The University of Indiana South Bend employed Professor Grant, an African-American, in 1999. In 2008, several students complained to University administration that Grant inappropriately canceled classes, used obscene language in class, dismissed two students from his course without following proper procedure, and had permitted a nonemployee to grade student work and access academic records. During an investigation, Grant filed affirmative action complaints against the investigators. Students went to the South Bend Tribune with their concerns. The investigation uncovered discrepancies in Grant’s work history. The University dismissed then-tenured Professor Grant in 2011 for “serious misconduct” based on misrepresentations in his curriculum vitae. The district court rejected all of Grant’s 26 claims. The Seventh Circuit affirmed, rejecting Grant’s claims that the University: discriminated against him on the basis of race; retaliated against him for his complaints against two University officials; denied him due process of law; defamed him in the South Bend Tribune; and breached a contract created by the University’s handbook.
The court issued a subsequent related opinion or order on September 6, 2017.
In the United States Court of Appeals For the Seventh Circuit ____________________ No. 16-1958 OTIS B. GRANT, Plaintiff-Appellant, v. THE TRUSTEES OF INDIANA UNIVERSITY, ET AL., Defendants-Appellees. ____________________ Appeal from the United States District Court for the Southern District of Indiana, Indianapolis Division. No. 1:13-cv-00826-TWP-DML — Tanya Walton Pratt, Judge. ____________________ ARGUED SEPTEMBER 29, 2016 — DECIDED AUGUST 31, 2017 ____________________ Before WOOD, Chief Judge, and RIPPLE and WILLIAMS, Circuit Judges. WILLIAMS, Circuit Judge. The University of Indiana South Bend dismissed tenured Professor Otis Grant in 2011 for “serious misconduct” based on misrepresentations in his curriculum vitae. Grant sued the University, Trustees, and several University employees, filing twenty-six claims arising out of 2 No. 16-1958 his termination. The district court partially granted the defendants’ motion for judgment on the pleadings and later granted the defendants’ motion for summary judgment on the remaining claims. On appeal, Grant contends that the district court inappropriately granted summary judgment on five claims. Grant, who is African American, maintains that the University: (1) discriminated against him on the basis of race; (2) retaliated against him for his complaints against two University officials; (3) denied him due process of law; (4) defamed him in the South Bend Tribune; and (5) breached a contract created by the University’s handbook. In viewing the evidence in the light most favorable to Grant, we find that Grant has failed to produce admissible evidence demonstrating there exists any disputed issue of fact as to these five claims. So we affirm the district court’s judgment in the defendants’ favor. I. BACKGROUND Otis Grant was a professor at the University of Indiana South Bend (“IUSB”) from 1999 until his dismissal in 2011. During that time, he was granted tenure in the College of Arts and Sciences and won several awards. But in 2008, several students complained to University administration that Grant inappropriately cancelled classes, used obscene language in class, dismissed two students from his course without following proper procedure, and had permitted a non-employee to grade student work and access academic records. Executive Vice Chancellor of Academic Affairs, Alfred J. Guillaume, Jr., assigned Dean Lynn R. Williams to investigate the complaints. As a result of his investigation, Williams recommended that Grant be denied access to the College of Arts No. 16-1958 3 and Sciences travel funds for the fiscal year and a salary increase for 2009-10. Williams also accused Grant of being evasive and refusing to provide information or providing false information during the investigation. Guillaume accepted and implemented the recommended sanctions. Grant then filed an affirmative action complaint with the University’s Director of Affirmative Action, alleging Williams took an adverse employment action against Grant because of his race. Meanwhile, the students had also reported their concerns to the local newspaper, the South Bend Tribune. The newspaper submitted several open records requests to the University, including two relating to Grant’s education and training. Guillaume began collecting records for a response, as the University is subject to Indiana’s Access to Public Records Act. In doing so, Guillaume noticed discrepancies in Grant’s employment records and attempted to obtain clarification. But Guillaume’s exchange with both Grant and the institutions listed on Grant’s application materials only raised more concerns. For example, over the course of his employment at IUSB, Grant had changed the name of the judge for whom he clerked from “Richard M. Wright” to “Richard M. Rittenband” and changed the name of the institution from which he received a master’s degree from the “Gestalt Institute of Psychology” to the “Gestalt Institute in Liverpool.” A. Faculty Misconduct Review Committee Guillaume determined that Grant “misled the university when he applied for a faculty position by falsifying his academic credentials in numerous and significant ways” and repeated such misrepresentations throughout his employment. Guillaume presented his findings to the Faculty Misconduct 4 No. 16-1958 Review Committee (“FMRC”) on September 8, 2009, and recommended that Grant be dismissed for serious personal misconduct. Grant was notified and he responded on October 6, 2009. On November 4, 2009, the FMRC issued a written recommendation in which it declined to proceed with a formal hearing, though it noted that the issues were “troubling.” The FMRC reasoned that verification of Grant’s credentials had been the responsibility of the Search and Screen Committee at the time Grant was hired, and it thought that a hearing was not likely to establish “chronic or substantial incompetence or misconduct” as the charges did not relate to Grant’s scholarship or teaching. The FMRC also concluded that, even if the allegations against Grant were true, they could not be the basis for dismissal and removal of Grant’s tenure. Six months later, on May 10, 2010, Guillaume submitted a recommendation for Grant’s dismissal to IUSB Chancellor Uma Mae Reck based on his strong belief that the FMRC had reached the wrong decision. After that, Guillaume had no further involvement in any employment decisions concerning Grant. B. Investigation and Termination Reck met with Grant to discuss Guillaume’s recommendation for dismissal on September 1, 2010. Grant denied all charges and alleged Guillaume was retaliating against him for filing the affirmative action complaint against Williams. Because of Grant’s allegations of discrimination and the contradictory assertions by Guillaume and Grant regarding Grant’s credentials, the University, through its counsel, hired an independent investigation firm, Klink & Company (“Klink”). Reck informed Grant in writing that Klink had been retained to conduct its own review of Grant’s curriculum vitae (“CV”) No. 16-1958 5 and application materials. Meanwhile, Grant provided a 42page response to Reck regarding Guillaume’s recommendation for dismissal. However, he did not include any new documentation to substantiate his credentials. Reck received Klink’s final report on February 22, 2011. Klink noted that Grant had impeded its investigation by failing to provide consent to verify his employment and educational credentials. Klink concluded that many of Grant’s credentials were “vague,” “misleading,” or “otherwise incorrect.” For example, in his 1998 CV, Grant represented that he was a lecturer or instructor at California State College, Howard University, the Armed Forces Institute, and Boston State College. Grant eventually admitted he did not actually work for these institutions, but rather taught workshops lasting only two or three days on their campuses. But Klink was unable to find any evidence to substantiate Grant’s claims that he was a lecturer, instructor, or workshop leader at any of these institutions. Klink detailed several other discrepancies, including Grant’s representation at the time of his application that he was enrolled and pursuing a PhD at Columbia University, representations on his 1998 CV regarding his master’s degree, claimed fellowships and law clerk experience, and discrepancies relating to a letter of recommendation. 1 On March 8, Reck provided the Klink report to Grant, who, on April 25, responded with a 43-page response denying its findings. Grant again failed to provide documentation to support his representations or to contradict the report’s findings. Thereafter, Reck made several attempts to meet with 1 We do not detail each discrepancy found by Klink, as all the details are not necessary to complete our analysis. 6 No. 16-1958 Grant. On September 13, 2011, after more than twenty failed attempts to contact Grant, Reck informed Grant that she found he had “engaged in serious personal and professional misconduct[,]” which “present[ed] a severe threat to the academic integrity and reputation of the University.” R. 110–10 at 2. 2 Under the University’s Academic Handbook, personal misconduct includes dishonest conduct “not limited to, false accusation of misconduct, forgery, alteration or misuse of any university document, record or identification; and giving to a university official information known to be false.” R. 119–6 at 36. Reck notified Grant that he was dismissed from the faculty effective December 31, 2011. The decision to terminate Grant was never submitted to the University Senate Promotion, Tenure and Reappointment Committee. Reck informed Grant that, pursuant to the University’s Academic Handbook, he could request a hearing. The next day, Grant suggested that he planned to appeal Reck’s decision. On September 26, 2011, Reck reminded Grant that he should submit his appeal as soon as possible to allow for a hearing before his date of dismissal. On December 19, 2011, just days before his December 31 dismissal date, Grant submitted a 283page grievance to the Faculty Board of Review (“Faculty Board”). But, again, Grant provided no documentation to substantiate his credentials or dispute Klink’s findings. Beginning in January 2012, the Faculty Board gathered information from Reck and Grant and attempted to schedule a hearing. Eight months later, on August 1, 2012, Grant confirmed with the Faculty Board Chair that he still wished to 2 All record cites are to the record in the United States District Court for the Southern District of Indiana, Case No. 1:13-cv-00826-TWP-DML. No. 16-1958 7 have a hearing in his case. After weeks of unsuccessful attempts to find a mutually agreeable time for the hearing, Grant terminated the Faculty Board process on August 28, 2012 by indicating that he no longer wished to have a