T 2098/13 (Underlaid signalling data/QUALCOMM) 04-07-2016

Reasons for the Decision

1. Non-attendance of the appellant at oral proceedings

The appellant decided not to attend the scheduled oral proceedings before the board and withdrew its request for them (cf. point V above). Pursuant 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 who may then be treated as relying only on its written case".

In the present case, the appellant filed amended sets of claims, and provided comments in support of their patentability in response to the objections raised in the board's communication under Article 15(1) RPBA. The board considered the new claim requests and noted that the independent method claims of all those requests still gave rise to objections under Article 84 EPC (cf. point 2 below). Hence, in the exercise of its discretion under Article 15(3) RPBA, the board took a final decision at the end of the oral proceedings, in the absence of the appellant.

2. Essential features (Article 84 EPC)

2.1 An independent claim should explicitly specify all of the essential features needed to define the invention (see e.g. G 1/04, OJ EPO 2006, 334, point 6.2).

2.2 In the present case, the technical problem underlying the application consists in efficiently transmitting signalling information in a wireless OFDM system dependent on different terminal-specific reception requirements (see e.g. paragraph [0005] of the application as filed). In order to solve that problem, the present application recurrently and consistently proposes separate processing of the respective data symbols (by a "data modulator") and the signalling data (by a "signalling modulator") within the underlying OFDM transmission process (cf. Figures 6 to 8 in conjunction with paragraphs [0069] to [0082] of the application as filed; see also claim 1 of the present claim requests). It is apparent to the board that separate processing of different types of information (i.e. signalling data and data symbols) is, in the present case, essential for achieving the desired effect of efficiently transmitting signalling information in the presence of different terminal-specific reception requirements.

2.3 However, independent method claim 27 of the main request and the first auxiliary request and independent method claim 13 of the second auxiliary request lack (at least) the above essential feature for a proper definition of the present invention.

2.4 In this regard, the appellant argued that claim 1 (directed to an apparatus) of all the present claim requests defined a signalling modulator and a data modulator, which processed signalling data and data symbols respectively, and that therefore it was clear to a person skilled in the art that this processing was performed separately, in particular since two separate modulators were claimed (cf. appellant's letter dated 4 May 2016, section B.1, third paragraph). The board notes, however, that this does not apply to the independent method claims 27 and 13 of the present claim requests, since they - for whatever reasons - fail to incorporate the corresponding separate signal processing performed by two different modulators.

2.5 In conclusion, the main request as well as the first and second auxiliary requests are not allowable under Article 84 EPC.

3. Request for remittal of the case

3.1 The appellant requested that the case be remitted to the examining division for further prosecution if the main request or the auxiliary requests are rejected based on the clarity issues raised in the summons (cf. point IV above, third request).

3.2 Although the present main request as well as the auxiliary requests have indeed to be rejected based on the clarity issues raised in the board's communication under Article 15(1) RPBA (see in particular section 3.1.1), the board, exercising its discretionary power under Article 111(1) EPC, nevertheless decides not to remit the case to the department of first instance for further prosecution, in view of the following observations:

a) the board may indeed include new grounds in ex parte appeal proceedings regardless of whether those grounds relate to patentability requirements which the examining division did not take into consideration in the examination proceedings (as in the present case) or to those which it indicated as having been met (see in particular G 10/93, OJ EPO 1995, 172, Reasons 3);

b) even if this case were to be remitted, the board's decision on issues under Article 84 EPC as regards the present claim requests would be binding on the examining division pursuant to Article 111(2) EPC, thus rendering such a remittal entirely pointless.

4. Request to refer the case to the Enlarged Board

4.1 The appellant also requested that the case be referred to the Enlarged Board of Appeal to answer the question "whether or not G 3/14 is only applicable in opposition proceedings or also in other proceedings", if the main request or the auxiliary requests are rejected based on the clarity issues raised (cf. point IV above, fourth request).

4.2 This procedural request likewise must be refused since the question posed is considered to be sufficiently and unequivocally answered by cited case G 3/14 of 24 March 2015 (to be published in the OJ), as it is concerned expressly and solely with the authority to examine the requirements of Article 84 EPC in respect of amended claims in inter partes (appeal) proceedings, and in particular with the interpretation of Article 101(3) EPC (see e.g. Reasons 8 and the Order). It does however not apply to ex parte appeal proceedings (which are dealt with in G 10/93; see point 2.2a) above).