T 1929/13 (Information recording and reproduction/SHARP) 16-07-2014

Admissibility of the appeal

1. The appeal is admissible since it complies with the provisions referred to in Rule 101 EPC.

Admission of requests into the proceedings: main request

2. According to Article 12(4) RPBA the Board has the power to hold inadmissible requests which were not admitted in the first-instance proceedings. Although the appellants' main request is not identical to the main request before the Examining Division, both requests include the same claims 1 to 4 as well as the same description. Since the reasons given by the Examining Division for not admitting the then main request under Rule 137(3) EPC were based inter alia on the argument that prima facie claim 1 did not comply with Articles 84 and 123(2) EPC (see section IV above), the Board considers Article 12(4) RPBA to be applicable in principle.

2.1 The general principles for exercising the discretion to allow amendments are well-established in the case law (see G 7/93, OJ EPO 1994, 775). According to the Enlarged Board of Appeal, "the way in which the Examining Division should exercise its discretion to allow an amendment of an application must depend upon the circumstances of each individual case, and must also depend upon the stage of the pre-grant procedure which the application has reached" (reasons 2.2).

When deciding on the question of admitting a request, an Examining Division is required to consider all relevant factors which arise in a case (see G 7/93, reasons 2.5). Even though in decision G 7/93 this statement was made in the context of amendments at a late stage of the pre-grant procedure, it has been considered to more generally apply to other phases of the examination procedure (see, for example, Case Law of the Boards of Appeal of the EPO, 7th edition 2013, IV.B.2, and decision T 573/12 of 8 May 2013, reasons 3.3, relating to amendments filed before the time limit set according to Rule 116(2) EPC).

Additionally, according to G 7/93 "In the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles [...] or that it has exercised its discretion in an unreasonable way [...]" (reasons 2.6).

2.2 Therefore, as a first step, the Board must assess whether the Examining Division exercised its discretion under Rule 137(3) EPC taking into account the right principles and in a reasonable way. If that was not the case and if the correct exercise of the discretion should have led to the admission of the then main request, the Board would have to admit the appellants' current main request into the appeal procedure.

2.3 Rule 137(3) EPC as currently in force is applicable in the present case, since the search report was established on 20 December 2010, see the transitional provision in Article 2(2) of the decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (OJ EPO 2009, 299). This provision follows Rule 137(2) EPC (which enshrines a right to make voluntary amendments at a specific stage of the proceedings) and states that no further amendments may be made without the consent of the Examining Division.

2.4 In the present case, the applicant had already amended the application with the letters dated 25 July 2011 and 27 April 2012. The main request on which the decision was based was therefore a further amendment within the meaning of Rule 137(3) EPC and subject to the consent of the Examining Division.

2.5 The Examining Division argued that the main request before it did not prima facie meet the requirements of Articles 84 and 123(2) EPC and that, therefore, it was reasonable not to admit it under Rule 137(3) EPC.

It is already questionable whether the main request could have been seen as prima facie not fulfilling Articles 84 and 123(2) EPC. Prima facie can be understood as "immediately apparent, with little investigative effort". However, the argumentation of the Examining Division is based on several passages of the description and close interpretation and comparison of the description and the claims. It may further be questioned whether the criterion used, i.e. prima facie non-compliance with Articles 84 and 123(2) EPC, may be applied at all to a request filed before the deadline under Rule 116(2) EPC and as a reaction to objections raised by the Examining Division.

In any event, the Examining Division did not mention any other criteria for not admitting the main request. In particular, it did not take into account several criteria which were relevant for the present case.

The Guidelines for Examination deal (in section H-II, 2.3) with the admissibility of amendments under Rule 137(3) EPC during examination after receipt of the first communication, mentioning a number of factors to be considered. Among those are the following criteria:

(a) the amendments remedy a deficiency in response to the preceding communication, provided they do not give rise to new deficiencies;

(b) the amendments improve the clarity of the description or claims in a clearly desirable manner;

(c) need to avoid unnecessary delay and excessive and unjustified additional work for the EPO.

The Board is of the opinion that the Examining Division should have taken criteria (a) to (c) into account.

If follows from the above that the Examining Division incorrectly exercised its discretion under Rule 137(3) EPC in not admitting the main request into the proceedings.

