T 0649/11 08-02-2016

Summary of Facts and Submissions

I. The appeal filed on 23 December 2010 lies from the decision of the examining division, posted on 19 October 2010, refusing European patent application No. 08 152 699.8 published with publication No. 1 947 590. This European patent application is a divisional application from the earlier European patent application No. 04 252 995.8, published with publication No. 1 480 157. The appeal fee was paid on 23 December 2010. The statement setting out the grounds of appeal was filed on 28 February 2011.

II. In its decision the examining division refused a procedural main request to withdraw the summons to oral proceedings, a first auxiliary request under Article 76(1) EPC in view of the term "coplanar" in claim 1, a second and a third auxiliary request due to lack of inventive step (Article 56 EPC) considering the teaching of document WO-A-2001/59558 (D1).

In an "obiter dicta" (cf. section III. of the decision) the examining division further stated that "Even when disregarding the deficiency concerning the coplanarity aspect of claim 1 of the First Auxiliary Request, an inventive step reasoning similar with that presented for claim 1 of the Second Auxiliary Request applies. Claim 1 of the First Auxiliary Request lacks therefore inventive step (Art. 56 EPC)."

III. With the notice of appeal the appellant (applicant) appealed this decision in its entirety.

IV. With the statement setting out the grounds of appeal the appellant requested that a patent be granted on the basis of claim sets according to a main request, a first auxiliary request, a second auxiliary request, or a third auxiliary request, all filed together with the grounds of appeal. The claims of the main request, the first auxiliary request and the second auxiliary request corresponded to the first to third auxiliary requests as discussed in the appealed decision. The third auxiliary request was newly filed.

The appellant provided arguments with regard to Articles 76(1) and 56 EPC as well as Article 123(2) EPC.

Moreover, as a further auxiliary request, the appellant requested oral proceedings.

V. By summons of 22 July 2015 the appellant was summonsed to oral proceedings due to take place on 12 October 2015. A communication under Article 15(1) RPBA was issued on 11 August 2015 drawing attention to the issues to be discussed during oral proceedings.

In particular, the Board raised doubts that the terms "planar" and "coplanar" as claimed according to all claim sets then on file were originally disclosed in the earlier application. The Board further commented that other issues, for example inventive step and double patenting with regard to the meanwhile granted patent EP-B-1 480 157 (cf. decision T 2139/08) based on the earlier European patent application would be discussed, if necessary.

VI. With letter dated 21 September 2015, the appellant filed amended claim sets according to a revised main request, a revised second auxiliary request and a revised third auxiliary request. The appellant did not formally withdraw the requests filed with the grounds of appeal and asked that the revised requests be considered in the given order before the requests filed with the grounds of appeal.

The appellant noted: "In the enclosed requests the terms 'planar' and 'coplanar' have been deleted to address the Article 76(1) issue. No other amendments have been made."

Further, the appellant provided arguments with regard to double patenting, novelty and inventive step for the revised requests.

VII. In a phone conversation on 5 October 2015, the attention of the appellant was drawn to the preliminary position of the Board that the claims of the revised main request were considered to overcome the objections raised in the Board's communication of 11 August 2015. However, minor issues still had to be considered; in particular, reference signs should be included into the claims and dependent claims 4 and 5 should be corrected, since they claimed an "apparatus" and not an "electronic handheld device" as claim 3, to which they referred back.

VIII. With letter dated 6 October 2015, the appellant filed a further revised claim set and stated: "On the understanding that this application can be granted based on the replacement set of claims filed herewith, we withdraw the other requests on file and request grant of this application based on the replacement set of claims."

IX. The oral proceedings appointed for 12 October 2015 were cancelled by letter dated 12 October 2015 and faxed to the appellant's representative on 7 October 2015.

X. Claim 1 of the appellant's request reads:

"1. An apparatus for input and fingerprint recognition comprising:

a touch surface (215, 315, 415) comprising a first region and a second region, the second region (220, 320, 420) being distinct from the first region and occupying less than an entire portion of a total surface area of the touch surface (215, 315, 415); and,

a data processor coupled to the touch surface (215, 315, 415), the data processor being configured to selectively operate the touch surface (215, 315, 415) in a touch input mode or a fingerprint detection mode, in the touch input mode the data processor being configured to operate the second region (220, 320, 420) at a first resolution comparable to that of the first region to detect a touch input anywhere on the touch surface (215, 315, 415), in the fingerprint detection mode the data processor being configured to operate the second region (220, 320, 420) at a higher resolution than the first resolution to detect a fingerprint on the second region (220, 320, 420)."

Claim 4 of the appellant's request reads:

"4. A handheld electronic device comprising:

a housing;

a display screen; and

an apparatus for input and fingerprint recognition according to claim 1 or claim 2, wherein the display screen and the touch surface (215, 315, 415) are disposed within the housing, the display screen being disposed at one side of the housing, the touch surface (215, 315, 415) being disposed at another side of the housing opposite to the one side."

Claim 7 of the appellant's request reads:

"7. A method of input and fingerprint recognition comprising:

operating a touch surface (215, 315, 415) at a first resolution to detect a touch input anywhere on the touch surface (215, 315, 415), the touch surface (215, 315, 415) comprising a first region and a second region (220, 320, 420), the second region (220, 320, 420) being distinct from the first region and occupying less than an entire portion of a total surface area of the touch surface (215, 315, 415); and

operating the second region (220, 320, 420) at a higher resolution than the first resolution to detect a fingerprint on the second region (220, 320, 420)."

Claims 2 to 3, 5, 6 and 8 depend respectively on claims 1, 4 and 7.