T 0282/17 15-12-2021

I. The appeal is against the opposition division's interlocutory decision finding that European patent No. 1 755 328 as amended on the basis of the claims of the first auxiliary request filed during the oral proceedings of 22 September 2016 met the requirements of the EPC.

II. The prior-art documents cited in the decision included the following:

E1: EP 1 148 725 A2

E2: US 6,317,609 B1

III. The opposition division came to the following conclusions:

- The then main request did not meet the requirements of Articles 123(2) and 84 EPC.

- The then first auxiliary request met the requirements of the EPC with respect to novelty, inventive step, clarity and added subject-matter (Articles 84, 54, 56 and 123(2) EPC).

IV. The opponent ("appellant") filed notice of appeal. In its statement of grounds of appeal, it requested that the patent be revoked in its entirety and that oral proceedings be held if the board was not minded to grant this request. It also requested that the following prior-art document be admitted into the appeal proceedings:

E5: EP 1 158 786 A2

The appellant submitted arguments in support of the following objections against the request found allowable by the opposition division (first auxiliary request filed during the oral proceedings held on 22 September 2016):

- Claims 1 and 9 extended the protection conferred by the patent (Article 123(3) EPC).

- Claims 1, 5, 7, 8 and 9 contained subject-matter extending beyond the content of the application as filed (Article 123(2) EPC).

- The subject-matter of all claims lacked novelty (Article 54 EPC) over the disclosure of document E1 or document E5.

- The subject-matter of all claims lacked inventive step (Article 56 EPC) over the disclosure of document E1 or document E5 in combination with either the disclosure of document E2 or the common general knowledge of the person skilled in the art.

V. By letter dated 11 August 2017, the patent proprietor ("respondent") filed sets of amended claims according to first to fourth auxiliary requests. It requested that the patent be maintained either in the form upheld by the opposition division (main request) or on the basis of the claims of one of the first to fourth auxiliary requests filed with its letter. The respondent also requested that oral proceedings be held if the board was minded not to allow any of these requests.

The respondent further requested the board not to admit document E5 into the appeal proceedings. Alternatively, if the board were to consider document E5 relevant to the patentability of the invention and prejudicial to the maintenance of the patent, the respondent requested that the case be remitted to the department of first instance so that E5 could be examined at two levels of jurisdiction.

VI. In a letter dated 27 February 2018, the appellant provided further arguments in support of the admittance of document E5 into the appeal proceedings. It also provided arguments in support of the following objections with respect to the requests submitted by the respondent with its letter dated 11 August 2017:

- The main request and the first auxiliary request did not meet the requirements of Article 123(3) EPC.

- None of the requests met the requirements of Article 123(2) EPC.

- The subject-matter of the claims of all requests lacked novelty over the disclosure of document E1 or document E5.

- The subject-matter of the claims of all requests lacked inventive step over the disclosure of document E1 or document E5 in combination with either the disclosure of document E2 or the common general knowledge of the person skilled in the art.

VII. The board issued a summons to oral proceedings. In a communication under Article 15(1) of the revised version of the Rules of Procedure of the Boards of Appeal 2020 ("RPBA 2020"; see OJ EPO 2019, A63) dated 30 March 2021 ("the board's communication"), it gave the following preliminary opinion with respect to the respondent's requests:

- Claim 9 of the main request and of the first auxiliary request extended the protection conferred by the patent but claim 1 did not.

- Claims 5, 7, 8 and 9 of the main request and of the first auxiliary request contained subject-matter extending beyond the content of the application as filed but claim 1 did not.

- Document E5 should not be admitted into the appeal proceedings.

- The subject-matter of claim 1 of all requests was new over the disclosure of document E1 but lacked an inventive step in view of the disclosure of document E1 combined with the common general knowledge of the person skilled in the art.

In its communication, the board also invited the parties to provide comments on specific issues pertaining to whether the respondent's second auxiliary request met the requirements of Article 123(2) and (3) EPC.

VIII. By letters dated 18 October 2021 and 25 October 2021, respectively, the appellant and the respondent requested that the oral proceedings scheduled for 15 December 2021 be held by videoconference.

IX. With a letter dated 12 November 2021, the respondent filed sets of amended claims according to a main request and first to fourth auxiliary requests to replace the requests filed with its letter dated 11 August 2017. The respondent provided arguments as to why the claims of its requests met the requirements of Article 123(2) and (3) EPC and why their subject-matter was new and involved an inventive step.

