T 1981/16 (Random access procedure/ERICSSON) 17-11-2020

1. Claim 1 as granted - Article 100(c) EPC

1.1 Subject-matter of the patent

Claim 1 of the patent as granted relates to a method of performing a random access procedure over a radio interface from the perspective of a mobile terminal. This method includes the steps of transmitting a synchronisation request and, in response to receiving the synchronisation information, starting a synchronisation timer. On or after the expiration of this timer, a further synchronisation request is transmitted prior to data transmission.

1.2 Features (a) to (e) have a literal basis in claims 1 and 4 as originally filed.

1.3 A basis for feature (f), i.e.

"on or after expiry of the synchronization timer, a further synchronization request is transmitted prior to any data transmission",

can be found on page 14, lines 16 to 18 of the description as originally filed, stating the following:

"In one embodiment, on expiry of the timer the uplink transmission parameters are considered to be outdated and a (re)synchronization is required prior to any (further) data transmission."

1.4 The above wording is included within a paragraph which states at its beginning that a timer may be used to indicate the validity of the uplink transmission parameters or, as it is phrased in lines 16 to 18 of page 14, from which point in time onwards the parameters are considered to be outdated.

From this paragraph, it becomes apparent to the skilled reader that the parameters remain outdated after the expiry of the timer and that not only on expiry of the timer but also after expiry of the timer (re)synchronisation is required prior to data transmission.

Further, the paragraph describes the provision of an indication related to the validity of the parameters as the purpose of implementing the timer mechanism. In this context, considering the parameters to be outdated after expiry of the timer is presented as an explanation why the process of (re)synchronisation becomes necessary prior to data transmission and not as a step carried out by the mobile device.

1.5 The Opposition Division argued that by omitting the wording "transmission parameters are considered to be outdated" an intermediate generalisation had been generated. In addition, they held that the feature of transmitting a further synchronisation request within feature (f) was broader than disclosed in the above lines because the original wording covered more steps ("... a (re)synchronization is required ...") than the single step of transmitting a further synchronisation request.

1.6 The board does not agree with the Opposition Division's findings, for the following reasons:

1.6.1 The disputed wording ("... considered to be outdated") indicates the rationale behind transmitting a further synchronisation request. This consideration is a mental activity and obviously cannot constitute a concrete method step carried out by the mobile terminal. Thus, the skilled person would not derive from the cited lines on page 14 that the mobile terminal "considers" the parameters to be outdated. The board therefore concludes that the omission of the phrase "transmission parameters are considered to be outdated" does not result in an unallowable intermediate generalisation.

1.6.2 Moreover, the application as filed discloses that, in order to achieve synchronisation, the mobile terminal sends a synchronisation request and receives, in return, synchronisation information (see claim 1 and the beginning of the section "Summary of the Invention" in the underlying description). The application does not provide an indication that, apart from transmitting the synchronisation request, a further step has to be initiated by the mobile terminal. The skilled reader would therefore understand that, from the perspective of the mobile terminal, synchronisation is meant to refer to the transmission of a synchronisation request.

1.6.3 It is further noted that the wording "... a (re)synchronization is required ..." used in lines 16 to 18 of page 14 describes only the technical conditions caused by the expiry of the synchronisation timer and not an effect which is accomplished by the mobile terminal and which implies that the mobile terminal carries out all necessary steps.

1.7 The board therefore concludes that claim 1 as granted does not comprise subject-matter extending beyond the content of the application as filed (Article 100(c) in conjunction with Article 123(2) EPC).

2. Independent claim 11 as granted

The above considerations apply, mutatis mutandis, to independent claim 11.

3. Remittal (Article 111(1) EPC)

3.1 For the above reasons, the only ground for opposition based on which the Opposition Division found the patent as granted not to comply with the requirements of the EPC, namely added subject-matter (Articles 100(c) and 123(2) EPC), does not prejudice the maintenance of the patent as granted. Accordingly, the impugned decision is to be set aside.

3.2 Given that the compliance of the present independent claims with the requirements of novelty and inventive step (Articles 100(a), 54 and 56 EPC) as well as sufficiency of disclosure (Articles 100(b) and 83 EPC) was neither discussed nor decided upon in the decision under appeal (e.g. novelty and inventive step were only discussed for the third auxiliary request in points 4 to 8 of the Reasons), the board considers that a ruling on those issues for the very first time in these appeal proceedings could not be given without undue burden.

In that regard, the board notes that, although the oppositions have been withdrawn, opposition proceedings may still be continued according to the EPC (cf. Rule 84(2), second sentence, EPC).

3.3 In view of those "special reasons" within the meaning of Article 11 RPBA 2020, the board decides to remit the case to the opposition division for further prosecution on the basis of the claims as granted (main request).