T 0980/08 (Internet-enabled boot loader/INTRINSYC SOFTWARE) 14-03-2012

1. The admissibility of the appeal

In view of the facts set out at points I, II and III above, the appeal is admissible, since it complies with the EPC formal admissibility requirements.

2. The appellant's absence at the oral proceedings

2.1 As announced in advance, the duly summoned appellant did not attend the oral proceedings.

2.2 The purpose of oral proceedings is to give the party the opportunity to present and expand orally its written case and convince the board of the merits of its submissions. However if a party gives up that opportunity the proceedings may continue without it (Rule 71(2) EPC 1973).

2.3 In accordance with Article 15(3) RPBA, the board relied for its decision on the appellant's written submissions. The board, with respect to Article 113(1) EPC 1973, was in a position to decide at the conclusion of the oral proceedings, since the case was ready for decision (Article 15(5, 6) RPBA), and the voluntary absence of the appellant was not a reason for delaying a decision (Article 15(3) RPBA), indeed the appellant had requested a decision on the state of the file in its last submission.

3. The context of the invention

3.1 The invention relates to boot loaders. These are programs for loading an operating system into the memory of a computer and then handing control to that operating system. The boot loader accesses boot information via the Internet for automatically providing, upgrading and recovering device images using a unique device ID. A boot loader can give a user a choice between several operating systems by creating partitions in memory, each partition including a single operating system or user data. The application is directed to embedded devices, such as PDAs and mobile phones, in particular updating or replacing corrupted software of such devices without the need to send the device back to the manufacturer for repair. The boot loader can load a device image (partition) from the Internet using Internet protocols such as HTTP (Hypertext Transfer Protocol). This can, for example, occur as part of an updating feature or an automatic disaster recovery feature from device corruption. The boot loader is operated by a scripting language which may contain instructions to periodically check for updates or to download and execute further scripts from the Internet.

3.2 More specifically, the boot loader comprises an "IP stack" supporting Internet protocols for file transfer over the Internet and an "address discovery service" for obtaining an IP address from a configuration server. The boot loader also comprises a URI to IP address translator which translates domain names meaningful to humans into the numerical identifiers associated with networking equipment for the purpose of locating and addressing these devices worldwide. The boot loader also has a "scripting engine" to run a default script to initialize the device and verify the integrity of any data and operating systems in device memory.

3.3 The default script generates and verifies a primary and a secondary partition table in device memory. The two partition tables have identical content which is "partitional metadata" describing one or more partitions in device memory. At device start up the boot loader attempts to verify the redundant partition tables. If they do not exist or an update flag is set the unique device ID is retrieved and the recovery script is used to create the partition tables by downloading scripts and/or data from the Internet. If only one redundant partition table is invalid then it is recovered using the other one. Having validated the partition tables, the boot loader runs a start-up script to check for updates and to repair or replace corrupted software.

4. The admittance of the amended claims into the proceedings

4.1 According to Article 12(1) RPBA, ex parte appeal proceedings shall be based inter alia on the notice of appeal and statement of grounds of appeal, Article 12(1)(a) RPBA. As an exception to this, Article 12(4) RPBA foresees that the board can hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings.

4.2 In the present case the board stated in its preliminary opinion in the annex to the summons to oral proceedings that the claims filed with the statement of grounds of appeal were not restricted forms of those forming the basis of the decision. In particular, the feature of downloading "an operating system over the Internet" had been removed and many features have been added. Hence the amendments did not cause the procedure to converge, but instead created a new case on appeal. This raised the question of whether such amendments could not have been presented before the examining division. The appellant has not challenged this objection or submitted any counter-arguments to it.

4.3 Since the feature set out in claim 1 according to both the main and the auxiliary request upon which the decision was based of downloading "an operating system over the Internet" is no longer present in claim 1 according to the appellant's only request, claim 1 now covers subject-matter not falling under the claims according to the appealed decision. Consequently the appeal does not represent an attempt to overcome the objections leading to the refusal of the application but rather to obtain a patent on the basis of subject-matter significantly different from that considered by the examining division. The majority of the features now set out in claim 1 were also not present in the independent claims forming the basis of the appealed decision. For example, the features of verifying the validity of partition tables, determining whether partition tables are bootable, downloading a recovery script and determining whether a multiple partition chain exists were not set out in claim 1 according to the main and auxiliary request forming the basis of the decision. Furthermore the appellant has not provided any explanations why such a major shift in the subject-matter under discussion is warranted at the appeal stage of this procedure.

4.4 At this point the board refers to the principles governing ex parte proceedings as set out in G 10/93 (OJ EPO 1995, 172). It is true that, since the judicial examination in ex parte proceedings concerns the stage prior to grant and lacks a contentious nature, the boards are restricted, in their review of the decision under appeal, neither to the examination of the grounds for the contested decision nor to the facts and evidence on which the decision is based. But this absence of restriction does not amount to a positive obligation for the boards to consider any request filed in appeal especially when the requests bring about a new case. As stated in G 10/93, "proceedings before the boards of appeal in ex parte cases are primarily concerned with examining the contested decision", and the power accorded to the boards "does not however mean that boards carry out a full examination of the application as to the patentability requirements". In other words, applying the principle to the present case, the appeal proceedings are intended to review the correctness of the decision of the first instance rather than to continue examination by other means. The factual position regarding substantive issues when the appellant filed the amended claims with the statement of grounds of appeal was the same as that in the oral proceedings before the first instance. Moreover the appellant did not put forward any explanation as to why it had not filed these new claims before the department of first instance. Nor did the appellant contest the objections under Articles 84 EPC 1973 and 123(2) EPC raised by the board in the annex to the summons to oral proceedings. Hence the board comes to the conclusion that there is no obligation and indeed no reason to start a full examination of the present amended claims which could have been presented in the first instance proceedings.

4.5 Consequently the board decided not to admit the amended claims filed with the statement of grounds of appeal into these appeal proceedings, Article 12(4) RPBA and Article 123(1) EPC in conjunction with Rules 137(3) and 100(1) EPC.

5. Conclusion on the appellant's requests

Under Article 113(2) EPC 1973 the European Patent Office shall consider and decide upon the European patent application only in the text submitted to it, or agreed, by the applicant. In the present case, since the board did not admit the amended claims filed with the grounds of appeal into the proceedings, the application according to the appellant's only request lacked any claims either submitted or agreed by the appellant, contrary to Article 78(1)(c) EPC 1973. The appealed decision could therefore not be set aside.