This is an opposition appeal around EP 1 889 513 “COMMUNICATION SYSTEM FOR WIRELESS AUDIO DEVICES”. The patentee is US-based Starkey Laboratories, Inc., one of the largest hearing aid manufacturers in the world and a very active patent filer.

The board of appeal’s decision dealt with a situation that often occurs in patent prosecution. Once prior art comes up which wasn’t known at the time of drafting, it may be that the remaining difference is much “leaner” than originally envisaged.

In particular, what if the remaining difference is completely arbitrary? Can it still be inventive?

Apart from this question, the board also makes some interesting remarks on the European claim construction standard, the question of incorporation by reference and the requirements on sufficiency of disclosure.

Audio-streaming hearing aids

The invention generally concerns audio streaming between hearing aids and a remote control. Fig. 8 shows an example system architecture:

Fig. 8 of EP 1 889 513

The problem addressed by the invention was to allow for new forms of content and communication within the context of wireless packet transmission involving a so-called “packet protocol” relating to data packets made up of a header and a payload section.

The solution in claim 1 of the main request (=granted claim 1) referred to a system for radio communications of audio information from a remote source. The system comprises multiple hearing aids, each configured to receive information relating to a so-called “mute state”.

The mute state was defined in claim 1 as “specifying that the output signal is either: the audio information, the output of the microphone being muted; or an output of a microphone of the hearing aid, the audio information being muted; or the audio information blended with the output of the microphone of the hearing aid”.

How to anticipate an “or” combination?

There was a dispute among the parties whether the three alternatives for the mute state listed in claim 1 mean that the prior art has to disclose all three of them or whether only one alternative is enough.

This led the board to elaborate on the European claim construction standard:

3.1.1 Claims of a European patent application are typically directed to a reader skilled in the field (and aware of the respective terminology) of that application (i.e. the field of hearing aids in this case). Consequently, given that such a technically skilled reader does normally not need any further description-based guidance, claims should essentially be read and interpreted on their own merits, rather than with the aid of the description and drawings as suggested by appellant I (see e.g. T 223/05, Reasons 3.5; T 1404/05, Reasons 3.6; T 1127/16, Catchword 1). When doing so, the wording of the claims should typically be given its broadest technically sensible meaning by such a skilled reader.

T 2764/19, Reasons No. 3.1.1

The board took the view that the claim does not require all three alternatives to be present in the prior art to anticipate the subject-matter.

Incorporation by reference in European patents?

One of the prior art documents cited a certain document of the Bluetooth standard. So the question came up whether such an “incorporation by reference” leads to a single, albeit combined, disclosure for the novelty analysis:

The board considers the reference to D10 within the novelty analysis of granted claim 1 in view of D6 to be legitimate as far as it concerns features that are mandatorily present when referring to “Bluetooth” in, for instance, paragraph [0034] of D6. The board agrees with appellant I that the reference to the Bluetooth standard does not necessarily imply that all of its features are implemented. However, the composition of the “packet header” as shown in point 6.4 on page 282 of D10 (i.e. page “116 of 814” of volume 3 of that document) as referred to by the opposition division in point 12.1 of the appealed decision regarding feature F3.3 is a mandatory feature (see the phrase “Bluetooth devices shall use the packets as defined in the following sections” in point 6 of page 275 of D10, i.e. page 109 of 814 of volume 3 of that document).

T 2764/19, Reasons No. 3.2

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Can an arbitrary difference be non-obvious?

In the inventive-step analysis, the board concluded that claim 1 differed from the closest prior art only in that a plurality of wireless hearing aids is present.

But claim 1 did not reveal any purpose of having multiple wireless hearing aids.

In fact, they had no functional relationship in the claim and the board considered that they could be worn by the same person or by multiple persons and could be used at the same time or at different times.

As a result, based on the features of present claim 1, the skilled reader would not have been able to identify the actual technical effect that is to be associated with the feature that distinguishes the subject-matter of claim 1 from that of D6, thereby rendering this distinguishing feature completely arbitrary. It is generally accepted that such arbitrary features are disregarded in the assessment of inventive step (see e.g. T 206/91, Reasons 5.5; T 2044/09, Reasons 4.6; T 1009/12, Reasons 2.7).

T 2764/19, Reasons No. 3.3.3

In the end, claim 1 of the main request was found to lack an inventive step.

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How to sufficiently disclose a special communication protocol?

As understood by the board, claim 1 of all auxiliary requests required the interface to provide a packet protocol with a header including embedded data specifying or conveying at least one “mute state”. Stated differently, the header must include an embedded mute command.

The board took the view that there was no sufficiently clear and complete disclosure in the original application underlying the opposed patent for the skilled person to implement the aspect of how a receiver being in communication with the interface is actually informed about the header comprising an embedded mute command. The board’s reasons were as follows:

The board notes in particular that feature (e) involves the use of a so-called “packet protocol” comprising a header, where, typically, decoding at the receiver side takes place under the basic assumption that the payload data follow the header bits, which in turn convey information for properly interpreting, i.e. parsing, the successive payload data. In claim 1 of all four auxiliary requests, the payload data are partly embedded in the header, thereby deviating from this basic assumption. The decoder at the receiving end must evidently be informed about this fundamental deviation to avoid that the header is simply discarded upon arrival. This information is however missing from the application as filed. Therefore, the board holds that appellant II raised serious doubts, substantiated by verifiable facts, as to sufficiency of disclosure in the current case.

T 2764/19, Reasons No. 4.3

As a result, all auxiliary requests were found to be insufficiently disclosed. The patent was revoked.

You can read the whole decision here: T 2764/19 (Header-embedded control data/STARKEY) of 11.6.2021

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