hearing. C. District Court Proceedings Grant filed suit against Guillaume, Reck, President Michael A. McRobbie, Indiana University, Indiana University South Bend, and the Trustees of Indiana University (collectively “the defendants”) in connection with his termination. In his First Amended Complaint, Grant alleged twenty-six causes of action. The district court partially granted the defendants’ motion for judgment on the pleadings. The defendants then filed a motion for summary judgment to dispose of the remaining claims, which the district court granted. It found that Grant, who “did not include a substantive fact section in his response brief and rarely cited specific facts in support of his arguments[,]” had failed to submit any evidence to support his claims and had shown no material dispute of fact that required trial. Grant v. Trustees of Indiana Univ., No. 113CV-00826-TWP-DML, 2016 WL 12222344, at *1 (S.D. Ind. Mar. 28, 2016). II. ANALYSIS On appeal, Grant argues that the district court erred in granting summary judgment to the defendants on five of his claims: (1) discrimination on the basis of race; (2) retaliation for filing affirmative action complaints; (3) denial of due process of law; (4) defamation in the South Bend Tribune; and (5) breach of a contract created by the University handbook. The question on summary judgment is whether the defendants have shown that there is no genuine dispute as to 8 No. 16-1958 any material fact and are entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). We review the district court’s grant of summary judgment de novo, resolving all factual disputes and drawing all reasonable inferences in favor of Grant, the non-moving party. Poullard v. McDonald, 829 F.3d 844, 852 (7th Cir. 2016). But Grant is only entitled to the benefit of inferences supported by admissible evidence, not those “supported by only speculation or conjecture.” Nichols v. Michigan City Plant Planning Dep’t, 755 F.3d 594, 599 (7th Cir. 2014) (citation and quotation marks omitted). As the “‘put up or shut up’ moment in a lawsuit,” summary judgment requires a non-moving party to respond to the moving party’s properly-supported motion by identifying specific, admissible evidence showing that there is a genuine dispute of material fact for trial. Harney v. Speedway SuperAmerica, LLC, 526 F.3d 1099, 1104 (7th Cir. 2008) (quoting Johnson v. Cambridge Indus., Inc., 325 F.3d 892, 901 (7th Cir. 2003)). Such a dispute exists when there is sufficient evidence favoring the non-moving party to permit a trier of fact to make a finding in the non-moving party’s favor as to any issue for which it bears the burden of proof. Packer v. Tr. of Indiana Univ. Sch. of Med., 800 F.3d 843, 847 (7th Cir. 2015). Grant has not met this burden. To begin, his Amended Response in Opposition to the Defendants’ Motion for Summary Judgment (Grant’s “response”) included a mere three-sentence “Statement of Material Facts in Dispute,” which stated: Plaintiff is an African American who was an award winning tenured faculty member at Indiana University South Bend for more than a decade. After Plaintiff complained of discrimination and retaliation, Defendant Reck fired Plaintiff, alleging that he misled Indiana University with No. 16-1958 9 his alleged 1998 resume (curriculum vitae), despite the fact that Plaintiff was cleared by the Faculty Misconduct Committee and not afforded a hearing prior to termination. Plaintiff disputes many of the material facts designated by Defendants. R. 118 at 1. In the rare instances where Grant’s response to the defendants’ motion alleged facts to support his arguments, he often failed to cite to admissible evidence supporting such assertions. Elsewhere, Grant simply supported his factual assertions by a general citation to an attached appendix, contrary to Southern District of Indiana Local Rule 56-1 requiring particularity–a rule we have long upheld. Packer, 800 F.3d at 848. And Grant, who is pro se on appeal, was represented by counsel in the district court so we are not obligated to liberally construe his filings. C.f. Nichols, 755 F.3d at 600. On appeal, Grant attempts to identify and argue facts supporting his case. But “[w]e will not consider factual arguments that were not raised below nor … evidence that was not properly cited to the court below.” Packer, 800 F.3d at 849. For the reasons below, we agree with the district court and affirm summary judgment in favor of the defendants on all claims Grant pursues on appeal. A. No Evidence of Discrimination or Retaliation We consider Grant’s discrimination and retaliation claims together, as Grant combines his arguments when asserting these claims. Grant relied on the so-called indirect method of proof to establish his discrimination and retaliation claims. See McDonnell Douglas Corp. v. Green, 411 U.S. 792, 802 (1973). But after this case was briefed on appeal, we discarded the long-standing practice of distinguishing between “direct” 10 No. 16-1958 and “indirect” evidence in analyzing discrimination claims. Ortiz v. Werner Enter. Inc., 834 F.3d 760 (7th Cir. 2016). To be clear, the McDonnell Douglas indirect method of proof remains “a means of organizing, presenting, and assessing circumstantial evidence in frequently recurring factual patterns found in discrimination cases.” David v. Bd. of Tr. of Cmty. Coll. Dist. No. 508, 846 F.3d 216, 224 (7th Cir. 2017). However, it is not the only method of establishing a triable issue of intentional discrimination. Neither is it “the only way to assess circumstantial evidence of discrimination.” Id. Instead, the appropriate question on summary judgment is simply: could a reasonable jury find based on all available evidence that a discriminatory or retaliatory motive caused Grant’s termination? Williams v. Office of the Chief Judge of Cook Cty., 839 F.3d 617, 626 (7th Cir. 2016). On appeal, Grant contends that several pieces of evidence point to an illicit motive. However, since these arguments and citations were not included in his response to the defendants’ motion, we will not consider it on appeal. As we have said before, “[i]t would be unfair to both the [defendants] and the district judge” for us to find there exists a material dispute of fact precluding summary judgment based on evidence offered for the first time on appeal, “when the district court was never alerted to those evidentiary grounds and the [defendants] did not have the opportunity to address them below.” Packer, 800 F.3d at 849. Instead, Grant’s response to the defendants’ motion can be boiled down to two arguments: 3 (1) 3 Grant also argues, pursuant to the traditional McDonnell Douglass indi- rect method of proof, that the district court erred in finding that he failed to offer a comparator. However, he only referenced a comparator in his No. 16-1958 11 Guillaume had a discriminatory motive that he imputed upon Reck to influence her decision to terminate Grant (i.e., the “cat’s paw” theory of liability); and (2) Reck’s proffered reason for terminating Grant–that Grant had committed serious misconduct by making ongoing misrepresentations of his credentials–was merely pretextual. Under the cat’s paw theory of liability, when a biased subordinate who lacks decision-making authority uses a “formal decision maker as a dupe in a deliberate scheme to trigger a discriminatory employment action,” the biased subordinate’s actions are evidence of discrimination. Nichols, 755 F.3d at 600 (citation and quotation marks omitted). This theory requires Grant to show that Guillaume “actually harbored discriminatory animus against him[,]” which he has not done. Id. at 604. In his response, Grant merely offered a conclusory statement, with no citation to any record evidence. See R. 118 at 14 (“[I]t is reasonable to assert that [Reck] had been manipulated by Defendant Guillaume, her subordinate, who does have such a [discriminatory] motive when he intended to bring about adverse employment action against Plaintiff.”). Grant has also failed to show that Guillaume’s “input was a proximate cause of [Grant] getting fired.” Nichols, 755 F.3d at 604. First, Grant never rebutted the defendants’ assertion that Guillaume did not have any input or influence on Grant’s case after submitting it to Reck over a year before Grant’s termination. Next, as we discuss below, Grant offered no evidence showing that Reck did not rely solely on Klink’s findings in reaching her First Amended Complaint and it is well-established that a non-moving party cannot rest on its pleadings when responding to a motion for summary judgment. Harney, 526 F.3d at 1104. So, we do not consider this argument on appeal. 12 No. 16-1958 decision to terminate Grant. Thus, he cannot survive summary judgment on a cat’s paw theory of liability. Next, Grant correctly states that “[i]f Plaintiff can raise a genuine issue about Defendant Reck’s honesty … the case may need to be tried.” R. 118 at 14. However, Grant offered no evidence that Reck’s “stated nondiscriminatory reason was a lie intended to mask unlawful discrimination.” Liu v. Cook Cnty., 817 F.3d 307, 316 (7th Cir. 2016). “The question is not whether the employer’s stated reason was inaccurate or unfair, but whether the employer honestly believed the reason it has offered for the adverse action.” Id. (citation and quotation marks omitted). The evidence supports Reck’s assertion that she believed Grant’s continuing misrepresentations of his credentials rose to the level of serious personal misconduct worthy of his termination. And the court “is not a super personnel department that second-guesses employers’ business judgments.” Riley v. Elkhart Cmty. Sch., 829 F.3d 886, 895 (7th Cir. 2016) (citation and quotation marks omitted). Even so, Grant offered no evidence to show that Reck did not honestly believe she could terminate him for his misrepresentations. And the Board of Trustees clearly agreed with Reck when it formalized Grant’s termination on these grounds. See R. 119–14 at 17. Grant has also provided nothing to demonstrate that any disputed issue of fact exists regarding the accuracy of the Klink findings, which formed the basis of Reck’s belief that Grant misrepresented his credentials. Though Klink’s findings need not be true for Reck to have honestly relied upon the report, Grant may have been able to show pretext if, for example, he had demonstrated that Klink’s report was inaccurate or biased and that he had brought such inaccuracies or No. 16-1958 13 biases to Reck’s attention. However, Grant offers no evidence that Klink was used as a shield to cover-up Guillaume’s conduct in imputing his discriminatory intent upon Reck. Grant cannot rely on wholly conclusory statements without a scintilla of evidence to overcome summary judgment. Because the evidence does not permit a reasonable fact-finder to conclude that Reck’s proffered reason for terminating Grant was pretextual, the district court properly granted summary judgment to the defendants on Grant’s discrimination and retaliation claims. B. No Deprivation