T 1725/07 (Communications network/BIRDSTEP) 15-10-2009

1. Admissibility (Rule 65(1) EPC 1973)

The admissibility of the appeal was not or no longer contested by the respondents, see points IV and VII above. The appeal complies with Articles 106 to 108 EPC 1973 and Rules 1(1) and 64 EPC 1973 and is therefore admissible.

2. Main request - Amendments (Article 123(2) EPC)

2.1 According to claim 1 of the main request the last step, i.e. the triggering of an establishment of a secure VPN session, is performed "when required".

2.2 The appellant argued that this feature was based on claim 14 as originally filed, which reads as follows:

"The method according to any of the claims 1-11, wherein the step of triggering (305) the establishment of a secure VPN session is optional."

The term "optional" was to be considered as equivalent to "when required". In support of its arguments, the appellant also referred to page 20, lines 23 to 25, of the description as filed.

2.3 In the board's view, the wording "when required" is sufficiently clear in order for an addressee to be able to understand the claim without a need to refer to the description. Giving it the meaning it normally has in the relevant art, the wording "when required" in claim 1 in the board's view implies that in the course of carrying out the method it is determined, on the basis of unspecified criteria, whether or not the triggering step is to be carried out and that, if these criteria are met, the triggering step must be performed.

The board notes that claim 1 as filed includes the triggering step in question as one of four steps which are performed by the RAL system. However, claim 14 as filed (see above) provides a basis for a claim in which the above-mentioned triggering step is optional.

The term "optional" is understood by the board as referring to a matter of choice, not compulsion, i.e. something that may be done but need not. Hence, if a method step is defined as being optional, it is not compulsory that it is determined, on the basis of certain criteria, whether or not the step is to be carried out. Consequently, the term "optional" cannot be considered as having the same meaning as "when required". Claim 14 as filed does not therefore provide a basis for the wording "when required" in claim 1.

Page 20, lines 23 to 25, of the description as filed, as referred to by the appellant, reads as follows: "In cases where VPN components shall be used, as indicated in the user-defined profile, the RAL system then triggers the next step, the necessary procedures to establish a secure VPN session.".

In the board's view, this passage describes a specific condition which is to be met in order for the RAL system to perform the triggering step, namely that the user-defined profile indicates that VPN components are to be used. Present claim 1 does not however include this specific condition.

2.4 The Board therefore concludes that the introduction of the wording "when required" in claim 1 results in a definition of a method which is an intermediate generalisation of the methods as disclosed in the application as filed and which is not directly and unambiguously derivable from the application as filed.

2.5 Claim 1 of the main request does not therefore meet the requirements of Article 123(2) EPC. The main request is therefore not allowable.

3. First auxiliary request - Amendments (Article 123(3) EPC)

3.1 Claim 1 of the first auxiliary request differs from claim 1 of the main request inter alia in that, in the last paragraph, the wording "when required" is replaced by "where VPN components shall be used, as indicated in the user-defined profile". The wording which was replaced was present in the last paragraph of claim 1 as granted.

3.2 The appellant argued that "where VPN components ..." as used in the present claim and "in cases where VPN components ..." as used at page 20, lines 23 to 25, of the description as filed were synonymous.

3.3 However, irrespective of whether or not "where VPN components ..." and "in cases where VPN components ..." are synonymous, in the board's view, due to the deletion of the wording "when required" from the last paragraph of claim 1 as granted, it is no longer implicit that in the course of carrying out the method it is determined, on the basis of unspecified criteria, whether or not the triggering step is to be carried out and that, if these criteria are met, the triggering step must be performed. Instead, the triggering step is now predetermined by the content of the user-defined profile. Whether or not the user-defined profile indicates that VPN components shall be used may therefore be determined separately from the claimed method, i.e. in advance, and, hence, need not be part of the claimed method. In this respect, whether or not "where VPN components ..." and "in cases of where VPN components ..." are synonymous, as argued by the appellant, is not relevant.

3.4 Claim 1 as granted has therefore been amended in such a way as to extend the protection conferred and, consequently, claim 1 of the first auxiliary request violates Article 123(3) EPC.

3.5 The first auxiliary request is therefore not allowable.

4. Second auxiliary request - Amendments (Article 84 EPC)

4.1 According to the second auxiliary request claim 1 as granted is amended inter alia in that in the last paragraph "when required" is replaced by the wording "when required, in cases where VPN components shall be used as indicated in the user-defined session profile".

