T 0792/01 (Inserted Indicia/PRINCETON) 09-10-2002

I. The appeal is against the decision of the Opposition Division revoking European Patent 0 595 808 based on international application WO 93/02524 (PCT/US91/05174) with international filing date 19 July 1991, claiming no priority.

II. The European patent was granted with a claim 1 reading:

"A method of altering a video image display to provide a substituted display of desired indicia within a portion (11, 13) of the video image display on a frame-to-frame basis in conformity with the selected portion on a frame-to-frame basis, the TV camera (14) being operable at various different perspectives and/or magnifications to create the display, the portion (11, 13) corresponding to a target in the scene; the method comprising:

creating said desired indicia by creating one or more predefined insertable images and storing said images in a memory (27);

using an operator interface (16, 21) to identify one or more landmarks in the scene from the image of the scene in the display and storing a representation of the landmarks in memory;

using the operator interface (16, 21) to select the target in the scene from the image of the scene in the display, the selection of the target being distinct from the identification of the landmarks;

using the representation of the landmarks in the memory to recognise the landmarks in the scene using pattern recognition (17), thereby to determine the location of the target, and hence recognise the position of the portion in the display; and

inserting (20) said desired indicia into said display to replace the portion, thereby to synthesise a modified display (30)."

III. The patent was based on a PCT application which as originally filed contained nine apparatus claims and eleven method claims, of which claim 10, the broadest and sole independent method claim, read:

"10. A method for altering a video image to provide a substituted display of desired indicia within a preselected portion of said video image display on a frame-to-frame basis and independent of the size of said selected portion on a frame-to- frame basis which size is a function of the TV camera perspective employed to create said display, comprising the steps of:

selecting said portion of said display to be substituted,

recognizing said selected portion of said display on a frame-to-frame basis and independent of the size of said portion with respect to said display,

generating a video image of said desired indicia, and

inserting said image of said desired indicia within said recognized portion of said display on a frame-to-frame basis."

IV. An opposition was filed against the patent on the grounds under Article 100(a) and (c) EPC. It was argued inter alia that the feature of claim 1 as granted ".. the selection of the target being distinct from the identification of the landmarks.." had no basis in the application as originally filed. Oral proceedings took place at which the patent was defended on the basis of claim 1 as granted.

V. The Opposition Division found that the application as originally filed only disclosed a selection of landmarks which related to and was equivalent to the selection of a target and thus there was no basis for the feature of claim 1 as granted "... the selection of the target being distinct from the identification of the landmarks..." in the application as originally filed. On this basis the Opposition Division revoked the patent.

VI. An appeal was made by the Appellant (proprietor) against this decision by a Notice of Appeal filed on 11 July 2001, with payment of the appeal fee on the same day, asking that the decision under appeal be set aside and the patent be maintained.

Grounds of Appeal were filed on 28 September 2001 by a newly appointed representative, requesting maintenance of the patent on the basis of a new set of claims including both the claims as granted and new independent method claims 25 and 29, and claims 26 to 28 and 30 to 32 respectively dependent thereon.

The Appellant also filed statements by two expert witnesses in support of its argumentation that the claims had a basis in the original application, and a statement by the Chairman of the Directors of the Appellant explaining, by reference also to two other applications by the same inventors as the patent in suit, including GB 9102995.9, what the Appellant had been working on and what it thought it was obtaining protection for in the present patent.

VII. The Respondent filed a response on 21 March 2002 arguing that the appeal was inadmissible as in the Grounds the Appellant by including new claims 25 to 32, was asking for more than the extent that had been indicated in the Notice of Appeal. Further claims 1 to 24 contravened the requirements of Article 123(2) and, having regard to WO-A-91/15921 (D1), 54 EPC, and new claims 25 to 32 contravened the requirements of Article 123(2), (3) EPC.

The Respondent requested that the appeal be refused and asked for an apportionment of costs under Article 104 EPC by reason of the Appellant's failure to submit documents or discuss issues at the appropriate stage earlier in the proceedings.

VIII. In a communication dated 28 May 2002, the Board of Appeal indicated its provisional opinion on inter alia the following points:

- The appeal appeared to meet the formal requirements of Articles 106, 107 and 108 EPC and of Rule 64 and thus to be admissible.

- Rule 57a EPC provided that the description, claims and drawings may be amended, provided that the amendments are occasioned by grounds of opposition specified in Article 100, even if the respective ground of opposition had not been invoked by the opponent. As in the main request the claims as granted all remained unchanged, the addition of claims 25 to 32 could not be considered as meeting any ground of opposition: such addition could, if anything, only give rise to new objections. It appeared that the main request would have to be refused as contravening Rule 57a EPC.

- The relevance of the arguments in the Grounds of Appeal to the Article 123(2) EPC issue was made difficult to appreciate, by being focussed on terms such as "landmark" and "target" which were not used at all in the original text or had no clear definition therein, rather than on the language of the original text.

- Actual evidence by experts stating what they derived from the original application text was not normally helpful, as this was an issue for decision by the Board. The exception would be where a specific term used had a special meaning in the particular art.

