kst2640/corpus10 huggingface dataset:
1. An air bag device (1), comprising:
an air bag (10) to be deployed in front of a passengers (PS) seat of a car, wherein said air bag (10) comprises:
a lower bag segment (11) for holding the shoulders and chest of an adult passenger (PS) when it is deployed, an upper bag segment (21) that rises from said lower
bag segment (11) so as to hold the head of the adult passenger (PS) when it is deployed; and
a partition cloth (31) having an inner vent hole (33) for separating said upper and lower bag segments (11, 21); and
an inflator (5) for injecting inflation gas to deploy said air bag (10), wherein the inflation gas from said inflator (5) is directly supplied to said lower bag segment (11) of said air bag (10), and is supplied to said upper bag segment (21) through said inner vent hole (33) of said air bag (10),
characterized in that
the capacity of said lower bag segment (11) of said air bag (10) when deployed is 60 to 90 liters, and
the capacity of said upper bag segment (21) of said air bag (10) when deployed is 20 to 40 liters.
IX. In its communication annexed to the summons to attend oral proceedings dated 17 November 2004 the Examining Division mentioned that at the oral proceedings before the discussion on novelty and inventive step clarity would have to be discussed, the terms capacity of lower bag segment and capacity of upper bag segment being unusual parameters in the sense of the Guidelines for Examination in the EPO, C-III, 4.7a as no comparison with the prior art could be made. These parameters thus would disguise a lack of novelty as per the Guidelines for Examination in the EPO, C-IV 7.5.
In the event Claim 1 would be considered to be clear and the claimed subject-matter novel, the capacities cited in the characterising portion of the claim would be common values for the skilled man.
X. In reply to the summons, the applicant filed on 31 January 2005 a letter of six pages together with amended pages 4, 4a, 5, 6 of the description.
In this letter the applicant stated under point I that it would not attend the scheduled oral proceedings and that it requested the Examining Division to render a decision on the record. The appellant further requested that the subject-matter of the present claims be re-examined taking into account the following explanations.
Under point II the applicant explained that it had filed replacement pages for pending description pages 4 to 6. Under point III it argued why in its opinion the subject-matter of Claim 1 on file was not only novel, but also inventive over D1 and D6 or D7. Under point IV it explained over one and a half pages why the clarity objection raised in the annex to the summons was not justified and why the Guidelines for Examination in the EPO, C-III, 4.7a and C-IV, 7.5 could not be used against Claim 1 on file.
In particular the applicant explained that the capacities could be clearly and reliably determined by objective procedures which are usual in the art and that the skilled man would not unavoidably arrive at these values when carrying out the invention of D1.
XI. The decision to refuse the application dated 23 March 2005 was issued on EPO Form 2061 with the following grounds for the decision:
In the communication(s) dated 23.01.2004, 15.06.2004, 17.11.2004 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 31.01.2005.
The application must therefore be refused.
XII. The appellant considers that the decision issued by the Examining Division does not fulfil the requirement of Rule 68(2) EPC 1973 that the decisions of the European Patent Office shall be reasoned, since the decision does not include any logical chain of arguments justifying the Examining Divisions finding. It merely refers to previous communications.
In addition the appellant states that according to the decision the appellant allegedly did not file any comments or amendments in reply to the latest communication which is not correct, the appellant having filed an amended description and new arguments on 31 January 2005 in response to the summons to oral proceedings.
In its view it seems that the Examining Division has not even considered the arguments in the appellants response of 31 January 2005 when it decided to refuse the application.
The appellant argues that this contravention of Rule 68(2) EPC 1973 constitutes a substantial procedural violation justifying the reimbursement of the appeal fee pursuant to Rule 67 EPC 1973.
XIII. In telephone conversations dated 24 May and 5 June 2007, the representatives attention was drawn to the fact that the board was of the opinion that a substantial procedural violation was apparent in the first instances proceedings. According to Article 10 of the Rules of Procedure of the Boards of Appeal (RPBA) in the version which entered into force on 1 May 2003 (OJ EPO 2003, 89), in cases of fundamental deficiencies the board would have to remit the case to the first instance, since in the present case no special reasons were apparent for doing otherwise.
XIV. The appellant requests:
1. That the Examining Divisions decision of 23 March 2005 be set aside and a European patent be granted on the basis of the presently pending application documents, that is claims 1-7 as filed on 14 October 2004 in combination with the remaining originally filed application documents as far as they have not been replaced by new description pages 4, 4a, 5 and 6 filed on 31 January 2005.
2. That the appeal fee be reimbursed under Rule 67 EPC 1973.
2. The first question to be decided in this appeal is whether the first instance decision was sufficiently reasoned. Therefore the board has to establish whether the impugned decision complies with the relevant provisions of EPC 1973, in force at the date of said decision.
