T 1246/10 31-03-2015

I. The appeal is against the decision of the opposition division to revoke European patent No. 1 356 678 under Article 101(3)(b) of the European Patent Convention (EPC).

II. The opposition was based on the grounds for opposition under Article 100(a), (b) and (c) EPC. In the proceedings before the opposition division, the patent proprietor filed amended claims according to a main and an auxiliary request and requested that the patent be maintained in amended form. The patent was ultimately revoked on the grounds that, taking into consideration the amendments made by the patent proprietor, claim 1 of both requests did not meet the requirements of Articles 123(2) and 84 EPC, and the subject-matter of claim 1 of both requests did not involve an inventive step (Article 56 EPC).

III. The patentee appealed against this decision and requested that the decision be set aside. The appellant also requested that the patent be maintained in amended form on the basis of the requests underlying the decision under appeal. In the statement of grounds of appeal, the appellant/patentee gave arguments as to why he considered the decision to be incorrect. The appellant also filed claim 1 according to second and third auxiliary requests.

IV. Claim 1 of the main request reads as follows:

"A method for transmitting image and sound data from a mobile phone (1) to a television (3), comprising:

copying image and control information from the display to the Bluetooth transmitter and uniting sound information to them in the mobile phone (1) from the image and sound data received by the mobile phone (1),

transmitting the information in a format that conforms to a Bluetooth-protocol as an output signal from the mobile phone (1);

receiving the output signal from the mobile phone (1) as an input signal at a module (2) converting the input signal to RGB-sound signals in the module (2); and

transmitting the RGB-sound signals from the module (2) to the television (3),

wherein the module (2) is a mobile telephone accessory located at the television (3),

and wherein by pressing a certain soft key button the phone (1) copies image and control information from the display to the Bluetooth transmitter and uniting sound information to them."

In points V to VII below, the amendments with respect to claim 1 of the main request are set in italics.

V. Claim 1 of the first auxiliary request reads as follows:

"A method for transmitting image and sound data from a mobile phone (1) to a television (3), comprising:

copying image and control information from the display to the Bluetooth transmitter and uniting sound information to them in the mobile phone (1) from the image and sound data received by the mobile phone (1),

transmitting the image, control and sound information in a format that conforms to a Bluetooth-protocol as an output signal from the mobile phone (1);

receiving the output signal from the mobile phone (1) as an input signal at a module (2) converting the input signal to RGB-sound signals in the module (2); and

transmitting the RGB-sound signals from the module (2) to the television (3),

wherein the module (2) is a mobile telephone accessory located at the television (3),

and wherein by pressing a certain soft key button the phone (1) copies image and control information from the display to the Bluetooth transmitter and uniting sound information to them."

VI. Claim 1 of the second auxiliary request corresponds to claim 1 of the first auxiliary request, with the method step specifying the transmission of the information reading as follows:

"transmitting the image and control and sound information in a format that conforms to a Bluetooth-protocol as an output signal from the mobile phone (1) provided with a Bluetooth transmitter and transmitting the information by a Bluetooth transceiver;"

VII. Claim 1 of the third auxiliary request reads as follows:

"A method for transmitting image and sound data from a mobile phone (1) to an analog television (3), comprising:

copying image and control information from the display to the Bluetooth transmitter and uniting sound information to them in the mobile phone (1) from the image and sound data received by the mobile phone (1),

transmitting the image and control and sound information in a format that conforms to a Bluetooth-protocol as an output signal from the mobile phone (1) provided with a Bluetooth transmitter and transmitting the information by a Bluetooth transceiver;

receiving the output signal from the mobile phone (1) as an input signal at a module (2) converting the input signal to RGB-sound signals in the module (2); and

transmitting the RGB-sound signals from the module (2) to the television (3),

wherein the module (2) is a mobile telephone accessory located at the television (3),

and wherein by pressing a certain soft key button the phone (1) copies image and control information from the display to the Bluetooth transmitter and uniting sound information to them."

VIII. In a letter of reply dated 5 October 2010 the respondent requested that the appeal be rejected as inadmissible for inadequate reasoning in the statement of grounds of appeal. The respondent also submitted that the second and third auxiliary requests were late-filed. It furthermore submitted inter alia that the finding in the decision under appeal concerning Article 123(2) EPC was correct.

IX. The board issued a communication pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), annexed to a summons to oral proceedings dated 23 September 2014. The date scheduled for oral proceedings was 18 December 2014. In this communication the board set out the reasons for its provisional opinion that the appeal was admissible and that it tended to agree with the finding in the decision under appeal that claim 1 of the main and first auxiliary requests did not meet the requirement of Article 123(2) EPC.