2.6 An analysis of criteria (a) to (c) above is therefore required.

The appellants mentioned the first factor (a), arguing that the non-admitted main request sought to overcome the objections previously raised, remedied the previous deficiencies and did not introduce new ones (see also section V above).

The annex to the summons to oral proceedings before the Examining Division raised major objections under Article 84 EPC against claim 1 of the then pending requests. In response, the applicants filed the main request on which the decision was based. Since different clarity objections were raised against the new claims in the decision, it is reasonable to assume that the Examining Division considered the previous objections to have been overcome and that the amendments sought to overcome the previously identified deficiencies.

Amongst other things, the amendments added the term "plurality of items" to better describe the first and second class information, and a description of the deletion of items by invalidation of the reference information, in order to clarify the feature of defragmentation. These amendments improved the clarity of the claims in a clearly desirable manner.

The Board also finds convincing the appellants' argument that the deficiencies mentioned in the decision were not introduced by the non-admitted claims since they could also have been raised against the previous claims. For example, previous claim 1 already included features defining the first and second class information, and the feature "defrag the first class information based on ... being obtained from the second class information", in a context similar to that of the non-admitted claim.

Additionally, the claims were filed one month before the oral proceedings and the Board is not convinced that unnecessary delay or unjustified work for the EPO would have been caused by their admission.

Therefore, taking criteria (a), (b) and (c) into account, the claims should have been admitted.

2.7 Since the Examining Division incorrectly exercised its discretion under Rule 137(3) EPC and a consideration of the right principles should have led to the admission of the then main request, the appellants' current main request has to be admitted.

Admission of requests into the proceedings: first, second and third auxiliary requests

3. The first and the second auxiliary requests were submitted in reaction to the objections raised by the Board in its communication accompanying the summons. The third auxiliary request was filed as a reaction to the discussion of the relevant issues in the oral proceedings and overcomes the objections that were the subject of these appeal proceedings. In the exercise of its discretion under Article 13(1) RPBA, the Board admits these requests.

The invention

4. The application relates to a recording and reproducing device for stream data, i.e. digital broadcasting data, referred to as "image data" in the application and claims.

4.1 According to the description in paragraphs [0027] to [0035], a data structure on the information recording medium is used (see Figure 1) which includes

- "Programs", representing units of image data, or "titles", for example, a movie or a TV program;

- "Original Program References (OPGR)", each OPGR referring to a whole program, and "User Defined Program References (UPGR)", each referring to a part of a program;

- one "Program Map (PGMAP)", referring to the OPGR;

- "Program Reference Groups (PGRG)", which are lists of references to OPGR or UPGR; and "User Defined Favorite Folders (UDFF)", which are lists of references to OPGR, UPGR or PGRG.

A PGRG is taken to be equivalent to a playlist, a list of one or more user's favourite scenes arranged according to the user preferences. The UDFF is used for classifying and arranging image data (paragraph [0028]).

The description also refers to a "Program Reference Manager" (PGRM) as a list of "Program References" (PGR), each PGR referring to at least a part of a program; a "Program Reference Group Manager" (PGRGM) as a list of PGRGs; and a UDFF table as a list of UDFFs (paragraphs [0017] and [0027]).

4.2 The application describes in paragraphs [0046] to [0047] and [0075] to [0080] embodiments of a "defragmentation" process which can be performed for deleting an invalid part from a PGR, PGRG or UDFF list. The "defragmentation" of, for example, a PGR list consists of (see paragraphs [0046], [0047] and [0077], figure 20)

- creating a temporary PGR list,

- for each reference of the PGRM list referring to an entry in the PGR list,

- if the reference is valid, copying the corresponding entry of the PGR list to the temporary PGR list,

- if the reference is invalid, changing the reference of the PGRM list into a state of making no reference to any PGR list entry, and

- copying the temporary PGR list to become permanent.

Defragmentation may be carried out at different timings, for example upon stop using the removable recording medium or when it is explicitly selected by the user (see paragraph [0079]).

Main request

5. Claim 1 of the main request defines subject-matter extending beyond the scope of the application as filed (Article 123(2) EPC).

5.1 The description refers specifically to the examples of defragmentation of a PGR list based on a PGRM (paragraphs [0046] and [0075] to [0079]), of a PGRG list based on a PGRGM (paragraphs [0047], [0075] and [0079]) and of a UDFF (paragraphs [0075] and [0079]). The claim defines a generalisation of these embodiments, in particular a defragmentation of "the plurality of items of first class information based on the plurality of items of second class information", each item of first class information "including reference information indicating at least part of the image data".

