EP 3 080 765 A1 originally filed as PCT/GB2014/052846 relates to a method and server for providing fare availabilities, such as air fare availabilities.
Brief outline of the case
The ISR established by the EPO contained a statement to the effect that the subject-matter claimed was such that no search was required. The IT used was conventional and was used to carry out a non-technical method, so that no documentary evidence was needed.
On this basis, the application was refused for lack of IS.The applicant appealed.
The board set aside the ED’s decision and remitted the case for resumption of examination proceedings, including a search.
The ED’s position
Independent system claim 13 of the MR was refused for a lack of IS over a general purpose computer system which the ED considered to be notoriously known.
The ED argued in view of claim 1 of AR2 which it considered to be more limited than claim 13 of the MR and stated that the same objections apply mutatis mutandis to the subject-matter of the independent claims of the MR and AR1.
The ED considered that claim 1 of AR2 defined the technical features of a system including a Distribution System server, a computer, a computer data store and an inferring server and one or more processors of the inferring server, and stated that these features did not go beyond features of a general purpose computing system which it considered to be notoriously known.
The applicant’s point of view
The applicant argued in the written proceedings that a general purpose computer system cannot be considered to represent the CPA. A suitable starting point for the assessment of inventive step was a Distribution System server which was referred to in the application as filed.
During OP, the applicant criticized the contested decision for referring to notorious knowledge without proving such knowledge by a documentary reference.
For the applicant, a Distribution System server as claimed cannot be regarded as “notorious”, as it represents a server which implements specific functions and serves a specific purpose.
The applicant stated, in particular during OP, that the cited parts of the description were not necessarily admissions of CGK.
The applicant argued that the computer-implemented method of claim 1 of the MR was distinct from a Distribution Server system by the specific method of inferring which fare classes are available in order to be able to properly assess whether this alleged difference achieves the technical effect of saving storage capacity in the caching of results.
Hence, documentary prior art about the technical functioning of a Distribution Server system at the technical level of storage management must be at hand.
The board’s decision
In the board’s view this case, like many in this field, is all about drawing the line between non-technical and technical subject-matter. This is of critical importance since as stated in the COMVIK decision T 641/00, only features with technical character can support the presence of IS.
For a correct application of the COMVIK approach, the CPA must be identified first.
An objection of lack of IS without documented prior art is only regarded as allowable where the objection is based on “notorious knowledge” or indisputably forms part of the CGK.
The Case law of the BA, 10th edition, IV.B.4, page 1171, sets out that an ED should normally not refuse an application for lack of IS if the invention as claimed containes at least one technical feature which was not notorious. The term “notorious” had to be interpreted narrowly.
The board held that a client-server-computer-system at the general level at which it is referred to in the present application may be regarded as “notorious”. Also the description of the present application builds on such knowledge when disclosing the invention.
There are no specific technical explanations found in the application documents about how a server works, how a client works and how those communicate. The details of the invention are disclosed under the assumption that a client-server-system was known in the art and a skilled reader would know how such a general purpose client-server-architecture works on the technical level required for understanding the invention.
The board observed that, if a specific client-server-architecture was of importance, the applicant would inevitably run into problems of sufficiency of disclosure, antecedent basis and enablement, since the description is silent with regard to the requirement of a specific client-server-structure.
In contrast to US Patent Law, the EPC does not know the principle of admitted prior art. According to the Case law of the BA, 10th edition, I.C.2.7, bridging paragraph, pages 83 and 84, the acknowledgement of prior art in a patent application cannot longer be relied upon if a patent proprietor resiled from an acknowledgement of that prior art.
Such a Distribution System server could therefore no longer be considered to indisputably form part of CGK.
The board noted that it only had at its disposal the general statement that such a system was “notorious”. No documents were cited and no documents can be found in the search report.
The bBoard was therefore not able to assess the applicant’s argument regarding savings in storage capacity in order to take a final decision with regard to IS.
As a result, after considering all the relevant circumstances of the case at hand, the board, considered it appropriate to remit the case to the ED for further prosecution.
Comments
As the applicant claimed the technical effect of savings in storage capacity, the board did not have any choice but to remit to the ED to carry out a further search.
Examination is progressing on the basis of prior art cited by the ED, but the ED’s objection is still lack of IS, but with corresponding prior art. D1=US 2003/105653 is considered as CPA.
The board’s argument that the applicant resiled from an acknowledgement of prior art is not really convincing, as it does not seem that the applicant has actually done so. The applicant simply said that its Distribution System server could not be considered as being notorious in view of the savings in storage capacity.
That, in view of the argumentation of the applicant, the case had to be remitted is not at stake.
Prior art acknowledged in the application
Starting with T 22/83, there is a large number of decisions considering that prior art acknowledged in the description ought to have been publicly available in order for it to be taken into account for the assessment of inventive step.
According to these decisions, the applicant/proprietor can be allowed to amend the introductory part of the description in order to rectify an “erroneous presentation” of prior art by the applicant.
In T 1227/10, the board held that the deletion of original figure 1 labelled as prior art and of the corresponding part of the description in the original application has modified the application in a way that the granted claim 1 includes subject-matter which was excluded from the originally filed invention as it would have been understood by a skilled person on reading the whole original application on the date of filing. The fact that after the date of filing a disclosure might perhaps be found to be wrong was in this respect irrelevant.
T 1227/10 might be a one-off decision, but it has the merit to exist, and it cannot be said that it lacks any logic. If the applicant declares, on its own volition, that specific features are known in the art, such a statement can be considered as a disclaimer, irrespective whether those features have been public or not.
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