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.
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.