T 2127/09 12-05-2011

1. The appeal is admissible.

2. Amendments

2.1 The amendments in the independent claims 1, 9, 18 and 19 are supported by the originally filed claims 5, 9, 1 and 13 and figures 12 to 15 with their respective description.

More particularly, the amendment in feature g) of claim 1 and the corresponding amendment in claim 9 is supported by figure 15 and column 11, line 53 to column 12, line 4 of the published application.

2.2 The latter amendment sets out that the central processing unit (CPU) starts to display the sequence bar to move it from left to right - independently of the music - only when a predetermined counter value is reached. Then, after the movement has been started, the sequence bar moves in synchronism with the music, i.e. slowly when the music has a slow tempo, fast when the music has a fast tempo.

2.3 Thus, the requirements of Articles 123 (2) and 84 EPC are satisfied.

3. Inventive step

3.1 The application relates to a computer game like "Tetris" in which objects as blocks are displayed to fall down and fill a row. Once a row is fully filled, the blocks will be cleared immediately. It can be stated that the blocks will be cleared when they satisfy a first condition.

The idea behind the claimed subject-matter is now to introduce a second condition which has to be satisfied before the blocks are cleared. According to claims 1, 9, 18 and 19, the second condition is implemented with a sequence bar moving over the blocks to be cleared.

3.2 The rules of the notoriously known "Tetris" computer game could be described as follows:

A random sequence of objects appear at the top of a playing field display and fall down to the bottom thereof. The objects stop falling when they hit either the bottom line of the playing field or an object that has already fallen and stopped before. In the latter case, the objects will be stacked towards the top of the display. When new objects cannot fall any longer because the fallen objects are stacked and reach the top of the playing field where the new objects are supposed to fall, the game is over.

A player can move the falling objects to the left or to the right and can thus try to fully fill a horizontal row of objects. When a row is fully filled with objects, these are immediately cleared, i.e. they disappear, and any object above a cleared one, will fall into the cleared space.

The new objects appear at the top of the playing fields display as soon as the falling object stop moving.

3.3 Compared with the standard "Tetris" game in which objects are cleared when a first condition is satisfied, the distinguishing features f) to h) of claim 1 and the corresponding features in claims 9, 18 and 19 include now a second condition which has to be satisfied before the objects are cleared and disappear.

3.3.1 These distinguishing features have both technical and non-technical aspects.

(a) "Game rules" form part of "the regulatory framework agreed between [or with] players concerning conduct, conventions and conditions that are meaningful only in a gaming context (T 0012/08 of 6 February 2009, reasons 4.6; not published in OJ EPO). They govern the conduct and actions of the players during game play (T 336/07 of 11 October 2007, reasons 3.3.1; not published in OJ EPO).

Thus, "games rules" define inter alia the structural setup of the game that allows choice making to occur and determines how the game play evolves from the beginning to its end in response to player actions and decisions. It should be noted that the structural setup of the game does not require a player's interaction.

(b) Such "games rules" are clearly recognisable in the independent claims. The game apparatus of claim 1 and the method of claim 9 are setup such that the objects are cleared only when the first and the second clearing conditions are satisfied. The same can be stated with respect to claims 18 and 19.

(c) From this it follows that the non-technical aspects reflect modified "Tetris" game rules and the technical aspects reflect the technical implementation of these modified game rules.

3.3.2 Since these distinguishing features include both technical and non-technical aspects, the subject-matter of claims 1, 9, 18 and 19 is of "mixed" nature.

(a) In dealing with such "mixed" inventions the board adopts the approach as set out in T 1543/06 of 29 June 2007 (reasons 2, not published in OJ EPO) which is based foremost on T 641/00 (OJ EPO 2003, 352). Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step.

That requirement cannot rely on excluded (non-technical) subject-matter alone, however original that matter might be. The mere technical implementation of something excluded cannot form the basis for inventive step. Decisive for inventive step is the question how excluded subject-matter has been technically implemented, and whether such implementation is obvious in the light of the prior art. As explained in reasons 2.7 to 2.9 of T 1543/06, such a consideration focuses on any further technical effects associated with implementation of the excluded subject-matter over and above those inherent in the excluded subject-matter itself.

(b) In the present case, the independent claims have been substantially amended and specify now in addition the control of the sequence bar in accordance with a counter when a predetermined count value is reached.

However, since the search division did not carry out a search under Rule 45 EPC 1973, the board is unable to finally assess whether the claimed subject-matter involves an inventive step, and in particular whether these amended features provide any further technical effects associated with the implementation of the modified "Tetris" game rules over and above those inherent in these rules themselves.