of Procedural Due Process Grant next alleges he was deprived of due process pursuant to 42 U.S.C. § 1983. We conduct a two-fold analysis of procedural due process claims. Pugel v. Bd. of Trustees of Univ. of Ill., 378 F.3d 659, 662 (7th Cir. 2004). We must first determine whether Grant was deprived of a protected interest. If we find that he was, we must then determine what process Grant was due. Id. The record reflects that, as a tenured professor at IUSB, Grant could only be terminated for good cause. It is well-established that a public employee who can only be terminated for good cause has a constitutionally protected property interest in continued employment. See Carmody v. Bd. of Tr. of Univ. of Illinois, 747 F.3d 470, 474 (7th Cir. 2014); Harbaugh v. Bd. of Educ. of City of Chicago, 716 F.3d 983, 986 (7th Cir. 2013); Gilbert v. Homar, 520 U.S. 924, 928–29 (1997); Cleveland Bd. of Educ. v. Loudermill, 470 U.S. 532, 538–39 (1985). Because Grant was fired, he was deprived of his protected interest in continued employment. We must next determine what process Grant was due. He maintains that the defendants denied him due process by terminating him without following the process outlined in the 14 No. 16-1958 University’s handbook. We have tirelessly reminded litigants that our determination of whether the requirements of federal due process were satisfied is different from a determination of whether there was perfect compliance with an institution’s rules. The process outlined in the IUSB handbook does not constitute the process required by the federal Constitution. See Osteen v. Henley, 13 F.3d 221, 225 (7th Cir. 1993). Instead, due process “is flexible and requires only such procedural protections as the particular situation demands.” Riano v. McDonald, 833 F.3d 830, 834 (7th Cir. 2016) (citation and quotation marks omitted). The cornerstone of due process is notice and the opportunity to be heard “at a meaningful time and in a meaningful manner.” Mathews v. Eldridge, 424 U.S. 319, 333 (1976) (citation and quotation marks omitted). Generally, the adequacy of the post-termination process informs our analysis of the sufficiency of the pre-termination process. See Carmody, 747 F.3d at 474. However, Grant’s “decision to bow out of the post-termination hearing–a decision he made freely–forecloses his due process claim to the extent it is premised on that hearing.” Id. at 479. 4 So, we need only analyze the sufficiency of the University’s pre-termination process. See Loudermill, 470 U.S. at 545. We must balance three factors to determine whether the University’s pre-termination process failed to meet the Constitutional minimum: (1) the private interest affected by the 4 Grant contends that he did not waive his right to argue the insufficiency of his post-termination hearing based on Baird v. Board of Education for Warrant Cmty. Unit Sch. Dist. No. 205, 389 F.3d 685 (7th Cir. 2004). We are not persuaded by his argument, since, unlike the plaintiff in Baird, Grant chose not to accept or appear at the available proceedings. See id. at 695. No. 16-1958 15 official action; (2) “the risk of erroneous deprivation of such interest through the procedures used, and the probable value, if any, of additional or substitute procedural safeguards”; and (3) the University’s interest, “including the function involved and the fiscal and administrative burdens that the additional or substitute procedural requirement would entail.” Mann v. Vogel, 707 F.3d 872, 879 (7th Cir. 2013) (brackets omitted) (citation and quotation marks omitted). The first factor indisputably favors Grant as he has a substantial interest in retaining his job. See Homar, 520 U.S. at 932 (recognizing the “severity of depriving someone of the means of his livelihood”). In considering the second factor, the evidence shows Grant was afforded notice and a detailed explanation of the charges and the evidence against him at every step of the twoyear process (from 2009 until his termination on December 31, 2011). Grant was also provided with ample and meaningful opportunity to be heard and to refute the charges against him, as demonstrated by the numerous written responses he submitted, ranging from 42 to 300 pages in length, and meetings with University officials. There is no evidence that these opportunities to be heard were not meaningful. Furthermore, the evidence shows that the University, not Reck, hired Klink, an independent investigation firm with no bias or stake in the outcome of its investigation, and Grant was provided with the opportunity to be heard by Klink, but refused to take advantage of this opportunity. There is also no value to additional procedural safeguards here. While we have said that “the right to additional procedural protections does not depend on a demonstration of ‘certain success,’” the deprivation alleged must involve issues that “plausibly would have prevented an erroneous deprivation.” Clancy v. Office of Foreign Assets Control of the U.S. Dep’t of Treasury, 559 F.3d 595, 601 16 No. 16-1958 (7th Cir. 2009). Even after years of discovery in this suit, Grant has not offered any evidence that the charges against him are false. The final factor also weighs in favor of the defendants. Additional procedures would be an unnecessary burden on the defendants, who have a legitimate interest in protecting the integrity of the University. It is reasonable to believe that the University’s reputation, as a state institution subject to accrediting agencies, government bodies, and public criticism, rests partially upon its retention of faculty with verified credentials. And, as our analysis of the second factor showed, additional procedures could not plausibly have prevented an erroneous deprivation. Here, the balance clearly shows that the pre-termination process Grant received complies with the requirements of due process, and the district court properly disposed of this claim on summary judgment. C. No Specific Evidence to Support Defamation Claim A cornerstone of a defamation claim under Indiana law is the falsity of any alleged defamatory statement. Trail v. Boys & Girls Club of Nw. Indiana, 845 N.E.2d 130, 136 (Ind. 2006). This is where Grant’s claim fails. In his response to the defendants’ motion, Grant makes a broad, unsupported assertion that statements in the South Bend Tribune articles are false. But rather than point to any specific statement or cite any specific evidence, Grant merely cites to his 12-page attachment of various newspaper articles and to Reck’s entire 237-page deposition, in violation of Southern District of Indiana Local Rule 56-1. And we refuse to “scour the record in search of evidence to defeat a motion for summary judgment[.]” Harney, 526 F.3d No. 16-1958 17 at 1104. Therefore, the district court properly granted the defendants’ motion for summary judgment on Grant’s defamation claim. D. No Evidence of a Contract Finally, Grant contends that when he was granted tenure, the University entered into a contract with him, governed by the University’s handbook. He alleges that the University breached this contract by terminating him without following the IUSB handbook’s outlined procedure. However, Indiana University’s handbook cannot form the basis of any contract alone, as it expressly disclaims the creation of any legal rights and applies this disclaimer to all campus-specific handbooks. See Packer, 800 F.3d at 853. Grant offered no evidence to overcome the handbook’s disclaimer, so his contractual theory is wholly unsupported. The district court properly disposed of this claim on summary judgment. III. CONCLUSION We AFFIRM the district court’s grant of summary judgment in favor of the defendants on all claims.
Seventh Circuit upholds the termination of a tenured African-American university professor, based on misrepresentations in his curriculum vitae.


Definition: thus, so, in this manner.
3779 hoútō (an adverb, derived from the demonstrative pronoun, 3778 /hoútos, "this") – like this . . .; in this manner, in this way (fashion), in accordance with this description (i.e. corresponding to what follows); in keeping with; along this line, in the manner spoken.
1. by virtue of its native demonstrative force it refers to what precedes; "in the manner spoken of; in the way described; in the way it was done; in this manner; in such a manner; thus, so": Matthew 6:30; Matthew 11:26; Matthew 17:12; Matthew 19:8; Mark 14:59; Luke 1:25; Luke 2:48; Luke 12:28; Romans 11:5; 1 Corinthians 8:12; 1 Corinthians 15:11; Hebrews 6:9; (2 Peter 3:11 WH Tr marginal reading); οὐχ οὕτως ἔσται (L Tr WH ἐστιν (so also T in Mark)) ἐν ὑμῖν, it will not be so among you (I hope), Matthew 20:26; Mark 10:43; ὑμεῖς οὐχ οὕτως namely, ἔσεσθε, Luke 22:26; ἐάν ἀφῶμεν αὐτόν οὕτως namely, ποιοῦντα, thus as he has done hitherto (see ἀφίημι, 2 b.), John 11:48; it refers to similitudes and comparisons, and serves to adapt them to the case in hand, Matthew 5:16 (even so, i. e. as the lamp on the lampstand); Matthew 12:45; Matthew 13:49; Matthew 18:14; Matthew 20:16; Luke 12:21 (WH brackets the verse); ; John 3:8; 1 Corinthians 9:24; likewise οὕτως καί, Matthew 17:12; Matthew 18:35; Matthew 24:33; Mark 13:20; Luke 17:10. οὕτως ἔχειν, to be so (Latinsic oritasehabere): Acts 7:1; Acts 12:15; Acts 17:11; Acts 24:9. it serves to resume participles (Josephus, Antiquities 8, 11, 1; b. j. 2, 8, 5; see examples from Greek authors in Passow, under the word, 1 h.; (Liddell and Scott, v. I. 7)): Acts 20:11; Acts 27:17; but John 4:6 must not (with Winers Grammar, § 65, 9 at the end; Buttmann, § 144, 21) be referred to this head, see Meyer (and 5 d. below); on Revelation 3:5, see 5 c. below. It takes the place of an explanatory participial clause, equivalent to matters being thus arranged, under these circumstances, in such a condition of things (Buttmann, § 149, 1; cf. Winer's Grammar, § 60, 5): Romans 5:12 (this connection between sin and death being established (but this explanation of the οὕτως appears to be too general (cf. Meyer ad loc.))); Hebrews 6:15 (i. e. since God had pledged the promise by an oath); equivalent to things having been thus settled, this having been done, then: Matthew 11:26; Acts 7:8; Acts 28:14; 1 Corinthians 14:25; 1 Thessalonians 4:17; 2 Peter 1:11; cf. Fritzsche, Commentary to Romans, i., p. 298. Closely related to this use is that of of οὕτως (like Latinita foritaque,igitur) in the sense of consequently (cf. English so at the beginning of a sentence): Matthew 7:17; Romans 1:15; Romans 6:11; Revelation 3:16 ((cf. Fritzsche on Matthew, p. 220); Passow, under the word, 2; (Liddell and Scott, under the word, II.)).
2. it prepares the way for what follows: Matthew 6:9; Luke 19:31; John 21:1; οὕτως ἦν, was arranged thus, was on this wise (Winers Grammar, 465 (434); Buttmann, § 129, 11), Matthew 1:18; οὕτως ἐστι τό θέλημα τοῦ Θεοῦ followed by an infinitive, so is the will of God, that, 1 Peter 2:15. before language quoted from the O. T.: Matthew 2:5; Acts 7:6; Acts 13:34, 47; 1 Corinthians 15:45; Hebrews 4:4.
