T 0922/08 13-10-2011

1. The appeal is admissible.

2. Admissibility of the requests

2.1 Main request

Claim 1 of the main request is identical to claim 1 filed as first auxiliary request on 29 October 2007 before the Examining Division. During the oral proceedings before the Examining Division, the applicant withdrew this request of its own volition (cf decision under appeal, point 4 of the facts and submissions, and minutes of the oral proceedings, point 8). The withdrawal of this request consequently prevented the Examining Division from giving a final decision on its merits.

It is established jurisprudence of the boards of appeal that the primary purpose of the appeal is to provide the adversely affected party with the opportunity to challenge the decision on its merits and to obtain a judicial ruling as to whether the first-instance decision was correct (G 9/91 and G 10/91 - OJ 1993, 408, 420). Even if the withdrawal of the present main request during the examination procedure is not considered an abandonment of this request for subsequent appeal proceedings as argued by the appellant, the fact that the request was withdrawn in the first-instance proceedings precluded the issue of a reasoned decision on its merits by the Examining Division. Reinstating this request upon appeal would compel the Board either to give a first ruling on the critical issues, which runs contrary to the purpose of a second-instance ruling, or to remit the case to the department of first instance, which is clearly contrary to procedural economy.

It is precisely with the purpose of forestalling these unsatisfactory options that Article 12(4) RPBA provides the Board with the discretionary power to hold inadmissible requests which could have been presented (or were not admitted) in the first-instance proceedings. In the Board's view, this provision is hence applicable to the present main request.

For these reasons, the Board decides not to admit the main request into the appeal procedure.

2.2 First auxiliary request

Claim 1 of the first auxiliary request was filed one month before the oral proceedings before the Board and is based on original independent method claim 15, supplemented by features taken from the description. However, original method claim 15 had been deleted at the time of entry of the application into the regional phase before the EPO and had consequently not been searched. The subject-matter of the claim contains an alternative to a "Saturation Transform" which is provided by a "fast Fourier transform" (complex FFT) as described in the description starting on page 77, line 13. Consequently, this fresh case would require an additional search and a complete examination on all formal and substantive aspects and would thus necessitate the remittal of the case for further prosecution, which at this stage of the procedure is excluded for reasons of procedural economy.

The Board does not accept appellant's justification that the idea of reverting to one of the original independent claims in order to avert objections under Article 123(2) EPC was only realized once the appellant received the Board's communication. Indeed, since these objections had already been raised in the course of the procedure before the Examining Division it could have been reasonably expected that the applicant would already at that stage have reverted to one of the original independent claims and filed a corresponding auxiliary request.

As a result, the first auxiliary request is not admitted following the provisions of Articles 12(4) and 13(1) RPBA.

2.3 Second and third auxiliary requests

Claim 1 of the second auxiliary request is identical to the version refused by the Examining Division and to claim 1 of the auxiliary request filed with the statement of grounds of appeal. This request is therefore not open to objections concerning the admissibility.

The amendments made to claim 1 of the third auxiliary request represent a fair attempt to remedy the deficiencies raised in the Board's communication under Articles 123(2) and 84 EPC and do not raise issues which the Board cannot deal with without adjournment of the oral proceedings (Article 13(3) RPBA).

Consequently, the second and third auxiliary requests are admitted into the proceedings.

3. Amendments - second and third auxiliary requests

3.1 The present application as originally filed defined the matter for which protection was sought in thirteen independent claims (seven independent device claims and six independent method claims), and described the "invention" in a lengthy description of more than 100 pages and more than 50 figure sheets. Current independent claim 1 of the second auxiliary request is however an entirely newly formulated definition of the "invention" which contains a novel combination of isolated features extracted from a complex description of a preferred embodiment described in the original application over a large number of pages (starting mainly at page 49, line 17). As will be explained below, these features have been extracted by inspection of just two of the figures depicting said embodiment, while leaving out other essential features which also belong to the same context.

3.2 In particular, claim 1 of the second auxiliary request gives a definition of a physiological monitoring system for pulse oximetry by reciting elements or modules which are depicted in Figures 11 and 14. According to the description, "Figure 11 is an example of a physiological monitor in accordance with the teachings of one aspect of the present invention" (page 9, lines 17 to 18), and, moreover, "Figure 11 depicts a general hardware block diagram of a pulse oximeter" (page 50, lines 18 to 19). Furthermore, "Figure 14 illustrates additional detail of the operations performed by the digital signal processing circuitry of Figure 11" (page 9, lines 24 to 25). This digital signal processing system is first shown with a low level of detail in the schematic diagram of Figure 14, and further details of its functions and constituent modules are described in relation to Figures 15 to 21a (see page 56, lines 6 to 7; page 9, line 26 to page 10, line 6).

3.3 One of the modules of the digital signal processing system depicted in Figure 14 is labelled as a "saturation transform" module 406. The description makes it clear that this term is "used to describe an operation which converts the sample data from time domain to saturation domain values as will be apparent from the discussion below" (cf page 52, lines 11 to 12; emphasis added). Hence, what follows in the description thereafter, notably the different calculations carried out by the "saturation transform" module 406 depicted in Figure 18 (and described on page 60, line 5 et seq), is indispensable for understanding what the label "saturation transform" in fact involves (inter alia, the use of a correlation canceller, and the creation of master power curves and bin power curves; cf page 60, lines 6 to 8, and page 63, lines 1 to 23). Neither the meaning carried by the label itself (of "transforming" a "saturation"), nor the vacuous functional definition given in claim 1 (of "providing information of the physiological characteristic present in the output electrical signal") reflects the indispensable features indicated in the description. Thus, the replacement of these features by something which is no more than a label or buzzword has no support in the description and leads to an unallowable generalization of the embodiment disclosed in the application as filed.

