T 2526/17 16-04-2018

1. According to the decision of the Enlarged Board of Appeal G1/11 (OJ 2014, A122), an appeal against an examining division's decision not to refund search fees under Rule 64(2) EPC, which is taken separately from its decision granting a patent or refusing the application, is to be heard by a technical board of appeal (see Headnote).

In the present case, the interlocutory decision not to refund the additional search fees was issued on 12 July 2017, while the decision to grant a patent has not been issued yet. G1/11, thus, applies and the Board is confident that it has the power to decide on the present case.

2. The appeal is admissible.

3. Unity of invention

3.1 The Search Division raised an objection for lack of unity a posteriori, meaning that the objection was based on prior art documents. The Search Division found that the subject matter of independent claims 1 and 26 did not involve an inventive step in light of the combination of D1 and D2. The dependent claims comprised special technical features that were not linked to form a single general inventive concept nor did they address a common technical problem. The Search Division concluded that there were 7 different inventions and invited the Appellant to pay 6 additional search fees for the complete claim set to be searched.

3.2 The Appellant's request for the refund of the additional search fees is based on two lines of reasoning. During the examination procedure, the Applicant argued extensively that the dependent claims did not define special technical features that were so remote from each other that they could be considered separate inventions or that an extra search effort was needed to search for them in the prior art. In the grounds of appeal, a second line of reasoning was added in that the Appellant contested the conclusion of the Search Division (which was confirmed by the Examining Division) that the subject matter of claims 1 and 26 was obvious in light of the combination of D1 with D2.

The Board understands that if it were to reach a different conclusion regarding the obviousness of the subject-matter of claims 1 and 26 in light of the combination of D1 and D2, i. e. that it was not obvious, then the objection for lack of unity would become moot, since there would be a single general inventive concept linking all the claims.

3.3 Claims 1 and 26, Inventive Step (Article 56 EPC)

3.3.1 D1 was considered to be representing the closest prior art.

The Appellant does not contest that D1 discloses an organic light-emitting display apparatus (paragraph [0003]) which comprises (see Figure 2 and paragraph [0036]) an emission device (pixel electrode 270) connected to an emission pixel circuit (current control unit 250).

3.3.2 A point of disagreement between the Appellant and the Examining Division was whether D1 disclosed a dummy pixel circuit in the sense of the present application.

3.3.3 It is generally known that a pixel circuit is a circuit that controls the switching and the driving of the pixel emission device (pixel electrode). As it is explained in the application (originally filed description, paragraph [0109] and Figure 14), an emission pixel circuit in a light-emitting display apparatus like the one of the claims comprises at least a thin film transistor (TFT) and at least one capacitor.

In D1 the emission pixel circuit corresponds to the current control unit (250), which controls the driving and the switching of the pixel electrode (270). The current control circuit of D1 comprises two TFT transistors (one for driving and one for switching) and one capacitor (paragraph [0037] and [0041], Figure 2).

3.3.4 In the decision under appeal, the Examining Division considered that the redundant active device (260) of D1 corresponded to the dummy pixel circuit of the claimed invention.

The Board does not share this opinion of the Examining Division. The redundant active device (260) of D1 is a TFT that can replace the driving TFT of the current control unit (250) in case of malfunction of this driving TFT (see paragraphs [0036] and [0043]). In D1, there is a redundant active device for every current control unit. In other words (using the terminology of the claim), for every pixel emission device (pixel electrode in D1) there is a corresponding emission pixel circuit (current control unit 250) and a redundant active device (an additional, redundant driving TFT), which is to be used in case the main driving TFT of the pixel circuit malfunctions. The redundant active device, therefore, is not a redundant (dummy) pixel circuit in the sense of the present application, it is only a redundant (dummy) element of the pixel circuit.

3.3.5 In the claimed invention, the dummy pixel circuit (DP) is a redundant complete pixel circuit which is associated to a complete column (or row) of pixel circuits and is available to replace any of the pixel circuits of the specific column (or row) that may malfunction (see Figure 2). A malfunction of the emission pixel circuit does not have to be at the driving TFT only (as in D1), since the dummy pixel circuit is able to replace the whole of the emission pixel circuit in case of malfunction.

The Board concludes, therefore, that D1 does not disclose a dummy pixel circuit in the sense of claim 1.

3.3.6 The features distinguishing claim 1 from D1 are, hence, the dummy pixel circuit connected to the emission device via a repair line and the plurality of sub-emission devices, which are part of the emission device. In D1 there is no indication or suggestion that the emission device (pixel electrode) comprises any sub-emission devices.

The skilled person is, thus, faced with the objective technical problem of how to guarantee the operation of the light-emitting display apparatus in case of malfunction of the driving pixel circuit and/or the (light) emission device.

3.3.7 Document D2 describes an active matrix display apparatus comprising emission (light-emitting) devices (EL) each driven by a pixel circuit ("2", see Figure 2 and paragraph [0042]). In an embodiment of the described display apparatus, the light-emitting device (EL) is divided in a pair of sub-light-emitting devices (EL1, EL2 see Figure 5 and paragraph [0049]). One of these sub-light emitting devices is not in operation under normal conditions but rather plays the role of a reserve (redundant) sub-light-emitting device in case the other sub-light-emitting device malfunctions (paragraph [0050]).

There is no mention or suggestion of any dummy/redundant pixel circuit in D2.