X. By letter dated 23 November 2021, the appellant submitted inter alia that the requests filed by the respondent with the letter dated 12 November 2021 "should not be admitted in accordance with the RPBA 2007 Articles 12 & 13".

XI. The oral proceedings before the board were held by videoconference on 15 December 2021, as requested by the parties.

During the oral proceedings, the respondent withdrew the main request and the first auxiliary request filed with the letter dated 12 November 2021 and replaced the second to fourth auxiliary requests filed by that letter with a revised second auxiliary request, a revised third auxiliary request and a revised fourth auxiliary request.

The appellant's final requests were that the decision under appeal be set aside and that the patent be revoked in its entirety.

The respondent's final requests were that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of the claims of the revised second auxiliary request filed during the oral proceedings of 15 December 2021 and description columns 1 to 7 of the patent specification and drawings sheets 1/5 to 5/5 of the patent specification, or on the basis of the claims of the revised third or fourth auxiliary requests filed during the oral proceedings of 15 December 2021.

At the end of the oral proceedings, the chair announced the board's decision.

XII. Claim 1 of the revised second auxiliary request filed during the oral proceedings before the board reads as follows:

"A method comprising: establishing a wireless telecommunication connection between a first telecommunication device and another telecommunication device,

- creating, using a camera, image information in the first telecommunication device during the telecommunication connection to the another telecommunication device;

- offering on a user interface of the first telecommunication device, in response to a determination that image information has been created using the camera during said telecommunication connection, a user selectable option to send the created image information from the first telecommunication device to the another device with which the telecommunication connection has been established; and

sending, in response to user selection of the user selectable option, the created image information from the first telecommunication device to the another device, while the telecommunication connection between the first telecommunication device and the another telecommunication device is still active."

XIII. Claim 4 of the revised second auxiliary request filed during the oral proceedings before the board reads as follows:

"A telecommunication device (200) comprising;

- a camera

- means for establishing a wireless telecommunication connection to another telecommunication device;

- means (201) for creating, using the camera, image information during the telecommunication connection with the another telecommunication device;

- means (201, 209) for offering on a user interface of the telecommunication device, in response to a determination that image information has been created using the camera during said telecommunication connection, a user selectable option to send the created image information to the another telecommunication device with which the telecommunication connection has been established; and

- means for sending, in response to user selection of the user selectable option, the created image information from the telecommunication device to the another device, while the telecommunication connection between the telecommunication device and the another telecommunication device is still active."

XIV. The main request and the second auxiliary request filed with the letter dated 12 November 2021 were both withdrawn during oral proceedings before the board. The parties arguments' regarding the admittance of those two requests are relevant for deciding on the admittance of the revised second auxiliary request and may be summarised as follows.

Respondent's arguments

The amended claims of the main request resolved issues raised in the board's communication and did not give rise to any new objections or create a fresh case.

The second auxiliary request addressed an issue under Article 123(2) EPC raised for the first time in point 9.2 of the board's communication, namely the fact that the application as filed might not provide a basis for not specifying whether the created image information was sent while the telecommunication connection was active.

Appellant's arguments

The main request was filed at the very last minute. It could have been filed in 2017 or promptly after the summons to oral proceedings had been issued. Moreover, replacing the expression "at least one" with the term "another" in claim 5 prima facie did not address the issue under Article 123(2) EPC raised in the statement of grounds of appeal because it still did not exclude a connection to more than one telecommunication device.

The second auxiliary request could have been filed earlier. In the inventive-step analysis in its statement of grounds of appeal, the appellant had stated that the claims did not address the sending of image information at all. Moreover, introducing the sending step in claim 1 created a fresh and more complex case. In particular, it rendered the combination of claims 1 and 2 unclear.

XV. The parties' arguments regarding the admittance of the revised second auxiliary request may be summarised as follows.

Respondent's arguments

Deleting dependent claim 2 was a reaction to an issue under Article 123(2) EPC raised for the first time during oral proceedings before the board, namely the fact that the application as filed did not directly and unambiguously disclose that the created image information was provided to a user of "the another device" through the established telecommunication connection.

