T 0580/03 21-02-2006

1. The appeal is admissible.

2. Late-filed document

2.1 Document O7 was submitted by the opponent with a letter dated 17 January 2003, i.e. after expiration of the nine-month opposition period.

In the appeal proceedings, the patent proprietor requested with a letter dated 15 January 2004, that this document be disregarded as late-filed and prima facie not relevant.

2.2 In the contested decision document O7 was analysed in detail and its disclosure compared with the subject-matter of claim 1 of the patent in suit (cf. page 19, last paragraph to page 20, third paragraph). In fact, it appears from the opposition file that this document was admitted into the proceedings by the opposition division without any objection being raised by the patent proprietor.

2.3 Under these circumstances, the Board considers that it has no power to put into question the admissibility of O7 and disregard a document which constituted part of the prior art assessed in the contested decision.

3. Added subject-matter

3.1 It is not in dispute that the application as originally filed does not explicitly disclose a "system for determining road traffic conditions" comprising "a wireless traffic monitor" as recited in claims 11, 16 and 18 of the patent as granted.

3.2 According to the application documents (cf. published application: column 4, lines 41 to 43): "At the heart of wireless network 20 is wireless switch 50 that monitors and coordinates the operations of the base stations 1 - 12". The wireless switch comprises, inter alia, a processor 55 which includes a CPU 101 and a storage area 100 containing "registration and cell counters 104 and 105 and registration and cell timer complexes 102 and 103" (ibid. column 4, line 53 to column 5, line 1). The processor 55 is arranged to increment a cell counter by "one" whenever one of the mobile end-user devices initiates a call from a location within the coverage area of that cell (ibid. column 5, lines 45 to 52). In addition to the registration and cell counters, the processor 55 also stores a table (see Figure 2) which correlates particular cells to sections of a thoroughfare. One of the road traffic estimation processes of the invention is initiated when the CPU 101 of the processor 55 compares the value indicated by the counter of a particular cell to the expected average number of active - busy devices in that cell under equivalent conditions, such as time-of-day, day-of-week and day-of-year (ibid. column 8, lines 3 to 9).

As pointed out in the description (ibid. column 6, lines 15 to 22), the cell timer complex may be implemented as a stand-alone device or may be alternatively included in the processor of each of the base stations. However, even in this particular embodiment, the cell timer forwards a signal to the CPU 101 of the processor 55 when a predetermined time threshold has been exceeded.

Hence, in all embodiments of the invention as specified in the application documents, it is the wireless switch 50, in particular its processor 55, which collects and stores the data required for tracking a current flow of active mobile end-user devices entering and exiting the cells of the wireless communications system.

3.3 The application as originally filed relates, therefore, to a system comprising "a wireless switch" which includes all the hardware required for tracking the flow of active mobile end-user devices entering and exiting the cells in a radio coverage area. In claim 11 of the patent as granted, however, this functionality is attributed to "a wireless traffic monitor" coupled to, and thus separate from, the wireless switch. The system according to claim 11 of the patent as granted comprises, therefore, a combination of technical features (a "wireless traffic monitor" coupled to "a wireless switch") which is not disclosed in the originally filed documents.

3.4 According to the decision of the Enlarged Board of Appeal G 1/93 (OJ 1994, 541), a feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC.

In the present case, however, the added feature ("a wireless traffic monitor") in claim 11 cannot be regarded as a feature which does not provide any technical contribution to the subject-matter of the claimed invention, since it performs the essential function of tracking "a current flow of active mobile end-user devices (90, 91) entering and exiting at least one of a plurality of radio coverage areas".

3.5 In summary, independent claim 11 and dependent claims 16 and 18 of the patent as granted, and according to the patent proprietor's main request, recite subject-matter ("a wireless traffic monitor") which extends beyond the content of the application as originally filed and thus infringes Article 123(2) EPC, so that the ground of opposition under Article 100(c) EPC prejudices the maintenance of the patent in its granted form. The patent proprietor's main request must therefore be refused.

