Tuesday 19 June 2012

T 2334/11 – Expect The Unexpected


This is an appeal against the refusal of the application under consideration by the Examining Division (ED).

Claim 1 of the main request read (in English translation):
Device for detecting radiation signals comprising a first detector (5a), a second detector (5b), a first filter (11a) and a second filter (11b), wherein
  • the first and second detectors (5a, 5b) are provided on a first chip (1) and
  • the first and second filters (11a, 11b) are provided on a second chip (2), and
  • the first chip (1) and the second chip (2) are connected together in a hermetically sealed manner, in particular by means of a wafer-bonding process,
characterised in that a heating element (Heizleiter) for carrying out a self-test of the detectors is provided in the area of the detectors (5a, 5b).
The ED had justified the refusal by pointing out that the amended claims were not admissible because they did not comply with R 137(5) [according to which amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept, nor to subject-matter not searched in accordance with R 62a or R 63].

The Board did not consider this objection to be justified:

*** Translation of the German original ***

Main request

[2.1] The preamble of claim 1 according to the main request, which is identical with the main request on which the decision was based, corresponds – apart from minor linguistic amendments – to claim 1 of the originally published version (hereinafter “original claim 1”). In the course of the examining proceedings, original claim 1 was completed by adding the feature forming the characterising portion of the claim on file, according to which a heating element for carrying out a self-test of the detectors is provided in the area of the detectors.

The characterising feature of claim 1 is supported by the description of the application as published […] within the meaning of A 123(2) and is – as correctly stated by the ED in its decision – only disclosed in the description and not in the features of the claims in the published version.

[2.2] In its decision the ED has expressed the opinion that the amendment of claim 1 explained above did not comply with the requirements of R 137(5), so that the amended claim according to the main request was not admitted pursuant to R 137(5).

R 137(5) provides that amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. In the present case, the Board cannot endorse the application of R 137(5) by the ED, for the following reasons:

[2.2.1] First of all, the application of R 137(5) requires that the claims as amended relate to unsearched subject-matter.

Even if the impugned decision does not state expressis verbis why the ED considered the subject-matter of amended claim 1 to be unsearched, the explanations offered in the reasons for the decision clearly show that the ED based its reasoning on the fact that the characterising feature of the claim was taken from the description and was not contained in the original claims, on which the search was based, so that – from the point of view of the ED – the amended subject-matter was not covered by the extent of the search.

However, that a feature has not been searched does not necessarily follow from the mere fact that a feature of was not contained in the request on which the search was based (cf. T 708/00 [4], T 377/01 [3.1] and T 789/07 [5.2]). A 92(1) EPC 1973 – which was applicable at the time of the search (in the case of an international application, together with A 157 EPC 1973) – requires that the European search report be drawn up “on the basis of the claims, with due regard to the description and any drawings”, and the Guidelines for examination in the EPO – both in the then applicable and in the present version – explain that “[i]n principle […] the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended” (Guidelines, B-III 3.5)

In the present case original claim 1 was directed at a device for detecting radiation signals comprising two detectors on a first chip and two filters provided on a second chip, wherein the first chip and the second chip are connected together in a hermetically sealed manner (see the preamble of present claim 1) and the pending amended claim, in addition of the features of original claim 1, further contains the feature that a heating element for carrying out a self-test of the detectors is provided in the area of the detectors (see the characterising part of present claim 1). The passage […] of the description on which the characterising feature of amended claim 1 is based reads as follows:
“According to the invention, a heating element is also provided in the area of the detectors 5a, 5b. […] Such a heating element is provided in a device according to the invention so as to allow for a self-test of the sensor or the device, respectively. The heating element creates a short-time heat pulse on the thermally decoupled surface of the detector 5a, 5b.”
One can see from these explanations in the description that the performance of a self-test of the detectors by means of a heating element provided in the area of the detectors is directly linked to the originally disclosed invention and indeed corresponds to a particular embodiment or development of the detector device defined in original claim 1, and in particular of its detector arrangement, and that this embodiment or development was clearly disclosed as such in the description. It follows that at the time of the search, taking due regard of the description, it was reasonable to assume – and in view of the prior art classified under category “X” (i.e. “particularly relevant”) for all claims, even to expect – that the claimed subject-matter could be directed to such a particular embodiment or development after an amendment, so that the search should have encompassed subject-matter amended accordingly.

It follows that – in the Board’s opinion – the subject-matter of the amended claim has to be considered to have been searched within the meaning of R 137(5), even if the feature added to the claim de facto has not been searched – as the ED believes (cf. T 789/07 [9,12]).

For this reason alone, the Board cannot endorse the application of R 137(5) by the ED.

