Key points
- First, about vico oral proceedings: "Both parties expressed their preference for in-person oral proceedings. Nonetheless, in view of the ongoing Covid-19-pandemic and the potential risks of infection and impediments in travelling, the Board decided to hold the oral proceedings by videoconference, applying its discretion under Article 15a(1) RPBA 2020. Since both parties accepted this format, there is no need for the Board to give more detailed reasoning for its decision."
- Note, the Board does not refer to G 1/21. The decision was taken 21.12.2021. The Board identifies a "discretion" to hold vico oral proceedings without discussing in any way whether the requirements of G 1/21 are met.
- As to Article 123(2) and whether the claims as filed provide basis: " Claims 5 and 7 as filed are each only dependent on claim 1, but not on each other. They are thus not directly linked to each other by the claim structure. Such claims therefore do not form a direct and unambiguous basis for deriving a claim to their combination. This is also in line with established case law (see e.g. T 1362/15, Reasons 4). Therefore, the claims do not provide a literal, and thus explicit basis for a method [as defined in claim 1 as granted]"
- "The proprietor's further argument that multiple dependencies were not allowed or at least not common when drafting applications that covered the US, and the claim structure was to be interpreted before such background, is also not accepted. There being no general prohibition of multiple dependencies in US patent law, the applicant could have claimed the combination either in a dependent claim having multiple dependencies or by a further independent, more restricted claim. As there are not even claim fees due in the PCT procedure (noting that the application as filed is a PCT application), it is equally possible that not having formulated claim 7 to be dependent on claim 5 was simply the deliberate choice of the applicant. Any conclusion as to the intention of the applicant at the time of filing is mere speculation and thus not something directly and unambiguously derivable."
- "The Board therefore finds that claims 5 and 7 of the application as filed relate simply to two different concepts, each of which defines a separate fallback position. The skilled person would thus not derive their combination directly and unambiguously from the set of claims as filed.'
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/03/t-228216-art1232-and-us-style-dependent.html
