T 2471/10 09-10-2014

1. The appeal is admissible.

2. Non-attendance of the respondents at the oral proceedings

The duly summoned respondents did not attend the oral proceedings. According to Rule 71(2) EPC 1973, the proceedings could however continue without them. In accordance with Article 15(3) of the Rules of Procedure of the Boards of Appeal (RPBA, OJ EPO 2007, 536) the board relied for its decision only on the respondents' written submissions. The board was in a position to decide at the conclusion of the oral proceedings, since the case was ready for decision (Article 15(5) and (6) RPBA), and the voluntary absence of the respondents was not a reason for delaying a decision (Article 15(3) RPBA).

3. Admissibility of the sole request

3.1 The appellant's sole request was filed in the oral proceedings before the board. It thus constitutes an amendment to the appellant's case after the grounds of appeal have been filed and may be admitted and considered at the board's discretion (Article 13(1) RPBA), this discretion being exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Moreover the new request is an amendment to the appellant's case after oral proceedings have been arranged and thus, in accordance with Article 13(3) RPBA, it should not be admitted if it raises issues which the board or the other parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.

3.2 The present claims differ from those according to the revised main request filed with the letter of 9 September 2014 in that the additional features of dependent claims 5 and 12 of that request have been incorporated into the respective independent claim. Former claims 5 and 12 have consequentially been deleted and the remaining claims have been renumbered.

3.3 The claims of the sole request are more limited in scope than the previous sets of claims and include features which were already present in dependent claims 6 and 13 as granted as well as in all further sets of claims submitted in the opposition and appeal proceedings. These amendments were submitted following a discussion on the novelty and inventive step over D4 of previously claimed subject-matter and are clearly suitable to overcome the grounds for revocation in the decision under appeal. The submission of the sole request can thus be considered as a prompt reaction to the discussion in the oral proceedings.

3.4 The respondents were not present at the oral proceedings before the board and were, therefore, not in a position to comment on the amendments made in the appellant's new request. According to the decision of the Enlarged Board of Appeal G 4/92 (OJ EPO 1994, 149), a party who fails to appear at oral proceedings must have the opportunity, in accordance with Article 113(1) EPC 1973, to comment on new facts and evidence submitted in the proceedings. In accordance with the established case law (see for example decision T 202/92 of 19 July 1994), the finding in decision G 4/92 does not, however, prevent the admission into the proceedings of new claims of requests introduced only at the oral proceedings before the board, and a decision thereon, where the amendments made overcome objections raised in the written proceedings and the amendments are of a nature that the absent respondents might have expected.

In the board's view, in the present case the respondents could have reasonably expected amendments like those made in the claims of the appellant's new request and thus they could not have been taken by surprise. Accordingly, the absence of the respondents was no obstacle to admitting the appellant's new request into the proceedings and taking a decision on it.

3.5 As far as Article 13(3) RPBA is concerned, the board takes the view that a remittal to the first-instance department has to be considered equivalent to an adjournment of the oral proceedings. Thus, if the appellant's new request raised issues which the board could not reasonably be expected to deal with without adjournment or remittal, it should not have been admitted into the appeal proceedings. In the oral proceedings the board was able to deal with the question whether the claims of the new request overcame the objections raised in the decision under appeal. However, in the decision under appeal, the prior art was only dealt with in respect of novelty over D4. Therefore, the board would in any case have considered a remittal of the present case to the department of first instance once novelty over D4 was established, in order to give all parties the benefit of two instances. Thus, the remittal of the present case to the department of first instance (see point 7 below) is not a new issue caused by the appellant's amended request.

3.6 In view of the above, the board considered it appropriate to admit the appellant's sole request into the proceedings under Article 13(1) and (3) RPBA.

4. Added subject-matter, Article 100(c) EPC 1973

4.1 Since dependent claim 4 of the main request underlying the decision under appeal was deleted from the present set of claims, this reason for revocation has been overcome.

4.2 The board agrees with the opposition division that the feature of a "remote access link" is implied by the wording of the independent claims. In particular, the step of "communicating between the interactive television program guide of the remote program guide access device and the interactive television program guide of the local program guide equipment, thereby causing said interactive television program guide of the local program guide equipment to select a television program for recording and schedule the recording of the selected television program" unambiguously implies an access to the local programme guide equipment from the remote programme guide access device and, hence, the presence of a remote access link. As a result, the omission of an explicit reference to a "remote access link" does not constitute an extension of subject-matter over the application as filed.