3.3.8 The skilled person starting from D1 and seeking a solution to the identified objective technical problem, would find a partial solution in D2, which corresponds to the solution regarding the (light) emission device defined in the apparatus of claim 1.

However, he would not find any solution regarding a possible malfunction of the pixel circuit corresponding to the solution of claim 1, since neither D1 nor D2 disclose or suggest a dummy pixel circuit like the one of claim 1.

3.3.9 Therefore, were documents D1 and D2 to be combined as in the decision under appeal, there would still be the dummy pixel circuit remaining as a new and inventive feature. This new and inventive feature would, hence, provide the single general inventive concept linking all the claims 1-25 since claims 2-25 depend all directly or indirectly on claim 1. The same reasoning and conclusion applies for independent claim 26 and dependent claims 27-32, which all depend directly or indirectly on it.

3.4 The Board concludes, therefore, that the originally filed set of claims fulfilled the requirement of unity of invention within the meaning of Article 82 EPC and the communication inviting the Appellant to pay additional search fees was not justified. The additional search fees paid by the Appellant should be refunded pursuant to Rule 64(2) EPC.

4. Request for reimbursement of the appeal fee

4.1 According to Rule 103(1)(a) EPC, the appeal fee shall be reimbursed in full where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

Since the Board deems the appeal to be allowable, it remains to assess whether a reimbursement of the appeal fee would be equitable by reason of a substantial procedural violation.

4.2 The Appellant argues that the Examining Division was aware that the original reasoning by the Search Division regarding lack of unity was not correct and yet insisted in rejecting the request for refund of the search fees (see paragraph bridging page 1 and 2 of the grounds of appeal)

The Appellant argues that the Examining Division had recognised that the original reasoning of the Search Division was not correct in relation to claims 3 and 4 but proceeded to confirm the non-unity objection by providing new arguments. Making reference to the decision of the Boards of Appeal T 188/00, the Appellant argued that it was not allowed for the Examining Division to produce new arguments to support a non-unity objection raised by the Search Division and that the Examining Division was only limited to agree or disagree with the orignal reasoning. By producing new arguments, the Examining Division committed a substantial procedural violation which would justify a reimbursement of the appeal fee.

4.3 Comparing the decision under appeal to the original objection for lack of unity in the partial search report, the Board notes that the grouping of the claims in the various inventions is the same in both cases (compare point 1.7.18 of the decision under appeal with SHEET B of the partial European search report).

4.4 The arguments/objections concerning each claim are essentially the same in both cases with two exceptions.

In the original reasoning it was considered that the features of claims 2, 3 and 4 were all disclosed in D2 (SHEET B, point 1.1.7). In the decision under appeal it is considered that the subject-matter of claim 4 comprised features which represented a contribution over the prior art (combination of D1 and D2) and were, hence, regarded as special technical features in the sense of a unity assessment (point 1.5 of the decision under appeal).

In addition, the passage of D2 considered to disclose the features of claim 3 is not the same in both cases (paragraph [0049] in point 1.1.7 of SHEET B); paragraph [0041] in point 1.4.4 of the decision under appeal).

4.5 The Board acknowledges these differences in the reasoning of the objection but considers that they do not affect the reasoning of the objection as a whole.

Claims 1-5 were considered to belong to the same invention in both cases. Claims 3, 4 and 5 depend on claim 2. In the original objection, the Search Division considered that claims 2-4 were disclosed in D2 and regarded the features of claim 5 as the special technical features of the first invention (SHEET B, point 1.1.8). In the decision under appeal, the Examining Division considered the features of claim 4 to be the special technical features of the first invention. Since claims 4 and 5 were unitary, claim 5 belonged also to the same invention (point 1.6.1 of the decision under appeal). Hence, the definition of the different inventions included in the claims is the same in both cases.

4.6 In the case underlying decision T 188/00, the Examining Division used a document which was not present in the search report to assess unity of invention in the originally filed claims and confirmed the Search Division's invitation to pay additional search fees. The deciding Board (which was the present Board in a different composition) concluded that the Examining Division's assessment of the reasoning of the objection for lack of unity raised by the Search Division had to be carried out having regard only to the facts presented by the search division (Reasons, point 4.5). By using a document that was not cited in the partial search report, the Examining Division did not review the finding of lack of unity of invention but carried out a fresh examination (Reasons, point 4.6).

The present case is different, however, since the Examining Division used the same documents that were used by the Search Division in its assessment. The Examining Division apparently reached a different conclusion from the Search Division regarding whether the subject matter of claim 4 was disclosed in D2 or not and which passage of D2 disclosed the features of claim 3.

Even if it were considered that the Search Division was wrong in its assessment regarding claims 3 and 4, this would have no bearing on the definition of the different inventions identified in the claims, since claims 1-5 were already considered to belong to the same invention and none of the remaining claims 6-32 depended directly on any of the claims 3 or 4 or 5.

4.7 Although the reference to T 188/00 is not pertinent in this case, the Board agrees with the Appellant that the review mentioned in Rule 64(2) EPC should be directed not only to the facts but also to the arguments used by the search division in its invitation to pay additional search fees. This has been the jurisprudence of the Boards of Appeal in so-called PCT-protest procedures, as is also recognised in T 188/00; see point 4.5, second paragraph, of the reasons.

In the case at hand it is clear, however, that the differences in argumentation, as explained above, had no bearing in the assessment of number of different inventions involved and the decision not to refund the additional search fees. The alleged procedural violation is therefore not substantial. The request for reimbursement of the appeal fee must consequently be refused.