X. In a letter dated 16 October 2014 the appellant requested postponement of the oral proceedings because of an exacerbation of his serious illness.

XI. In a letter dated 14 November 2014 the respondent expressed doubts whether the serious illness constituted unforeseen exceptional circumstances but did not object to a postponement of the oral proceedings. The respondent also confirmed that it requested the late-filed second and third auxiliary requests not to be admitted into the appeal proceedings under Article 12(4) RPBA.

XII. In a communication dated 21 November 2014 the board informed the parties that the oral proceedings had been rescheduled to take place on 31 March 2015.

XIII. In a letter dated 9 March 2015 the appellant requested a further postponement of the oral proceedings for reasons of his serious illness. The board also received via email attachment a "claim chart" of the appellant representing an analysis of the relevance of Apple TV and Google Chromecast to the present patent family.

XIV. The board forwarded the letter and the email attachment to the respondent by telefax on 13 March 2015, affording the respondent an opportunity to comment on the appellant's request.

XV. With a letter of reply dated 16 March 2015 the respondent submitted that it strongly preferred conducting the oral proceedings as scheduled. This was in particular because re-scheduling the oral proceedings would incur additional costs. The opponent had already made travel arrangements to attend the oral proceedings in Munich on 31 March 2015.

XVI. In a communication dated and sent by telefax on 18 March 2015, the board informed the parties that the oral proceedings would be held as scheduled on 31 March 2015.

XVII. The day before the oral proceedings the board received two further email attachments comprising the appellant's counterstatements to statements made by the respondent in writing.

XVIII. Oral proceedings before the board were held on 31 March 2015 in the absence of the appellant, in application of Rule 71(2) EPC 1973 and Article 15(3) RPBA. The respondent was represented. Paper copies of the further email attachments received the day before were handed over to the respondent. The chairman noted that the appellant (patent proprietor) had requested in writing 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 main request or the first auxiliary request, underlying the decision under appeal, or one of the second and third auxiliary requests filed with the statement of grounds of appeal. The respondent (opponent 1) withdrew its former request that the appeal be rejected as inadmissible and requested that the appeal be dismissed. At the end of the oral proceedings the chairman announced the board's decision.

XIX. The reasons for the decision under appeal, as far as they are relevant for the present decision, may be summarised as follows:

Claim 1 of the main and the first auxiliary requests referred to "a television". Thus they covered digital televisions. The application as filed consistently referred to "an ordinary analog home television". There was no support in the application as filed for digital televisions. Furthermore, there was no basis in the application as filed for transmitting information in a format that conforms to a Bluetooth protocol. Thus these claims infringed Article 123(2) EPC.

XX. The appellant's arguments, as far as they are relevant for the present decision, may be summarised as follows:

The television could be any television. There was no need for it to be an analogue television. The invention was defined in a method claim and thus there was no reason to define the television apparatus more specifically as the type of the television apparatus did not affect the method in any way. At the date of filing, in television broadcasting signals were transmitted in analogue form. Thus an ordinary television receiver at home at the priority date would normally have been able to receive analogue television signals. However, the general expression "a television" was used in the description of the application as filed. Also, the figures used the general term "TV" to identify the television. Moreover, it was not clear what strictly speaking was a digital television and what was an analogue television. For instance, the human eye and ear were always operating with analogue signals and therefore no television receiver was operating 100% digitally. Therefore the general term "a television" in claim 1 was correct and based on the application as filed.

XXI. The respondent's arguments, as far as they are relevant for the present decision, may be summarised as follows:

The patent proprietor had been aware of the opposition division's preliminary opinion that the patent should be revoked and thus would have had all reasons to e. g. present the claim sets now filed for the first time as his second and third auxiliary requests. He appeared to consider his appeal as just a convenient way of continuing as if the case still concerned a European patent application pending before the examining division.

The application as filed contained a specific disclosure of an analogue television only, not of a digital television. This was confirmed by the appellant's argument that at the date of filing digital television was not commercially available, or at least was not present in normal users' homes. Wherever the terms "television" or "TV" occurred in the application as filed, they related to immediately preceding expressions with the modifier "analog". Claim 1 of the main and first auxiliary requests were not limited to analogue televisions and therefore contained subject-matter which extended beyond the application as filed, contrary to Article 123(2) EPC. The functioning of the human eye or ear was not relevant for the question of whether the application as filed concerned analogue or digital television.