4.2 In the board's view, this amendment results in an ambiguity in that it is unclear whether "when required" is to be read in conjunction with "in cases where VPN components shall be used as indicated in the user-defined session profile" so that the latter wording defines the criterion on the basis of which it is determined whether or not the triggering step is required, or is to be read separately and independently from the latter wording, i.e. two independent conditions are defined. In this latter case, it is unclear whether it would be sufficient for the triggering step to be performed if only one of the conditions is met or whether both conditions have to be met. Hence, the amendment made to claim 1 as granted results in a claim which is unclear.

4.3 Claim 1 of the second auxiliary request therefore does not meet the requirements of Article 84 EPC. The second auxiliary request is accordingly not allowable.

5. Third auxiliary request - admissibility

5.1 The third auxiliary request was filed during the oral proceedings before the board. In accordance with Article 13(1) of the Rules of Procedure of the Boards of Appeal (OJ EPO 2007, 536 ff.), any amendment to a party's case after it has filed its grounds of appeal may be admitted and considered at the board's discretion. This discretion shall be exercised in view of, inter alia, the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Further, amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA).

5.2 In the board's view, and in line with the established case law of the boards of appeal, one of the criteria for admitting further amendments to the claims at a late stage of the appeal proceedings, in the present case in the course of the oral proceedings, is whether or not the claims are clearly allowable. In the board's judgement, claim 1 of the third auxiliary request is not clearly allowable for the following reason:

5.3 Claim 1 of the third auxiliary request differs from claim 1 as granted inter alia in that the feature "via a data communication technology device (403), where said data communication technology requires some set-up information and uses a specialised access network and dedicated gateways, said data communication technology hereafter being called Pseudo-Connectionless Technology ,PCT," is replaced by "via a GPRS device".

5.4 In support of this amendment, the appellant referred to page 3, lines 21 to 30, of the application as filed, which reads as follows:

"A wide range of fixed and mobile data communications technologies exists. All these technologies have in common that they are always connected but require some complex set-up information. In the following, these characteristics will be termed 'pseudo'-connectionless. These technologies have further in common that they use a specialised access network and use dedicated gateways to access the Internet. These technologies will further on be termed Pseudo-Connectionless Technologies (PCT).

One such mobile data communications technology is the so-called GPRS technology.".

Referring to this passage, the appellant argued that a person skilled in the art would understand that a GPRS device, used in a method for setting-up a remote and secure access session from a computer to a data communication network via this GPRS device, constituted a data communication technology device which required some set-up information and which used a specialised access network and dedicated gateways. The proposed replacement therefore met the requirements of Article 123(3) EPC.

5.5 Respondent 2, however, contested this and argued that the appellant's submission was merely an assertion and that, irrespective of what was disclosed in the application as filed, it was necessary to have available evidence showing that any GPRS device for use in a method for setting-up a remote and secure access session from a computer to a data communication network via the GPRS device was necessarily a data communication technology device which required some set-up information and which used a specialised access network and dedicated gateways, in order to be able to determine whether or not claim 1 complied with the requirements of Article 123(3) EPC.

5.6 In the board's view, evidence in support of the appellant's submission would indeed have been necessary if, as was the case here, it was contested by the other party. Since the appellant was not in a position to provide this evidence at the oral proceedings, an adjournment of the oral proceedings would have been necessary, which the appellant did not request. In the absence of the required evidence, the board was not in a position to verify that the amendments made to claim 1 as granted did not result in an extension of the protection conferred by the patent as granted. Hence, at least prima facie, claim 1 of the third auxiliary request did not comply with the requirements of Article 123(3) EPC.

5.7 At the oral proceedings the appellant suggested a further amendment to claim 1 of the third auxiliary request according to which in the first characterising feature ", which is configured with" is replaced by "having". This suggested amendment did not however affect the above considerations. Nor did the appellant argue otherwise.

5.8 The board therefore concluded that claim 1 of the third auxiliary request was not clearly allowable and exercised its discretion pursuant to Article 13(1) RPBA not to admit the third auxiliary request to the appeal proceedings.

6. There being no allowable request for maintaining the patent in amended form, it follows that the appeal must be dismissed.