T 1643/10 (Bus architecture/RAMBUS) 26-11-2014

1. Res iudicata

1.1 It was argued by former opponent I that earlier de­ci­sions T 81/03 and T 265/05 constituted res iudicata (as defined in T 167/93, reasons 2.5; OJ EPO 1997, 229) for the present case and that the board was correspondingly barred from dealing with issues upon which the earlier decision had already decided.

1.2 As a matter of law, the board must assess this issue of its own motion even though both oppositions were with­drawn.

1.3 In both T 81/03 and T 265/05 the board decided on claims comprising the feature of a "bus [which] has substan­tially fewer lines than the number of bits in a single address" and found Article 123(2) EPC to be complied with (see T 81/03, facts X and reasons 3.10, and T 265/05, facts X and reasons 1.5). Thus nei­ther of them contains any final decision regarding the question of whether a claim lacking that feature conforms to Articles 76(1) EPC 1973 or 123(2) EPC.

1.4 Hence, at least with respect to this question, the de­cisions can­not consti­tute res iudicata for the present appeal. As the appeal is decided on just that ques­tion, it may be left open whether or to what extent de­cisions regarding a parent or a cibling application re­pre­sent res iudicata for a divi­sional application at all.

2. Main request and auxiliary requests I-III

2.1 It is to be decided whether claim 1 according to the main request or auxiliary requests I-III conforms to Articles 76(1) EPC 1973 and 123(2) EPC even though they do not spe­ci­fy the feature that the "bus has sub­stan­tially few­er bus lines than the number of bits in a single address". This feature defines a relationship between the bus width and the address width but does not imply anything about the absolute size of either (as the appellant correctly points out, see letter of 2 Oc­tober 2014, p. 2, point II.1). This notwith­standing and for the sake of brevity only, this feature will be re­ferred to ­below as the requirement of a "narrow bus".

2.2 The proprietor argues that claim 1 according to all re­quests is based on embodiment 103 of the application as originally filed for the purpose of Article 123(2) - and, for the purpose of Article 76(1) EPC 1973, of claim 103 of the parent application as originally filed. In the following both will, for simplicity, be jointly re­ferred to as "claim 103".

2.3 The preamble of claim 103 specifies a "semi­con­ductor de­vice capable of use in a semiconductor bus archi­tecture including a plurality of semiconductor devices connec­ted in parallel to a bus ...".

2.4 The board notes that, literally, the claimed "semicon­duc­tor device" and the "plurality of semi­conductor de­vices" which constitute the "semiconductor bus archi­tecture" are different from and need not be related to each other. Thus any limitation that the claimed bus may have on the "plurality of semiconductor devices" need not automa­ti­cally imply a corresponding limitation of the claimed semiconductor device.

2.5 This observation notwithstanding, the board considers that the skilled person would indeed take as implicit that the claimed semiconductor device is one of those (or at least of the same type as those) con­stituting the semiconductor bus architecture and that, consequen­tly, limitations of the latter do imply limi­ta­tions of the former.

2.6 To the extent that the semiconductor devices are only claimed to be "capable of use" in the claimed archi­tec­ture, they need only be "capable of [being] connec­ted" to the claimed "narrow" bus.

2.7 The board agrees with the appellant that the "capa­b[i­lity] of [being] connected" to a narrow bus implies the ca­pa­bility of mul­tiplexing (large addresses on few bus lines). The board also accepts the appellant's position that a semiconductor device which can be connected to a narrow bus can also be connected to a wider bus, e.g. by lea­ving any additional bus lines unused.

2.8 However, claim 103 also specifies a "connection means adapted to connect said semiconductor device to said bus". Regardless of whether the claimed semi­conductor device is one of or of the same type as the "plurality of semi­con­ductor devices", this means that the semi­con­ductor device must be adapted for connection with the narrow bus mentioned in original claim 103.