4. Procedural matters

4.1 The oral proceedings before the board focused in particular on the definition of "game rules" and resulted in amendments to the claims which addressed the board's objections. Thus the amended claims have been filed in response to the board's objections at the oral proceedings.

4.2 It is true that according to Article 13(3) of the Rules of Procedure of the Boards of Appeal (RPBA) amendments made especially at the oral proceedings should not be admitted if they raise issues which the board cannot reasonably be expected to deal with without adjournment of the oral proceedings.

However, in the present case, the search division decided under Rule 45 EPC 1973 to draw up no search report, without consulting the applicant, so that the claims on file contain unsearched matter and that an amendment to the claims also necessarily introduces unsearched matter.

Thus, the board at the oral proceedings was not able to examine whether the amended claimed subject-matter involves an inventive step, not because this amendment had been submitted at a very late stage namely at the oral proceedings but because it merely relates to unsearched matter.

The fact that the board was not in a position to decide on the issue of inventive step at the oral proceedings is clearly not dependent on the degree of lateness of the applicant's amendment, it is primarily the result of the search division's decision that no search should be carried out so that only unsearched matter could be used by the applicant for amending the claims.

4.3 In cases in which the search division did not carry out a search under Rule 45 EPC 1973 and features are claimed which are neither notoriously known nor explicitly accepted by the applicant as known, the boards of appeal have decided (see e.g. T 1515/07 of 3 July 2008, reasons 6; T 690/06 of 24 April 2007, reasons 2; both not published in OJ EPO) that an additional search must be carried out.

Since the amendment in feature g) of claim 1 and the corresponding amendment in claim 9 meet these requirements, it is necessary to carry out an additional search according to Rule 63 EPC.

Moreover, already in the annex to the oral proceedings, the board expressed the view that if a request were found to be allowable on the basis of the available facts and evidence, then the case should be remitted to the department of first instance for carrying out an additional search.

4.4 The above nothwithstanding, the board emphasizes that remittal should be seen as an exceptional procedural possibility, and it must be also examined whether the applicant could have been expected to make the amendments which were made during the appeal before the board earlier (see Rule 12(4) RPBA), and thereby could have requested from the examining division to perform the necessary search. For example, the board notes that the applicant did not file any auxiliary request before the examining division, and therefore the question arises if the appellant could have been expected to file these amendments at least by way of an auxiliary request.

To this the board notes that the identification and separation of the technical effects which may and may not contribute to the technical charater of an invention (and thus to inventive step) is far from straightforward. Further, the assumption of a general obligation to file auxiliary requests - in the sense that the party must fear adverse procedural consequences if he does not - appears problematic. Firstly, if one were to recognise this as a procedural obligation, one must immediately also answer the question: how many auxiliary requests are then "expected", given that it is also standing jurisprudence of the boards that too many auxiliary requests can be seen as an abuse of the procedure. Secondly, the EPC as such is completely silent on auxiliary requests: while the board recognises that these are well established in the proceedings before the European Patent Office, both before the first and appeal instances, there is no legal basis for penalising an applicant for not using them. In other words, it should be possible for an applicant to act in good faith also without making use of auxiliary requests.

On the other hand, it is also clear that parties have no entitlement to a remittal as of right (apart from those cases where the first instance commits a procedural violation). This means that a party restricting itself to a single request before the first instance must be prepared for the possibility that he will not be able to present further requests and have them examined.

Considering the above, the board finds that the appellant himself is also not completely without fault, as nothing prevented him from introducing the subject-matter of the present amendments earlier into the procedure. However, an examination of the first instance proceedings reveals that while the applicant possibly might have realised that further technical features in the claims could lead to the identification of potientially patentable and searchable subject-matter, it would be exaggarated to state that the applicant could have been expected to recognise what amendments he needs to make there and then. He was apparently not invited to make such amendments - and indeed the examining division had no obligation to invite him -, but apparently he also could not have been expected to realise that by way of the further amendments he might at least achieve the recognition of a searchable invention. Apparently the examining division did accept that the claims on file at that time do contain technical features and as such are not excluded from patentability on the basis of Art. 52(2) EPC, see point 3 of the Minutes, first sentence. However, all the recognised technical features were considered notorious and not contributing to inventive step. At no time did the examining division indicate (at least according to the file) that it intends to perform a further search. In other words, there is some justification for the applicant for not trying to find further technical features which could potentially overcome the Art. 56 objections of the examining division.

4.5 In view of these particular circumstances, the board decided to admit the amendments to the claims submitted for the first time at the oral proceedings before the board and, in accordance with Article 111(1) second sentence EPC, to remit the present case to the department of first instance for further prosecution, starting with an additional search.