T 1718/14 13-05-2020

1. The appeal is admissible.

2. Admission of the main request under Article 12(4) RPBA 2007 into the proceedings

2.1 In the present case, the statement of grounds of appeal was filed before the date on which the revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) entered into force, i.e. 1 January 2020 (see OJ EPO 2019, A63). Thus, in accordance with Article 25(2) RPBA 2020, Article 12(4) to (6) RPBA 2020 does not apply. Instead, Article 12(4) of the Rules of Procedure of the Boards of Appeal in the version of 2007 (RPBA 2007 - see OJ EPO 2007, 536, and EPC, 16th edition, June 2016, pages 601 to 629) continues to apply.

2.2 The main request was submitted with the statement of grounds of appeal.

2.3 Article 12(4) RPBA 2007 stipulates that the statement of grounds of appeal (Article 12(1)(a) RPBA 2007) has to be taken into account by the board if it meets the requirements of Article 12(2) RPBA 2007. In accordance with Article 12(4) RPBA 2007, the board has the discretionary power to hold inadmissible facts, evidence and requests which could have been presented or were not admitted in the first-instance proceedings (see Case Law of the Boards of Appeal of the European Patent Office ("Case Law"), 9th edition 2019, V.A.4.11.1).

It follows that the boards generally have their own margin of discretion to admit on appeal facts, evidence and requests refused by a department of first instance in proper exercise of its discretion (see Case Law, V.A.3.5.2 b)).

2.4 Claim 1 of the main request corresponds to claim 1 of the main request marked "14:46" filed at the oral proceedings before the examining division with the "such that" clause deleted.

2.5 According to the minutes of the oral proceedings before the examining division, points 28 and 30, the examining division used its discretion under Rule 137(3) EPC to not admit the request to delete the "such that" clause into the proceedings.

2.6 The appellant did not submit any reason why it thought that the examining division was wrong in not admitting this request. Instead, the appellant submitted reasons why claim 1 of the main request met the requirements of Article 84 EPC and why the subject-matter of claim 1 of the main request was inventive starting from the disclosure of document D4 or D5 as the closest prior art (see point XIII(a) above).

2.7 In summary, claim 1 of the present main request corresponds to claim 1 of a request which according to the minutes of oral proceedings was not admitted into the proceedings by the examining division, and the appellant did not provide any reason why the examining division was wrong in not admitting the request.

2.8 Moreover, claim 1 of the present main request is remarkably similar to claim 1 dated 27 September 2011 with the "such that" clause deleted. In the communication dated 26 January 2012, the examining division raised an objection under Article 84 EPC against that claim because it was not clear what role the determination of the complexity of video data played in the subsequent step of encoding the video data. This objection applies a fortiori to claim 1 of the present main request. In first-instance proceedings, the applicant did not argue that the division's objection was incorrect. Instead, in an attempt to overcome the objection, it filed amended claims including a feature not present in claim 1 of the present main request (see point 3 of the letter dated 10 July 2012). Hence, present claim 1 of the main request is in substance a reaction to the objection raised in the communication dated 26 January 2012, which avoids adding the feature identified in point 3 of the letter dated 10 July 2012. Thus, present claim 1 of the main request could have been presented to the examining division, for instance, with the letter dated 10 July 2012.

2.9 In view of the above, the board concludes that the main request could and should have been filed in the first-instance proceedings. Thus, the board has discretion not to admit this request into the appeal proceedings under Article 12(4) RPBA 2007.

2.10 In the communications dated 18 November 2009 and 18 March 2011, the examining division objected that the term "redundant" in the phrase "inserting at least one redundant block of intra-coded data" was not clear. In response to these communications, the appellant deleted the term "redundant" from the claims (see also the minutes of the oral proceedings before the examining division, point 7). Removing the wording objected to from the claims precluded the issue of a reasoned decision by the examining division. If the board admitted the main request into the appeal proceedings, it would be compelled to either give a first ruling on the issue of clarity (Article 84 EPC 1973), which runs contrary to the purpose of a second-instance ruling, or to remit the case to the department of first instance, which is clearly contrary to procedural economy (see Case Law V.A.4.11.4c) and V.A.4.11.4d)).

2.11 In view of the above, the board exercises its discretion under Article 12(4) RPBA 2007 and decides not to admit the main request into the proceedings.

