T 1847/08 19-12-2012

1. Admission of the claims of the main request

(Articles 13(1),(3) RPBA)

1.1 According to Article 13(1) RPBA, "[a]ny amendment to a party's case after it has filed its grounds of appeal ... may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter, the current state of the proceedings and the need for procedural economy."

According to Article 13(3) RPBA, "[a]mendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board ... cannot reasonably be expected to deal with without adjournment of the oral proceedings."

1.2 In the present case the claims of the main request were filed with a letter dated 15 November 2012, after the oral proceedings before the board had been arranged. Hence, they constitute amendments to the appellant's case within the meaning of Article 13(1) RPBA and consequently may be admitted and considered at the board's discretion. Furthermore, the board's discretion is limited pursuant to Article 13(3) RPBA.

1.3 Compared with claim 1 filed with the statement of grounds of appeal, claim 1 of the main request comprises numerous features concerning the extraction of non-video data from the transport streams and their insertion into the transition stream. Only some of these features were present in dependent claims 3, 4 and 6 of the claims filed with the statement of grounds of appeal. The features specifying that the non-video data is not necessarily frame-aligned to an image to which it relates and that the non-video data are extracted up to an extent boundary of the non-video data (from the first transport stream) and from an extent boundary of the non-video data (from the second transport stream) are taken only from the description. They are not identified as essential features of the invention in the application, in the applicant's submissions in the first-instance proceedings or in the appellant's statement of grounds of appeal. There is no evidence on file that these features were considered in the first-instance proceedings.

1.4 Hence, the appellant's main request presents a fresh case to the board. Consideration of the main request would require further investigation possibly including an additional search. Furthermore, since the underlying issue of the role of the non-video data in the generation of the transition stream was raised in the summons to oral proceedings before the examining division, the present main request could have been presented in the first-instance proceedings, at least as an auxiliary request.

1.4.1 The appellant's argument that the main request was a reaction to the board's communication did not convince the board that the claims of the main request should be admitted into the appeal proceedings. The reason is that the appellant's main request not only reintroduces a feature removed from claim 1 filed with the statement of grounds of appeal, but in addition introduces numerous additional features, thereby creating a fresh case.

1.4.2 The appellant also argued that it was appropriate to react with either arguments or amendments to an objection raised. However, it is the practice of the European Patent Office that the applicant may submit a main request followed by one or more auxiliary requests (see the Guidelines for Examination in the EPO, June 2012, H-III,3). Thus it is procedurally possible for an applicant to submit also those application documents to the examining division which are intended to be ultimately submitted as a last resort to the board of appeal if the application is refused. This is also in the interest of procedural economy. Moreover, the appellant's argument, taken to its logical conclusion, would mean that, in appeal proceedings following the refusal of an application, the appellant had a right to have amendments admitted and considered by the board of appeal. This would be contrary to the established jurisprudence regarding the main purpose of ex parte appeal proceedings. Namely, "[p]roceedings before the boards of appeal in ex parte cases are primarily concerned with examining the contested decision" (see point 4 of the reasons for the decision of the Enlarged Board of Appeal G 10/93, OJ EPO 1995, 172).

1.5 In view of the above the board decided to exercise its discretion in not admitting the main request into the appeal proceedings (Article 13(1) RPBA).

2. Admission of the claims of the first and second auxiliary requests (Articles 12(4) and 13(1) RPBA)

2.1 The independent claims of the first and second auxiliary requests are based on the claims underlying the decision under appeal and deal with clarity objections raised in the decision under appeal. They include a few additional features which in the board's view are intended to clarify the decoding and display order. Moreover, the feature relating to non-video data (which was considered to be unclear in the decision under appeal) is no longer present in the independent claims of the auxiliary requests. In the first auxiliary request, this feature has also been removed from dependent claims. Since claim 1 is identical in wording to claim 1 of the second auxiliary request, which was already filed with the statement of grounds of appeal, the claims of the auxiliary requests reduce the complexity of the case as far as the substantive issues are concerned because they allow the debate to be focused on the substantive ground for refusing the application as given in the decision under appeal (Article 13(1) RPBA).

2.2 Moreover, it is clear from the appellant's submissions that the appellant considers the finding of lack of inventive step in the decision under appeal to be incorrect for reasons which apply to the claims of all three requests and are not dependent on the presence or absence of non?video data in the transport streams. Thus, in the present case, the board considers the appellant's reaction of again removing this feature, which had not been present in independent claim 1 as filed, as an admissible reaction to the decision under appeal and not in conflict with the main purpose of ex parte appeal proceedings or the provisions of Article 12(4) RPBA. In contrast to the amendments of the main request, which created a fresh case, the amendments made to claim 1 with the statement of grounds of appeal challenge the decision on its merits (Article 56 EPC 1973) and allow the board to examine the contested decision.

2.3 In view of the above the board decided to exercise its discretion in admitting the first and second auxiliary requests into the appeal proceedings (Articles 12(4) and 13(1) RPBA).

3. Claim 1 of the first and second auxiliary requests

Since in the present case claim 1 of the first and second auxiliary requests are the same and the dependent claims need not be considered in order to reach a final decision (see section 5 below), it is sufficient to deal with claim 1 of the first auxiliary request.

