T 0403/16 19-06-2019

1. Procedural issues

As announced in its letter dated 27 May 2019 the appel­lant did not attend the oral proceedings before the board. The duly summoned respondent did not attend the oral proceedings without advance notice.

In accordance with Rule 115(2) EPC and Article 15(3) RPBA, the oral proceedings were held without the parties­. By their decision not to attend the oral proceed­ings, the parties have chosen not to make any further submissions during such proceedings and are treated as relying only on their written case.

2. Main request

2.1 Appellant's main request

The board notes that the appellant requested in writing as a main request that the decision under appeal be set aside and "that the opposition is being rejected" (see the letter dated 21 April 2016, page 6, paragraph 1). This would normally be understood as a request for the maintenance of the patent as granted (see Article 101(2) EPC).

However, in the present case the appellant argued in relation to the main request on the basis of the claims of the sole request underlying the decision, i. e. the claims filed as "MAIN REQUEST" with the letter dated 24 September 2015. In particular, the appellant con­tested the examining division's decision as to lack of clarity of the claims and argued that features (c) and (e) added to granted claim 1 during the opposition pro­ceedings were clear (see pages 4 to 6 of the letter dat­ed 21 April 2016). These claims are therefore con­sid­ered to form the basis of the main request as in­tend­ed by the appellant. This was pointed out in the board's communication pursuant to Article 15(1) RPBA issued in preparation of the oral proceedings and was subsequently not denied by the appellant.

Hence, the board considers that it is the appellant's main request that the decision be set aside and the patent maintained on the basis of the claims filed as "MAIN REQUEST" with the letter dated 24 September 2015.

2.2 Amendments

2.2.1 In the decision under appeal the opposition division held that the amendments effected in relation to the claims of the main request fulfilled the requirements of Article 123(2) EPC. In particular, the amendments were based on paragraphs [0028], [0036], [0039], [0042], and [0043] of the patent and the added features (c) and (e) were not intrinsically linked to the functions E and D or to the ticketing scenario (see point 3 of the Reasons).

2.2.2 The respondent argued that the subject-matter of fea­tures (c) and (e) of claim 1 of the main request ex­tended beyond the content of the application as filed. Feature (c) was closely tied to the con­struction of the function E, while feature (e) was pre­sented in the con­text of ticketing and the function D. The omission of this context and of the function E con­stituted thus inadmissible intermediate generalisations.

The appellant made no submissions in this respect.

2.2.3 The board notes first that only the appellant was ad­versely affected by the decision under appeal and thus in a position to file an appeal against the decision (Article 107 EPC). Furthermore, re-opening the issue of compliance with Article 123(2) EPC cannot put the ap­pel­lant in a worse position than if it had not filed the appeal and is therefore not contrary to the princi­ple of the prohibition of reformatio in peius (see the decision T 1341/04, point 1 of the Reasons). This issue is therefore open for review by the board of appeal, even though in the decision under appeal the opposition divi­sion had reached a conclusion favourable for the appel­lant in this regard.

2.2.4 In the paragraph on page 7, lines 12-21, of the appli­ca­tion as filed, which was pointed out by the respon­dent as a potential basis for feature (e) and corre­sponds to paragraph [0036] of the patent, the following is stated:

"Next M and K are combined using D resulting in X'."

The function D is thus used to combine the first data item K and the second data item M resulting in the calculated reference biometrical data X' and provides the rule for obtaining the result X' from the two input parameters K and M. The combination of the data items K and M is thus intrinsically linked to the function D.

Moreover, the regeneration function D may not be any arbitrary func­tion, but has to be related to the gen­eration function E and hence the reference biometrical data X in a specific way, essentially being the (possi­bly somewhat imperfect) inverse func­tion of E. This is expressed in the following way on page 6, lines 28-30, of the appli­cation as filed­:

"D is related to E in the sense that, using its inputs M and K it will output X' which contains a significant amount of information on X."

In this way a candidate individual 101' with candidate biometric data Y may be identified­ as the reference in­dividual 101 by comparing the calculated reference bio­met­rical data X' with the candidate biometric data Y. Without the above constraint on the regeneration func­tion D such identification would not be possible.

Therefore the phrase cited above cannot serve as a va­lid basis for feature (e), in which it is claimed in broad terms that the first and second data items are combined with­out any indication of the function D and the nature of this function. Hence, feature (e) con­stitutes indeed an inadmissible intermediate general­isa­tion in relation to the above disclosure in the ap­pli­cation as filed.

There are no other parts of the application as filed from which feature (e) could be derived. In particular, some of the other cited paragraphs relate to detailed embodi­ments of the invention, in which the function D takes an even more specific form.

In view of the above, feature (e) is not directly and unambiguously de­rivable from the application as filed. Hence, the subject-matter of claim 1 of the main re­quest extends beyond the application as filed, con­trary to the requirements of Article 123(2) EPC.

3. First and second auxiliary requests

Claim 1 of the first and second auxiliary requests both contain features which are essentially identical (apart from an added reference sign) with feature (e). Hence, for the above reasons the subject-matter of claim 1 of the first and second auxiliary re­quests also extends be­yond the application as filed, con­trary to the re­quire­ments of Article 123(2) EPC.

4. Conclusion

Since the main request and the first and second auxil­iary requests are not allowable, because the claimed subject-matter extends beyond the application as filed, the appeal is to be dismissed (Article 111(1) EPC).