Another module depicted in Figure 14 is labelled as a "statistics" module 404. In this respect, the description makes it clear that "certain statistics are calculated" by this module (cf page 56, line 13; emphasis added), such as first order oximetry calculations and RMS signal values of the red and infrared channels, as well as a cross-correlation output which indicates a cross-correlation between the red and infrared signals (cf page 58, lines 12 to 14; see Figure 17). The replacement of such indispensable specific cross-correlation calculations by "statistics operations" has no support in the description, whereby this expression also leads to an unallowable generalization of the embodiment disclosed in the application as filed.

3.4 It is thus clear to the reader of the application as filed that merely for the sake of clarity of presentation, the pulse oximeter was depicted not just in a single overcrowded figure, but in the usual way of depicting it first with a reduced level of detail, i.e. in the schematic block diagram of Figure 11, and explaining the structural and functional features of the different elements or modules in relation to the ensuing figures. Contrary to the appellant's view, a drawing is not to be interpreted in isolation from the overall content of the application but only in that general context.

The skilled person thus understands that the schematic presentation in Figures 11 and 14 of the described "example of a physiological monitor in accordance with the teachings of one aspect of the present invention" is not to be seen as a generalizing definition of said example, as argued by the appellant.

3.5 Therefore, retaining in claim 1 just those modules which first appear in the description of the present complex embodiment (in Figures 11 and 14) while leaving out additionally described constituent modules of the embodiment is seen as an arbitrary selection of features.

According to established jurisprudence of the boards of appeal (see Case Law, 6th edition 2010, III.A.2), if a claim is to be restricted to a preferred embodiment, it is normally not admissible under Article 123(2) EPC to extract isolated features from a set of features which have originally been disclosed in combination for that embodiment. Such formulation would only be justified in the absence of any clearly recognisable functional or structural relationship among the originally disclosed features. In the present case, in view of the inextricability of closely related essential features of the disclosed embodiment, the isolation of some individual features from the original combination is not allowable.

3.6 Furthermore, when extracting some features from a combination of features, the main relevant question to be answered is whether it is clear beyond any doubt that the subject-matter of the claim thus amended provides a complete solution to a technical problem unambiguously recognisable from the application as filed (see T 284/94, OJ 1999, 464).

As explained in the description, for example, on page 4, line 25 to page 5, line 17; page 49, lines 18 to 23; and page 50, lines 10 to 17, the present invention addresses the problem of eliminating erratic motion-induced noise in pulse oximetry other than by traditional filtering techniques. In the "Summary of the Invention", it is stated that "the present invention involves several different embodiments using the novel signal model in accordance with the present invention to isolate either a primary signal portion or a secondary signal portion of a composite measured signal" (cf page 3, lines 17 to 19), wherein a processor "in accordance with the invention" removes the primary (or, alternatively, the secondary) signal portion (cf page 5, lines 18 to 33). Then, on page 6, line 1 to page 8, line 6, "the signal model of the present invention" is summarized, with particular reference to a physiological monitor for calculating a saturation value using the said "present invention" (cf page 7, line 20 to page 8, line 6). A physiological monitor according to the invention is also defined in some of the original independent device claims, e.g. original claims 8, 14, and 32, as the Board indicated under point 3 of its communication.

3.7 However, from the application as originally filed it is not evident that the specific combination of features defined in claim 1 of the second auxiliary request would, by itself, solve the aforementioned problem of eliminating erratic motion-induced noise in pulse oximetry other than by traditional filtering techniques, which is the problem which the "invention" as stated in the application sets out to solve.

In particular, the application as originally filed does not disclose that the splitting of data into two branches, one labelled "statistics" and the other labelled "saturation transform" in Figure 14, by itself solves any particular problem, let alone the aforementioned problem of eliminating erratic motion-induced noise, as argued by the appellant. The statement on page 56, lines 22 to 24 ("the resulting data is subjected to statistics and to the saturation transform operations in order to calculate a saturation value which is very tolerant to motion artefacts and other noise in the signal") is to be understood in the context of the meaning given by the description to the labels "statistics" and "saturation transform", explained above under point 3.3. To the skilled reader it is thus immediately apparent that it is not just the "parallel processing" mentioned by the appellant which solves the problem of eliminating erratic motion-induced noise, but the entire processing implemented by the particular "statistics" and "saturation transform" calculations disclosed in the specification as filed.

The unusual and ambiguous presentation of the invention in the application as filed, using a plurality of independent claims of overlapping scope and lacking a clear statement about the essential features of the invention, does not allow the skilled reader to directly and unambiguously derive that the solution of the problem of eliminating motion-induced noise should reside in the parallel data processing using two different calculation methods, irrespective of the specific nature of these calculations. These specific calculations are in fact highly relevant and should have been incorporated into the claimed subject-matter to provide a complete solution to the stated problem.

3.8 Hence, since the subject-matter of claim 1 of the second auxiliary request does not provide a complete solution to the mentioned technical problem, claim 1 defines subject-matter extending beyond the content of the application as filed, contrary to the requirement of Article 123(2) EPC. Moreover, since essential features are missing from the solution of the technical problem identified in the application, the claim also lacks adequate support by the description within the meaning of Article 84 EPC, second sentence taken in combination with Rule 43(1) and (3) EPC.

3.9 In claim 1 according to the third auxiliary request, some clarifications and additions have been made, without however properly addressing the foregoing objections, which still apply. Therefore, claim 1 of the third auxiliary request is not allowable under Articles 123(2) and 84 EPC for the same reasons as those stated above.