended auxiliary claim", "Auxiliary request 2 claim" and "Auxiliary request 3 claim", were expressly not filed up to this point (see that letter, p. 3, 5th para.). However, in the board's understanding the appellant refrained from filing the auxiliary claims in case this might weaken its position with regard to the alleged procedural vio­lation discussed above but, at the same time, it sub­mitted them so as to avoid their being later rejected as late filed (see letter of 18 Sep­tem­ber 2014, p. 3, 5th - 7th para.). Under these circum­stances, and al­though it does not share the appellant's concerns, the board deems it appropriate to deal brief­ly with the auxiliary claims as well.

12. The semantics preservation feature, which was found above to be deficient under Article 123(2) EPC and Article 84 EPC 1973, is contained in each of these auxiliary claims.

12.1 The first auxiliary claim elaborates further on the semantics preservation by specifying that semantics be preserved "despite the structure of dataflow and con­trol graphs being changed in the optimization stage".

12.1.1 The objection under Article 123(2) EPC to the semantics preservation feature cannot be overcome by limiting it further as claimed.

12.1.2 The added phrase also cannot change the assess­ment (see point 9 above) that the semantics preservation feature renders the claim unclear, Article 84 EPC 1973. Pro­gram semantics must not be changed by the optimi­zation stage independently of what internal represen­ta­tion is used, dataflow and control graphs included. And the semantics of the internal representation remains unde­fined even if it is specified that the internal repre­sen­tation comprises dataflow and control graphs. If anything, the lack of a definition of the semantics of the internal representation becomes more apparent with the specification that it is to be preserved even though part of the internal representation can be changed.

12.2 The second and third auxiliary claims specify the "pre­serving" further to be "so that the part of the compi­ler inter­nal representation is uniquely identi­fi­able, the loca­tion of the function[] calls allowing to uni­que­ly identify the parts of the source code they apply to".

12.2.1 Again, the additional phrase is insufficient to address the Article 123(2) EPC objection.

12.2.2 Moreover, the board considers it unclear, for the pur­pose of Article 84 EPC 1973, how "preserving the seman­tics" is instrumental in making identifiable the parts of the source code which the emp­ty function calls "apply to". Firstly, since the claims do not define which parts of the source code a function call "applies to" it is unclear what exactly the "lo­ca­tion of the function[] calls" allegedly allows to iden­ti­fy. Se­condly, since an empty function call can be moved around freely or even discarded without affec­ting the program semantics, it does not, in general, allow iden­tification of any parts of the source code, let alone those that "they apply to". And thirdly, the added phrase does not overcome the deficiency that the "se­man­­tics of the internal representation" is unde­fined.

13. In summary, the board concludes that auxiliary claims 1-3 likewise do not overcome the objections to claim 1 of the main request under Article 123(2) EPC and Article 84 EPC 1973 EPC.