T 1007/05 18-06-2009

Reasons for the Decision

1. Admissibility of the appeal

The appeal is admissible.

2. The admissibility of the respondent's main and first and second auxiliary requests

The appellant objected to the admission into the proceedings of these requests, when they were filed initially in the oral proceedings, as late filed. When the respondent sought to reintroduce the main and first auxiliary requests after having previously withdrawn them the appellant argued that allowing re-introduction would be overly generous to the respondent.

Under Article 13(1) RPBA any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Under Article 13(3) RPBA, amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.

As for the initial filing of the main and first auxiliary requests in the oral proceedings the board notes that they were filed in response to objections at least some of which were newly raised at the beginning of the oral proceedings by the appellant and the board against the amended claims filed by the proprietor with the letter dated 15 May 2009. Equal treatment of the parties and fairness require that the other party be given an opportunity to react to new objections which, in the present case, could hardly have been made earlier than in the oral proceedings. Moreover these requests concerned amendments which caused the proceedings to converge, the amendments not giving rise to any new objections. In the board's opinion such amendments had to be expected as a reaction to the new objections and did not unnecessarily increase the complexity of the subject-matter under consideration.

As for the desired reintroduction of the main and first auxiliary requests that had previously been withdrawn, in the particular circumstances of this case, in which the board indicated that it was not inclined to admit the latest sole main request (which subsequently became the second auxiliary request, see below), the board regarded it as reasonable that the respondent be allowed to reintroduce the previously discussed main and first auxiliary requests as this further amendment of the respondent's case was procedurally economical in not prolonging the oral proceedings.

Based on the above criteria the board exercised its discretion under Article 13(1) RPBA in admitting and later reintroducing the main and first auxiliary requests into the proceedings.

The board however decided not to admit the second auxiliary request into the proceedings, since this amendment was only made after having admitted and extensively discussed several previous requests and modifications. Moreover the amendments in claim 1 involved the deletion of the controller which raised new issues concerning whether the adaption of the printing means and facsimile modem set out in the claim (see the highlighted passages in point XVI above) to carry out functions previously carried out by the controller had added subject-matter, contrary to Article 123(2) EPC. In other words, the amendments would have caused the proceedings to diverge, opening a debate on the new issues and further increasing the complexity of the oral proceedings, contrary to the principle of procedural economy. On this basis the board exercised its discretion under Article 13(1) RPBA in not admitting the second auxiliary request into the proceedings.

3. The admissibility of documents D19 and D20

Under Article 12(1)(a) RPBA appeal proceedings shall be based on inter alia the statement of grounds of appeal. Following Article 12(2) RPBA, the statement of grounds of appeal and the reply shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. Moreover, according to Article 12(4) RPBA, without prejudice to the power of the board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the board if and to the extent it relates to the case under appeal and meets the requirements in (2). Essentially these measures were introduced with Article 10a and Article 10b of a previous version of the RPBA (see OJ EPO 2003, 61) and were aimed at achieving the goal of more efficient and shorter appeal proceedings and included a more defined and controlled initial phase of proceedings (see point I.A.3 of document CA/133/02 dated 12 November 2002, cited in decision T 0624/04 (reasons, point 1.9), not published in OJ EPO).

In the present case D19 and D20 were both filed with the statement of grounds of appeal, relate to the case under appeal and meet the requirements of Article 12(2) RPBA. For the reasons given below the board also considers that, in the present case, this board does not deviate from the essential considerations underlying decisions T 85/93 and T 1002/92 (supra). Consequently the board admits both documents into the proceedings, Article 12(4) RPBA.

4. The allowability of the respondent's main request

4.1 General technical background (Document D19)

The reference work D19 gives an overview of electronic mail systems at the priority date. In view of the sufficiently detailed information given in D19 the board finds it unnecessary to introduce further evidence cited by the appellant, such as the standard RFC 1521. E-mail systems using the message format defined in RFC 822 over the internet were widespread at the priority date; see D19, section 7.4 "Electronic mail". Such systems typically consisted of two subsystems: the user agents, which allowed people to read and send e-mail, and the message transfer agents, which moved the messages from the source to the destination; see page 645, first paragraph. According to page 646, lines 17 to 23, a key idea in such e-mail systems was the distinction between the envelope and its contents. The envelope encapsulated the message. It contained all the information needed for transporting the message, such as the destination address, priority and security level, all of which were distinct from the message itself. The message transport agents used the envelope for routing. The message inside the envelope contained two parts: the header and the body. The header contained control information for the user agents, whilst the body was entirely for the human recipient. According to figure 7-42 on page 651, the header contained fields relating to message transport such as "To:", which gave the e-mail address of the primary recipient, and also contained fields used by the user agents or human recipients such as "Subject:", which gave a short summary of the message for a one-line display. The header fields each consisted of a single line of ASCII text containing the field name, a colon and, for most fields, a value.