Appellant's arguments

Dependent claim 3 recited a method "in accordance with any preceding claim". In one dependency branch, therefore, dependent claim 3 was dependent on dependent claim 2. The combination of dependent claims 2 and 3 led to a method in which the telecommunication connection involved both a voice connection and a data connection. This scenario was prima facie not disclosed in the application as filed. For this reason, the revised second auxiliary request should not be admitted into the appeal proceedings.

XVI. The parties' arguments regarding whether the revised second auxiliary request meets the requirements of Article 123(3) EPC, in so far as relevant to the decision, may be summarised as follows.

Appellant's arguments

Claim 1 as granted "at best" covered a method in which a user selectable option was offered during the same telecommunication connection in which the image information was created. Due to the deletion of the comma preceding the expression "during said telecommunication connection", claim 1 of the revised second auxiliary request also covered methods in which the user selectable option was offered once the established telecommunication had been terminated.

Respondent's arguments

The amendment to correct the commas in amended claim 1 as maintained by the opposition division rectified an obvious error.

XVII. The parties' arguments regarding whether the revised second auxiliary request meets the requirements of Article 123(2) EPC, in so far as relevant for this decision, may be summarised as follows.

Appellant's arguments

(a) Claim 1 covered methods in which the user selectable option was offered after the established telecommunication had been terminated. The application as filed did not disclose offering a user selectable option without an active telecommunication connection.

(b) Claim 1 covered methods in which image information was created by a camera that was not integrated in the telecommunication device. This was not disclosed in the application as filed.

(c) The step of "establishing a wireless telecommunication connection between a first telecommunication device and another telecommunication device" in claim 1 and the "means for establishing a wireless telecommunication connection to another telecommunication device" in claim 4 (emphasis added by the board) did not exclude the possibility of a one-to-many wireless telecommunication connection being established. There was no basis in the application as filed for establishing a one-to-many telecommunication connection. It was not clear how the invention worked in the case of a one-to-many telecommunication connection.

Respondent's arguments

(d) The application as originally filed did not state that the user selectable option had to be offered during a telecommunication connection or that any such feature was essential to the functioning of the invention.

(e) Figure 2B clearly showed a system in which the camera 252 was not integral with the communication device 250.

(f) Support for establishing a wireless telecommunication connection between a first telecommunication device and "another" telecommunication device was provided on page 1, lines 23 to 26, page 2, lines 28 to 31 and page 4, lines 23 to 31 of the application as filed. The appellant's objection that it was not clear how the invention worked in the case of a one-to-many telecommunication connection related to the issue of sufficiency of disclosure, not of added subject-matter. An issue of sufficiency of disclosure had never been raised in the appeal proceedings.

XVIII. The parties' arguments regarding the admittance of document E5 into the appeal proceedings may be summarised as follows.

Appellant's arguments

Document E5 came to the appellant's attention after the decision under appeal was issued. It was a reaction to the opposition division's narrow interpretation of document E1, which had taken the appellant by surprise. Furthermore, it prima facie disclosed that, in response to a determination that image information has been created using a camera during an active telecommunication connection between a first and another telecommunication device, a user selectable option is offered, on a user interface of the first telecommunication device, to send the created image information from the first telecommunication device to "the another device" with which the telecommunication connection has been established, as required by claim 1 of the revised second auxiliary request. In particular, Figure 19 of document E5 illustrated how a user of a first telecommunication device specified a region of an image that was to be transmitted. The user selected the region and pressed a button ("button 56") to lock it. The button was responsive to the region being specified. Region information was created before the button was pressed. Any image captured afterwards was adjusted according to these settings. The sending of the region information to the other telecommunication device was "inherent".

Respondent's arguments

The appellant had not provided any substantive reasons why document E5 had not been introduced into the proceedings before the appeal stage. In any case, document E5 was not prima facie prejudicial to the maintenance of the patent. It was not prima facie clear whether the region information selected by the user according to Figure 19 was sent to the other telecommunication device.

XIX. The parties' arguments regarding whether the subject-matter of claim 1 of the revised second auxiliary request is new in view of the disclosure of document E1 may be summarised as follows.

Respondent's arguments

(a) Interpreted properly, claim 1 specified that a wireless telecommunication connection had already been established when image information was created using the camera and that the creation of the image information triggered the offering of the user selectable option. This meant that the user selectable option was offered dynamically in response to a determination that certain conditions had been met.