5.2 However, there is no basis in the originally filed application for such a generalised defragmentation.

The appellants cited paragraphs [0001], [0002], [0046] and [0047], as well as claim 1 of the original application, as the basis for such a generalised defragmentation. In oral proceedings the appellants also argued that paragraph [0001] and original claim 1 both described recording and defragmenting in a similar context and that the skilled person would assume that the same level of generality applied to both recording and defragmenting.

The Board does not find the arguments of the appellants convincing. Paragraph [0002] and the original claims do not refer to defragmentation. Paragraph [0001] is an introductory paragraph mentioning defragmentation, but without describing first and second class information. The features regarding defragmentation are only described in two passages of the original application, namely paragraphs [0046] to [0047] and [0075] to [0080]. In these paragraphs, defragmentation is described in the context of specific embodiments and as defragmentation of specific data structures, namely PGR, PGRG and UDFF.

5.3 In addition, the Board notes that, even if the skilled person considered that defragmentation was not necessarily limited to the examples given, he would, based on the description, recognise that defragmentation is based on special structures, such as PGRM and PGRGM. Those special structures are used for management purposes and are "complete", in the sense that they collectively record reference information.

In the description, especially paragraphs [0042], [0048] and [0049], a PGRM data structure is described as collectively recording reference information on the PGR. Paragraphs [0042] to [0050] state that upon recording the PGR the information recording/reproduction device refers to reference information contained in the PGRM. The same is disclosed for the PGRGM. The skilled person reads from these passages that the "manager" structures PGRM and PGRGM, on which the defragmentation is based, are special structures, similar to complete directories used for data management purposes. Those structures are to be distinguished from the others used for the convenience of the user to define, for example, favourite titles (UDFF), preferred scenes (UPGR) or playlists (PGRG).

Regarding this point the appellants argued in oral proceedings that the skilled person would not limit the generality of the description, even if some embodiments covered by such a general claim did not work or were poor solutions to defragmentation.

The Board does not follow this reasoning. There would be no reason for the skilled person to assume that defragmentation according to the invention was also based on such "user" data structures. Defragmentation of a PGR based on a PGRG would not work properly. Since a PGRG is not a complete list of PGR items, the defragmentation would be incomplete and, without further measures, references of the PGRM would be lost. Since a PGRG item may refer to more than one PGR, it would be more difficult to use it as a basis for defragmentation. The application does not address such issues. The skilled person would therefore assume the technical teaching to be restricted to defragmentation based on "management" structures.

5.4 The Board also considers that there is no basis in the original application for the feature of claim 1 "the plurality of items of second class information each including reference information indicating at least one of the plurality of items of first class information" (emphasis added). Each entry of the PGRM and the PGRGM refers to exactly one item of the PGR and PGRG, respectively. The application as filed does not clearly and unambiguously describe fragmentation based on a data structure which may include in a single item more than one reference to the list of items to be defragmented (as is the case, for example, of a PGRG).

First auxiliary request

6. In claim 1 of the first auxiliary request (see section VII), the feature "reference information" has been clarified by naming the reference information of the first and second class information "first reference information" and "second reference information" respectively. The objections under Article 123(2) EPC still apply to the first auxiliary request.

Second auxiliary request

7. Claim 1 of the second auxiliary request (see section VII) differs from that of the first auxiliary request in that the feature describing the deletion of items has been reworded for improved clarity. The deficiencies under Article 123(2) EPC discussed under point 5 above have not been overcome by these amendments.

Third auxiliary request

8. With the third auxiliary request (see claim 1 in section VIII) the appellants addressed the remaining objections.

8.1 In claim 1 defragmentation is limited to the combinations described in the application. The last features of the claim, "wherein either a) ...", restrict the combinations of first class information and second class information to PGR and PGRM, as well as PGRG and PGRGM, and also cover the first class information UDFF, describing each of these structures. In particular, the claim defines that the second class information, as well as the PGRM and PGRGM data structures, collectively record the second reference information. The objection discussed in points 5.15.1 to 5.35.3 above has therefore been overcome.