4.1 Claims 11 according to the auxiliary requests A, B and A1 of the patent proprietor relate to a system in which the functions of the "wireless traffic monitor" are performed by the wireless switch or one of its components (i.e. the "processor" 55).

As pointed out above, claim 11 as granted attributes the function of tracking the flow of active mobile end-user entering and exiting a cell of the wireless communications system to "a wireless traffic monitor". This excludes the possibility that, in the same system, the same function is performed by "wireless switch" 50 (see Figure 1).

4.2 In so far as they involve the deletion of a technical feature ("wireless traffic monitor") and attribute its essential function to the "wireless switch" 50, the amendments to the granted patent specified in the patent proprietor's auxiliary requests A, B and A1 extend the protection conferred by the patent as granted and thus violate Article 123(3) EPC. The patent proprietor's auxiliary requests A, B and A1 must therefore be refused.

Auxiliary request C - novelty and inventive step

5.1 The opposition division maintained the patent on the basis of the method claims 1 to 10 of the patent as granted. According to the opponent, however, document O7 disclosed "a method of determining road traffic conditions in thoroughfares in radio coverage areas served by a wireless communications network" which comprised, or necessarily implied, all the features recited in claim 1 of the contested patent. Hence, in the opponent's opinion, the claimed method was not new within the meaning of Article 54 EPC.

5.2 Document O7 is concerned with a method for locating mobile stations in a digital telephone network and relies on standard reference data which are routinely transmitted by a mobile station to the base stations and fed to an adaptive neural network trained by means of reference data (O7: column 2, line 55 to column 3, line 7). One of the applications of the known method highlighted in O7 is the possibility "to estimate road or street traffic for the larger traffic routes by making reference models for these. It is consequently possible to estimate how many calls are occurring on the stretch of road and what the mean speed of the mobile stations, that is to say the cars, is" (ibid. column 2, lines 44 to 49).

5.3 As the data processed by the method of O7 to obtain the location of a mobile station is the "information which is regularly measured in existing systems without needing to add internal functions" (see O7: column 2, lines 50 to 52), they correspond essentially to the "real-time registration and cell activity data from the active mobile end-user devices" referred in claim 1 of the contested patent.

5.4 Document O7 thus relates to a method of determining road traffic conditions in thoroughfares located in radio coverage areas served by a standard wireless communication network, which, as such, necessarily includes a plurality of base stations, each serving a cell in the radio coverage areas, and a wireless switch coupled to the plurality of base stations. This method thus comprises the following step recited in claim 1 of the patent in suit:

- receiving from each of a plurality of cells, via said wireless switch coupled to a base station associated with a cell, real-time registration and cell activity data from active mobile end-user devices currently located in each of said plurality of cells served by the wireless communications network.

5.5 Though O7 refers to "reference models" for traffic routes, and thus implicitly to a comparison with previously collected data which would be required to define such models, it does not suggest that road traffic conditions could be estimated on the basis of a comparison between the reference data sent to the base stations by the mobile devices and past equivalent data. In fact, the estimation of traffic conditions taught in O7 is essentially based on the evaluation of the position of a mobile device over time, its mean speed and some reference model for the road on which the device travels. The cell activity data is not used for estimating traffic conditions.

5.6 In the result, O7 does not disclose a method comprising the step of estimating road traffic conditions "based on a comparison (401, 501) of said real-time registration and cell activity data to past analogous equivalent information previously collected by said wireless communications network (50) for said at least one of said radio coverage areas", as recited in claim 1 of the contested patent.

The subject-matter of claim 1 is thus new within the meaning of Article 54 EPC.

6.1 The opponent has further argued that both O1 and O3 suggest determining road traffic conditions on the basis of a comparison of the actual registration and cell activity data from mobile phones with corresponding reference data. According to the opponent, the method of claim 1 would result from an obvious application of the teaching of O1 or O3 to the method known from O7.