(b) The offering of the two keys 111b and 111c described in document E1 was not triggered dynamically by the creation of image information. These keys were physical keys present at all times.

(c) The keys 111b and 111c did not represent "a user selectable option to send the created image information from the first telecommunication device to the another device with which the telecommunication connection has been established", as required by claim 1. According to claim 1, the created image information to be sent after selecting the option was image information that had been created before the option had been selected, i.e. retrospective image information. In contrast, the image information sent in E1 after one of the keys 111b and 111c was pressed was image information created after the key had been pressed, i.e. prospective image information.

(d) Figure 3 of document E1 showed the internal structure of the picture-data processing unit. It was not a flow diagram detailing the sequencing steps required to create the output of the picture-data processing unit. Therefore, it could not be deduced from this figure that image information created before one of the keys 111b and 111c was pressed (retrospective image information) was sent to the recipient.

Appellant's arguments

(e) Claim 1 could not be read as specifying that the creation of the image information dynamically triggered the offering of the user selectable option because the application as filed did not disclose the concept of dynamically offering a user selectable option. Claim 1 encompassed the case where the user selectable option was offered permanently. Therefore, the offering specified in claim 1 encompassed the keys 111b and 111c disclosed in document E1. These keys would be of no use if image information was not being created, so they were responsive to image information being created.

(f) Paragraph [0101] of E1 disclosed that the key 111b was not offered until live pictures had been created. In particular, the last sentence of this paragraph specified that the user on the picture-sending side could be allowed to start sending their live picture when they actively wanted to show it to the other party.

(g) E1 implicitly disclosed the case where retrospective image information was sent after one of the keys 111b and 111c was pressed. According to its abstract, E1 related to a videophone apparatus taking a live picture of the user. It was therefore implicit that the camera of the videophone apparatus captured a live picture at all times. According to Figure 3, this live picture was continuously fed to the unit 170a from the imaging unit. The case where a live picture had just been created at the time one of the keys 111b and 111c was pressed and was selected to be sent by the system control unit was inevitable. This live picture constituted retrospective image information.

(h) Claim 1 did not exclude the possibility that image information other than the created information triggering the offering was also sent to the other telecommunication device. This would happen, for example, if the image information was a video, in which case no difference could be recognised between the permanent offering of the keys 111b and 111c and the offering specified in claim 1.

XX. The parties' arguments regarding whether the subject-matter of claim 1 of the revised second auxiliary request involves an inventive step, in so far as relevant for the decision, may be summarised as follows.

Appellant's arguments

(a) The technical effect of an offering of a user selectable option being triggered by the creation of image information was merely that the offering was represented not by a physical key but by a soft button on a graphical user interface. If the sole remaining difference was that image information was sent straight to the other telecommunication device after being taken while the connection was active, it was not clear what problem was solved.

(b) Replacing the physical keys disclosed in document E1 with software keys would have been obvious for a person skilled in the art.

(c) The person skilled in the art would have found it obvious to only activate the combined-picture option disclosed in E1 in response to a determination that image information had been created using the camera during said telecommunication connection because the combined picture was useless if no image information was being created and sent over the telecommunication connection.

Respondent's arguments

(d) An offering of a user selectable option being triggered by the creation of image information improved the sending of image information from one device to another.

(e) E1 was silent with regard to keys 111b and 111c being provided in any form other than physical keys. The person skilled in the art would not have replaced the physical keys described in document E1 with software keys. E1 related to a system designed to protect the privacy of a videophone apparatus user. Physical keys were better than software keys to protect the user's privacy.

(f) Even if, for the sake of argument, it were considered obvious to replace a physical key with a software key, nothing in E1 hinted at dynamically offering the software key. Moreover, even if, for the sake of argument, it were considered obvious to modify E1 so as to both provide a software key and dynamically offer the software key, nothing in E1 hinted at dynamically offering a software key on the basis of the conditions specified in claim 1, namely "in response to a determination that image information has been created using the camera during the telecommunication connection".

(g) Even if, for the sake of argument, it were considered obvious to replace a physical key with a software key and to dynamically offer a software key on the basis of the conditions specified in claim 1, the person skilled in the art would have found no prompt in E1 to modify the functionality of the software key in such a way that selecting it triggered the sending of the retrospective image information whose creation generated (or activated) the software key.