T 1817/14 (Expert system/SCHINDLER) 04-07-2017

The alleged procedural violation, Article 11 RPBA

1. During the oral proceedings before the examining division, a set of claims according to a second auxiliary request was filed but not admitted (see the minutes, points 74, 80 and 90). However, the decision under appeal does not mention the existence of a second auxiliary request, let alone give reasons why it was not admitted.

1.1 The decision of the examining division to refuse consent to (i.e. not to admit) a set of amended claims under Rule 137(3) EPC is a decision which, according to Rule 111(2) EPC, must be reasoned. Therefore, the fact that the second auxiliary request is not mentioned in the decision under appeal makes the decision insuffi­ciently reasoned and thus constitutes a fundamental deficiency in the sense of Article 11 RPBA.

1.2 However, as is clear from the minutes (and not disputed by the appellant), the appellant was heard on the admission of the second auxiliary request, and the claims themselves are annexed to the minutes. Also, the reasons missing from the decision are available in the minutes.

1.3 Therefore, the appellant was in a position to understand the examining division's reasons for not admitting the second auxiliary request, and to respond to them in its grounds of appeal.

1.4 The board considered these circumstances, along with the appellant's express agreement to the board considering the substantive merit of the requests to hand (see grounds of appeal, section II, last sentence), to constitute special reasons for not immediately remitting the case to the examining division under Article 11 RPBA.

Admission of auxiliary requests

2. The examining division had discretion under Rule 137(3) EPC to refuse consent to the second auxiliary request, and the board has no reason to doubt that it exercised its discretion correctly. This and Article 12(4) RPBA notwithstanding, however, the board exercises its own discretion and admits the second auxiliary request into the appeal proceedings (see T 820/14, reasons 10). It is also relevant in this respect that the board finds all requests to lack inventive step for the same reasons (see below).

The invention

3. The application relates to an expert system for aiding patent administration and jurisprudence by providing (semi-)automated support for assessing a patent or patent application (or other "endeavour") for novelty and inventive step in view of "a national patent system or its Highest court precedents" (see page 1, lines 1-5; see also page 3, penultimate paragraph; sections I.K and I.L on pages 26-28; page 29, paragraph 2; section II.A.1.2, page 37, towards the bottom et seq.; and page 47, footnote "To F:").

3.1 In a nutshell, the invention proposes to obtain from a patent (or patent application) p and any prior art document i elements of their respective technical teachings TT.p and TT.i. These may be specified informally, e.g. in natural language (see the "technical fundamental informal facts", page 2, in the middle), or for­mally ("technical fundamental formal facts"). The TT.i's of the prior-art document i are collectively referred to as "RS" (reference set) and, in combination with the TT.p's, as "PTR" (pair of TT.p and RS; see page 2, in the middle).

3.2 The elements and their "relations", expressing anticipation and contradiction between elements or sets of elements, are arranged in what is called an ANC matrix ("anticipates/non-ants/contradicts"; see e.g. page 3, line 9, and figure 2b).

3.3 The information in this matrix can be queried by and is then displayed to the user (see e.g. original claim 1, last two lines).

The prior art

4. The remarks on inventive step given in the decision refer to a prior-art document but do not rely on many individual features of its disclosure. As is explained below, the board takes the view that the merits of the present invention can be assessed without reference to an individual piece of prior art.

The decision under appeal

5. The decision finds the claims of the main and first auxil­iary requests to be unclear, due to several terms with unclear meaning such as the "technical teaching" and its "elements", the notions of "fundamental facts" and "kinds", and the "ANC matrix" (reasons 10.1), and several further problems including the facts that the method of claim 1 is specified as one of "analysing" although an analysis step is missing from the claim (see reasons 10.6 and 16.4), that the possible queries are not properly defined (see reasons 10.13), and that it is unclear what the computer actually does and how the ANC matrix is used in this context (see esp. reasons 10.11, 10.12 and 16.5).