3. with adjectives, so (Latintam, marking degree of intensity): Hebrews 12:21; Revelation 16:18; postpositive, τί δειλοί ἐστε οὕτως; Mark 4:40 (L Tr WH omit); in the same sense with adverbs, Galatians 1:6; or with verbs, so greatly, 1 John 4:11; οὕτως ... ὥστε, John 3:16. οὐδέποτε ἐφάνη οὕτως, it was never seen in such fashion, i. e. such an extraordinary sight, Matthew 9:33 (ἐφάνη must be taken impersonally; cf. Bleek, Synoptative Erklär. i. p. 406 (or Meyer at the passage)); οὐδέποτε οὕτως εἴδομεν, we never saw it so, i. e. with such astonishment, Mark 2:12.
c.): καθάπερ ... οὕτως, Romans 12:4; 1 Corinthians 12:12; 2 Corinthians 8:11; καθώς ... οὕτως, Luke 11:30; Luke 17:26; John 3:14; John 12:50; John 14:31; John 15:4; 2 Corinthians 1:5; 2 Corinthians 10:7; 1 Thessalonians 2:4; Hebrews 5:3; οὕτως ... καθώς, Luke 24:24; Romans 11:26; Philippians 3:17; ὡς ... οὕτως, Acts 8:32; Acts 23:11; Romans 5:15, 18; 1 Corinthians 7:17; 2 Corinthians 7:14; 1 Thessalonians 2:8; 1 Thessalonians 5:2; οὕτως ... ὡς, Mark 4:26; John 7:46 (L WH omit; Tr brackets the clause); 1 Corinthians 3:15; 1 Corinthians 4:1; 1 Corinthians 9:26; Ephesians 5:28; James 2:12; οὕτως ὡς ... μή ὡς, 2 Corinthians 9:5 (G L T Tr WH); ὥσπερ ... οὕτως, Matthew 12:40; Matthew 13:40; Matthew 24:27, 37, 39; Luke 17:24; John 5:21, 26; Romans 5:12, 19, 21; Romans 6:4; Romans 11:31; 1 Corinthians 11:12; 1 Corinthians 15:22; 1 Corinthians 16:1; 2 Corinthians 1:7 R G; Galatians 4:29; Ephesians 5:24 R G; after καθ' ὅσον, Hebrews 9:27f; οὕτως ... ὅν τρόπον, Acts 1:11; Acts 27:25; ὅν τρόπον ... οὕτως, 2 Timothy 3:8 (Isaiah 52:14); κατά τήν ὁδόν ἥν λέγουσιν αἵρεσιν οὕτω κτλ., after the Way (i. e. as it requires (cf. ὁδός, 2 a. at the end)) so etc. Acts 24:14.
a. (ἔχει) ὅς (better ὁ) μέν οὕτως ὅς (better ὁ) δέ οὕτως, one after this manner, another after that, i. e. different men in different ways, 1 Corinthians 7:7 (πότε μέν οὕτως καί πότε οὕτως φάγεται ἡ μάχαιρα, 2 Samuel 11:25).
b. οὕτως, in the manner known to all, i. e. according to the context, so shamefully, 1 Corinthians 5:3.
c. in that state in which one finds oneself, such as one is (cf. Winer's Grammar, 465 (434)): τί με ἐποίησας οὕτως, Romans 9:20; οὕτως of those εἶναι, μένειν who remain unmarried, 1 Corinthians 7:26, 40; ὁ νικῶν οὕτως περιβαλεῖται viz. as (i. e. because he is) victor (others in the manner described in verse 4), Revelation 3:5 L T Tr WH.
e. in questions (Latinsicine?) (English exclamatory so then, what): Mark 7:18 (German sonach) (others take οὕτως here as expressive of degree. In Matthew 26:40, however, many give it the sense spoken of; cf. too 1 Corinthians 6:5); οὕτως ἀποκρίνῃ; i. e. so impudently, John 18:22; with an adjective, so (very), Galatians 3:3. (But these examples, although classed together by Fritzsche also (Commentary on Mark, p. 150f), seem to be capable of discrimination. The passage from Galatians, for instance, does not seem to differ essentially from examples under 3 above.) f. In classical Greek οὕτως often, after a conditional, concessive, or temporal protasis, introduces the apodosis (cf. Passow, under the word, 1 h.; (Liddell and Scott, under the word I. 7)). 1 Thessalonians 4:14 and Revelation 11:5 have been referred to this head; Buttmann, 357 (307); (cf. Winer's Grammar, § 60, 5 (especially a.)). But questionably; for in the first passage οὕτως may also be taken as equivalent to under these circumstances, i. e. if we believe what I have said (better cf. Winer's Grammar, as above); in the second passage οὕτως denotes in the manner spoken of, i. e. by fire proceeding out of their mouth.
Or (before a vowel houtos hoo'-toce adverb from houtos; in this way (referring to what precedes or follows) -- after that, after (in) this manner, as, even (so), for all that, like(-wise), no more, on this fashion(-wise), so (in like manner), thus, what.


text:
T 631/08 - (too?) many non-technical features (to be) ignored?
Photo by Xuan Che obtained via Flickr.
This is an appeal lodged by the applicant against the decision of the examining division late 2007. Oral proceedings were held on 7 March 2014. On 7 March 2014, the Board of Appeal dismissed the appeal, as the Board considered the claims to lack inventive step.
The Board seems to consider a plurality of differences with the prior art to be non-technical, for different reasons, and did not acknowledge any contribution to inventive step from any of the distinguishing features. In my opinion, the decision shows in particular how difficult such analysis is - and in my opinion, the decision could easily have been different.
Before presenting the decision and the background of the case, let me cite some paragraphs of the Guidelines, as not all readers may be familiar with examination of claims comprising a mix of technical and non-technical features and/or computer-implemented inventions, and also because the Guidelines were considerably redrafted as to this topic in the 2013 edition.
In considering whether the subject-matter of an application is an invention within the meaning ofArt. 52(1), there are two general points the examiner must bear in mind. Firstly, any exclusion from patentability under Art. 52(2) applies only to the extent to which the application relates to the excluded subject-matter as such (Art. 52(3)). Secondly, the subject-matter of the claim should be considered as a whole, in order to decide whether the claimed subject-matter has a technical character. If it does not, there is no invention within the meaning of Art. 52(1).
It must also be borne in mind that the basic test of whether there is an invention within the meaning ofArt. 52(1) is separate and distinct from the questions whether the subject-matter is susceptible of industrial application, is new and involves an inventive step. Technical character should be assessed without regard to the prior art (see T 1173/97, confirmed by G 3/08).
It should be noted that the assessment of technical character should not stop as soon as it has been established that the claim as a whole is not excluded from patentability under Art. 52(2) and (3). In claims comprising technical and non-technical aspects, each aspect has to be evaluated to see if it contributes to the technical character of the claimed subject-matter, since this is relevant for assessing inventive step (see G-VII, 5.4).
It is legitimate to have a mix of technical and "non-technical" features appearing in a claim, and the non-technical features may even form a major part of the claimed subject-matter.
Inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject-matter of the claim for solving a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing inventive step.
The non-technical aspects of the claim(s) are identified; a requirements specification (see G-VII, 5.4.1) is derived from the non-technical aspect(s) set out in the claims and the description so that the person skilled in the art of a technical field (e.g. an expert in computer science) is informed of the non-technical concept.
The closest technical prior art is selected on the basis of the technical aspects of the claimed subject-matter and the related description.
The differences from the closest prior art are identified.
If there are none (not even non-technical differences), an objection under Art. 54 is raised.
If the differences are not technical, an objection under Art. 56 is raised. The reasoning for the objection should be that the subject-matter of a claim cannot be inventive if there is no technical contribution to the art, i.e. if there is no technical problem solved by the claimed subject-matter vis-à-vis the closest prior art.
If the differences include technical aspects, the following applies: firstly, the objective technical problem is formulated, taking into account the requirements specification as under point (i) above; the solution of the objective technical problem must comprise the technical aspects of the identified differences; secondly, if the solution of the technical problem is obvious to the person skilled in the art, an objection under Art. 56 is raised.
However, if the claimed subject-matter specifies an apparatus or a technical process for carrying out at least some part of the scheme, that scheme and the apparatus or process have to be examined as a whole. In particular, if the claim specifies computers, computer networks or other conventional programmable apparatus, a program therefor, or a storage medium carrying the program, for executing at least some steps of a scheme, it may comprise a mix of technical and non-technical features, with the technical features directed to a computer or a comparable programmed device. In these cases, the claim is to be examined as a "computer-implemented invention" (see below).
Subject-matter relating to aesthetic creations will usually have both technical aspects, e.g. a 'substrate' such as a canvas or a cloth, and aesthetic aspects, the appreciation of which is essentially subjective, e.g. the form of the image on the canvas or the pattern on the cloth. If technical aspects are present in such an aesthetic creation, it is not an aesthetic creation ‘as such’ and it is not excluded from patentability.
A feature which might not reveal a technical aspect when taken by itself could have a technical character if it brings about a technical effect. For example, the pattern of a tyre tread may actually be a further technical feature of the tyre if, for example, it provides improved channelling of water. On the contrary, this would not be the case when a particular colour of the sidewall of the tyre serves only an aesthetic purpose.
The aesthetic effect itself is not patentable, neither in a product nor in a process claim.
For example, features relating solely to the aesthetic or artistic effect of the information content of a book, or to its layout or letterfont, would not be considered as technical features. Neither would features such as the aesthetic effect of the subject of a painting or the arrangement of its colours or its artistic (e.g. Impressionist) style be technical. Nevertheless, if an aesthetic effect is obtained by a technical structure or other technical means, although the aesthetic effect itself is not of a technical character, the means of obtaining it may be. For example, a fabric may be provided with an attractive appearance by means of a layered structure not previously used for this purpose, in which case a fabric incorporating such structure might be patentable.
A further technical effect which lends technical character to a computer program may be found e.g. in the control of an industrial process or in the internal functioning of the computer itself or its interfaces under the influence of the program and could, for example, affect the efficiency or security of a process, the management of computer resources required or the rate of data transfer in a communication link.The processing of data which represents physical entities (such as an image stored as an electric signal), resulting in a change in those entities (T 208/84), also denotes a further technical effect.
A feature relating to a presentation of information defined solely by the content of the information does not have a technical character. This applies whether the feature is claimed as a presentation of the information per se (e.g. by acoustical signals, spoken words, visual displays, books defined by their subject, gramophone records defined by the musical piece recorded, traffic signs defined by the warning thereon) or as relating to processes and apparatus for presenting information (e.g. features of indicators or recorders defined solely by the information indicated or recorded would not be technical features).