6.2 Starting from O7, the problem addressed in the contested patent could be defined as simplifying the known method and directing it primarily to the determination of road traffic conditions.

6.3 The method according to claim 1 of the patent in suit solves the above problem by comparing real-time registration and cell activity data, indicative of the number of active-idle and active-busy mobile devices in a location area and in a cell, with previously collected equivalent information, representative of known traffic conditions.

6.4 Like O7, document O1 is also primarily concerned with locating a mobile device operating within a wireless communications network on the basis of data exchanged between the cell base stations and the mobile devices (cf. page 11, lines 9 to 30). Though it refers to "highway management" as a possible application (page 33, lines 23 to 25), O1 does not disclose how location information should be processed and, in particular, whether such "highway management" would imply a comparison with previously collected data.

6.5 Document O3 (see page 8) refers to a project relating to an operational test for evaluating "the use of the Bell Atlantic cellular telephone infrastructure with passive statistical cellular and cellular geolocation technologies to estimate traffic congestion information and identify incidents". One of the objectives of the study is to "determine if information from cellular telephone traffic can be effectively integrated into a real-time area-wide traffic control system". This document, however, does not disclose any detail of the planned operational test and, in particular, does not indicate how road traffic conditions could be derived from data exchanged between the cell stations and the mobile devices.

6.6 In summary, neither O3 nor O1 suggests to the skilled person how a method for determining the location of mobile devices operating within a wireless communication network, as known from O7, could be simplified and primarily adapted to the determination of road traffic conditions. In particular, these documents do not teach that an estimate of traffic conditions in an area covered by at least one cell of a wireless communications system could be based on a comparison of cell activity data with previously collected data corresponding to predetermined traffic conditions.

6.7 As it would not have been obvious to a person skilled in the art to arrive at the claimed method by combining the teaching of document O7 with the teaching of O1 or O3, the subject-matter of claim 1 of the patent in suit involves an inventive step within the meaning of Article 56 EPC.

Request for referral of question to Enlarged Board

7.1 As to the question whether a patent proprietor may return to the claims as originally filed, in case he finds himself in the trap of Article 132(2), (3) EPC, the Board notes that EPC does not foresee any exception to the provision that the claims of the European patent may not be amended during opposition in such a way as to extend the protection conferred. Thus, in principle, a reintroduction of the claims of the application as originally filed into the proceedings would be allowable under Article 123(3) EPC only if such claims were not broader that the granted claims.

7.2 As to the question of the conflicting requirements of Article 123(2) and (3) addressed by the patent proprietor, the Board wishes to draw the parties' attention to G 1/93, where the Enlarged Board of Appeal came, inter alia, to the following conclusions (point 13.):

- "if a limiting feature is considered to fall under Article 123(2) EPC, it cannot be maintained in the patent in view of Article 100(c) EPC, nor can it be removed from the claims without violating Article 123(3) EPC. Only if the added feature can be replaced by another feature disclosed in the application as filed without violating Article 123(3) EPC, can the patent be maintained (in amended form)".

- "it must be admitted that Article 123(2) in combination with Article 123(3) can operate rather harshly against an applicant, who runs the risk of being caught in an inescapable trap and losing everything by amending his application, even if the amendment is limiting the scope of protection."

- "this hardship is not per se a sufficient justification for not applying Article 123(2) EPC as it stands in order to duly protect the interests of the public. Nor does it, in principle, matter that such amendment has been approved by the Examining Division. The ultimate responsibility for any amendment of a patent application (or patent) always remains that of the applicant (or the patentee)."

8. In the result, the Board agrees with the opposition division that the subject-matter of claims 1 to 10 of the patent as granted is new within the meaning of Article 54 EPC and involves an inventive step within the meaning of Article 56 EPC. Hence, the patent can be maintained on the basis of such claims, as decided in the contested decision.