EP 3 468 222 B1 relates to a headphone. It aims at providing a headphone that does not completely shield the wearer off from the outside acoustic environment.
Brief outline of the case
For the OD, claim 1 as granted lacked N over D1. All AR on file were not allowable under Art 54, 56, 84 and 123(2). The proprietor appealed.
Contrary to the OD, the board found claim 1 novel, but lacking IS over D1. All the other AR, AR1, 2, 2A, 3 to 12 and 12A were not allowable under Art 56, 84 or 123(2). AR1mod to 7mod and 9mod to 12mod were not admitted under Art 13(2) RPBA.
For the board the difference with D1 lay in feature (d1): the high-frequency acoustic driver is carried by the support structure such that the high-frequency acoustic driver (122) is located closer to the user’s ear than the low-frequency acoustic driver (110).
The case is interesting in view of the change of objection from lack of N to lack of IS and the refusal .of the board to remit once it held N given, as well as the reasons for not admitting AR1mod to 7mod and 9mod to 12mod.
In the present entry we will discuss the non-admissibility of AR1mod to 7mod and 9mod to 12mod.
The proprietor’s point of view on the non-admissibility of certain AR
The proprietor filed AR 1mod to 7mod and 9mod to 12mod in response to the board’s communication under Art 15(1) RPBA.
It did so since the board had introduced “a variety of different new lines of attacks and arguments“. It particularly found fault with the board’s claim interpretation. In this respect, when addressing the board’s claim interpretation of claim 1 as granted, the proprietor mentioned in its response, inter alia, that this interpretation was one “of a sophist playing with words with a mind desirous to misunderstand, of the type appearing in one of Plato’s dialogs“.
The board’s decision on the non-admissibility of certain AR
The assertion comparing the board to a “sophist playing with words” is, of course, not only unbefitting but also does certainly not help the proprietor in its case.
Such an assertion says more about the overly broad claim wording than about how the board has interpreted the respective claim. In that regard, the board reiterated its established position on claim interpretation.
As stated in T 10/22, Reasons 2.3, the frequently invoked concept of “a mind willing to understand” simply means that the skilled reader, when considering a claim, should rule out interpretations that are illogical or that do not make technical sense. This understanding of the concept, however, cannot be disregarded based on what a party might find convenient in specific circumstances.
The board recalled its position on the purpose of a board’s preliminary opinion contained in its Art 15(1) RPBA communication. As the board observed in T 2271/18, Reasons 3.3, a clear and detailed preliminary opinion is intended to facilitate thorough preparation for the imminent hearing and a focused response from the parties.
It is not an invitation to introduce new submissions, especially not submissions that are accompanied by unsubstantiated assumptions on the board’s claim construction comparing it to a way of argumentation of ancient Greek philosophers.
The board did not accept that it introduced “new lines of attack” in its communication. It may well have given “new arguments” which relate to the interpretation of the claims but the propriertor failed to demonstrate that this does, as such, constitute “exceptional circumstances“.
The board therefore considered the reasons provided by the proprietor regarding the admittance of AR 1mod to 7mod and 9mod to 12mod not to justify the presence of “exceptional circumstances” within the meaning of Art 13(2) RPBA. Hence, the board decided not to admit these AR into the appeal proceedings.
Comments
A representative should never forget that when it wishes, from a deciding body, a positive decision for his client, it better not starts antagonising the latter.
Comparing the board, or any deciding body of the EPO, to a “sophist playing with words“, is a best ill-advised, even with a reference to Plato’s dialogs.
Admissibility of late filed requests at the third level of convergence is a discretionary decision of the board. There is ample case law on this tpoic, even if some decisions are difficult to follow.
In order to have as much discretion in one’s favour it does not appear very wise to tell the board, or any deciding body at the EPO, that it is willingly misunderstanding the claims, when this is manifestly not the case.
Even under the previous RPBA, case law made abundantly clear by the boards, that a communication from a board is not an invitation for further submissions, especially in the form of AR.
Translating an old German say: as you call into the forest, it echoes back!
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