A feature which relates to the manner in which cognitive content is conveyed to the user on a screen normally does not contribute to a technical solution to a technical problem. An exception would be if the arrangement or manner of presentation can be shown to have a credible technical effect (T 1741/08,T 1143/06).
With this background, the reader is invited to develop and share his thoughts to the decision below. Did the examining division and the Boards follow the principles set out in the Guidelines, (where) did they deviate from it, why did they not refer to "presentation of information", is the claim inventive or not, is a better inventive step argumentation possible in support of inventive step? Please feel invited to post your comments to this blog!
The examining division refused the application pursued by the applicant on the basis of a main set of claims and a further limited auxiliary set of claims. According to the reasons for the decision given in writing and posted on 24 July 2007, neither the main set nor the auxiliary set of claims included subject matter inventive over prior art document D1 (WO 00/02389 A1 published in January 2000). The claimed invention, as argued in the decision, was distinguished from the prior art by "analysis means (76) for analysing a preference of a target user on the basis of the input information of a similar user" (claim 1 of the main request) and "the added feature of 'value added content'" (claim 1 of the auxiliary request). The invention was to be considered as an obvious computer implementation of non-technical business rules. Profiling data of similar users for determining preferences and giving recommendations on the basis of such information did not solve any technical problem. Speeding up the process of sending data to users, an advantage promoted by the applicant, was at best a side-effect of the implementation of the business rules.
In the oral proceedings before the Board of Appeal, held on 7 March 2014, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of this new main request.
processing means (72) for processing content data itself to be transmitted to said terminal device into value-added content for said target user according to the analysis results by said analysis means, wherein said content data storage means (101) stores a plurality of pieces of image data, and said communication means (103) receives positional information within said image data indicated by each of said users, said positional information indicating the centre of an area of said image data comprising features which are of interest to each of said users, and said analysis means (106) comprises extraction means for extracting said positional information of said similar user, which shows that an image area comprising features resembling the features comprised within an image area indicated by said positional information of the target user, stored in said input information storage means (105), is indicated, and said processing means (102) improves the image quality of a part of the image data specified on the basis of said positional information of said similar user, extracted by said extraction means (106), more than the image quality of the other parts of the image data."
According to the appellant, the subject matter of claim 1 involved an inventive step over the prior art. The claimed invention provided an innovative way of choosing the parts of an image which were likely to be of most interest to a (target) user and for which the quality should be improved. These parts of the image were specified on the basis of the positional information of a similar user. The positional information of the similar user showed an image area comprising features resembling the features comprised within an image area indicated by the positional information of the target user. The positional information and features of interest were determined by the analysis means that analysed the click data from the target user as well as the click data from a similar user, i.e. from a user having the same preferences. Improving only specific parts of the image had the technical effect and advantage of allowing the amount of image data to be transmitted to be reduced whilst, at the same time, ensuring that features of the image data which were likely to be of interest to the target user were maintained in high-quality. This went above and beyond the common general technical knowledge related to image quality and data reduction and the teachings provided by the cited prior art. Document D1, cited as the closest prior art, was merely related to the transmission of individually targeted advertisements; it did not provide any form of image processing affecting the image quality, let alone the specific image quality processing arrangement of the present invention.
1. The appeal, although admissible, is not allowable for lack of inventive step in the subject matter of claim 1, in particular, as already decided by the examining division in the first instance proceedings.
2. Claim 1 defines an information-processing apparatus for providing content data to a terminal device, i.e. essentially a content server. Its functions encompass, in a first stage, the storage of features of image data which are of interest to certain users connected via a terminal device to the content server, including an exemplary "target user" and a "similar user" as defined in the claim. Subsequently, this information is used to improve the image quality of a part of an image transmitted to the target user. The improved image part comprises features which resemble those that have been found to be of interest to the similar user, and which can thus be assumed to be of interest to the target user. The improvement is relative, namely "more than" the image quality of the other parts of the image data. Hence, according to the appellant, a reduction of the amount of the image data to be transmitted to the target user is achieved since only the areas of interest have to be transmitted in high-quality.
3. Document D1 is undisputedly an appropriate starting point for assessing inventive step. It discloses an information processing apparatus (e.g. D1, figure 5: master server 1 in a content and data processing centre and D1, claim 1) that comprises a content data storage means (e.g. D1, claim 1, feature (a)), an input information storage means (e.g. claim 23, feature (b)), and a communication means (D1, figure 5, communication lines 15, T1, DS3 etc). According to a variant disclosed in D1, the content data provided to the terminal devices (D1: receiver equipped with an interactive receptor) are image data like graphics or slow motion video (see D1, page 5, line 18). The prior art system allows to insert information (text, entertainment material, etc) that is of specific interest for a user into the content data transmitted to the user (see e.g. D1, page 2, lines 1 to 8 and 15 to 18, and page 8, line 17 f. "the content server ... process [sic] the insertion material, be it ... information content as requested by users").
4. Present claim 1 defines, as differences to the prior art, a specific profiling of user preferences and a processing step for improving image quality. The preferences of the target user for particular features of image data are determined by analysing the input information delivered from a similar user, i.e. by analysing and storing the input of another user who has similar interests as the target user regarding the features extracted from the image data.
5. Determining and storing user profiles is typically done for promotion and marketing purposes and does per se not involve the use of technical means or any other technical aspects. Compilation and analysis of data concerning human behaviour and interests are activities closely related to business methods which are excluded from patentability. The Board considers that such activities as profiling of human behaviour for promotion or other business purposes lack technical character and are as such not able to contribute to inventive step even if carried out as a computer implemented process. The appellant has argued that the invention provides an innovative way of choosing the parts of an image that are likely to be of interest to a user. The Board cannot accept this argument since the claimed process performs the same steps a human being might choose [note from Roel: thus, the Board seems to consider it -in part- a mental act] to take in the same circumstances, viz. collect information about users' interests (non-technical), group the users accordingly (non-technical), and present information to a target user on the assumption of similarities of personal interests (non-technical). Merely automating this process involved no inventive step.
6. There remains in claim 1 the step of improving the image quality. Unlike profiling, the improvement of image quality (resolution etc) is possibly, but not necessarily, a technical process. An improvement of image quality for aesthetic purposes, for example, would normally not contribute to the technical solution of a technical problem and thus not qualify as technical in terms of a patentable invention. Present claim 1 defines that the image quality of the image parts likely to be of interest according to the target user's preferences is improved "more than the image quality of the other parts of the image data" (see the claim wording). Hence, the improvement is only a relative improvement between parts of the image, and can in fact be achieved by decreasing the quality of other parts of the image without any improvement of image quality at all (see eg dependent claim 8). Hence, the claimed processing means does not necessarily improve the technical image transmission and rendering process but is simply employed to attract the user's attention to certain information contents, i.e. a kind of "value-added content" as referred to in claim 1. The image improvement as defined in claim 1 is thus not a technical function or feature of the invention and does consequently not contribute to inventive step.
7. For these reasons, the technical contribution provided by the claimed invention to the prior art system of document D1 does not go beyond the normal computer implementation of a non-technical concept of user profiling and content presentation. The requirement of inventive step is thus not fulfilled.
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This decision has European Case Law Identifier: ECLI:EP:BA:2014:T063108.20140307. The whole decision can be found here. The file wrapper can be found here.
"It did not amount to a lack of due care if letters not arriving from the representative were not forwarded to the competent person or were disregarded. This could be regarded as a way of sorting out potential junk mail that arrived in the Appellant's mail room."
EPO Board of Appeal: "'Quite why an official-appearing letter, even in the English language, should be regarded as junk mail was not explained".
For a Euro-PCT application, the European representative Cab did not pay the renewal for the 3rd year. The EPO sends a notice drawing attention to Rule 51(2) EPC, Article 2, No. 5 of the Rules relating to fees (EPO Form 2522) to Appellant's representative. No renewal fee and additional fee (50% of the renewal fee) was paid. The EPO send a notice of loss of rights pursuant to Rule 112(1) EPC (EPO Form 2524) informing that the application was deemed to be withdrawn under Article 86(1) EPC due to non-payment of the 3rd year renewal fee and the additional fee within the time limit.
Cab files a request for re-establishment in respect of the period for payment of the renewal fee pursuant to Article 122 EPC. A statement setting out the grounds on which the request was based and the facts on which the request relied was included. The fee for re-establishment was paid and the omitted act (payment of the third renewal fee plus additional fee) was completed on the same day. As a precautionary measure, oral proceedings were requested in the event that the EPO rejected the request for re-establishment.
As regards all due care and the cause of non-compliance, the following facts were submitted: had received a letter from Han (a foreign agent) requesting that a European patent application be filed for applicant Chem. The responsible person, despite a double-check, erroneously indicated in the database that the instructions for paying renewal fees had to be obtained from Chem and not from Han, who had sent the filing instruction.
The loss of rights communication was sent to the address of Chem too. When at a later moment, the EPO reimbursed the search and examination fees, Cab realized the error and requested re-establishment.
The Receiving Section decided to reject the request, since the 2 month period from the removal of the cause of non-compliance had expired; the removal being triggered by the loss of rights communication and not by the reimbursement.
In appeal, the Board went into the role of the applicant and ruled that the applicant, who had not reacted to any of the letters forwarded to it, had not taken due care.
VIII. As regards the request for re-establishment of rights, on 30 August 2012 the Receiving Section, having sent two communications on 17 August 2011 and 25 April 2012, respectively, decided to reject this request as inadmissible, holding that with the receipt of the loss of rights notice by the docket service and the renewal department within the Appellant's representative's office the error ought to have been discovered, thus removing the cause of non-compliance. The request for oral proceedings was also rejected, with reference to the Board of Appeal decision J 17/03 in which the Board had noted that the Receiving Section had given the appellant - as in the present case - ample opportunity to present its case, during which several letters and communications had been exchanged.
IX. On 26 October 2012 the Appellant filed a notice of appeal. In the statement of the grounds of appeal of 21 December 2012 it claimed that the appealed decision lacked adequate reasoning and the Receiving Section had not respected the Appellant's right to be heard. The Appellant claimed that the decision gave no explanation why the Applicant's submissions were not considered as convincing by the Receiving Section.
