CASELAW - reviews of EPO Boards of Appeal decisions

T 2613/18 – Art 84 – Support by the description should correspond to the technical contribution to the art – Description and claims cannot be at odds

chat_bubble 2 comments access_time 4 minutes

Brief outline of the procedure

The application was refused by the ED and the applicant appealed the decision.

For the ED, claim 1 of each of a MR and an AR lacked inventive step. The board raised different objections.

The applicant requested that the appealed decision be set aside and that a patent be granted on the basis of the claims of the MR subject to the appealed decision or, alternatively, of one of five AR: AR I to IV filed with a response to the board’s communication under Art 15(1) RPBA20 and AR V filed during the oral proceedings before the board.

The present application relates to the random access procedure provided in an LTE system (=4G).

The main request

Claim 1 of the main request relates to “A method of performing a random access procedure between a mobile terminal and a network”, the method comprising a plurality of steps including two specific conditions.

This procedure is used when there is a signalling message or user data to be transmitted via the uplink by a mobile terminal that did not receive allocation of dedicated radio resources from the network side, or may also be used when the base station instructs the mobile terminal to perform a Random Access CHannel (RACH) procedure.

The random access procedure provided in the LTE system can be classified as a contention-based random access procedure (“contention case”) and a non-contention based procedure (“non-contention case”), based upon whether the random access preamble is selected by the mobile terminal itself or selected by the base station (i.e. the network). In the latter case, the mobile terminal receives information about the preamble to be used through explicit signalling from the base station.

The alleged advantage of the method described in Figure 10 and pages 15-19 of the description as filed is that undesired power consumption can be reduced in the contention case (compared with the random access procedures in the known LTE systems).

The proposed method addresses a very specific problem caused by the simultaneous application of at least two “active time” conditions, i.e. conditions 1 and 4, in the definition of the time period during which the mobile terminal should monitor the PDCCH, i.e. the “active time”, for the “contention case”.

The description includes with regard to the method concerned a definition of an active time for the contention case according to, at the very least, condition 1

The BA held that a claim which is inconsistent with the description is not supported by the description under Art 84. The requirement of “support by the description” reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported or justified (see e.g. T 133/85, Headnote 1; T 409/91, Reasons 3.3).

For the board, the claim is not limited to any mobile systems in particular, much less to LTE systems in which the random access procedures involve the specific steps and active time conditions explained in the present description

Those features, hence, cannot be considered to be implicitly disclosed in the claim by the mere mention of a “random access procedure between a mobile terminal and a network” or by the occurrence of the term “PDCCH”, which was notoriously introduced with LTE Release 8.

The fact that the disputed features might belong to the prior art does not make them any less essential.

Outcome of the case

The MR was not allowable for lack of support of the claims by the description.

AR I-V were not admitted under Art 13(2) RPBA20.

Even if arguably a new objection had been raised in the communication under Art 15(1) RPBA20 as claimed by the applicant, the amendments proposed did not overcome the objections of lack of support under Art 84 and were even partly ambiguous.

The appeal was thus dismissed.

Comments

A slightly different, but no less interesting view, on the need for the claims to be supported by the description.

The board made abundantly clear that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported or justified. T 133/85 and T 409/91 are important decisions and in spite of the time since their issuance are still very actual and by no means obsolete. The catchword of T 409/91 is also worth reading, especially from the second sentence onwards.  

The concept of contribution to the art of a claimed invention is even mentioned in G 1/03, see Reasons, Point 2.5.3.

Essential features have to be found in the independent claim defining the scope of protection. Conversely any feature found in an independent claim is to be considered essential.

This is nothing new under the sun and can be equated by the requirement of a one-to-one correspondence between claims and description.

In any case it implies that claims and description cannot be at odds.

The claim cannot encompass more than what has been actually disclosed, cf. the present case. Conversely the description has to be adapted to the claims, which did not happen in the pemetrexed case, in spite of what is said in T 1989/18, T 1444/20 and chores of representatives may as well say on this topic. 

For instance, claim-like disclosures left in the description or optional features also left in the description when the corresponding features are part of an independent claim cannot be considered corresponding to the technical contribution to the art of a claim, which might for the rest be perfectly clear as such that is without any recourse to the description.

https://www.epo.org/law-practice/case-law-appeals/recent/t182613eu1.html

Share this post

Comments

2 replies on “T 2613/18 – Art 84 – Support by the description should correspond to the technical contribution to the art – Description and claims cannot be at odds”

Daniel, and in the aftermath of the heated debate about what degree of “conformity” between the claim and the description is required by Art 84 EPC, it’s good of you to post this Decision and point to this Board’s opinion what is meant by Art 84 and “support”.

You take it as a vindication of your opinion, that if the description discloses more than the claimed contribution to the art, that surplus disclosure must be excised, or labelled as “not the invention”. But your adversaries in the heated debate will, I suspect, take this decision as a vindication of their opinion as to what Art 84 means by “support”, namely an enabling disclosure wide enough and deep enough to legitimise the grant of exclusive rights on the invention defined by the claim. As they say in the USA, if you disclose more than you claim, you dedicate that extra disclosure to the public but you don’t render your claim unclear. Or, in other words, Art 84 is to make sure that i) the claim is clear enough and ii) there is adequate support for its full scope. Once that threshold level of “support” is present, however, Art 84’s job is done. If there is disclosure of more in the description, that is a bonus for the public and how the patent system is supposed to work. I don’t see how you can get out of the reasoning of this decision any more “support” for your stance on “conformity” That said though, I’m with you that it is in the general interest that unambiguous and explicit contradictions between the description and the claims be weeded out before the application goes to grant. That is a far cry though, from what some Examiners these days insist upon, imagining that they are doing no more than what The Guidelines demand.

Any thoughts in reply? I fear you might be in danger of being labelled as that legendary man with the hammer (for which everything encountered looks like a nail).

DXThomassays:

Dear Max Drei,

I do not fundamentally disagree with you.

If there is more disclosed than what is claimed I would not necessarily consider that there is an inconsistency between claims and description. This could be clarified, but should not warrant a full deletion.

What I am after are statements in the description which cast doubt about the scope of the claims.

This is the case when the monopoly afforded by the claim is much more than what is disclosed.
Such a claim might be perfectly clear, but is not supported by the description.

Another case is when a statement in the description attempts to give a broader scope to a perfectly clear claim.
Such a claim is also not supported by the description.

I do not use a sledge hammer to kill a fly. My hammer is very dainty and only aims at what, in all reason, is not tolerable.

That some examiners are adopting a very pedantic attitude in this respect is not acceptable either.
I do not support (sorry for the pun) such an attitude.

That in the past, some divisions did not care at all about adaptation of the description (for purely production purposes and following oral instructions of some managers) is also not acceptable.

However, as often at the EPO, the pendulum did not stop at the golden centre, but has swung in the opposite direction.

A bit of common sense on both sides should help.
But I cannot accept the stance that the description and the claims can be left with inconsistencies.

True inconsistencies have to be queried. Can you agree on this?

Leave a Reply

Your email address will not be published.