EP 4 042 715 A1, published as WO 2022/090959 A1, relates to a headrest provided with a system for two way sound transmission by bone conduction.
To mitigate the acoustic feedback, known as “Larsen effect”, at least one layer of “sound-absorbing material”, such as plastic, is provided between a vibration-generating speaker (5) and a vibration-sensitive microphone (7) on a shared structural substrate, a common PCB (3).
Brief outline of the procedure
The ED refused the application since it deemed the MR and AR1 not to be allowable under Art 56 and 123(2) respectively.
Claim 1 of the MR discussed during the OP before the ED related to a “Headrest (10) for vehicle seats…..”.
Claim 1 of AR1 discussed during the OP before the ED related to a “Method of manufacturing a headrest (10) for vehicle seats…..”.
The applicant appealed.
With its written reply to the board’s communication under Art 15(1) RPBA, the applicant filed a “corrected MR”, replacing the phrase “in particular headrest for vehicle seats” in claim 1 with the wording “headrest for vehicle seats” and framed this submission as a correction of an error under R 139.
Previously the applicant had filed a “former MR” comprising the statement “in particular headrest for vehicle seats”.
Irrespective of the admissibility of the “former MR”, the board considered the latter not in accordance with Art 56.
Eventually, the board confirmed the refusal.
Paraph [0109] of the original disclosure reads: “In particular, the invention may be applied both to headrests for car seats, and to headrests for seats of other types of vehicles (trains, buses, airplanes, etc.)”.
The applicant’s point of view
The applicant argued that the filing of the broader “former MR” with the statement of grounds of appeal (SGA) was simply a mistake. It submitted that neither the notice of appeal nor the SGA referenced any replacement of the claim set or any amended claim wording.
Furthermore, the applicant pointed out that the name of the attached file in EPO Form 1038 explicitly recited “claims as currently pending“. Consequently, the applicant argued that it should have been undoubtedly clear that the intention was to file the MR that had been discussed before the ED during the OP.
The board’s decision
Under R 139, second sentence, if a request for correction concerns the claims, the “correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction”.
According to the established jurisprudence of the Boards of Appeal, see G 3/89, Reasons 5 and 6; G 11/91, Reasons 6, a two-step approach applies in this regard.
It must first be established that it is obvious that an error is in fact present in the document filed with the EPO, the incorrect information having to be objectively recognisable by the skilled reader using their common general knowledge. Secondly, the correction of the error must be obvious.
The applicant failed to convince the board that an error was objectively recognisable to begin with.
A review of the applicant’s substantive argumentation in the SGA reveals that its entire defence revolves around the following technical points:
- The ED’s misinterpretation of document D1 regarding the placement of the “sound-absorbing material”.
- The technical implications of the “Larsen effect” and the conventional solutions to physically separate the bone-conduction microphone and speaker as much as possible.
- The non-obviousness of mounting both the microphone and the speaker on a “same printed circuit board”.
Crucially, nowhere in the SGA does the applicant base any argument on the headrest being exclusively limited to a “headrest for vehicle seats“. The applicant neither stated that claim 1 was restricted to overcome a specific objection, nor did it rely on the specific vehicle-seat environment to establish an IS.
Because the applicant’s technical arguments apply perfectly and seamlessly to the broader claim wording, “in particular headrest for vehicle seats”, that was actually filed, the skilled reader reviewing the SGA alongside the claims would find a coherent, self-consistent appeal case.
Furthermore, the phrase “claims as currently pending” used in EPO Form acts merely as a generic title that however fails to alert anyone to an accidental file swap, in particular in view of the explicitly recited wording of claim 1 on page 3 of the SGA including the expression “in particular headrest” which the appellant presented as the MR that had been maintained throughout the examination proceedings
Thus, to even suspect an error, the skilled reader would have to step outside the four corners of the SGA, compare the attached claims with the claim sets refused by the ED and notice the discrepancy.
Even then, the discrepancy does not inherently present itself as a clerical mistake. Instead, it cannot be excluded that it was intended to be an unannounced amendment representing a broadening of the subject-matter, exactly as it was perceived by the board in its preliminary opinion.
Moreover, it is not uncommon for an applicant to amend its claim requests in appeal proceedings, e.g. by attaching a new claim set to the SGA. As a result, the applicant’s filing in this regard was not clear and could be plausibly understood as an intentional act.
As the presence of an error is not immediately evident here, the stringent requirements for a correction under R 139 are not met, and the board refused the applicant’s request for correction under R 139.
Comments
TThe present decision might look rather harsh.
However, in view of the circumstances the decision can be held as correct when the board holds that an error was not immediately apparent.
The present case illustrates that the notion of party disposition, cf. Art 113(2), can also be detrimental to a party.
The present decision is a warning to any representative to double check the requests filed in appeal.
However, one wonders why the applicant did not refer to the statement in paragraph [109] of the original disclosure. In this statement it was clear that the present invention was, in particular, applied to headrests for car seats. The broader “former MR” was not infringing Art 123(2), although it could be held as an amendment under Art 12(4) RPBA, and hence not be admitted.
The board could nevertheless not have admitted the “corrected MR” under Art 13(2) RPBA, but this would not have changed the outcome of the procedure. A detour via R 139 was not necessary.
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