T 1224/22 (Speech recognotion / Pioneer) 24-10-2024

Main Request - added subject-matter

1. The subject-matter of claim 1 extends beyond the content of the application as filed (BP4) according to three objections, which have been labelled (a), (b), and (c) in these appeal proceedings.

Objection (a) - erasure of prohibition character

2. Claim 1 defines display means that is adapted to display a prohibition character. The claim leaves open when the prohibition character is erased, and even whether it is erased at all. Thus, the subject-matter of claim 1 includes embodiments in which the display means is adapted to erase the prohibition character

- during the set-up period, before the permission character is displayed;

- after the permission character is displayed; or

- not at all.

At least those embodiments, in which the prohibition character is erased before the permission character is displayed, are not disclosed by the application as filed (BP4).

3. In contrast to claim 1, the application as filed only discloses the display of a speech prohibition message, of which the prohibition character is an example (application as filed, paragraph [0018]), for the entire duration of the set-up period ([0055]), and its erasure at the same time at which a permission message or character is displayed ([0052]), namely, after the speech recognition process has started ([0056]).

4. The passage in paragraphs [0052] to [0057] relates to Figure 3. It is about the operation of the same navigation apparatus 100 as the one shown in Figure 2, which displays the screen contents shown in Figures 1A and 1B, described in paragraphs [0015] to [0025]. Therefore, even if the latter paragraphs alone may not be explicit about the erasure of the prohibition message, it is unambiguous that the timing disclosed in paragraphs [0052] to [0057] applies to the screen displays of Figures 1A and 1B. This is confirmed by paragraphs [0012] and [0015], according to which the screen of Figure 1B is displayed only "after the start of the speech recognition process", and not before.

5. Hence, the description as filed does not support the display of a prohibition character for an undefined duration; and nor do the claims as originally filed, which do not define a prohibition character at all.

6. This understanding of the disclosure of the application as filed is not contested. However, the proprietor advocates a different understanding of claim 1, when read in its entirety: that the the permission character was displayed "in a position where the prohibition character was displayed after the set-up period has been ended", which could only be understood such that the prohibition character was erased precisely when the set-up period has ended.

7. According to the proprietor, an understanding of claim 1 that allowed a later erasure would be unreasonable; first, because the permission character would be unreadable if it were displayed together with the prohibition character and in the same position on the screen; and second, because the simultaneous display of two contradictory messages would make no sense. The second point also spoke against an understanding in which the prohibition character was moved to another position on the screen, for which there was no indication in the claim at all. Hence, the claim unambiguously implied that the prohibition character was erased as soon as the permission character was displayed.

8. Furthermore, according to the proprietor, an understanding that allowed an erasure of the prohibition character before the display of the permission character was also unreasonable. This was because, firstly, the speech recognition means would not yet be ready to recognize speech before the end of the set-up period; and secondly, the claim did not define anything happening on the display between the start and the end of the set-up period.

9. The proprietor's narrow understanding of claim 1 is not persuasive, at least not regarding the early erasure of the prohibition character.

10. Concerning the display of the prohibition character, claim 1 merely defines that the display means is adapted to display it "when the operation means receives the operation", and "to display a permission character ... in a position where the prohibition character was displayed after the set-up period has been ended." An erasure of the prohibition character during the set-up time, for example shortly before its end, plainly falls within what claim 1 defines. Contrary to the proprietor's view, an erasure before the end of the set-up time would not necessarily be technically meaningless, but could actually make sense, for example if the timing of the erasure took into account the typical human reaction time before starting to speak.

11. Hence, claim 1 covers subject-matter for which the application as filed has no basis (cf. point 5., above).

Objection (b) - in the upper side

12. Claim 1 defines the display of the prohibition character as being "in the upper side" of the speech list. This is an unusual formulation, which does not have a well-defined meaning, and which is not literally disclosed in the application as filed. It can be understood in different ways, defining different arrangements of the prohibition character with respect to the speech list. As will be explained below, some of these define subject-matter that goes beyond the content of the application as filed.

