Insufficient disclosure due to a functional formulation of a claim element

Background

The Appellant-Opponent (A) appealed the decision of the OD to maintain European Patent No. 2 661 050 in amended form. A requested that the decision under appeal be set aside and that the European patent be revoked.

The Appeal

Claim 1 as granted comprises the feature of “multicasting the firmware update comprises multicasting according to an interference matrix that segregates multicast times of nearby data collectors to reduce collisions of packets.”  A argued that the disclosure of this feature was not sufficiently clear and complete such that a person of skill in the art could carry out the feature as required by Art. 83 EPC. The Board agrees with A. 

The Board stated that the passages of the application as filed (paragraph [0051] and Figure 1 do not include an example of an interference matrix. The passages of the description describe the functions of the interference matrix but fail to disclose how a person of skill in the art could implement such a matrix. 

In particular, there is no disclosure of what dimensions the matrix has or what information is included in the elements of the matrix. The Board found that the functional definition of the “interference matrix” is only an invitation to perform a research programme to determine the required matrix information suitable for conducting the described function of reducing packet collisions. Even if a person of skill in the art could derive a suitable claimed feature based on the application, this amounts to an undue burden for the skilled person if the application does not provide adequate information leading necessarily and directly towards the claimed feature. 

Therefore, the Board concluded that the subject matter of claim 1 was not sufficiently disclosed as required by Art. 83 EPC.

Apportionment of costs

A requested an apportionment of costs because R responded in “an untimely and late manner”  (i.e., less than seven days in advance), that it would not attend the oral proceedings. The Board found that this request constituted an amendment to the appeal case, but nonetheless considered the request because it was submitted in response to R’s letter that it would not attend oral proceedings. 

The Board refused the request because, as a matter of principle, each party must bear the costs it has occurred. In addition, the work done by A in preparation of the appeal was not affected by R’s decision not to attend the oral proceedings. Moreover, R’s decision not to attend the oral proceedings did not rise to the level of abuse of procedures.

Decision of the Board of Appeal

The Board decided that the decision under appeal is set aside and that the patent is revoked. A’s request for an apportionment of costs was refused.