Compliance with Rule 68(2) EPC 1973
3. According to Rule 68(2) EPC 1973 the decisions of the European Patent Office open to appeal shall be reasoned. The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision taken by a first instance department (see inter alia T 34/90 (OJ EPO 1992, 454) and G 9/91 (OJ EPO 1993, 408)). A reasoned decision issued by the first instance department meeting the requirements of Rule 68(2) EPC 1973 is accordingly a prerequisite for the examination of the appeal.
4. In the present case the Examining Division, in response to the appellants request to render a decision on the record, refused the application using EPO form 2061 for a so-called decision on the state of the file. The Guidelines for Examination in the EPO (June 2005) E-X 4.4, state: Applicants may request a decision on the file as it stands or according to the state of the file, e.g. when all arguments have been sufficiently put forward in the proceedings and the applicant is interested in a speedy appealable decision. In such a case, the decision will be of a standard form, simply referring to the previous communication(s) for its grounds and to the request of the applicant for such a decision.
This standard form is entirely appropriate in the special case where the Examining Division fully expressed and reasoned its objections to the current application text in the preceding communication(s) taking into account the applicants submissions, and the applicant has not presented further counter-arguments in the reply in which it requests a decision according to the state of the file.
A number of decisions of the EPO Boards of Appeal have
pointed out however that a decision form which refers
to several communications, leaving it to the board of
appeal and the appellant to speculate as to which of the reasons given by the Examining Division in its communications might be essential to the decision to refuse the application does not meet the reasoned requirement of Rule 68(2) EPC 1973 (see T 861/02, T 897/03, T 276/04 and T 1309/05).
5. In its letter of 14 October 2004, the appellant limited the claimed subject-matter by further adding the feature of the capacity of the upper bag segment being 20 to 40 liters and explained why the subject-matter was inventive over a combination of D1 with D6 or D7. The appellant explained in particular that D1 did not disclose any capacity for the upper and lower bag segments and that D6 and D7 although disclosing capacities, did so only for airbags having one bag segment, so that these documents could not render obvious the particular capacities as claimed which allow to reliably inflate both segments at a high speed even with a low-output inflator.
6. In the annex to the summons the Examining Division raised for the first time an objection of lack of clarity in respect of the terms capacity of lower bag segment and capacity of upper bag segment. These terms were considered to be unusual parameters in the sense of Guidelines C-III, 4.7a since no comparison with the prior art could be made. These parameters thus would disguise a lack of novelty as per Guidelines C-IV 7.5. However no further explanation was given as to why these specific terms would fall under the concept mentioned in the Guidelines. This was probably meant to be discussed at the oral proceedings. The same is true for the conditional objection of lack of inventive step since it was simply stated that the capacities given would be common values.
7. With its reply of 31 January 2005 the appellant filed amended pages of the description as replacement pages for description pages 4 to 6 then on file. The appellant explained why in its opinion the subject-matter of claim 1 on file was novel and inventive and why the clarity objection raised in the annex to the summons was not justified. In particular the appellant explained that the capacities could be clearly and reliably determined by objective procedures which are usual in the art and that the skilled man would not unavoidably arrive at these values when carrying out the invention of D1.
8. The decision of the Examining Division however does not contain any specific reasons, but merely refers to the communications (including the annex to the summons) which had been issued before the appellants reply of 31 January 2005. By not commenting on the amended pages of the description and/or on any of the counterarguments brought forward by the appellant in its last reply it is left to the board and to the appellant to speculate as to which were the decisive reasons for the refusal. As a matter of fact several options could be possible: it could well be that the Examining Division no longer upheld the lack of clarity objection but considered the lack of inventive step detrimental or that clarity and novelty of the subject-matter of claim 1 was at stake, or even that only the amended description was not considered allowable.
9. This is at odds with the established jurisprudence of the boards of appeal that for the requirements of Rule 68(2) EPC 1973 to be fulfilled the decision must include, in logical sequence, the arguments justifying the order. The grounds upon which the decision is based and all decisive considerations in respect of the factual and legal aspects of the case must be discussed in detail in the decision (see T 278/00 (OJ EPO 2003, 546)). The applicants request to render a decision on the record is not to be construed as a waiver of the right to a fully reasoned first instance decision, even in the light of the suggested procedure in the Guidelines (see T 1309/05, T 583/04). The applicant even expressly requested that the subject-matter of the present claims be re-examined taking into account the following explanations. In view of this and of the fact that amended pages of the description were filed the board is of the opinion that a decision of a standard form, simply referring to the previous communications for its grounds and to the request of the applicant for such a decision was not appropriate in the present case. Instead, in its decision, the Examining Division should have explained the very reason or reasons for its decision and why the counterarguments of the applicant were not considered convincing. By failing to do so the Examining Division did not issue a reasoned decision within the meaning of Rule 68(2) EPC 1973 and committed, therefore, a substantial procedural violation.