13. Claim 1 seeks to define the position of the prohibition character in relation to the (position of the) speech list. It is, however, not clear how the position of the speech list should be understood. It might refer to the area of the display dedicated to the display of the list, including header, margin, or padding, for example in the form of a window or box. On the other hand, it might refer to the smaller area in which text characters for list items themselves can actually appear.

14. The "upper side" of a speech list in the form of a window or box containing the list items could, for example, refer to:

(a) the one-dimensional upper boundary of the box (e.g., corresponding to a row of pixels on the screen);

(b) a two-dimensional area around, below, or above the upper boundary of the box (in the latter two cases with or without overlapping the boundary);

(c) an upper part of a two-dimensional boundary area containing the text box; or, arguably,

(d) an upper part, e.g., the upper half, of the box.

15. Accordingly, a prohibition character, which is located "in the upper side" of the speech list, could be located as follows (see illustrations 1 and 2 below):

(a) in a position overlapping the upper boundary of the speech list box (position B in illustration 1);

(b) in a position outside, but adjacent to, the upper border of the speech list box (position A in illustration 1);

(c) in the upper portion of a boundary area containing the speech list box (position E in illustration 2); or, arguably

(d) within the upper half of the speech list box (positions C or D in illustration 1).

FORMULA/TABLE/GRAPHIC

Illustration 1: positions A - D of speech list

FORMULA/TABLE/GRAPHIC

Illustration 2: position E of speech list

16. With reference to Figure 1A, the application as filed discloses the position of the prohibition message 2a, which is an example of a prohibition character, "in the upper portion of the list 1" ([0016]). It corresponds to position C in illustration 1. Although the application does not mention any list box, the fact that the prohibition message in Figure 1A is above the list elements on the one hand, but still defined to be "in" the (upper portion of) the list on the other hand, means that the area occupied by the list includes the prohibition message.

17. There is also no other passage in the application as filed that discloses the prohibition message to extend, in part or entirely, beyond the area of the speech list. This means that positions A, B, and E of the above illustrations, although contained by the definition in claim 1, have not basis in the application as filed.

18. According to the proprietor, however, the display of the prohibition character "in the upper side" of the speech list did not introduce any information that was not in the application as filed, even if did not appear verbatim.

19. They argued that paragraphs [0028], [0030], and [0054] of the application as filed disclosed that the speech list consisted of the collection of list items, which were words that could be displayed in lines. The position of the speech list on the display was, therefore, the position of the entirety of pixels occupied by the words, and not a window or an area around them.

20. According to the proprietor's argument, the prohibition message, as an example of a prohibition character, was not part of that list, but was a separate and differently formatted item, as was clear from paragraph [0018]. According to paragraph [0027], the prohibition message was "not displayed on the speech list". Rather, it could be displayed "at any position", for example, "on the left" of the list, as in paragraph [0029], or above the list, as was shown in Figure 1A.

21. This meant, still according to the proprietor, that any display of the prohibition character above the list items (i.e. the positions A, B, and E of the above illustrations), regardless of whether these were contained in a list box or not, was originally disclosed and could not add new information.

22. This argumentation is not persuasive.

23. The proprietor is right in that the application as filed defines the list items as words that can be arranged in lines, and the prohibition character (and message) as a separate item that has a different formatting.

24. However, neither the passages of the application as filed mentioned by the appellant, nor any other passages, disclose that the prohibition character could be arranged above the list:

(a) Figure 1A shows a prohibition character "in the upper portion of the list" ([0016]). This implies that the area occupied by the list extends above the list items and includes, at least, the space occupied by the prohibition character.

(b) Paragraph [0018] discloses that the prohibition character is displayed "in the uppermost in the same line as the speech list", which does not imply its arrangement above the list. Rather, the adjective "uppermost" could be understood to mean that the prohibition character is displayed in the uppermost part of the list (area).