Such e-mails complying with RFC 821 (transmission protocol) and RFC 822 (message format) in the early days of the internet had consisted exclusively of text messages written in English and expressed in the character code ASCII. To extend the e-mail system to deal with other alphabets, languages and non-textual messages such as audio and video "Multipurpose Internet Mail Extensions" (MIME) were proposed and later set out in RFC 1521; see page 653, "MIME". MIME continued to use the RFC 822 format, but added five new message headers to add structure to the message body and define encoding rules for non-ASCII messages. One of the new message headers was the "content type" field, figure 7-45 giving the initial list of types and subtypes (fifteen in total) specified in RFC 1521, examples of types/subtypes being "Text/Plain" and "Image/Jpeg". Additional types and subtypes were added later.

E-mail was delivered over the internet by having the source machine establish a TCP connection to port 25 of the destination machine; see page 658 "SMTP". Listening to this port was a program called an e-mail daemon using the Simple Mail Transfer Protocol (SMTP), defined in RFC 821, which accepted incoming connections and copied messages from them into the appropriate mailboxes. If a message could not be delivered, for instance because the recipient mailbox was not registered at that location (see D19, pages 647, lines 2 to 3, and 658, lines 13 to 8 from the bottom), an error report was returned to the sender. SMTP defines the conversation between the source and destination machines involved in sending an e-mail message.

The opposed patent in certain embodiments refers to these mechanisms, in particular that of the MIME standard, for sending and receiving compressed images employing a content type "image/tiff" (see paragraphs [0047], [0057], [0084] and [0099]). No further details are disclosed about how MIME is used or which parts of MIME are particularly relevant for embodying the invention.

4.2 Document D20

D20 proposes a standard for a file format for the exchange of fax-like black and white images over the internet; see abstract. The images may originate from scanners and may be printed by laser printers; see page 2, first paragraph and page 4, last three lines. The file format is TIFF (Tagged Image File Format) which allows image data to be encoded using MMR (Modified Modified READ) (the data encoding of CCITT Group 4 fax) or MH (Modified Huffman) or MR (Modified READ) (the data encodings of CCITT Group 3 fax); see the paragraph bridging pages 2 and 3 and page 6, second and third paragraphs. The TIFF files can be communicated by SMTP to transfer them from one host to another.

The respondent has essentially questioned whether D20 is a sufficient disclosure by arguing that it is merely a memo setting out unconnected ideas. The board does not agree. D20 proposes a standard which, in the telecommunications network field to which it belongs, would be sufficient for the skilled person to realize an apparatus to implement it.

Since however D20 does not provide a self-contained disclosure of an apparatus, the subject-matter of claim 1 is novel, Article 54(1,2) EPC 1973.

4.3 Inventive step

Although there is no direct and unambiguous disclosure of an apparatus comprising all the individual features referred to in the following in combination, the reference to the facsimile, printing and electronic mail functions are such that they need no further discussion in the context of deciding on inventive step. For example, even though it would be possible to conceive an apparatus where the data are not scanned (but supplied in electronic form) or not printed (but only displayed), the usual and thus straightforward choice of the person skilled in the art would have been the scanning and printing of documents. Equally, although D20 mentions the possibility of transferring files between hosts using FTP (see page 2, lines 21 to 24), the same passage also mentions SMTP, the board regarding SMTP at the filing date (in 1996) as the more usual choice for the skilled person for the reasons given in D19, page 644, lines 1 to 20. Moreover, although D20 could be understood as disclosing unidirectional transmission of images from transmitters to receivers, a more usual choice would be a full implementation of the standard by realizing transceivers capable of both transmitting and receiving images and thus bidirectional transmission of images between transceivers, as hinted at by the references in D20 (see, for instance, the title) to the "exchange" of images. The board sees no synergistic link between any of these usual choices.

Hence the following subject-matter results from the skilled person making usual choices when implementing a system according to D20: an electronic mail apparatus connected to a network (see references to SMTP, for instance on page 2, lines 21 to 24) which sends image data of a paper document to an addressed destination comprising: a scanner (see page 2, line 8) for scanning a paper document and converting the paper document into corresponding image data; compression means (see compression methods MMR, MR and MH in the paragraph bridging pages 2 to 3) for compressing the image data into compression-resultant image data of a facsimile format; first data converting means for converting the compression resultant image data of the facsimile format into character code data of an electronic mail format (implicit in sending an image file by SMTP, ASCII character code data being implicit in an electronic mail format); means for receiving information of an electronic mail destination address (implicit to identify the destination); electronic-mail transmitting means transmitting the compressed image data converted into character code data of the electronic-mail format to a destination address via the network (implicit in SMTP); electronic mail receiving means for receiving image data in an electronic mail format from a sender via the network (again, implicit in SMTP); second data converting means for converting the received image data into image data of a facsimile format (again, implicit in sending an image file by SMTP, ASCII character code data being implicit in an electronic mail format), expansion means for expanding compressed image data of the facsimile format into expansion resultant image data of the facsimile format (see compression methods MMR, MR and MH in the paragraph bridging pages 2 to 3); and printing means (see page 2, line 10) for printing the expansion resultant image data of the facsimile format.