Right to be heard (Article 113(1) EPC 1973)
In the communication annexed to the summons to the oral proceedings, the Examining Division raised a clarity objection. In the absence of any indication to the contrary, the board and the party must assume that this was part of the reasons for the refusal.
10. Article 113(1) EPC 1973 requires that a decision be based on grounds on which a party has had an opportunity to present its comments. The right to be heard also guarantees that grounds put forward are taken into consideration (see T 94/84 (OJ EPO 1986, 337)). In the present case the Examining Division neglected arguments which have been stated in a clear fashion. This has the same effect as if the applicant had not been allowed to put them forward at all. The impugned decision does not deal with the counterarguments of the appellant concerning the objection of lack of clarity. There is also no reasoning as to why the Examining Division cannot accept the arguments of the appellant submitted in its last reply in favour of inventive step.
11. In addition it is clear that the statement of the Examining Division in the appealed decision that no comments or amendments had been filed by the appellant in reply to the last communication is not correct and clearly indicates that the Examining Division considered neither the amended pages of the description nor the appellants arguments filed with its last reply, in particular in relation to the objection of lack of clarity made for the first time in the preceding Examining Divisions communication.
The absence of any indication of the consideration of the amended pages of the description or the appellants arguments put forward in its last reply constitutes a violation of Article 113(1) EPC 1973.
Remittal to the first instance
12. Pursuant to Article 11 of the Rules of Procedure of the Boards of Appeal in the version which entered into force on 13 December 2007 (OJ EPO 2007, 536), when fundamental deficiencies are apparent in the first instance proceedings, the case is remitted to the first instance for further prosecution.
In the present case the first instance proceedings infringed Article 113(1) EPC 1973 and Rule 68(2) EPC 1973, and no special reasons being present in the file or having been mentioned by the appellant for doing otherwise, the remittal is justified.
Reimbursement of the appeal fee (Rule 67 EPC 1973)
13. The appeal is allowed insofar as the decision under appeal is set aside. Since the decision of the first instance clearly contravened Rule 68(2) EPC 1973 and Article 113(1) EPC 1973, and the appellant had to appeal in order to obtain a fully reasoned decision considering its amended description and its counterarguments it is equitable to reimburse the appeal fee pursuant to Rule 67 EPC 1973.
1. The impugned decision is set aside.
I. This appeal is against the decision of the examining division to refuse European patent application No. 01915523.3 on the ground of lack of clarity (Article 84 EPC).
II. The patent application was filed on 28 March 2001. In a first communication, dated 16 May 2003, the examining division objected inter alia that the independent claims did not contain all the essential features of the invention. The appellants were required to state what features in the claims were not known with respect to two documents contained in the International Search Report and what their technical significance was. In a reply dated 19 November 2003 the appellants filed amendments and explained the prior art to the examining division, indicating the differences the invention in their opinion represented with respect to it.
The examining divisions next procedural step was to summon the appellants to oral proceedings. In the annex to the summons the objection that the claimed subject-matter was a non-invention (Article 52(2) EPC) was raised for the first time. At the oral proceedings on 2 April 2004 the appellants filed amended claims. The examining division regarded these claims as overcoming all previous objections and indicated its intention to grant a patent.
A communication under Rule 51(4) EPC was issued on 1 June 2004. In an annex a new document was introduced:
D4: G. May Yip, Incremental, generational mostly-copying garbage collection in uncooperative environments, Thesis, The Department of Electrical Engineering and Computer Science, MIT, May 1991.
The examining division informed the appellants that D4 was now regarded as the closest prior art. A comparison of the invention and D4 was made, leading to the conclusion that the subject-matter of the claims filed at the oral proceedings lacked an inventive step. The examining division explained that it therefore had amended these claims. The features of dependent claims 8 and 15, said to be essential, had been inserted in independent claims 1 and 9, respectively, together with a passage taken from the description. The independent claims had been drafted in two-part form based on D4. Claims 8 and 15 had been deleted and the description correspondingly modified.
The appellants sharply protested against this course of action, which they qualified as a substantial procedural violation, and disagreed with the majority of the amendments made as well as with the examining divisions analysis of D4. The examining division then issued a communication pursuant to Article 96(2) EPC, arguing that the modifications it had proposed to the claims were minor but nevertheless necessary, that it could not discern any gross procedural violations, and that a decision according to the state of the file would be rendered without further delay if the appellants so desired.