IX. On 9 August 2002, the Appellant filed a further submission stating that since it now had arrived at the view that the novelty of claim 1 as granted could not be upheld over D1 for the reasons given by the Respondent in the opposition, substitution of new claims for independent claims 1 and 17 as granted was proposed, with claim 1 reading:

"1. A method of altering a video image display by substituting a desired indicia within a selected portion (11, 13) of the video image display on a frame-to-frame basis, the substituted indicia being in conformity with the selected portion of video image display on a frame-to-frame basis, a TV camera (14) being operable at various different perspectives and/or magnifications to create the display; the method comprising:

(a)creating said desired indicia by creating one or more predefined insertable images and storing said images in a memory (27);

(b)using an operator interface (16, 21) to identify in an image of a scene an outline of an image to be recognised by a pattern recognition program of an image analyser and storing a representation of the outline in memory;

(c)using the operator interface (16, 21) to select the portion of a video display to be substituted, the selection of the portion of the video display to be substituted being distinct from the identification of the outline;

(d)using the representation of the outline in the memory to recognise the outline in an image of the scene using the pattern recognition program (17), thereby to determine the location of the portion of the video display to be substituted; and

(e)inserting (20) said desired indicia into said display to substitute the portion of the video display, thereby to synthesise a modified display (30);

characterized in that the outline of the image corresponds to a visible marking on a sports playing surface and the inserted image appears to form a part of the sports playing surface."

X. Oral proceedings before the Board were held on 9 October 2002.

XI. The Appellant's argumentation can be summarised as follows:

- With the patentee's system computer generated images can be placed anywhere within the region defined by a mathematical model, including deep within featureless areas such as football pitches and tennis courts.

- It was necessary to read the claims with the eyes of the skilled person.

- Having regard to the description and claims as originally filed, the scope of claim 1 had not been extended compared to that of original claim 10 which could be considered to correspond to present claim 1.

- The substitute claim 1 submitted on 9 August 2002 was in two part form, with the entire language of claim 1 as granted in the preamble reflecting its status as a description of the closest prior art D1. The new characterising language was clearly supported by the specific embodiment and the drawings as originally filed.

- In original claim 10 it was made clear that a "portion" was selected which later on was recognized on a frame-to-frame basis and a video image of the indicia was inserted within that recognized portion. Thus original claim 10 identified the outer borders of the scope intended to be protected. However when reading the description with the eyes of the skilled man it was apparent that there existed a second step in that the "indicia" in the terms of original claim 10 must be located somewhere within said "recognized portion".

- It was not necessary to refer to any specific parts of the description. Rather the description as a whole had to be understood in the light of the common general knowledge in the field concerned. Thus it was necessary to put in the words "direct" and "indirect" at appropriate places, as the skilled person would automatically do so when reading the original text of the patent application.

- It was self-evident for a skilled person that the selection of the area to be substituted had to be done in two steps. Thus the skilled person would understand a text, as in the original application, where it was stated that an "area" which was selected within a given video image and later on, when this "area" was recognized and replaced with a desired content, for example a logo, in the way that it was necessary in a first step to identify an outline of the area and in a second step to identify the exact position of the logo in this area. The mention of the selection of an area indirectly meant to the skilled person that an additional step had to be taken to position the logo. The skilled person in the technical field concerned had to be considered as a very clever software and hardware expert, also being familiar with TV-techniques, since the field concerned was complicated and required a very good knowledge in the fields concerned in order to be capable to create new applications which could be marketed.

- In fact, it was self-evident for a skilled person to minimize the number of pixels to be replaced and therefore only the pixels of the logo were replaced and not the pixels between the logo and the identified outline of the selected area. Also because of that, it followed that there had to be two steps, one identifying the borders of the area and a second step for positioning the logo within those borders. In the description moreover the possibility was explicitly mentioned that a logo could be highlighted by moving it during advertising, which also must indicate that the logo could be positioned in different ways within the selected area.

- The affidavits of the three different experts filed all confirmed that a skilled person would interpret the original documents of the application as disclosing two steps of selection as now claimed by the independent claims.

- Enlarged Board Decision G 1/93, in particular point 16, made clear that where a feature merely excluded protection for part of the subject-matter claimed in the original application, the adding of such feature could not reasonably be considered to give any unwarranted advantage to the applicant and therefore could be maintained in the claim without this violating Article 123(2) or(3) EPC. In the present case added feature (c) was such a feature since it only restricted protection.

XII. The Respondent's argumentation can be summarised as follows:

- Throughout the original description and claims it was made clear that only a single selection step was used, nowhere was it hinted at that this could be divided into two substeps. In particular the following parts of the original application text (PCT/WO 93/02524) all suggested that only one step existed:

page 2, line 29 to page 3, line 2;

page 3, lines 21 to 29;

page 8, lines 14 to 27;

page 11 lines 2 to 7;

page 16, line 28 to page 17, line 9;

- The paragraph bridging pages 16 and 17 which in the opposition proceedings were used by the Appellant to defend its case also taught that the selection step is done in one run. Moreover according to the original application, also a back portion of a player's clothing or even a ball, such as a basket ball, could be used for advertising. Also in those cases there was no mention of two steps.

- Document D1 was only prior art for the purposes of Article 54(3) EPC. The preamble of claim 1 could not be based on such a document.

- Costs were requested on the basis of the Appellant having filed on appeal new independent claims 25 and 29 and corresponding dependent claims 26 to 28 and 30 to 32 respectively. Although no longer maintained by the Appellant after the Board's communication the Respondent had nevertheless incurred much additional work by having to study them and argue against them as not meeting the requirements of Rule 57a EPC. Also the late filed evidence on appeal in the form of three long statements by experts required additional study time, and in the circumstances it would be equitable to make an apportionment of costs in favour of the Respondent.

XIII. The Appellant (proprietor) requested that the decision under appeal be set aside and that the matter be remitted to the Opposition Division for further prosecution on the basis of claims 1 and 17 as filed with letter dated 9. August 2002 and claims 2 to 16 and 18 to 24 as granted.

The Respondent (opponent) requested that the appeal be dismissed and that there be an apportionment of costs in his favour in relation to considering new evidence and inadmissible and/or belated requests submitted by the appellant.

XIV. At the end of the oral proceedings the Board announced its decision.