Articles 69 and 84 EPC

6. The appellant contested all clarity objections.

6.1 It reasoned inter alia that the examining division had failed to interpret the claims in the light of the patent specification as a whole, as required by Article 69 EPC. Applying Article 69 EPC in examination was necessary to ensure that the same claim interpretation was considered when an examining division assessed patentability and when a court determined the extent of protection of a claim (see the grounds of appeal, section III.1, page 2, last paragraph, to page 3, paragraph 2).

6.2 Alternatively, the appellant argued that it was a general principle of law that claims had to be interpreted in the light of the specification (see the appellant's letter of 6 June 2017, page 2, paragraph 2).

7. The board takes the following view.

7.1 Article 84 EPC concerns the European patent application. It stipulates inter alia that the claims shall be clear and concise and be supported by the description.

7.2 Article 69 EPC relates to the extent of protection conferred by a European patent or a European patent application, and stipulates in its paragraph 1 that this is determined by the claims, which in turn are to be interpreted in view of the description and drawings. Its paragraph 2 further explains that the extent of protection of a European patent application is determined retroactively by the extent of protection of the European patent, on the implicit condition that a patent is granted at all. As regards procedures before the EPO, the EPC refers to the extent of protection only once, namely in Article 123(3) EPC which provides that the European patent may not be amended in such a way as to extend the protection it confers. Therefore, Article 69 EPC does not apply per se to the examination procedure.

7.3 The board does agree, however, that, as a matter of principle, a patent claim cannot be interpreted in isolation but rather that reference may have to be made to the patent specification (see the same letter, page 2, paragraph 2, the paragraph bridging pages 2 and 3, and page 3, paragraph 3). In this regard, the board agrees with the decisions of the boards of appeal cited by the appellant, and specifically with the statements in T 860/93 (reasons 5.7) and T 556/02 (reasons 5.3) according to which "the positive requirement of Article 69(1) EPC" applies also in examination, and with that in T 61/03 (reasons 4.2) according to which a patent application "may be its own dictionary".

7.4 By virtue of Article 84 EPC, an examining division can and shall examine the clarity of the claims before it. A clarity objection obliges the applicant to consider amending the claims in the light of the patent specification. That is, even if it is possible to interpret a claim in the light of the patent specification, Article 84 EPC may oblige the applicant to make that interpretation explicit in the claim language.

7.5 When a claim has been clarified, it becomes easier and more predictable to determine its scope in examination (e.g. when assessing inventive step) or its extent of protection in post-grant procedures (according to Article 69 EPC). In the board's view, this is a main purpose of Article 84 EPC.

8. In view of the foregoing the board concludes that it is normally not sufficient for overcoming a clarity objection to indicate that the claim can be interpreted in the light of the description.

9. The board also rejects the appellant's proposal to refer questions to the Enlarged Board of Appeal under Article 112(1)(a) EPC. Firstly, the board considers its position to be in line with the cited jurisprudence, so no decision from the Enlarged Board of Appeal is required in order to ensure uniform application of the law (see the appellant's letter of 6 June 2017, page 3, last paragraph). Secondly, for the purposes of this decision, the board has adopted a claim interpretation that was not challenged by the appellant, and has decided the present case on the basis of inventive step rather than clarity (see below). Thus, questions relating to Article 84 EPC (and, for instance, its relationship to Article 69 EPC) need not be addressed in the present decision.

10. The clarity of the claims to hand and in particular the clarity issues the board raised in its summons to oral proceedings are therefore left open.

Claim construction

11. In the annex to the summons to oral proceedings, the board summarised its understanding of the claimed subject-matter and, thus, how it intended to interpret the claims in order to assess its inventive merit. This analysis was not challenged by the appellant either in writing or in the oral proceedings.

12. The claimed method (according to claim 1 of all requests) has two phases. The first phase leads to the creation of the ANC matrix which, in the second phase, is used to "automa­tically and instantly" produce responses to user queries.