3. Admission of AR-II-B and AR-II-C under Article 12(4) RPBA 2007 into the proceedings

3.1 Auxiliary requests AR-II-B and AR-II-C were submitted with the statement of grounds of appeal. They form part of the basis of the appeal proceedings (Article 12(1) RPBA 2007), relate to the case under appeal and meet the requirements of Article 12(2) RPBA 2007. Article 12(4) RPBA 2007 stipulates that, in principle, they have to be taken into account by the board, unless the board has the discretionary power to hold inadmissible these requests because they could have been presented in the first-instance proceeding.

3.2 It is established case law (see Case Law, V.A.4.11.4.c) that, in accordance with Article 12(4) RPBA 2007, the boards, as a rule, do not admit into proceedings requests withdrawn during first-instance proceedings because the fact that the request is withdrawn in the first-instance proceedings precludes the issue of a reasoned decision on its merits by the examining division. Therefore, reinstating this request upon appeal would compel the board either to give a first ruling on the critical issues, which runs contrary to the purpose of a second-instance ruling, or to remit the case to the department of first instance, which is clearly contrary to procedural economy. Thus, for the purposes of Article 12(4) RPBA, the resubmission upon appeal of requests withdrawn during the first-instance proceedings is tantamount to the submission upon appeal of new requests that could have been presented in the first-instance proceedings. Therefore, Article 12(4) RPBA provides boards with the discretionary power to hold inadmissible requests withdrawn in the first-instance proceedings.

3.3 According to the appellant, AR-II-B and AR-II-C correspond to the main and auxiliary request filed on 23 January 2014.

3.4 According to point 12 of the minutes of the oral proceedings before the examining division, the appellant withdrew these requests.

3.5 The appellant argued that it "felt obliged to abandon all higher ranking requests so that the division would even consider a further request [... it] was forced into the situation either to have the oral hearing immediately terminated followed by a refusal [...] or to withdraw all requests on file in order to have the division consider whatever arguments and amendments the applicant had prepared [...] in order to [...] advanc[e] the prosecution of the present application, had to withdraw all requests on file soon after the start of the oral hearing". However, it did not explain why maintaining a request would have resulted in the immediate termination of the oral proceedings such that it felt obliged to abandon all higher ranking requests (see point XIII(b) above).

3.6 The minutes of the oral proceedings before the examining division do not mention any obligation to withdraw pending requests before further requests could be considered. According to the minutes, point 10, the examining division announced that the requests filed on 23 January 2014 would not be admitted into the proceedings, and the appellant was given the opportunity to file amendments. The oral proceedings were then interrupted (see minutes, point 11). After the break, the appellant filed requests replacing all previous requests (see minutes, point 12).

In the present case, the correctness of the minutes is not formally in doubt. Thus, the board has to consider that the minutes correctly reflect the course of the oral proceedings. Therefore, the board cannot find any evidence that the appellant was obliged to withdraw its requests. Hence, the appellant deliberately withdrew its requests at the oral proceedings before the examining division.

3.7 In view of the above, the board exercises its discretion under Article 12(4) RPBA 2007 and decides not to admit auxiliary requests AR-II-B and AR-II-C into the appeal proceedings.

4. AR-I - clarity (Article 84 EPC 1973)

4.1 Claims must be clear in themselves when read by the person skilled in the art without any reference to the content of the description (see Case Law, II.A.3.1).

4.2 Claim 1 of AR-I specifies that the encoding comprises "inserting at least one redundant frame of intra-coded data into the encoded bitstream based on the content classification".

4.3 The board is not convinced that the person skilled in the art would have had no difficulties understanding the claimed technical features (see point XIII(c) above).

4.3.1 It is not clear from the wording "based on" in the phrase quoted in point 4.2 above whether the decision to insert a redundant frame or the number of redundant frames inserted depends on the content classification.

If the number of frames (amount of data) depends on the content classification, it is not clear how the number depends on the content classification or in which unit of pictures the redundant frames are to be inserted, i.e. whether the number is defined per group of pictures (GOP), per scene, etc.

4.3.2 The description, paragraph [0247] discloses that if the content classification is relatively high, more intra-coded macroblocks are inserted into P- or B-frames, i.e. the amount of redundant data is directly proportional to the complexity. In contrast, according to paragraph [0268], the amount of redundant data inserted is inversely proportional to the complexity of the multimedia data. In summary, the description does not give a clear definition of how the amount of data to be inserted depends on the content classification.