2.9 As disclosed in original claims (or "embodiments") 82 and 92, the connecting means consists of pins for connection to the external bus and corresponding wires for connection with the internal bus logic.

2.10 The adaptation of the semiconductor device for connection with the narrow bus does not limit the number of pins the se­miconductor device has, as there may be unused pins just as there may be unused bus lines. However, the number of pins carrying bus signals is determined by the in­ter­nal bus logic.

2.11 Therefore, the "narrow bus" feature in combination with the connecting means adapted to it implies that the claimed semiconductor device "has substantially fewer" pins carrying bus signals "than the number of bits in a single address".

2.12 Claim 1 of the main request implies that the claimed semi­con­ductor device per­forms "address multiplexing to con­vey a single memory address". This implies that the number of address lines used to transmit a single address is smaller than the address width. How much smaller is, strictly speaking, not implied, since addresses must be multiplexed on the bus even if the addresses are only one bit wider than the bus. However, the board considers that the skilled person would un­derstand address multiplexing to imply that there are "substantially fewer" bus lines than address bits. This corresponds to the general observation that, for optimal usage of the limited bus resource, the address width should be a multiple of the bus width, but also to the specific disclosure that "very large addresses" (such as 40 bits wide) "can be sent over a small number of bus lines" (such as 8) or that an address may be split into row and column addresses which can be transmitted over a "bus only half as wide" (see application as filed, p. 2, last para. to p. 3, 1st para.; fig. 1; and p. 12, lines 5 to 10).

2.13 However, the bus is defined to carry "substantially all address, data and control information". Neither claim 1 of the main request nor original claim 103 spe­cifies whether addresses, data and control infor­mation are to be sent over the same or different bus lines or whe­ther the connecting means has separate pins for each.

2.14 The requirement that the semiconductor device support address multiplexing may imply a limitation of the number of address pins of the semiconductor device but does not imply such a limitation on the num­ber of data and con­trol pins. Accordingly, the semi­conductor device according to claim 1 of the main re­quest may connect to a bus which has few address lines but an unspecified number of data and control lines, so that the entire bus to which it is adapted to connect need not be substantially narrower than the address width but may, in fact, be wider.

2.15 The appellant argued that claim 103 did not exclude fur­ther pins beyond those needed for the bus, for in­stance if the semiconductor device had to be connected to a second bus as depicted in figure 9. The board agrees. However, such additional pins - irrespective of their intended purpose - do not affect the limitation which claim 103 sets out on the pins constituting the connection means which is spe­cified to be "adapted to connect said semiconductor device to said bus" as claimed.

2.16 The board therefore comes to the conclusion that the replacement of the "narrow bus" feature by the address multiplexing feature broadens the scope of the claim and constitutes the omission of a feature of claim 103. This conclusion applies to claim 1 of the main re­quest and auxiliary re­quests I to III.

2.17 It thus needs to be decided whether the omission of the "narrow bus" feature is in conformance with Articles 76(1) EPC 1973 and 123(2) EPC.

2.18 Article 123(2) EPC provides that a European patent appli­cation may not be amended in such a way that it con­tains subject-matter which extends beyond the con­tent of the application as filed, and Article 76(1) EPC 1973 provides that a divisional application may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed.

2.19 The appellant argues that omission of the "narrow bus" feature was justified, if exceptionally, because for the skilled person the size of the bus relative to the address width was apparently not part of the actual invention.

2.20 The appellant observes that address multiplexing to allow for the use of smaller buses was well-established at the priority date of the present application and disclosed as such (see the background section regarding fig. 1). It was therefore clear, in fact and from the application as filed, that the relative bus width did not constitute the invention (see e.g. letter of 2 Oc­tober 2014, p. 19, 2nd para.). Rather, the actual in­ven­tion according to claim 103 was the provision of the pro­grammable access-time register which made the res­ponse of the memory chip predictable and thus allowed a more effective use of the available bus - which had to be treated as a limited resource (see that letter, p. 14, last para. ff.).

