T 0960/03 (Channel sounding system/LUCENT) 24-02-2006

Reasons for the Decision

1. The function of a board of appeal is to reach a decision on the issues presented to it, not to act as an alternative examining division (G 10/93 OJ 1995, 172, in particular Point 4). The need for procedural economy dictates that the board should reach its decision as quickly as possible while giving the appellant a fair chance to argue its case. In the present appeal the holding of oral proceedings was considered by the board to meet both of these requirements. A summons was therefore issued. The appellant gave no reasons to support the request to cancel the oral proceedings scheduled by the board and to continue the procedure in writing. The board considered that, despite the appellant's announced intention not to attend, the twin requirements of fairness and procedural economy were still best served by holding the oral proceedings as scheduled. The mere choice by the appellant not to attend was not sufficient reason to delay the board's decision. As made clear in the Rules of Procedure of the Boards of Appeal, Article 11(3), a party duly summoned to oral proceedings and not attending may be treated as relying only on its written case. The board considered that Article 113(1) EPC had been satisfied. The request that the oral proceedings be cancelled was therefore refused. The board understands the further request that "the procedure be continued in writing" as a request that the board should issue a further communication, rather than taking a decision at this stage. For the same reasons, this request is also refused.

2. The original application contained the following statement (Paragraph 12 of the published application): "The periodic orthogonal sequences are generated by using the techniques disclosed in the previously filed copending application Serial No. 09/648,983 - which is incorporated by reference as if fully set forth herein - ..." (this document will be referred to as P1 in the rest of the decision). In response to objections raised in the course of examination of the application, the appellant amended the present application to include, in the form of an appendix, the complete description and drawings of P1.

3. In the communication accompanying the summons to oral proceedings the board raised the question whether the reference to "copending application Serial No. 09/648,983", without an indication of the country in which the application had been made, sufficed for the purposes of satisfying the requirements for unambiguous identification and easy retrieval enumerated in for example T 737/90 (unpublished). However, in the light of the conclusions which the board reaches below concerning the content of the referenced document it is unnecessary to decide on this point.

4. With respect to the inclusion of P1 in the description of the present application the appellant relies on decision T 689/90 (OJ EPO 1993, 616), and argues that the "added matter meets the requirements" of this decision (appellant's letter of 23 January 2006, page 3, line 5). The cited decision discusses the status of features not included in an original application but only contained in a document identified in the application. It is stated (at Point 1.4) that, "Prima facie, such features are not within 'the content of the application as filed', which for the purpose of Article 123(2) EPC is constituted by the description of the invention, the claims, and any drawings, in accordance with Article 78(1) EPC." The decision goes on to explain, "If this were not the case, the content of an application containing in its description numerous references to other documents, whether other patent specifications or handbooks for example, would become almost limitless; especially if such documents themselves contain references to other documents, and so on." At Point 2.2 this decision goes on to give, as one of the conditions for allowing an application to be amended by the addition of matter from a referenced document, "that the features which are only disclosed in the reference document implicitly clearly belong to the description of the invention contained in the application (Article 78(1)(b) EPC) and thus to the content of the application as filed (Article 123(2) EPC)."

5. The board considers that it can adopt these considerations in the present appeal. Self-evidently however the conclusion the board reaches depends on the specific facts of the case. These facts are not the same as in the cited decision. It is in fact immediately apparent that in the present case the "Appendix" includes subject-matter which does not belong to the description of the invention as originally filed. For example, page 21, together with Fig. 2 (of the Appendix), puts forward a particular structure of the receiver, involving "parallel weight computers". This structure is stated to offer improved computational efficiency over the prior art. There is no hint in the present application that the reader should refer to P1 for an advantageous structure of a receiver; on the contrary, the only reference to P1 as a source of features of the invention is in the context of constructing suitable orthogonal sequences (as quoted above in Point 2). Thus this structure of the receiver cannot be considered as "implicitly clearly belong[ing] to the description of the invention contained in the application (Article 78(1)(b) EPC) and thus to the content of the application as filed (Article 123(2) EPC)."

6. The appellant argued that the orthogonal sequence that is a function of first and second other orthogonal sequences "is the only subject of P1," (appellant's letter of 23 January 2006, page 3, lines 5 to 15), and went on to argue that according to the conditions of T 689/90, the contents of P1 could therefore be incorporated into the application. The appellant made no comment on the parallel weight computers also described in P1, even though the board had pointed to this particular feature as a violation of Article 123(2) EPC in its communication accompanying the summons to oral proceedings (see Point 5). The appellant's arguments therefore do not convince the board.

7. The description of both the appellant's requests includes the "Appendix". Hence neither request satisfies the requirements of Article 123(2) EPC and as a consequence the appeal must be dismissed.

8. In the appellant's submissions of 23 January 2006 it was also argued that even if the Appendix were removed the application would be allowable (page 3, lines 16 and 17), and the board was asked to deal with this specific argument, "if an allowance is not forthcoming" (page 3, lines 31 to 34). So for the sake of completeness the board observes that the argument is not germane to the situation as it stands, since there is no request before the board in which the amendments have been removed.

9. The board notes that the amendments either to paragraph 12 or to paragraph 21 of the application suggested by the appellant in the final submission (letter of 23 January 2006, page 4, line 20 to page 5, line 15, mentioned in Point VI above) would have no effect on the above considerations, since the "Appendix" would remain part of the description. Further, the concrete objections raised in at least Points 6, 7, 11 and 13 of the board's communication relating to a lack of clarity and support by the description of the claimed subject-matter (Article 84 EPC) still apply to both the main and the auxiliary requests, and the appellant's arguments on these points do not appear convincing.