By letter dated 20 April 2005 the appellants filed amended claims and indicated that they did not wish to engage in further correspondence prior to grant. If the examining division felt unable to grant a patent on the basis of the papers on file the appellants requested a formal decision which could be taken to appeal. Following this, the examining division issued a brief communication pursuant to Article 96(2) EPC, dated 6 June 2005, stating that the first examiner, after several unsuccessful attempts to contact the appellants representative by telephone, had left him a voice mail message. The message was that the examining division was in a position to issue a negative decision on the basis of the documents and comments on file unless the applicants informed the division that it was not their actual intention not to request oral proceedings. The appellants replied by letter dated 5 August 2005 that the examining division had not provided any hint of its current reasoning on the basis of which it intended to issue a decision. They confirmed their wish not to receive further communications pursuant to Article 96(2) EPC or attend further oral proceedings at first instance.
The application was refused on 31 August 2005.
III. In the statement of grounds of appeal dated 10 January 2006 the appellants requested that the decision be set aside and a patent be granted on the basis of the claims that were filed at the oral proceedings before the examining division.
The appellants interpreted the decision in the way that the objection of lack of clarity rested on two points, namely the division of claim 1 into two-part form based on D4 and the use of the expression interior pointer in claim 1. In the appellants view these objections were unsustainable.
IV. The appellants further argued that the examining division had committed a number of substantial procedural violations and requested that the appeal fee be accordingly refunded.
Firstly, it was unreasonable and unfair on the appellants for the wording which had been agreed upon in oral proceedings to be entirely overturned by what amounted to a unilateral continuation of the proceedings on an entirely new basis. Searches should be carried out before holding oral proceedings. If in this case an additional search had been carried out after the hearing, this was quite clearly a procedural violation.
Secondly, it was inappropriate in a communication under Rule 51(4) EPC to propose substantial and radical amendments to the claims, making significant restrictions which were not discussed at the oral proceedings and which the applicants had had no opportunity of commenting on. The correct approach would have been to continue the proceedings in writing by the issuance of a further official communication. As it was, the appellants had no option but to prepare and file translations of the claims into French and German. The claims had since been modified again and would almost certainly need to be retranslated at additional cost at the conclusion of the appeal proceedings. These additional costs to the appellants could have been avoided either by the examining division issuing another official communication and/or by promptly withdrawing the Rule 51(4) communication when it became clear that the proposed amendments were unacceptable to the appellants and proceedings would have to be continued in writing.
Thirdly, the official communication of 6 June 2005 set a deadline for the appellants to meet (effectively, to withdraw a previous request) without giving any indication whatsoever of the basis on which the examining division felt it was in a position to issue a negative decision, as stated in the communication. Neither the communication nor the examiners earlier telephone calls and voicemail message gave any indication of the alleged deficiencies which still remained. It was a procedural violation to require the appellants to remedy the indicated deficiencies within a stated period when, in fact, no such deficiencies had been set out, and it was a significant procedural violation for the examiner to try to force the appellants to take a particular course of action, viz. to rescind an earlier request, while withholding information which must be relevant to whether the appellant wished to take that action. An applicant had a legitimate expectation of being told in advance the precise grounds upon which a decision to refuse is being considered by an examining division.
V. In a communication from the Board of 27 July 2006 the opinion was expressed that the decision under appeal was not well founded and that the claimed subject-matter was patentable. Some amendments to the application mainly of a formal nature were suggested which would enable the Board to order a patent to be granted. The Board considered that the examining division had committed a substantial procedural violation which justified the appeal fee to be reimbursed.
VI. By letter dated 24 August 2006, followed up by a further letter dated 22 November 2006, the appellants filed revised claims 1-25 and description pages 3-7.
Claims 1, 9, 17, 21, 22 and 25 read:
1. A method of garbage collection in a computer memory, including:
(i) on a creation of a memory allocation (a-g) having a size and location in a memory, adding a reference to said allocation to a dynamic tree structure comprising a plurality of linked nodes (40-52), each node being representative of the size and location of a respective memory allocation, and the nodes being ordered within the tree in dependence upon the said location;
(ii) for an in-use pointer (p), searching the tree to determine the memory allocation (c) to which the pointer points; and
(iii) noting the said memory allocation (c) as being unavailable for garbage collection release.
9. A garbage collector including:
(i) means for creating memory allocations (a-g) having a size and location in a memory and for adding a reference to each allocation to a tree structure comprising a plurality of linked nodes (40-52), each node being representative of the size and location of a respective memory allocation, and the nodes being within the tree in dependence upon the said location;