12.1 The major part of the first phase is done by the user. Especially the generation of the ANC is under user control. Only the processing of user queries is meant to be automated. This is consistent with the appellant's summary of the situation given in the grounds of appeal (see page 7, paragraph 1).

12.2 More specifically, the user

- inputs the "technical teaching" TT.p underlying a patent (or such like) and that of the prior-art documents TT.i in terms of their "elements" and the "fundamental facts of these elements",

- identifies which elements in TT.p and TT.i correspond to each other and thus are "peer elements",

- selects and defines "information identifying or describing at least one item of the PTR or one law of nature or one National Patent System", and

- defines "all interrelations", especially which elements are anticipated or rendered obvious by other elements or groups of elements.

12.3 Moreover, the method claim refers to "compiling", based on user-input "first-kind items", a number of so-called (a)- to (c)-items and "inputting" these "second-kind items" into the computer and "process[ing]" them "to form an ANC" (see steps (a) to (d) in claim 1 of all requests).

12.4 Although the term "compiling" has a specific meaning in the field of computer programming, it also has the conventional non-technical meaning of "collecting" and "assembling". In the board's understanding, the latter meaning applies to the claims in suit. In oral proceedings, the appellant did not challenge this interpretation. Accordingly, the claim is construed as specifying that the items mentioned are "compiled" and input by the user and "processed to form an ANC" under user control.

Technical effects and inventive step

13. In view of the foregoing, the board concludes that the major part of claim 1 (of all requests) is a modelling procedure during which the user considers the items in the domain of interest (comprising, specifically, the patent/patent application and the documents being compared, the laws of nature and the items of a national patent system), extracts their relevant properties (elements, facts, relations), and "compiles" them "into" a formal language.

13.1 Following T 49/99, the board considers this procedure of information modelling to be an intellectual activity (effectively a method for performing mental acts, Article 52(2)(c) EPC) which does not, per se, contribute to the technical character of an invention). For this conclusion it is immaterial that the present application does not even relate to the modelling (let alone simulation) of a physical system but to the modelling of what a given set of documents discloses and how they relate to each other.

13.2 Accordingly, a technical contri­bution of the present invention could only lie in the way in which the generation and use of the model are implemented.

13.3 In the oral proceedings, the appellant essentially argued that particular features of the ANC data structure had to be considered to be technical. It stressed in particular that the ANC had to reflect the analysis of documents in terms of two different levels of granularity ("elements" and "fundamental facts of these elements") and that it contained novel fields (e.g. "anticipates/not-anticipates-and-not-contradicts/contradicts" as claimed).

13.4 However, the appellant did not argue that (or explain in what way) the particular ANC data structure had a specific technical advantage for the subsequent query processing. It was thus unable to convince the board that the modelling steps caused any technical effect. When, however, the modelling steps are assumed to be taken as an aim to be achieved in a non-technical field - according to established jurisprudence of the boards of appeal (see T 641/00, headnote 2) - the form of the ANC is determined by the model and thus obvious.

14. The computer support specified in claim 1 of all requests (see claim 1, lines 9-11 and 13) does not, in the board's judgement, go beyond the general statement that a computer is used to support the users in their task. Likewise, the feature that users may query the "items" in the ANC and the method replies "automatically and instantly by displaying to the user this item's information and all its such relations to other items" does not, in the board's judgement, go beyond the statement that the information in the ANC may be accessed by user queries, as is known from prior-art database systems.

14.1 The board considers that the above assessment applies to all three requests alike, and the appellant confirmed during oral proceedings that, in this regard, the auxiliary requests did not raise new issues.

14.2 The board thus concludes that claim 1 of all requests lacks inventive step in view of common knowledge, as an obvious way of providing computer support to an essentially non-technical method, Article 56 EPC.

Rule 103(1)(a) EPC

15. The appeal fee cannot be reimbursed because the appeal is dismissed. It can therefore be left open whether the above-mentioned deficiency of the decision under appeal is a substantial procedural violation that would have made a reimbursement equitable.