(c) Paragraph [0027] discloses that the speech prohibition character is "not displayed on the speech list 1, but may be displayed, for example, in the middle or in the lower of the list 1". A meaningful interpretation of this seemingly contradictory disclosure of a display that is not "on" the list but still in the "middle" or "lower" of the list, would be a display of the prohibition character between the list elements (in their "middle") without overlapping them (not "on" them), which would correspond to the arrangement in position D in illustration 1, above.

(d) Paragraph [0029] discloses that

... as long as the speech prohibition message 2a and the speech permission message 2b are arranged in the same line as the speech list 1, they can be displayed at any position. For example, it is possible that they are displayed in an extension line of the heading of the speech list 1 (for example, in the uppermost, on the left, or the like) ...

This means that the display of the prohibition character at "any position" is restricted to any position "in the same line as the speech list". The examples of "in the uppermost" and "on the left" are still "in an extension line of the heading of the speech list".

Again, this is far from a clear and unambiguous disclosure of a position above and outside the area of a speech list, but rather points to a position above the list elements but still "in the uppermost" part, or in "the left" upper part of a list area.

(e) Paragraph [0029] (see also paragraph [0019]) further discloses the general principle underlying the positioning of the prohibition character, which should be

... displayed at the position where a user naturally reads as the user proceeds to read the speech list 1, or at the position which is visually recognized integrally to the speech list when the whole of the speech list 1 is seen ...

This principle highlights the importance of displaying the prohibition character in close proximity to the list items, but does not support a display at or above an upper boundary of the list area.

25. Hence, the formulation that the prohibition character is displayed "in the upper side" of the speech list introduces new subject-matter.

Objection (c) - Start display of prohibition character

26. Claim 1 defines display means adapted to display a speech list including a prohibition character "when the operation means receives the operation", the operation being an operation from the user to start the speech recognition process. This definition leaves open whether the speech list and the prohibition character only begin to be displayed at that point in time, or whether they might already be displayed before the start operation is received, and continue to be displayed when and after it is received. The application as filed has a basis only for the former option, and not for the latter.

27. The timing of the display of the prohibition message is described in paragraphs [0048] to [0052], together with paragraphs [0039] and [0040], of the application as filed. According to these paragraphs, a "system condition monitoring unit" informs the "system control unit", when it has detected an output signal from the operation unit, in response to the user having started the speech recognition operation (i.e., by pressing a button). The control unit then initiates the display of the speech list and the prohibition character, as shown in Figure 1A, and simultaneously triggers the speech recognition unit to start its set-up process. This means that the prohibition character is only displayed after the user has triggered the start operation, but not before.

28. According to the proprietor, claim 1 could reasonably only be understood such that the display of the speech list and the prohibition character was started at the point in time "when the operation means receives the operation". There was no point in displaying the prohibition character before the speech recognition was started, especially when using a navigation device, where the display would be occupied by other content.

29. However, contrary to the proprietor's opinion, the skilled person would have no reason to exclude the grammatically valid understand of a display of the prohibition character already before the start of the speech recognition process. Displaying a prohibition message at that point in time would not be meaningless, because it would inform the user that the speech recognition was not active, and no spoken command could be recognized. Claim 1 is not restricted to a navigation device in which the screen would be occupied by different content. Also, the prohibition character need not be so big or obtrusive as to obscure such other content, if it were there.

30. Hence, there is no basis in the application as filed for a display of the prohibition character before the start operation is received.

Conclusion

31. The subject-matter of claim 1 extends beyond the content of the application as filed (BP4) according to objections (a), (b), and (c) (Article 123(2) EPC).

32. As the parent application as filed (BP3) differs from the application as filed (BP4) only in its claims, and as the claims of the parent application do not define the prohibition character at all, the subject-matter of claim 1 also extends beyond the content of the parent application according to objections (a), (b), and (c) (Article 76(1) EPC).

33. Moreover, the grandparent application as filed (BP2) differs from the application as filed (BP4) only in its claims. The claims of the grandparent application define the display of a prohibition character, and the time of its erasure, but leave open the start of its display. A speech list is not defined at all, let alone an upper side of one. Hence, the subject-matter of claim 1 extends beyond the content of the grandparent application at least according to objections (a) and (b) (Article 76(1) EPC).