XIII. During oral proceedings that took place on 27 November 2013 the Appellant's representatives explained that ….
XIV. As to the Appellant itself, it was to be noted that it never dealt directly with the EPO but always employed local firms who worked together with foreign firms to handle their patent applications. Thus, it was fair to expect mail regarding patents to arrive only through those channels which, in the case at hand, was the appointed representative Han. It was not known to the Appellant's representatives what exactly had happened to the letters sent to the Appellant. But it did not amount to a lack of due care if letters not arriving via the correct channel (i.e., via Han) were disregarded. This could be seen as a way of dealing with junk mail that arrived in the Appellant's mail room. In the decision J 22/92 the Board had decided "in dubio pro reo" that incoming letters had been taken for copies of letters already received by the appointed representative. Therefore, with regard to the Appellant itself, the cause of non-compliance had never been removed at any relevant time.
4. The cause of non-compliance with this time limit was twofold. The first cause was the fact that the Appellant's representatives in Europe, Cab, were of the opinion, when not paying the renewal fee and the additional fee, that they were executing their client's wish to let the patent application lapse. The second cause was the fact that the Appellant thought its wish to pursue the patent application was being carried out by its Korean and European authorised representatives, Han and Cab, respectively.
5. These errors were caused by the mistake which had happened at the beginning of the procedure, when the relevant data were entered into Cab's data base: at that time Mrs S erroneously entered the information that instructions for payment of the renewal fees had to be obtained from the Appellant (Chem) instead of the professional client (Han). This resulted in sending the renewal fee reminders to the Appellant, which reminders remained unanswered and thus lead to the erroneous assumption by Cab that the fee was intended not to have been paid.
6. The cause of non-compliance with a time limit is not just removed when the underlying error is actually discovered by the person concerned but when he or she ought to have noticed the error, taking all due care (J 27/88, point 2.7 of the Reasons). This line of argument has been followed in many cases, e.g. J 5/94, J 27/01 and T 1486/11.
"It must be his responsibility to decide whether an application for re-establishment of rights should be made and, if it is to be made, to determine the grounds and supporting facts to be presented to the European Patent Office"
See T 191/82 of 16 April 1985 (OJ EPO 1985, 189), point 1 of the Reasons. See also J 7/82 (OJ EPO 1982, 391), J 9/86 and T 381/93. On the other hand it is not up to the representative to extend the time period of Rule 136(1) EPC at will by keeping him- or herself intentionally uninformed, as set out in T 1985/11, point 6 of the Reasons, where the board found it irrelevant that the representative had not read the letter when acknowledging its receipt.
8. It needs to be considered, therefore, whether all due care required that Mrs S, the representative in charge of the application, should have taken steps such that she was informed of an incoming loss of rights notice, especially in cases where her firm's employees had inferred the client's wish to let the application lapse only from the fact that all reminders concerning the due time of the fee had remained unanswered. As to this, the Appellant argued that even if Cab's systems had been set up in this way it is not the case that Mrs S would have discovered the error. ….
9. The fact that the decision whether or not to pursue a patent application is up to the applicant and not to the representative - who is dependent on instructions received from the client - has to be taken into account. Assuming that even professional clients such as Han not infrequently choose the way of not giving any express instructions when they intend to let an application lapse, the Board can accept that the - here foreseeable - receipt of a loss of rights notice only gave reason to check the database system for inconsistencies (such as forgotten reminders or returned mail) but was not to be seen as the same red alert as the - non expected - receipt of such a notice under other circumstances.
10. It cannot therefore be assumed that the error would have been discovered if the notice of loss of rights had been forwarded to Mrs S.
11. The loss of rights notice received by the representative's office is therefore considered by the Board not to have constituted the removal of the cause of non-compliance so far as concerns the representative.
12. Although most cases regarding the removal of the cause of non-compliance deal with the point in time when a representative discovered (or ought to have discovered) the error, it is recognised that the person whose knowledge is relevant may also be the applicant itself (see e.g. J 27/88, point 2.3 of the Reasons, J 27/90 (OJ EPO, 1993, 422), point 2.4 of the Reasons; T 840/94, OJ EPO 1996, 680, point 2 of the Reasons; and T 32/04, point 2 of the Reasons).
13. Therefore, it has to be decided whether, and if so when, the cause of non-compliance was removed as regards the Appellant itself, taking all due care. On the one hand, an applicant employing a professional representative to pursue a patent application may rely upon his agent to act diligently and according to its will (J 22/92, T 381/93). On the other hand, even if a representative has acted correctly this does not exempt his client from suffering the consequences of his own mistakes. See J 3/93, point 2.1 of the Reasons, where the board noted that accepting the opposite would mean conceding more rights to a represented applicant than to an applicant acting on its own.
15. The Board accepts that an applicant may quite properly rely primarily on an outside patent firm to see that its interests are being looked after. Circumstances may also show that an applicant who receives a notice from the EPO may bona fide and reasonably believe that it has also been sent to its representative, who is dealing with it. The Board also does not doubt that the Appellant had carefully selected and appointed Han and Cab as its representatives.
16. However these considerations do not address the critical points so far as concerns the Appellant in the present case, namely what happened to the loss of rights notice dated 7 October 2009 which was forwarded to the Appellant by Cab, and/or why the Appellant did not react to it. No doubt there could be many plausible accounts for the Appellant's apparent inaction but if a party wishes to establish that it did not notice, or for some reason did not react to an omission notified to it by a loss of rights notice despite taking all due care it must produce some evidence dealing with the issue and not merely rely on assertions.
This argument was not pursued in such bald terms by the Appellant before the Board (the representative said that she did not know what exactly had happened to the letters forwarded by Cab). The reality is that the Appellant is a large organisation with worldwide activities. Presumably it has some system whereby incoming post at its head office is sorted and directed to the relevant departments, even when such mail is in the English language. No evidence was provided as to what this system was and therefore what might have happened to the loss of rights notice (and indeed the previous renewal-fee reminders which Cab had forwarded). This was despite the fact that the Board in its communication had raised very specific questions about the Appellant's systems. Rather, the answer of the Appellant to this communication was not to provide evidence of what did or might have happened to the loss of rights notice or what was decided to be done about it but largely to rely on general observations and assertions (see Point 14, above).
18. Reliance was also placed on the decision in J 22/92. There, however, the Board appears to have accepted as a fact that the applicant had assumed that documents it received were copies of those already sent to its attorneys and that the applicant was entitled to think in all good faith that the attorneys had already dealt with the problem (see point 3.3.2 of the Reasons). If there had been evidence in the present case that someone within the Appellant's organisation, having considered the loss of rights notice, had for good reason made a similar assumption, then the Board might well have been prepared to accept this. In the absence of such evidence, however, what the consequences of such an assumption might have been do not need to be considered.
20. In the submissions at the oral proceedings before the Board it was asserted in effect that the Appellant had perfectly reasonably chosen to receive mail only via specific channels, i.e. in patent cases via the appointed main representative in Korea (Han). While it was not known to the Appellant's representatives what exactly had happened to the letters forwarded by Cab, it did not amount to a lack of due care if letters not arriving from Han were not forwarded to the competent person or were disregarded. This could be regarded as a way of sorting out potential junk mail that arrived in the Appellant's mail room. Quite why an official-appearing letter, even in the English language, should be regarded as junk mail was not explained. In any event, however, before a decision to disregard a formal letter of this kind can be taken, it has to land on the desk of a relevant and responsible person who can then take such a decision. It cannot amount to the taking of due care if someone in the post room takes it upon themselves to do so. Again, however, no evidence was provided about how the loss of rights notice was or might plausibly have been disregarded in this way.
21. In the absence of any such evidence the Board concludes that the loss of rights notice should have landed on the desk of someone within the Appellant's organisation (presumably someone within the Patent Management Team) and alerted them to the omission to pay the renewal fee, which in turn should have caused that person at least to contact Han and thus Cab. In this way the omission to pay the renewal fee should have come to light. Therefore the Board can only conclude that the cause of non-compliance in the person of the Appellant was removed in the days or weeks after its European representative, Cab, had forwarded the loss of rights notice to the Appellant on 12 October 2009. It does not have to be decided on what precise day the error ought to have been noticed, since the request for re-establishment was not filed until 2 April 2010. There is no evidence suggesting that in a properly run organisation such as the Appellant it would have taken at least until after 2 February 2010 (ie two months before the request was filed) for the error to have been revealed.
22. Thus, the cause of non-compliance was removed more than two months before the request of 2 April 2010 was filed. In consequence, not having met the time period of Rule 136(1) EPC, the request is inadmissible and the Receiving Section's decision to reject it was correct.
This decision has European Case Law Identifier: ECLI:EP:BA:2013:J000113.20131127.
Photo by Asparukh Akanayev obtained via Flickr.
This is an Opposition appeal. The proprietor tried to overcome added subject matter objections by amending the description and figures.
Feature g) comes from the claims a filed, but features i and j do not.
The applicant found an original way to deal with this added subject matter objection: the Main Request comprises amended description and amended drawings. The amendments include, inter alia, deletion of all passages relating to the term "shielding plate" in the description and deletion of Figure 31, the only figure showing a "shielding plate" covering a through-hole which is already closed by a separate member.
The idea is that this would force the skilled person to conclude that the shielding plate corresponded to the stainless plate or breaking plate of the description, as these plates already provided a "shielding function". And thus, claim 1 of the Main Request would not contain subject-matter extending beyond the content of the application as filed.
We'll only discuss the main request.
3.1 Claim 1 as granted is a combination of claims 1, 5 and 54 as originally filed (features a) to h)) and comprises the additional features i) to k), allegedly stemming from the description. Moreover, the description and drawings of the granted patent have been modified by deleting any reference to the term "shielding plate".
