EP 3 177 039 B1 relates to a hearing aid with an antenna formed on a flexible carrier, and a method for manufacturing the same.
The hearing aid comprises a rigid carrier substrate (PCB 4, 4A), which carries the signal-processing electronics. This substrate is provided with an “indentation” 31 (i.e. a recess or cut-out) located at its edge. The antenna is located on a flexible printed circuit board (FPCB 18), which includes an antenna terminal designed for electrical connections.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held the claim 1 as granted lacked IS over D2=US 2015/0036854.
AR1-3 were not admitted under Art 13(2) RPBA.
The board decided revocation of the patent.
An objection under R 106 was dismissed.
The proprietor also requested that some questions
The applicant also requested specific questions to be forwarded to the EBA.
“1. In the absence of exceptional circumstances, may a Board of Appeal create its own approach to inventive step deviating from the conventional problem-solution approach?
2. The ‘no objective technical problem’ approach cites G 1/19 as authority, for its reasoning that the lack of credible technical effect leads to the lack of a technical problem, with no limitations on the type of the inventions or exceptional circumstances that would lead to the application of such an approach. However, G 1/19 established the COMVIK approach as ‘a special application of the problem-solution approach to inventions that contain a mix of technical and non-technical features’ (G 1/19, Reasons 34) with a focus on the technical contribution of the distinguishing features. To what extent is this approach reconcilable with the interpretation and explanation provided in G 1/19?
3. Does ‘credibility’ of a technical effect have a different meaning than ‘plausibility’ of the evidence, as explained in G 2/21?”
The board refused to forward those questions to the EBA.
The proprietor’s point of view
Interpretation of the claim
The proprietor argued that, the size, thickness, structure and design of the components of the claimed “hearing aid” were limited to the respective specification as disclosed in the description and the figures of the opposed patent. The proprietor further argued that requiring further details to be incorporated into the claimed subject-matter would be contrary to the EPC.
Further late submission by the proprietor
During the OP, the proprietor further added a feature to the list of distinguishing features. In that regard, it argued that its submission regarding the disclosure in D2 of features was not an “amendment” but merely an “elaboration” or “continuation” of its existing appeal case.
The board’s decision
Interpretation of the claim
Referring to G 1/24, Headnote, the board concluded that the technical field of the skilled reader from whose perspective the present claims are to be interpreted is hearing aids using wireless technologies.
The board added that a claim should not be interpreted, based on features set out in embodiments of an invention, as having a meaning narrower than the wording of the claim as understood by the person skilled in the art, and referred to T 2027/23, catchword.
Hence, the specific sizes, designs and structures as reflected in the embodiments and in the figures of the patent specification as mere examples cannot be used to further limit the claimed subject-matter. This was confirmed at the end of the description with the statement “the scope of the claimed invention being only defined by the appended claims”.
The proprietor’s assumptions relating to size, thickness, structure and design of the components were thus is unfounded and contradicting the principles set out in G 1/24.
Specific limitations on the thickness of the claimed “FPCB”, which were addressed by the proprietor, are only presented as optional in the patent specification.
Late submission by the proprietor
The board considered that the proprietor’s new submission during the OP constituted an “amendment” of the proprietor’s appeal case under Art 13(2) RPBA. It was therefore not admitted.
Technical effect
Relying on G 1/24, the proprietor asserted that the skilled reader would interpret the differentiating features, in particular the expression “accommodating at least a part”, in the light of the patent description to relate to an “indentation” that is dimensionally commensurate with the “first terminal”, thereby ensuring that the technical effect of size reduction is credibly achieved.
During the OP before the board, the proprietor further refined this line of argument, stating that the skilled reader would understand the term “indentation” as meaning a “recess without going all the way through” and that the differentiating features provided the technical effects of reducing the physical size of the hearing aid and ensuring a “correct placement and alignment” of the “antenna” mentioned in a preceding feature.
Consequently, the proprietor formulated the OTP as “how to achieve a reasonably small size of the electrical assembly of the hearing aid while enabling a correct placement of the antenna on the PCB”.
The board was not persuaded that the alleged technical effects were credibly achieved by the claimed features over the whole scope of claim 1.
The phrase “at least a part” does not define the size or geometry of the part that is actually accommodated nor its relation to the size of the “indentation”. It does not require the “commensurate” fit or abutment that the proprietor alleges.
Regarding the proprietor’s reference to a “[correct] alignment”, claim 1 does not require the “first terminal” to be parallel to the “PCB surface” or flush with its edge.
The board could not discern which technical effect could in fact be credibly associated over the whole scope claimed. While the differentiating features are without doubt technical in nature, it is not apparent to the board which concrete technical effect these features credibly achieve in the specific context of the claimed subject-matter, see also “Case (ii)” of G 1/19, Reasons 33.
In the absence of such a credible technical effect, the introduction of the differentiating features into the hearing aid of D2 does not credibly contribute to solving a technical problem. If there is no technical effect, there is no technical contribution to the solution of a technical problem.
The board further noted that features providing no technical contribution are typically referred to as “arbitrary features” or, when viewed in the context of the change to the prior art, as “arbitrary modifications” of that prior art, which have generally to be considered obvious features. Hence IS was lacking.
To underline this point the board cited a series of older decisions which were confirmed by more recent ones.
The board noted in passing that national courts such also endorsed its point of view.
Comments
The present decision confirms that a distinguishing feature which does not credibly contribute to the solution of a technical problem, normally constitutes an “arbitrary modification” of the prior art which cannot support an inventive step. This principle applies independently of whether the feature is technical or non-technical in nature.
In T 1699/22, commented in the present blog, the proprietor was already faced with a lack of IS in the absence of a credible technical effect.
The present decision also confirms that G 1/24 does not allow to read in the claim a limitation only present in the description, and therefore implicitly disagrees with T 439/22 (“gathered sheet”).
Potential Question 1 to the EBA was unnecessarily provocative. The problem-solution approach is a tool to assess IS, and not defined in the EPC.
On the procedure
The patent bears the IPC class H04R 25/00 and the search has been carried out in H 04R. The ESR mention 4 documents of category X and 1 of category A.
D2=US 2015/0036854 bears, inter alia, the IPC class H04R 25/00. It is thus surprising that D2 has not been found during the search.
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