34. Hence, the Main Request is not allowable.

Auxiliary Request IV - added subject-matter

35. Claims 1 differs from that of the Main Request in that the display means is further defined as being adapted to erase the prohibition character after the set-up period has been ended.

36. This amendment overcomes objection (a) of added subject-matter.

37. However, the claims do not contain amendments that address the issues of added subject-matter according to objection (b), relating to the expression "in the upper side", or objection (c), relating to the start of the display of the prohibition character.

38. Therefore, objections (b) and (c) apply to Auxiliary Request IV for the same reasons as to the Main Request, and the subject-matter of claim 1 extends beyond the content of the applications as filed (Articles 76(1) and 123(2) EPC).

39. Hence, Auxiliary Request IV is not allowable.

Auxiliary Request VII-1 - admission

40. Auxiliary Request VII-1 was first filed with the written reply to the Board's preliminary opinion. Its admission is at the Board's discretion under Article 13 RPBA.

41. Claim 1 differs from that of the Main Request in that the display means is further defined as being adapted to erase the prohibition character after the set-up period has been ended, similar to claim 1 of Auxiliary Request IV, and is adapted to start displaying the speech list when the start operation is received.

42. The proprietor argued that the request should be admitted into the proceedings, first, because it was occasioned by considerations that were first raised in the Board's preliminary opinion; second, because it overcame all issues raised in the preliminary opinion; and third, because the amendments were not surprising and were of low complexity.

43. The added matter objection (c) was, indeed, newly raised in the Board's preliminary opinion. Although this may have amounted to "exceptional circumstances" within the meaning of Article 13(2) RPBA at the time of the filing of this request, the request fails, prima facie, to address, let alone overcome, objection (b), which was already part of the contested decision (points 1 and 2 under section 2.2.1 of the "reasons for the decision", referred to as "amendment 1" and "amendment 2" under section 2.2.3).

44. Hence, Auxiliary Request VII-1 is not admitted into the proceedings under Article 13(1), fourth sentence, RPBA.

Auxiliary Request 1 (Arabic) - admission

45. Auxiliary Request 1 was first filed during oral proceedings before the Board. According to Article 13(2) RPBA, such late filed amendments "shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned."

46. With regard to Article 13(2) RPBA, the proprietor presented a first line of reasoning in favour of the admission, which is based on the fact that objection (c) was first raised in the Board's preliminary opinion. This amounted to exceptional circumstances which justified the filing of Auxiliary Request 1, which clearly overcame this objection, and, additionally, also overcame all other objections.

47. The proprietor is correct in that objection (c) was first raised in the Board's preliminary opinion issued seven months before oral proceedings. It is established jurisprudence that objections newly raised, by the Board, may constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA (Case Law of the Boards of Appeal, 10th edition, V.A.4.5.5a).

48. However, circumstances can only qualify as "exceptional" within the meaning of Article 13(2) RPBA, when "justified with cogent reasons by the party concerned".

49. This requirement obliges the party not only to identify the circumstances and explain why they are to be regarded as "exceptional". It is normally also incumbent on them to establish a causal link between the circumstances, on the one hand, and the content of the amendment and the timing of its filing, on the other. They should thus explain why the circumstances had the direct result of preventing it from filing the amendment at an earlier stage (see T 1707/17, reason 2.4 and T 2486/16, reasons 6.5.5 and 6.5.6, and Case Law of the Boards of Appeal, 10th edition, V.A.4.5.4b). Expressing the temporal aspect in other words, they should persuade the Board that the amendment was filed within a reasonable time after the circumstances occurred.

50. After the submission of a request within a reasonable time after the occurrence of the relevant circumstances, any later filed requests would require exceptional circumstances of their own. In other words: the single occurrence of exceptional circumstances cannot justify a repeated filing of requests for an indefinite time span.