3.2 According to the jurisprudence of the Enlarged Board of Appeal (see G 2/10, OJ EPO 2012, 376, point 4.3 of the Reasons, referring to the standards already set in decisions G 3/89 and G 11/91 (OJ EPO 1993, 117 and 125)), it is required that "any amendment to the parts of a European patent application or a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed" (emphasis added by the board). This means that the test for an amendment must be "that after the amendment the skilled person may not be presented with new technical information" (see G 2/10, point 4.5.1 of the Reasons, emphasis added by the board). With regard to a positive feature introduced into a claim (see G 2/10, point 4.5.2 of the Reasons), "it can be examined whether the subject-matter of that feature was disclosed in the application as filed. With respect to the new combination of features which is claimed after the introduction of that feature, it can be examined whether that combination was disclosed in the application as filed" (emphasis added by the board). The standard of comparison when judging any amendment therefore has to be the application - i.e. claims, description and drawings - as originally filed.
Moreover, according to the established case law of the boards of appeal, a claim should be read giving the words the meaning and scope which they normally have in the relevant art. Nevertheless, a patent, being a legal document, may be its own dictionary and may define technical terms and determine how a skilled person has to interpret a specific term when used in the description or the claims. If it is intended to use a word which is known in the art to define specific subject-matter to define a different matter, the description may give this word a special, overriding meaning by explicit definition (see e.g. T 500/01, point 6 of the Reasons, and T 61/03, point 4.2 of the Reasons).
3.3 The mere deletion of passages in the description or deletion of Figure 31 in the documents according to the present Main Request has not been objected to by the respondent. Claim 1 according to the Main Request, which is identical to claim 1 as granted, was amended before the grant of the present patent. In this respect, the board notes that, for examining the ground for opposition under Article 100(c) EPC 1973, it has to be assessed whether claim 1 contains subject-matter which extends beyond the content of the divisional application as filed, in particular (see above) in comparison with the whole of the documents (i.e. claims, description, drawings) as filed. In this regard, the meaning of the term "shielding plate" incorporated in features i) and j) plays a crucial role.
3.4 The term "shielding plate" defines as structural feature a "plate" which is further characterised by its function of "shielding". Moreover, in the context of features i) and j), the term "shielding plate" is associated with further functions, i.e. the "opening portion is closed with a shielding plate" and "can be opened by detaching the shielding plate" when the combustion chamber is actuated. The fact that an opening portion which is closed and opened by detaching a closing element is originally disclosed has not been put into question by the parties. However, it has to be assessed whether it is originally disclosed that said closing element might provide a shielding function as well and might be realised as a plate.
3.5 A plate as such closing a through-hole is disclosed in paragraph  of the A-publication ("the through-hole 1110 is closed by the stainless plate 1111"; "instead of closing the through-hole 1110 by the stainless plate 1111, a breaking plate which is broken, peeled, burnt or detached by pressure or the like due to the combustion of the second gas generating agent may be welded, adhered or heat-sealed to close the through-hole 1110"). As regards the claimed shielding function, when reading claim 1 on its own, the skilled person would understand that a shielding function normally describes a protective function with respect to a further part which has to be protected or shielded from external influences.
- Claim 8 as filed specifies that "a shielding plate is disposed outside of the opening portion", i.e. the plate providing the shielding function is clearly situated "outside" and therefore separated from the part or portion providing the opening function.
- According to pages 7 and 8 as originally filed (corresponding to paragraph  of the A-publication), the "opening portion may be formed by forming a plurality of holes in the peripheral wall of the inner shell, and by closing the holes using breaking members. ... A shielding plate can be disposed outside of the opening portion". The opening portion as defined in this passage comprises holes closed by a breaking member (note: the term "opening portion" would not make sense when describing a part which is always open). The shielding function is further described as to "prevent flame generated in the combustion chamber provided outside the inner shell from coming into direct contact with the opening portion". In the board's view, the skilled person, when reading this passage, would derive only that the shielding plate is an additional part "outside of the opening portion" which protects the breaking member which closes the holes of the opening portion and which is opened (see paragraph ) e.g. by "detaching the breaking member".
- Page 34 of the application as originally filed (paragraph  of the A-publication) describes that "the opening portions 5 comprise a plurality of holes 6 formed in the peripheral wall of the inner shell 4 and a breaking member 7 for closing these holes. As for the breaking member 7, a stainless seal tape is used." The breaking member is formed such that it is not broken by combustion of the first gas generating agent. As a further alternative, it is mentioned that "alternatively, as another way to prevent the opening portions ... it is also possible to cover the opening portions 5 of the inner shell 4 with a shielding plate". Again, the skilled person, reading this passage, will recognise that the opening portion comprises holes and a breaking member, and the shielding plate is an additional part ("to cover the opening portions") which might be provided in addition if the breaking member cannot resist the combustion of the first gas generating agent.
- The embodiment described on page 60 as originally filed (corresponding to paragraph  of the A-publication) shows "a substantially ring-like shielding plate 1186" as shown in Figure 31 and "disposed such as to cover the through-hole 1110 formed in the inner cylindrical member 1104". As depicted in Figure 31 and explicitly mentioned, a "seal tape which closes the through-hole 1110 is protected by the shielding plate 1186". Again, the shielding plate represents an additional part for protecting another part (a "seal tape") which closes the through-hole.
- Page 104 as originally filed (corresponding to paragraph  of the A-publication) mentions "a peripheral wall thereof provided with an opening portion 660", and the "opening portion is closed by a seal tape 622", which according to the appellant should suggest that the opening portion is represented only by a communication hole. However, elsewhere in the said passage, it is said that the "opening portion 660 is formed so that it does not open by combustion of the gas generating agent 609a in the first combustion chamber 605a". Since the function of "opening" is again attributed to the opening portion in this embodiment, the opening portion cannot be represented by a hole alone but must include a closing member, i.e. the seal tape 622 forms part of the opening portion.
3.6 The board therefore concludes that the "shielding" function, according to the application as originally filed, designates a specific function in addition to the closing function that is realised by a closing member (e.g. breaking member or seal tape), i.e. always relating to a separate part (i.e. the "shielding plate") which does not close the holes provided in the inner shell but which is provided "outside of the opening portion" or which "covers the opening portion" in order to protect the opening portion. In particular, there is no disclosure in the application as filed which would suggest that the shielding plate covers the opening portion entirely in a sense that the opening portion would be "closed" by the shielding plate. Therefore, the "shielding plate" feature as claimed is to be construed as meaning a part which is provided in addition to another part which closes the holes.
3.7 To summarise, the application as filed discloses an inner shell of the multistage gas generator that comprises - as part of the opening portion - a breaking member (e.g. a stainless plate, breaking plate or seal tape) which closes the holes of the inner shell. The breaking member is either, due to its design or characteristics, resistant to the flames of the combustion of the first gas generating agent (without the need to provide a further protective part), or is protected by an additional shielding plate outside to cover the opening portion, corresponding to alternatives a and b as identified by the appellant.
As basically admitted by the appellant with regard to the description of the granted patent, it is not originally disclosed that the shielding plate, optionally used as an additional protective part, might be used to close the holes. Such shielding plate, as now claimed by the combination of features i) and j) in claim 1 according to the Main Request, would contain the new technical information that, in addition to the seal tape or breaking member or breaking plate or stainless plate closing the holes in the inner shell originally described as closing members, the shielding member would be a further closing member, i.e. the holes would be closed by two parts. However, the term "shielding plate" already - due to the functional feature "shielding" - has a specific meaning in the context of the application as originally filed and cannot be used for defining a part which closes an opening portion and detaches as specified in features i) and j).
Therefore, the board judges that the amended subject-matter according to claim 1 of the Main Request is not directly and unambiguously derivable by the skilled person from the application as filed.
3.8 The appellant cited paragraphs  and  of the A-publication to show that parts were interchangeable and different parts could be used in combination. However, said passages explicitly relate to "the AIM, the communication hole, the connector, the self-contracting type filter or a combination thereof", not addressing modifications with regard to the member closing the hole. The general remark in paragraph  that "the gas generator can also be realized by combining other parts described in the present specification" is not suitable for deriving directly and unambiguously that a breaking member or plate, which closes the holes of the inner shell, might be replaced by a shielding plate as described in the application as filed, in particular because the shielding plate is originally described only to be an additional protective part protecting the member which closes the hole and not described to be a part which is designed to close the holes.
3.9 The appellant also argued, referring to the deletion of the term "shielding plate" from the description and the deletion of Figure 31 in the documents forming the basis for its Main Request, that the description of the Main Request was clarified so that it no longer referred to any feature in addition to the feature for closing the opening portion. The skilled person was therefore forced to interpret the term "shielding plate" in the light of the remainder of the description, concluding that the shielding plate as claimed corresponded to the breaking plate and the stainless plate listed as members for closing the through-hole.
Without further reference to an additional or optional shielding plate in the description or figures, it has to be assessed whether the term "shielding plate" according to claim 1 describes nothing more than a plate preventing "a flame caused by combustion of the first gas generating agent 1109a from flowing into the second combustion chamber 1105b through the through-hole 1110 to burn the second gas generating agent 1109b", as described on page 60 of the description according to the Main Request for the "stainless plate" or the "breaking plate". However, as regards the requirements of Article 100(c) EPC 1973, it has to be examined whether the claimed subject-matter of the European patent in the light of the amended description was disclosed in the application as filed, i.e. by taking into account the disclosure of the claims, description and drawings of the divisional application as filed.
Page 50 of the amended description, starting with the description of the corresponding example ("Example of AIM 1") of page 60 of the amended description, explicitly refers to "another example of the gas generator for an air bag, which does not form part of the invention but which is useful for a better comprehension thereof". This suggests to the reader of the amended description that the "stainless plate" or "breaking plate" as mentioned on page 60, referring to this example, also does not form part of the claimed invention. Therefore, the board is not convinced by the appellant's argument that the "shielding plate" of claim 1 means nothing more than one of the two plates mentioned on page 60 of the amended description. On the contrary, since the breaking plate is also described on page 60 to be "broken, peeled, burnt or detached ...", or "the inner cylindrical member 1104 may be provided with a notch", the shielding plate as defined in claim 1 according to the Main Request - in the context of the amended specification - cannot be unambiguously equated to a plate described with respect to an example not forming part of the invention. In the board's view, even in the light of the amended description, the feature "shielding plate" as claimed does still relate to an additional part (in addition to the stainless plate or breaking plate, or even the notch provided in the inner cylindrical member) for closing the through-hole.