2.21 The appellant argued (see letter of 2 October 2014, p. 12 ff., point 6) that the German Federal Court of Jus­tice (Bundesgerichtshof BGH) in its decision X ZR 107/12, whilst applying the same fundamental legal pro­hi­bi­tion of added subject-matter­ as the EPO, put weight on the skilled person's appreciation ("Wertung") as to which features had to be attributed to the "real inven­tion" (die "eigentliche Erfindung") and allowed the omission of those features which did not contribute to the solu­tion of the problem as apparent from the ori­gi­nal appli­­­cation documents. According to this standard, which the appellant considered to be more permissive than the usual practice at the EPO and which it sugges­ted that the board adopt, the omission of the "narrow bus" fea­ture should be allowed as evidently not a part of the actual invention. Alternatively, the appellant argued that omission of that feature should be allowed accor­ding to the "essentiality test" of T 331/87 (head­note; OJ EPO 1991, 22) because it was neither essential for the actu­al inven­tion nor, in particular, disclosed as being an essential feature of the inven­tion in the appli­cation as originally filed (see that letter, p. 22, item iv).

2.22 The enlarged board of appeal has, in several decisions, established that under Article 123(2) EPC an amendment is only allowable within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and re­la­tive to the date of filing, from the application as originally filed (see e.g. G 2/10, reasons 4.3; OJ EPO 2012, 376). The board is not convinced that the BGH decision discloses a substantially different standard, but this question need not be decided because the board sees no com­pelling reason to question the criterion established by the enlarged board of appeal.

2.23 Apart from technical facts and necessities, an applica­tion contains an exposition of what the applicant at the time of filing considered to be the invention. This exposition may present a feature as a part of the in­ven­tion even though that feature may, in fact, not be necessary for achieving a central effect of invention. The applicant's understanding of which feature is part of the invention may change after the filing date in view of new technical insight as to which features are necessa­ry to achieve the desired effect or in view of a new under­stan­ding as to which effect of the claimed inven­tion is actually important for the appellant. The applicant may also come to the opinion that the ori­gi­nally filed application does not say precisely what it was intended to say. Later insights such as these can­not be invoked to justify an amendment which other­wise goes beyond the application as originally filed. Thus the content of the application as originally filed com­prises - and is hence also limited by - what the appli­cant decided to disclose as forming part of the inven­tion at the time of filing.

2.24 In the present case, the board notes that the "narrow bus" feature was not only contained in claim 103 but, in fact, in all but two independent claims of the ear­lier application, namely claims 1, 13, 25, 46, 56, 68, 82, 97, 103, 106, 108, 111, 114, 116, 118, 121, 124 and 135. The only exceptions are claims 73 and 91 which how­­ever relate to the clocking of a "bus subsystem" and a "package" comprising a "semiconductor die", respec­tive­ly, irrespective of how many lines the pertinent bus contains. Neither claim 73 nor claim 91 however re­fers to the address width either, so that they need not - and, in fact, cannot reasonably - make any statement about the rela­tive bus width. Also claims 1-28 as ori­ginally filed in the present application imply nothing on the relative address and bus widths. Hence, all ori­ginal indepen­dent claims of the earlier appli­cation and all corres­pon­ding "embodiments" - and in fact, original claims - of the present appli­ca­tion which mention an address width at all also specify - and thus disclose - that the bus is sub­stantially narrower than the address width. More­over, again in the present appli­cation and the earlier, also the section entitled "summary of the invention" mentions this feature.

2.25 On page 8, lines 4 to 7, as originally filed it is dis­closed that "16 bus lines or other numbers of bus lines can be used". The appellant takes this to disclose that the bus may have an essentially arbitrary number of lines and specifically to disclose a bus which is not substantially narrower than the address width. The board considers that the skilled person would not have read this passage as suggested by the appellant. This passage does not exclude a narrow bus because a bus may be narrow but still not be limited to a fixed num­ber of lines. The passage, therefore, does not dis­close, di­rect­ly and unam­biguously, that the num­ber of bus lines may be any­thing other than "sub­stan­tially fewer than" the address width. The board therefore con­cludes that the cited paragraph cannot justify the omission of the narrow bus feature.