4.4 In view of the above, claim 1 of AR-I does not meet the requirements of Article 84 EPC 1973.

5. AR-I - added subject-matter (Article 123(2) EPC)

5.1 According to the consistent interpretation of Article 123(2) EPC by the Enlarged Board of Appeal, an amendment can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the description, claims and drawings as filed (see G 3/89, OJ EPO 1993, 117; G 11/91, OJ EPO 1993, 125; G 2/10, OJ EPO 2012, 376).

The content of an application must not be considered to be a reservoir from which features pertaining to separate embodiments of the application can be combined to artificially create a particular embodiment. In the absence of any pointer to a combination, the combined selection of features would not, for the person skilled in the art, emerge clearly and unambiguously from the content of the application as filed (see Case Law, II.E.1.6.1).

5.2 Claim 1 of AR-I specifies that the encoding comprises "inserting at least one redundant frame of intra-coded data into the encoded bitstream based on the content classification, and wherein the intra-coded data is encoded by using the quantization parameter for the base layer or the quantization parameter for the enhancement layer".

5.3 The board is not convinced that the subject-matter of claim 1 of AR-I is directly and unambiguously derivable from paragraphs [0247] and [0273] and claims 10, 11, 22 and 23 of the application as filed (see point XIII(d) above).

5.3.1 Paragraph [0247] discloses inserting more intra-coded macroblocks into P- of B-frames if the content classification is relatively high.

Originally filed claims 10 and 11 are dependent on originally filed claim 1. The latter specifies inserting at least one "redundant block of intra-coded data" (emphasis added). Similarly, original claims 22 and 23 were dependent on original claim 12 which specifies inserting at least one redundant block of intra-coded data.

In summary, originally filed claims 10, 11, 22 and 23 and paragraph [0247] relate to inserting a redundant (macro)block into a P- or B-frame.

5.3.2 Paragraph [0273] discloses inserting redundant I-frames based on multimedia content information. This paragraph does not refer to spatial or temporal complexity.

5.3.3 None of the passages cited by the appellant specifies a quantisation parameter for the base layer (QPb) or a quantisation parameter for the enhancement layer (QPe).

The application as filed discloses a QPb and a QPe in the context of inserting intra-coded macroblocks in P- or B-frames (see paragraph [0246]).

5.3.4 Paragraph [0268] mentions both "at least one redundant block of intra-coded data" and "at least one frame of redundant data, wherein the at least one frame of redundant data comprises an I-frame". However, this paragraph discloses that the amount of redundant data is inversely proportional to the complexity of the data. This seems to contradict paragraph [0247], which discloses that if the content classification is relatively high, more intra-coded macroblocks are inserted into P- or B-frames, i.e. the amount of redundant data is directly proportional to the complexity.

5.4 In summary, claim 1 of AR-I is a combination of features from separate embodiments, and the application as filed does not contain a pointer to this combination.

5.5 In view of the above, claim 1 of AR-I does not meet the requirements of Article 123(2) EPC.

6. AR-II-A - clarity (Article 84 EPC 1973)

6.1 The claims must be clear in themselves when read by the person skilled in the art without any reference to the content of the description. The meaning of the essential features should be clear for the person skilled in the art from the wording of the claim alone (see Case law, II.A.3.1).

A claim cannot be considered clear within the meaning of Article 84 EPC 1973 if it comprises an unclear technical feature for which no unequivocal generally accepted meaning exists in the relevant art (see Case Law, II.A.3.1).

6.2 Claim 1 of AR-II-A specifies "a frame difference metric between two frames of each macroblock", the "contrast ratios between previous and current frames" and the "luminance histogram difference between previous and current frames".

6.3 The board is not convinced that the definition of the frame difference metric as a function of the sum of a first term reflecting the contrast ratios between previous and current frames and a second term reflecting the luminance histogram difference between previous and current frames is clear (see point XIII(e) above).

The phrase "luminance histogram difference" does not have a generally accepted meaning in the relevant art.

The term "contrast ratio" is normally used to refer to the ratio of the luminance of the brightest part of a picture (pixel) to the luminance of the darkest part of a picture (pixel). The current application attributes a very specific meaning to "contrast ratio" (see paragraph [0128]) which is not clear from the claim alone.