In particular, the functional feature "shielding" attributed to the "shielding plate" is considered to have a technical meaning within the meaning of a protective part, e.g. preventing the breaking plate which might be burnt from coming into contact with a flame caused by combustion of the first gas generating agent.
Moreover, the example described with reference to Figure 1 (see page 26 ff. of the amended description), under the headline "Mode for Carrying Out the Invention", in which the opening portions comprise a plurality of holes and a breaking member which is specified to be a "stainless seal tape" (see page 34 of the amended description), is also defined as not forming part of the invention, i.e. again a shielding plate as claimed relates to a part which is provided in addition. As to the amended "Brief Description of the Drawings" (see pages 22 to 24 of the amended description), it is explicitly stated (in particular with reference to Figs. 1, 8, 18, 19, 22 to 25, 28 and 32 where a single closing member is shown) that the example shown does not form part of the invention.
Therefore, also in view of the amended description, it must be assumed that a shielding plate as defined in claim 1 according to the Main Request is provided in addition to the breaking members described with regard to the examples not forming part of the invention. However, as already stated above (see point 3.7), it is not directly and unambiguously derivable from the application as filed that a shielding plate is provided as further closing and detaching member in addition to one of the breaking members according to the examples described in the amended description.
3.10 In view of the above, claim 1 of the Main Request contains subject-matter which extends beyond the content of the divisional application as filed. Therefore the ground for opposition under Article 100(c) EPC 1973 prejudices the maintenance of the present patent according to the Main Request. Consequently, the Main Request is not allowable.
This decision has European Case Law Identifier: ECLI:EP:BA:2013:T114711.20131129. The whole decision can be found here. The file wrapper can be found here.
T 2026/10 - What discloses the prior art?
This is an appeal against a decision of the Examining Division to refuse the patent because lack of novelty over document D1 (US4235716A).
D1 discloses an example that seems to fall within the scope of protection of filed claim 1. Consequenlty, Examining Division considered the filed claim not novel. It is undisputed that D1 discloses the example. However, according to the applicant, the material discussed in D1 is not enabled, and, thus, D1 does not belong to the prior art.
The Boards of Appeal decided to teach the parties to the Appeal and us (the reader) how the principle of “enablement of the prior art” works.
Said document disclosed in example 2 a porous silica gel having an average particle size (d50) of 0.5 µm, a pore volume of 1.0 ml/g, a pore width of 10 nm, and a specific surface of 400 m2/g (see column 5, lines 1 to 10). Although D1 discloses neither a method of manufacturing nor a supplier for said porous silica gel, the examining division argued that the inventors of D1 had either bought the product or produced it themselves. It was therefore considered as comprised in the state of the art and anticipated the subject-matter of claim 1.
b) porosity such that when an aqueous dispersion of the particles is dried at least 0.5 ml/g of pore volume as measured by BJH nitrogen porosimetry is from pores having a pore size of 50 nm (600 Å) or smaller."
2.1.1 It is undisputed that D1 discloses in column 5, lines 1 to 19 (example 2), a porous silica gel having an average particle size (d50) of 0.5 µm, a pore volume of 1.0 ml/g a pore width of 10 nm and a specific surface of 400 m2/g.
It is also an undisputed fact that D1 neither explicitly nor implicitly teaches how to manufacture said porous silica gel and that D1 does not mention an origin of or a supplier for said porous material.
2.1.2 In the contested decision the examining division decided that the product in question, namely the porous silica gel, belonged to the state of the art. The porous silica gel had possibly been bought or produced by the authors of D1. Since they used it only as a reagent in their process, they had no reason to disclose how to manufacture it.
2.1.3 This reasoning is partly based on the assumption that the mention of a particular product having specific physical and chemical properties was sufficient to make it available to the public.
2.1.4 However according to the appellant the availability of the porous silica product was not self-evident.
The appellant pointed to the publication date of D1 and argued that in 1978 no method was known which could have resulted in such a material. Preparing the claimed product was a non-trivial task. It had taken the appellant's experts numerous years of research to develop a process for manufacturing it.
According to the appellant, claim 19 of the present application described for the first time a process for the preparation of the claimed dispersions of porous inorganic particles, which process includes the steps of forming a slurry, milling of said slurry, creating a supernatant phase and a settled phase and removing the supernatant phase to separate the two phases and to obtain the settled phase as a final product having the specified parameter values. The appellant stressed that in 1978 (date of filing of D1) no method was known which could have resulted in such a material. The appellant was also not aware of a product such as the silica gel of example 2 of D1 being offered or sold on the market. Consequently, the silica gel of D1 could not have been purchased.
As a consequence, D1 did not make available to the public a teaching helping the skilled person to manufacture said porous silica material.
2.2.1 Article 83 EPC states that a European patent application must disclose the invention in a manner sufficiently clear and complete to be carried out by a person skilled in the art. In accordance with the case law, for the requirement of Article 83 EPC to be met, the skilled person must be able to carry out the invention without undue burden and without the exercise of inventive skill, on the basis of what is disclosed in the application and by using the general knowledge, (see T 694/92, OJ EPO 1997, 408; and T 612/92 of 28 February 1996, Reasons points 11 to 13).
2.2.2 According to the jurisprudence (see for instance T 1026/02, of 5 March 2004, Reasons point 3; T 206/83, OJ EPO 1987, 5; and T 158/91 of 30 July 1991, Reasons point 2.2), the same criteria are to be applied for judging sufficiency of disclosure of a patent application or of a piece of prior art. A prior art document whose teaching does not meet the sufficiency criteria is not enabling and must be disregarded as a prior art (see T 1026/02 of 5 March 2004, Reasons point 10).
2.3.1 Firstly, in the board's judgement, it is improper to brush aside the appellant's detailed arguments by saying that it was "most plausible" that the product in question was "simply purchased" (see the contested decision, page 4, lines 1 to 4). In the board's view, these statements are mere speculative assertions which are unsuited for refuting the appellant's arguments, which had been presented at the oral proceedings before the examining division and in earlier written submissions.
It would have been incumbent on the examining division to produce evidence for their assertions, for instance by showing that the product in question was indeed commonly available, or that its manufacture (or at least the manufacture of porous inorganic particles having very similar characteristics) belonged to the general knowledge. A decision on novelty should not be taken on the basis of plausibility considerations and assumptions which are not supported by evidence or arguments.
2.3.2 Secondly, even assuming the product was bought - for which there is no evidence -, it is clear that in the absence of information about the source, the document would still not be enabling.
In view of the above, and on the basis of the information available to the board and judging from its face value, document D1 only mentions the particular porous silica gel, but neither allows to conclude that the particular porous silica gel was available on the market nor is the skilled person taught its manufacture. Therefore, in this case, D1 is not enabling and said particular porous silica gel does not belong to the prior art.
As a consequence, the subject-matter of claim 1 in accordance with the main request must be considered to be novel having regard to D1 (Article 54 EPC). The contested decision must therefore be set aside.
This decision has European Case Law Identifier: ECLI:EP:BA:2014:T202610.20140502. The whole decision can be found here. The file wrapper can be found here.
T 1765/13 - Twins or clones?

matches:
Art. 52
Art. 52
Art. 52
Art. 54
Art. 56
Art. 56
in dubio


text:
Nov 6, 2001 ... I. STERLING V. BOROUGH OF MINERS VLLE . .... against the officers, the police department, and the Borough of Mi- .... See Roe v. ..... and regulation are insufficient to establish state action); McKeesport Hosp. .... sense of social rejection and internalized homophobia); Gregory M. Here et al., Correlates of.
John V. Ryan - Deputy Executive Director/Chief Counsel. Willie C. ..... New York City Police Department - State Commission of Investigation ...... sociates, and others. ...... "Slim" Rowe (now deceased). ...... Volpe, of East McKeesport, had been.
Pierce v. Society of Sisters (). Argued: March 16, 17, 1925. Decided: June 1, 1925 ... to become effective in 1926 -- requiring parents and others having control of young ... as in the public schools; the college preparatory department has four grades, similar .... Tri-City Central Trades Council, 257 U.S. 184; Nebraska District v.
municipal debt and incorporation of cities through a referendum process. .... Rowe, 383 A.2d 881, 3 Pa. ... elections, election expenses, recounts and contests and all other matters relating ... Perles v. Hoffman, 213 A.2d 781, 419 Pa. 400, 1965: In re: Nomination ...... McKeesport City .... Trout et al., Commonwealth Court , No.

matches: V. v. V. v. v. v.


text:
This page is generated from SCOTXblog data. If you prefer, you can access the Court's official orders list for June 19, 2009.
09-0027 ENGLISH MARINE AGENCY, INC. v. BORDER SHIPYARDS, INC., ET AL.
09-0129 NATIONAL FOOTBALL LEAGUE PLAYERS INCORPORATED AND NATIONAL FOOTBALL LEAGUE PLAYERS ASSOCIATION v. BLAKE'S BAR-B-QUE, INC.
09-0152 BANK OF TEXAS, N.A. v. VR ELECTRIC, INC.
09-0308 JOSE ANTONIO HERRERA v. AMD PROPERTY MANAGEMENT, INC.
09-0347 IN THE MATTER OF E.A.P.
08-0421 THE STATE OF TEXAS, ET AL. v. PUBLIC UTILITY COMMISSION OF TEXAS, ET AL.
08-1033 ALFREDO FLORES, SAM LAJZEROWICZ AND DEBRA TRAPHAGAN v. STAR CAB COOPERATIVE ASSOCIATION, INC., ET AL.
06-0890 NABORS DRILLING, U.S.A., INC. v. FRANCISCA ESCOTO, ET AL.
09-0250 JOHN L. KENNAMER, ET AL. v. ESTATE OF JOHN A. NOBLITT, ET AL.

matches: v. v. v. v. v. v. v. v.