Claim 1 also specifies that the second reference information refers to "one", instead of "at least one", of the items of first class information, overcoming the deficiency discussed under point 5.45.4 above.

The feature "reference information indicating" has been amended to "reference information referring" for improved clarity.

8.2 In the opinion of the Board, none of the objections under Article 84 EPC raised in the decision of the department of first instance applies to the claims of the third auxiliary request.

The feature "first class information" described in current claim 1 of the third auxiliary request is considered to be supported by the description. The claim restricts the "first class information" to the PGR, PGRG and UDFF data structures described in the application, e.g. in paragraphs [0075] to [0079], in the same combination with the other features of the invention as in the claim. Furthermore, paragraph [0026] of the description has been amended to remove some examples of combinations of first and second class information.

8.3 The subject-matter of the claim can be derived from original claim 1 and the following passages of the originally filed application: paragraph [0042], which is the basis for the feature "the second class information collectively recording the second reference information on the plurality of items of first class information"; paragraphs [0011] and [0064], describing the position information and deletion of items of first class information by invalidation of the corresponding second reference information; paragraph [0027], which refers to the data structures of the invention, including PGRM; and paragraphs [0046], [0047] and [0075] to [0080], describing defragmentation.

8.4 The Board is therefore satisfied that claim 1 of the third auxiliary request overcomes the deficiencies under Articles 84 and 123(2) EPC.

Procedural violation/reimbursement of the appeal fee

9. In the grounds of appeal the appellants claimed that the Examining Division had incorrectly exercised its discretion in not admitting the requests, had deprived them of their right to be heard and had decided on the wrong requests.

Even though the appellants did not request reimbursement of the appeal fee, the Board decided to examine the issue of its own motion, in line with Article 114(1) EPC and established case law, for example decisions J 7/82, OJ EPO 1982, 391, T 271/85 of 22 March 1989, and T 598/88 of 7 August 1989 (see also Case Law of the Boards of Appeal of the EPO, 7th edition, IV.E.8.1.1).

9.1 As set out above (see point 2.52.5 ), the Examining Division did indeed incorrectly exercise its discretion in not admitting the main request. This constitutes a procedural violation. Nevertheless, the Board does not consider that it would be equitable within the meaning of Rule 103(1)(a) EPC to reimburse the appeal fee on this ground, independently of whether the procedural deficiency could also be considered to amount to a violation of the right to be heard. It is apparent from the substantiated reasoning given in the decision with respect to the objections under Articles 84 and 123(2) EPC, as well as the treatment of those objections and the applicants' arguments documented in the minutes of oral proceedings, that the Examining Division could have issued a reasoned decision on those grounds. In view of that, it can safely be assumed that the Examining Division would have refused the requests if it had admitted them into the proceedings. Thus, the applicants would still have had to file an appeal.

9.2 The appellants furthermore contended that, as a consequence of not admitting the requests, the claims previously on file were still pending, and the Examining Division should have issued a written decision on those previous claims submitted with the letter dated 27 April 2012.

On the contrary, the Board notes that the claims previously on file were no longer to be considered to be pending, since they had been replaced with the claims of the main request filed with the letter dated 15 October 2012 on which the decision was based. The non-admission of newly submitted claims does not revive the previous set of claims (see T 946/96 of 23 June 1997, reasons 3.2). According to Article 113(2) EPC the European Patent Office must consider and decide upon the European patent application only in the text submitted to it, or agreed to, by the applicant. The Examining Division would have infringed these provisions, had it decided on the basis of claims to which the applicants no longer agreed. By filing new sets of claims, the previous claims were no longer agreed to by the applicants. The case law (see T 946/96, reasons 3.1, and Case Law Book of the Boards of Appeal of the EPO, 7th edition, III.B.3) is consistent in stating that in such a case the Examining Division should not decide upon the previous claims, because they are no longer on file.

Remittal

10. In the decision under appeal the issues of novelty and inventive step (Articles 54 und 56 EPC) were neither decided nor discussed in any form.

Under these circumstances, the Board is not in a position to decide on the novelty and inventive step of the claimed subject-matter and hence cannot accede to the appellants' request for granting a patent in the present appeal proceedings.

Consequently, the Board decides to remit the case to the department of first instance for further prosecution (Article 111(1) EPC), and in particular for assessment of novelty and inventive step.