6.4 In view of the above, claim 1 of AR-II-A does not meet the requirements of Article 84 EPC 1973.

7. AR-II-D - clarity (Article 84 EPC 1973)

7.1 Claim 1 of AR-II-D specifies a "frame difference metric D between two frames of each macroblock" and a "luminance histogram difference".

7.2 The board is not convinced that the person skilled in the art would have had no difficulties understanding the meaning of the technical features from the wording of claim 1 of AR-II-D (see point XIII(g) above).

7.2.1 The phrase "of each macroblock" suggests that D is calculated at the macroblock level. However, the contrast ratio and luminance histogram difference are calculated at the frame (picture) level (see paragraphs [0128] and [0130]). Therefore, it is not clear how D can be calculated at the macroblock level.

7.2.2 The term "luminance histogram difference" does not have a generally accepted meaning in the relevant art. It is not clear from claim 1 how the difference between histograms can be calculated.

The description, paragraph [0130], sets out one example of calculating this difference. The formula calculates the difference between the number of blocks in the i**(th) bin for the previous frame and the number of blocks in the i**(th) bin for the current frame. However, the luminance is normally a property of a pixel, and the paragraph does not specify how the luminance for a block is derived from the luminance of the pixels in the block. According to paragraph [0168], the histogram "operates on" the DC coefficient of a block or uses the average value of the 256 luminance values in a 16x16 block.

7.2.3 The term "contrast ratio" is normally used to refer to the ratio of the luminance of the brightest part of a picture (pixel) to the luminance of the darkest part of a picture (pixel). The current application attributes a very specific meaning to "contrast ratio" (see paragraph [0128]) which is not clear from the claim alone.

7.3 In view of the above, claim 1 of AR-II-D does not meet the requirements of Article 84 EPC 1973.

8. AR-II-A and AR-II-D - added subject-matter (Article 123(2) EPC)

8.1 In accordance with established case law, it is not normally allowable to base an amended claim on the extraction of isolated features from a set of features originally disclosed only in combination, e.g. an embodiment in the description (see Case Law, II.E.1.9).

8.2 Claim 1 of AR-II-A and AR-II-D specifies encoding the frame as an I-frame, P-frame, B-frame or skip frame based on the frame difference metric.

8.3 The board has not been persuaded that the passages indicated by the appellant (see points XIII(f) and XIII(h) above) provide a clear and unambiguous basis for the features identified in point 8.2 above.

8.3.1 None of the originally filed claims specifies the coding referred to in point 8.2 above.

8.3.2 Paragraphs [0247], [0273], and original claims 10, 11, 22 and 23 do not disclose coding a frame as an I-frame, P-frame, B-frame or skip frame based on the frame difference metric.

8.3.3 Equations [6], [7] and [8] are not defined in the context of coding a frame as an I-frame, P-frame, B-frame or skip frame based on the frame difference metric defined in equation [8] and paragraph [0131].

8.3.4 The frame difference defined in paragraph [0169] is used in the "process of assigning compression types" shown in Figure 42. However, according to paragraph [0172] and Figure 42, a frame is coded as an I-frame if the frame difference exceeds a threshold, but a frame is coded as a P-frame, B-frame or skip frame depending on the value of the "accumulated" frame difference.

8.4 Thus, the claimed encoding is based on the extraction of isolated features (coding based on the frame difference metric) only disclosed in combination, i.e. the specific embodiment disclosed in paragraph [0172] and Figure 42.

8.5 In view of the above, claim 1 of AR-II-A and AR-II-D does not meet the requirements of Article 123(2) EPC.

9. Since none of the appellant's requests is allowable, the appeal is to be dismissed.

10. Request for the reimbursement of the appeal fee

10.1 Rule 103 EPC as amended in accordance with the decision of the Administrative Council of 12 December 2019 (see OJ EPO 2020, A5, Article 1 of the decision) entered into force on 1 April 2020 (see Article 2.1 of the decision) and is applicable to the present appeal pending on 1 April 2020 (see Article 2.2 of the decision).

In accordance with Rule 103(1)(a) EPC, the reimbursement of the appeal fee is to be ordered if the board deems an appeal allowable if such reimbursement is equitable by reason of a substantial procedural violation.

10.2 Since the appeal is to be dismissed, the request for the reimbursement of the appeal fee is refused.