4. Amendments and clarity of claim 1 (Article 123(2) EPC, Article 84 EPC 1973)

4.1 In the decision under appeal the expressions "desired" and "predetermined" are considered to have different technical meanings in the context of the present application. In this respect, the appellant's argument that a "desired" out?frame (the "target" out?frame in claim 1 as originally filed) must have been selected in advance and denoted as desired and consequently is also a "predetermined" out?frame is convincing. For a person skilled in the art the technical disclosure of these expressions in the context of the present application is the same. The same applies to the in?frame. No further objections under Article 123(2) EPC have been raised in the decision under appeal, and the board does not see any reason for doing so.

4.2 Concerning the clarity objections (Article 84 EPC 1973) in the decision under appeal, the board finds that the expression "predetermined" is broad but nevertheless clear. What is essential in the context of the present application is that the out?frame of the first transport stream and the in?frame of the second transport stream are determined in advance of generating the transition stream according to the method of claim 1. There may be different ways of performing this determination but it is irrelevant for the generation of the transition stream which of these ways was used. Moreover, the amendments made to claim 1 now clearly refer to the display order of the frames, clarify the decoding of frames in the transport streams and no longer refer to the non-video data, which was considered as unclear. Therefore the board is satisfied that the matter for which protection is sought is clear.

5. Novelty (Article 54 EPC 1973)

5.1 In the decision under appeal the only potential difference between the method of claim 1 then on file and the method of D3 was considered to be the presence of non?video data, assuming that non?video data were audio data, for instance. Since present claim 1 no longer comprises any features specifying non?video data, there arises the question whether the claimed method is new within the meaning of Article 54(1) EPC 1973.

5.2 As set out in the decision under appeal, D3 (see in particular figure 4 and the corresponding description) discloses a system for processing first and second transport streams (bitstream A and bitstream B, see also the references to broadcast networks and to the MPEG?2 standard on page 2, line 16 to page 3, line 13). The transport streams include image frames and the processing comprises switching between the two transport streams at frame boundaries (see, for instance, page 1, lines 1 to 27, in conjunction with page 3, lines 26 to 29). The stream comprising bitstream A up to the out?frame (at which the switching to bitstream B occurs) and bitstream B from the in?frame (at which the switching from bitstream A occurs) is a generated transition stream and provides frame-accurate transitioning from bitstream A to bitstream B in a substantially seamless manner (see, for instance, page 18, lines 22 to 26).

5.2.1 The method of generating this transition stream comprises decoding a portion of bitstream A ending at an out?frame representing a last display order image of bitstream A, to create a first stream of decoded frames ending at, when considered in display order, the out?frame, and also comprises decoding a portion of bitstream B starting at an in-frame representing a first display order image frame of said second transport stream to be presented (see stages 1 to 4 on page 15). The decoding of bitstream B comprises decoding of frames back to the preceding I?frame if the in-frame is not an I?frame, to create a second stream of decoded frames starting at, when considered in display order, the in?frame. The reason for this is that decoding can only be started at an I?frame.

5.2.2 The method of generating a transition stream also comprises processing, using a pixel domain process, at least one of said decoded image frames in the first and second streams of frames (see page 17, line 27 to page 18, line 8).

5.2.3 The method also comprises encoding the first and second streams of decoded frames, including the out?frame and the in?frame, to produce said transition stream (see the encoder 64 in figure 4 and page 15, line 12 to page 16, line 9).

5.3 In this respect the board notes that the appellant did not challenge the analysis in the decision under appeal that the individual features of claim 1 were present in document D3. The amendments made to claim 1 in appeal proceedings and reflected in the board's analysis in section 5.2 above are of a clarifying nature and do not cast doubt on the relevance of the analysis in the decision under appeal for the present claim 1.

5.3.1 However, the appellant argues that D3 is not an enabling disclosure because it does not enable a person skilled in the art to carry out frame-accurate transitioning from a first transport stream to a second transport stream. In particular, the appellant disputes that D3 disclosed the switching method in a manner sufficiently clear and complete for a person skilled in the art to be able to predetermine the out?frame of bitstream A and the in?frame of bitstream B with frame accuracy. D3 thus could not be considered as novelty-destroying state of the art for the method of claim 1.

5.3.2 The board accepts the basis of this argument, namely that the disclosure of D3 must be enabling for it to be considered as novelty-destroying for the subject-matter of present claim 1. This derives from the established jurisprudence on the need for an enabling disclosure (see Case Law of the Boards of Appeal of the European Patent Office, 6th edition 2010, section I.C.2.12). However, concerning the predetermination of the out?frame and the in?frame, the considerations in point 4.2 above in respect of the present application also apply to D3. There may be different ways of performing this predetermination but it is irrelevant for the generation of the transition stream which of these ways was used. According to D3, "[t]he bitstream switch selects between bitstreams at appropriate points such as at frame synchronisation words" (see page 19, lines 22 to 25). Synchronisation information is comprised in the bitstreams (see page 16, line 24 to page 17, line 15). The bitstream processing causes delays which are adjusted by appropriately adding stuffing bytes (see page 15, line 21 to page 16, line 9). Thus by extraction and use of the synchronisation information a person skilled in the art could predetermine the out?frame and the in?frame. The exact synchronisation of the bitstreams at the switch between the out?frame and the in?frame may then be achieved by appropriately adding stuffing bytes.

5.4 In view of the above, the appellant's arguments did not convince the board that the method of present claim 1 specifies a combination of features which does not form part of the disclosure in D3. Hence the board finds that the method of claim 1 is not new (Article 54(1) EPC 1973).

6. Thus the decision under appeal cannot be set aside and the appeal is to be dismissed.