4.3 The decision under appeal is also correct in that the subject-matter of claims 5, 6, 12 and 13 of the main request underlying the decision under appeal could unambiguously be derived from the application as originally filed. Therefore present claims 1, 4, 5 and 10, which comprise these features, do not extend the content of the application as filed.

4.4 Hence, the board concurs with the reasoning in the decision under appeal concerning Article 100(c) EPC 1973 and holds that the present claims comply with Article 123(2) EPC.

5. Sufficiency of disclosure, Article 100(b) EPC 1973

Furthermore, the board concurs with the reasoning in the decision under appeal that the subject-matter of claims 3 and 8 (corresponding to claims 3 and 10 of the main request considered in the decision under appeal) is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The board finds that the skilled person would be able to implement means for recording at the television distribution facility, for instance in a similar way to corresponding means implemented at the local programme guide equipment.

6. Novelty in view of document D4, Articles 54(1), (2) and 100(a) EPC 1973

6.1 D4 relates to a method for recording television programmes in response to commands given by a user via a local programme guide (see page 5, lines 1 to 6, and page 14, line 25 to page 15, line 28) and, in a preferred embodiment, from a remote location (page 2, line 10 to page 3, line 13 and page 17, lines 1 and 2). The method is implemented in a system having local programme guide equipment arranged to implement an interactive television programme guide (see page 4, line 24 to page 5, line 11; page 6, lines 5 to 17). A programme may be selected and scheduled for recording via the interactive television programme guide of the local programme guide equipment. The local programme guide stores time and channel information of programmes to be recorded in a schedule data structure, which is monitored by a scheduler to determine when a programme is to be recorded. If a programme to be recorded at the current time is identified, the channel broadcasting the programme is selected and the VCR is controlled to record the programme (page 4, line 24 to page 5, line 6; page 14, line 25 to page 15, line 28; page 16, lines 12 to 34).

Furthermore, D4 discloses in its sections "summary of the invention" and "enhanced recording capability" that television programmes may be selected for recording by a user at a remote location using, for instance, a computer as a remote programme guide access device. These selections may be carried out using a remote interactive television programme guide (see page 2, lines 10 to 18; page 17, lines 3 to 21 and page 18, lines 1 to 23).

6.2 D4 does not disclose at least the features that were appended to independent claim 1 of the sole request (see the features marked in bold, point X above). In addition, there is no unambiguous disclosure of the features relating to a guide-to-guide communication, in particular not in the context of a communication relating to the playing of a recorded television programme in response to a user selection from the remote access guide.

6.3 The same reasoning applies with respect to independent claim 5, which specifies the corresponding system for recording television programmes.

6.4 It follows that the subject-matter of the claims according to the appellant's sole request is novel in view of document D4 (Article 54(1) and (2) EPC 1973).

6.5 Respondent 2 argued with respect to its objection of lack of inventive step that, in its decision T 512/13, Board 3.5.04 in a different composition had decided that the subject-matter of a similar independent claim lacked an inventive step in view of document D4. This argument does not apply to the question whether the present claims are novel, since the features of claims 1 and 5 which render the claimed subject-matter novel (see points 6.2 and 6.3 above) were not present in the independent claims, forming the basis of decision T 512/13. Moreover, the present board concurs with the finding in point 2.2.4 of that decision that D4 does not disclose that the EPG used for local recording is also used when the user schedules recordings from a remote location.

7. Remittal (Article 111(1) EPC 1973)

The decision under appeal was based on the grounds of extended subject-matter and lack of novelty, in view of document D4, of the claims then on file. These grounds for revocation do not apply to the present claims and the decision under appeal must consequently be set aside. However, at this stage the patent cannot be maintained in amended form on the basis of the claims of the appellant's sole request without being further examined in terms of the Convention. However, the department of first instance has not yet carried out such an examination for the present set of claims.

In the circumstances of the present case, the board declines to carry out such an examination itself, with the possible introduction of new prior-art documents, and considers a remittal justified, in order to give the parties the benefit of two instances.

Under these circumstances the board exercises its discretion under Article 111(1) EPC 1973 in remitting the case to the department of first instance for further prosecution.