51. In this case, the raising of objection (c) in the Board's preliminary opinion might have entailed exceptional circumstances that warranted the filing of Auxiliary Request VII-1, which happened prior to the oral proceedings (and which the Board does not admit for other reasons). However, the same objection could not warrant the subsequent, later filing of Auxiliary Request 1 only during oral proceedings. That would have required its own exceptional circumstances.

52. Hence, the proprietor's first line of argument in favour of the Board taking Auxiliary Request 1 into account does not qualify as "cogent reasons" within the meaning of Article 13(2) RPBA and cannot justify the presence of exceptional circumstances.

53. The proprietor also presents a second line of argument in favour of the admission of Auxiliary Request 1, according to which the filing was justified by new exceptional circumstances, which emerged during the oral proceedings before the Board, and which were related to objection (b).

54. According to the proprietor, objection (b) was based on a new interpretation, which only became clear during the oral proceedings before the Board. The new interpretation was that the speech list defined in claim 1 could be understood as an area around, and including, the list items, or as a window that comprised the list items. Previously, the proprietor had regarded the speech list as the entirety of the list items and had not considered any other understanding to be possible. Consequently, an amendment had seemed unnecessary, before oral proceedings. Therefore, the new interpretation of the speech list amounted to exceptional circumstances, which only appeared during oral proceedings, and which justified the filing of Auxiliary Request 1.

55. Objection (b) concerns the formulation "in the upper side of the speech list". This formulation was first objected to in the notice of opposition, it has been part of the proceedings ever since, and the contested decision is based on it.

56. The discussion of whether the application as filed (BP4) (and the parent (BP3) or grandparent (BP2) applications) disclosed a display of the prohibition character "in the upper side of the speech list" was inherently about the extent of the speech list, or the area covered by it. The opponent explicitly referred to the grey area in Figure 1A of the grandparent application (BP2) to show that the area occupied by the speech list consisted of the entire box or window that included the list items (see, for example, Ill. 1, on page 4 of the opponent's letter dated 01.12.2021). Also, the preliminary opinion by the Board, under point 18, explicitly mentions the understanding that the speech list consisted of "an area containing the items, including a certain amount of space between and around the items", and the problems resulting from this understanding.

57. Therefore, the proprietor was not confronted with a new interpretation during oral proceedings, and the second line of argument also fails, already for this reason, to justify exceptional circumstances. The circumstance that the proprietor did not fully understand objection (b) until long after it had been raised does not qualify as "cogent reasons" within the meaning of Article 13(2) RPBA.

58. Hence, the proprietor could not justify, with cogent reasons, the presence of exceptional circumstances, which would have been (in principle) a prerequisite for consideration of Auxiliary Request 1. Consequently, this request is not taken into account (Article 13(2) RPBA).

Auxiliary Requests I (Roman) to III, V to VII, VIII to XIII - admission

59. These requests were filed with the statement of grounds of appeal. Their admission is subject to the Board's discretion under Article 12(4) RPBA.

60. Claim 1 of each of these requests comprises the formulation "in the upper side of the speech list" that gave rise to objection (b) of added subject-matter with regard to claim 1 of the main request (Articles 76(1) and 123(2)).

61. Prima facie, none of these requests addresses this issue.

62. Hence, Auxiliary Requests I to III, V to VII, and VIII to XIII are not admitted into the proceedings (Article 12(4) RPBA).

Conclusions

63. The Main Request is not allowable, because the subject-matter of claim 1 extends beyond the present and earlier applications as filed in three points (objections (a), (b), and (c)).

64. Auxiliary Request IV is not allowable, because the subject-matter of claim 1 extends beyond the present and earlier applications as filed in two points (objections (b) and (c)).

65. Auxiliary Request VII-1 is not admitted into the proceedings, because, prima facie, it does not address, let alone overcome, objection (b).

66. Auxiliary Request 1 (Arabic) is not taken into account, because the proprietor could not, with cogent reasons, justify the presence of exceptional circumstances.

67. Auxiliary Requests I (Roman) to III, V to VII, and VIII to XIII are not admitted into the proceedings, because, prima facie, they do not address objection (b).