2.26 Figure 9 illustrates the possibility that a semicon­duc­tor device may be connected to more than one bus. As already stated however, this implies that the semicon­duc­tor device may have more pins than needed for one bus but allows no conclusion to be reached as to the number and meaning of the pins connecting to one bus as claimed.

2.27 Also the other passages of the description referred to by the appellant, especially page 6 (2nd para.) to page 7 (1st para.), page 12 (1st para.) and page 42 (last para.) do not support the appellant's case. These passages all relate to the goal of allowing the use of a small bus and of reducing the pin count of the semi­con­ductor device accordingly, but do not disclose a semi­­conductor device which connects to a bus which is not "substantially" smaller than the address width.

2.28 The board therefore comes to the conclusion that the omitted feature was, in fact, disclosed as an integral part of the invention and that the subject-matter of claim 1 of the main request without that feature cannot be derived directly and unambiguously, and seen objec­tive­ly, from the present application or the earlier application as originally filed. Claim 1 of the main request thus does not comply with Articles 76(1) EPC 1973 and 123(2) EPC. The board is of the opin­ion that the differences between claim 1 of auxi­liary requests I to III and that of the main request do not affect this reasoning, and the appellant did not argue this to be the case either. Therefore, also claim 1 of auxiliary requests I to III does not conform with Articles 76(1) EPC 1973 and 123(2) EPC. This deficiency thus preju­di­ces the maintenance of the patent on the basis of these requests.

3. Auxiliary request IV

3.1 The appellant did not explain in the grounds of appeal (see point IV) why auxilia­ry request IV was "inserted" between auxil­ia­ry requests III and V.

3.2 In the annex to the summons to oral proceedings, the board speculated that the appellant might have filed auxiliary request IV to address the possibility that the board might find auxiliary request 4 as maintained to lack clarity due to the use of the term "substan­tially", con­trary to the decision under appeal (see reasons II). In the presence of two appellant-opponents this was a possible outcome of the appeal procee­dings for which the pro­prietor might have wanted to be pre­pared. In its letter of 2 October 2014 (sentence brid­ging pages 1 and 2), the appellant confirmed the board's understanding in this respect.

3.3 Presently, however, since the proprietor is the sole remaining appellant, the patent, in the form found to comply with the EPC by the opposition division, cannot be challenged by the board due to the prohibition of reformatio in peius. As a defence against a potential clarity objection to the term "sub­stan­tially" there­fore, auxiliary request IV is not necessary.

3.4 Claim 1 of the auxiliary request IV corresponds to the one which the opposition division found to comply with the EPC with the exception that the bus is only re­qui­red to have "fewer" - but not necessarily "sub­stan­tially fewer" - bus lines than the number of bits in an address.

3.5 As "substantially fewer" is a more limiting condition than "fewer" it is observed that the wording of claim 1 of the auxiliary request IV differs from that consis­tent­ly used throughout the earlier application and the original application as filed (see esp. above point 2.24). Prima facie at least this modification there­fore constitutes a violation of Articles 76(1) EPC 1973 and 123(2) EPC.

3.6 In its summons to oral proceedings, the board had noted the absence of reasons from the grounds of appeal as to why auxilia­ry request IV could overcome the main ob­jec­tion in the decision under appeal. The appellant how­ever did not provide any argument as to why the feature that the "bus has fewer bus lines than the number of bits in a single address" did not go be­yond the content of the (present and earlier) application as originally filed, neither in wri­ting nor during oral proceedings.

3.7 The board therefore concludes that claim 1 of auxiliary re­quest IV does not comply with Articles 76(1) EPC 1973 and 123(2) EPC.

Summary

4. None of the appellant's requests is allowable.