[2.2.2] When examining the second requirement laid down in R 137(5) the ED has inter alia expressed the opinion that the subject-matter of original claim 1 was not novel over document US-A-5721430 and that, as a consequence, the subject-matter of original claim 1 did not contain “any particular technical features” and that the particular technical feature of amended claim 1 did not correspond to any of the particular technical features of the originally filed dependent claims and solved a technical problem that was completely independent from the problems solved by the original claims, so that the subject-matter of amended claim 1 did not combine with the originally claimed invention to form a single general inventive concept.

However, the Board cannot endorse this approach because when an original claim is amended by adding a feature, in principle it has to be examined when R 137(5) is applied whether the added feature can be subordinated (unterordnen) to the original general inventive concept as it emerges from the originally filed claims and the description (see T 1640/07 [5]), and not – as assumed by the ED – whether the originally claimed subject-matter and the subject-matter as defined in the amended claim could bear up against an a posteriori assessment of unity of invention (cf. T 708/00 [5-8, 16] and T 274/03 [6]). If such an a posteriori approach (i.e. an approach taking into account the patentability of the originally claimed subject-matter with respect to the prior art found through the search) were to be used when R 137(5) is applied, this would result in a situation where, when, for instance, original claim 1 is not novel with respect to the prior art – as was the opinion of the ED in the present case – any limitation of the originally claimed subject-matter on the basis of an unsearched feature would have to be objected to immediately because the lack of novelty of original claim 1 inevitably would make it impossible to establish an inventive concept connecting the amended claim and the originally claimed invention. However, according to the established case law of the Board of appeal this would neither make sense nor would the intended purpose of R 137(5) be served (cf. T 708/00  [4-8, 16], T 274/03 [4-6], T 915/03 [4], T 141/04 [5.2-3], und T 1394/04 [4]). Rather, the case law concerning the applicability of R 137(5) (former R 137(4) and R 86(4) EPC 1973], respectively) has inter alia followed (sich orientieren an) [the approach according to which] although amendments of claimed subject-matter which considerably alter the essence or nature (das Wesen oder die Natur) of the invention – in particular by replacing or omitting claim features (see T 442/95 [5] and T 274/07 [3] – may give rise to objections under R 137(5), the mere limitation or specification (Konkretisierung) or completion of a claim via the insertion of a feature disclosed in the originally filed application – e.g. in order to overcome an objection of lack of clarity or novelty or inventive step – do not, as a rule, lead to a lack of unity with the originally claimed invention within the meaning of R 137(5) (cf. T 708/00 [17], T 377/01 [3.1], T 274/03[5-6], T 915/03 [4.1], T 141/04 [5.4-6], T 978/04 [3.3-4], T 1394/04 [3-7], T 372/05 [2.2], T 1719/06 [3] and T 264/09 [4.2]; see also the Guidelines, C-VI 5.2-ii), first §).

In the present case the feature that has been added to the claim is not a feature that alters the essence or the nature of the originally claimed invention but – as already explained under [2.2.1] above – a limitation of the originally claimed subject-matter to a particular embodiment or a development, respectively, of the detection device  defined in claim 1, and in particular its detector arrangement, which had already been disclosed as such in the description and which can clearly be subordinated to the original general inventive concept disclosed in the originally filed application.

[2.3] Therefore, the Board comes to the conclusion that amended claim 1 according to the main request does not fulfil either condition required for the application of R 137(5) and that, as a consequence, the refusal to admit the amended claims according to the main request pursuant to R 137(5) was unjustified. […]

First auxiliary request

Claim 1 according to the first auxiliary request has been completed by the addition of the feature of original dependent claim 7 (according to which the device for detecting radiation signals is provided in a device for measuring the concentration of a substance in the optical path of a radiation source) to claim 1 of the main request.

In its decision the ED expressed the opinion that amended claim 1 according to the first auxiliary request could not be admitted pursuant to R 137(5), for the same reasons as given for the main request.

As already explained under [2] above, the Board is of the opinion that the refusal to admit the amended claims according to the main request under R 137(5) was unjustified. The fact that claim 1 according to the first auxiliary request now contains the feature of original dependent claim 7 does not change this conclusion. It follows that the refusal to admit the amended claims according to the first auxiliary request under R 137(5) was unjustified, too.

[4] It follows from what has been said above that the decision of the ED has to be set aside. However, as the amended claims according to the main and auxiliary request have not been the object of substantial examination – and might require a supplementary search (cf. T 274/03 [6], T 141/04 [6] and T 789/07 [12], as well as the Guidelines, C-VI 5.2-ii) first §) – it is appropriate to grant the request of the appellant and remit the case to the ED for further prosecution.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

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