EP 2 729 907 B1 relates to on demand production of electronic devices accessories.
The patent concerns a method for producing custom protective films, such as screen protectors, at retail locations using digitally stored cutting templates.
There are two ways for receiving the template of a protective film which can be customised to the consumer needs.
In a first scenario, the “push” scenario, a template is pushed to the retail location, and the customising of the template is carried after its receipt at the retail location. In another scenario, the “pull” scenario, the template corresponding to the customer’s order is retrieved directly from the database, reducing the need for subsequent customisation after receipt.
Claim 1 as granted provided for customisation in both scenarios, i.e. combined the push and pull embodiments.
Brief outline of the case
The patent was opposed by no less than 5 opponents, and a third party filed observations during opposition.
In view of the combination of the two embodiments, the OD decided that claim 1 as granted infringed Art 123(2) due to the combination of the push and pull scenarios. The same applied to AR1-15. The patent was thus revoked.
In appeal the board confirmed the infringement of Art 123(2) of claim 1 as granted and of former AR-15 resubmitted as AR2-16.
AR1 was not admitted under Art 13(2) RPBA. AR1 was allegedly limited to the push scenario.
The proprietor’s point of view on claim 1 as granted
The proprietor argued that it was clear from the disclosure as a whole that the template could be customised, irrespective of the manner in which it was received (push or pull). The proprietor cited in particular paragraphs [0021], [0022], [0031], [0055], [0128], [0140], and [0158] of the patent (which are unamended with respect to the application as filed) in support of this.
The proprietor also cited decision T 1762/21 as an authority that it was permissible to separate features from a disclosed combination if those features were not inextricably linked. Since it did not matter technically for the customisation whether the template was pushed or pulled, the customisation and the push distribution in Figure 7 were not inextricably linked. Therefore, the customisation could be claimed in combination with the pull distribution system in Figure 8.
The board’s decision on claim 1 as granted
While the paragraphs cited by the proprietor mention push and pull as possible methods of distribution, as well as customisation in general, none of them refers to the customisation of a received template at the retail location. For example, paragraph [0022] refers to the customisation of the product rather than of the template.
According to the case law of the boards. a feature may be extracted from a particular embodiment and incorporated into a claim, provided that it is not inextricably linked with the other features of that embodiment and that the overall disclosure justifies the generalised isolation of that feature.
This line of case law does not support combining a feature taken from one embodiment with features taken from another embodiment in the absence of an indication that such a combination is envisaged.
In any event, customising the template after its receipt is technically more consistent with the push scenario than with the pull scenario.
Combining the customisation disclosed in the “push” embodiment with the “pull” distribution embodiment results in subject-matter extending beyond the content of the application as filed.
The proprietor’s point of view on the admissibility of AR1
The proprietor argued that AR1 should be admitted into the appeal proceedings because it specified that the on-demand distribution system was used as a “push” distribution system, thereby overcoming the objection under Art 123(2). The proprietor further submitted that the amendment was straightforward and did not raise any new issues.
The proprietor also argued that exceptional circumstances justified the late filing of the request. In particular, it submitted that the relevant case law on the assessment of added subject-matter had evolved since the filing of the appeal.
According to the proprietor, the assessment had to be based on a holistic approach that took the application as filed as a whole into account. It therefore argued that it should have been permitted to file amendments reflecting that approach.
The board’s decision on the admissibility of AR1
The board did not consider that exceptional circumstances justified the late filing of AR1.
The objection to the combination of features relating to the push and pull versions had already been raised during the opposition proceedings and formed part of the reasons for the decision under appeal.
The proprietor should therefore have addressed this objection by filing appropriate amendments together with its statement of grounds of appeal. Moreover, the board expressly drew attention to the issue in its communication under Art 15(1) RPBA, yet the proprietor chose not to react. In these circumstances, waiting until the OP to file an amended request was not justified.
The board did as well not accept the proprietor’s argument that a change in the case law concerning the assessment of added subject-matter constituted exceptional circumstances. The board was not persuaded that the relevant case law has changed in the manner alleged. Consequently, the amendment could and should have been filed at an earlier stage of the appeal proceedings.
As regards the proprietor’s submission that the amendment was straightforward, the board was likewise not persuaded.
Although the amendment specifies that the on-demand distribution system is used as a “push” distribution system, it must be assessed in the context of the claim as a whole. In particular, the claim continues to suggest a “pull” distribution scenario.
It was therefore not immediately apparent that the amended claim now corresponds to the embodiment of Figure 7 or that the amendment straightforwardly overcomes the objection under Art 123(2). The amendment therefore required substantive assessment and cannot be regarded as merely trivial.
Comments
Admissibility of AR1
It is to be noted that in the annex to the summons to the OP before the OD, the latter had already queried the combination of the push and the pull embodiments.
The board was thus quite generous went it said that the proprietor should therefore have addressed the objection under Art 123(2) by filing appropriate amendments together with its statement of grounds of appeal.
For most of the boards, and quite rightly, not filing a corresponding request during opposition would have been enough to not admit AR1 under Art 12(4) RPBA. Waiting to get the opinion of the board to file an AR was thus way to late.
It was at least naïve for the proprietor to allege that, when it is possible to delete D from the combination ABCD, two distinct embodiments could be combined. The two topics have nothing in common.
Holistic approach when it comes to added matter
In spite of the referral G 1/26, it is doubtful that a holistic approach will be accepted by the boards when it comes to added matter. All decisions applying G 1/24, but T 439/22-2 do not go in this direction.
See for instance T 2488/22,commented in the present blog. The board was thus rightly not persuaded that the relevant case law has changed in the manner alleged by the proprietor.
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