The application relates to a key word detection device that detects a search key word from a target image in order to perform a search with a search engine on the internet, and a control method and a control program for the same, and a display apparatus.
The present decision is interesting under two aspects. The criteria of convergence and the necessary adaptation of the description.
In this post we will deal with the first aspect.
Brief outline of the case
The SESR quoted 1 X,D and 2 X documents for claims 1-13.
The ED refused the application for lack of compliance with Art 83, 84 and 56.
The ED (2.1.1) did not admit the MR in the procedure because “the outstanding objections under Art 84 and 56 of the previous MR […] had not been resolved“, and, moreover, it was not convergent in view of “the last substantially examined request, i.e. AR 1”.
Claims 1 and 10 of AR1 were lacking clarity but also lacked is over D1=JP 2010-039647 cited in paragraph 13 of the application.
Claims 1 and 2 of AR 2 were lacking clarity and sufficiency. The same applied to claim 1 of AR3.
The applicant appealed the refusal.
In appeal, the MR and AR1 request were identical to those on which the decision is based. Three further AR were filed when entering appeal.
In its communication accompanying a summons to OP, the board informed the applicant of its provisional opinion regarding the various requests. Claim 1 of the MR and of AR1 and 2 was, inter alia lacking IS. Claim 1 of AR 3 and 4 was found to be inventive.
The Board however noted in its communication “that a correspondingly amended description, which provides a description of the invention consistent with the matter for which protection is sought, as defined by the claims, has not yet been filed“.
The applicant informed the Board that it would not be attending the OP, and then requested “that the Board of Appeal decides on the state of the file without remitting the case to the first instance”.
The appeal was dismissed and the refusal confirmed.
Admissibility of the MR
The board noted that decision did not reproduce the outstanding objections or indicate where they are to be found.
From the file, the board concluded that the ED considered that their objections raised in the summons to OP and confirmed in the telephone conversation were not overcome by the new MR.
The ED also did not explain why the amendments and the appellant’s pertinent counter-arguments were, at least prima facie, insufficient to overcome the objections.
The ED did not explain why the MR and the AR did not converge and why that alleged lack of convergence was detrimental to procedural economy.
Convergence of requests
For the board, the convergence criterion is not a sufficient reason for non-admittance, but only an indicator that procedural economy may be affected. Whether this is actually the case depends on the circumstances of the case, which, therefore, must be considered and balanced.
The board’s view was that the grounds invoked by the ED are not reasoned as required by R 111(2), so that the non-admittance decision under R 137(3) could not stand.
The lack of sufficient reasoning also amounts to a substantial procedural violation, which is however not causal for the appeal in view of the fact that the grounds invoked by the ED to refuse AR1 obviously also apply to the main request. As the appeal was overall not successful, the appeal fee could not be reimbursed.
If a request is not admitted because earlier objections are not overcome, R 111(2) requires that these earlier objections be made explicit in the decision.
Non-convergence of requests is, on its own, not a sufficient reason for non-admittance. It must be reasoned that and why non-convergent requests affect procedural economy in view of the particular circumstances of the case.
I would allow myself to add that convergence in first instance should only apply to late-filed requests and not to requests filed before an OP, be it in examination or in opposition.
In appeal, the situation is different and the boards do not allow the applicant/proprietor to pick and mix various features in the hope that one of those combinations would lead to a patent or allow maintenance in amended form.