The skilled person would have been aware that, as set out in D19 (see point 4.1 above), the electronic mail receiving means would, as an implicit feature of SMTP, have to be capable of recognising whether an incoming e-mail is deliverable and sending back an error report if it is not. To do this it would have been usual for the skilled person to provide means for analyzing the "To:" header field of incoming e-mails, this constituting analyzing a character sequence in a given position of character code data in a received electronic mail. As a result of this analysis, the electronic mail apparatus would have sent an error report back to the sender if the e-mail was not deliverable, thus implementing a process in response to a result of said analyzing. The board notes that the published patent description refers to the analysis of different header fields of incoming e-mails, such as the "Subject" part and the "From" part; see, for instance, paragraphs [0157] and [0194].

Starting from D20 and interpreting it in the light of common general knowledge, as reflected by D19, the skilled person would, by making usual design choices, have consequently arrived at the subject-matter of claim 1 without inventive step. The subject-matter of claim 1 thus lacks inventive step, Article 56 EPC 1973, in view of D20 understood in the light of D19.

5. The allowability of the respondent's first auxiliary request

It is not clear, Article 84 EPC, which extensions, in other words content types and subtypes, are defined by the expression in claim 1 (highlighted in point XV above) "in conformity with Multipurpose Internet Mail Extensions", RFC 1521 (see D19, page 655, figure 7-45) defining fifteen types and subtypes but not referring to "image/tiff", mentioned in the description of the opposed patent (see paragraph [0057]). The board is also not convinced that the expression "an electronic mail format in conformity with Multipurpose Internet Mail Extensions" is sufficient to clearly define the matter for which protection is sought. This expression does not make clear which features of the standard are essential for the claimed invention, as argued by the appellant, and what exactly the meaning of these features is, since standards may change with time, as this particular case clearly shows; RFC 1341 was updated in RFC 1521, and new subtypes were added; see D19, page 653 and page 655, lines 1 and 2. Moreover, whilst the transmitting part of the apparatus has been restricted by the reference to MIME, there is no corresponding amendment of the receiving part of the apparatus, leading to doubt as to whether such a restriction is intended or not, Article 84 EPC 1973. As a consequence, claim 1 of the first auxiliary request does not comply with Article 84 EPC 1973.

6. The respondent's third auxiliary request (remittal)

6.1 Since the board first has to decide on the respondent's higher ranking requests, the question arises as to the basis upon which the case should be remitted to the first instance, as the first instance would be bound by the ratio decidendi of the board, Article 111(2) EPC 1973. Since the respondent cannot reasonably have meant remittal after a decision on the higher ranking requests, the board interprets the third auxiliary request as actually meaning that the case should be remitted to the first instance in order to decide on the higher ranking requests.

6.2 According to Article 111(1) EPC 1973, second sentence, the board of appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. The board consequently has a discretion as to whether to remit the case to the first instance or not. The relevant jurisprudence of the boards of appeal reflects this discretion, which is exercised according to the circumstances of the individual case. The board sees no legal basis for an absolute right to have an issue decided upon by two instances (see Case Law of the Boards of Appeal, Fifth Edition, 2006, section VII.D.9.).

6.3 In the present case the board had announced in the annex to the summons to oral proceedings the intention to introduce, inter alia, D19 and D20 into the proceedings. In the oral proceedings the board decided to introduce D19 and D20 after having heard the parties on this issue. The parties then presented their submissions on novelty and inventive step relating to the initial requests and several amendments made by the respondent. Following the debate and a deliberation by the board, the board gave its provisional opinion and asked the parties to state their final requests before the chairman closed the debate. Only then did the respondent request remittal of the case as a third auxiliary request. Both the parties and the board had thus already concentrated the debate on the higher ranking requests with a view to deciding on them. Under these circumstances it would only be reasonable to remit a case which had been extensively discussed if exceptional circumstances justified this action, for instance if the introduction of documents into the proceedings had created an entirely new situation.

6.4 The board sees no such exceptional circumstances in the present case. The debate on appeal mainly concentrated on the evaluation of the common general knowledge concerning transmitting and receiving compressed image data in electronic mail. D19 was particularly relevant as a reference work giving detailed evidence in this respect, in particular concerning SMTP and MIME. These mechanisms are explicitly or implicitly referred to in the opposed patent without being explained in detail. The board considers that this common general knowledge is necessary both for carrying out the invention as well as for judging the inventive contribution over these standards. D20 is a proposal for a standard for exchanging fax-like images in an electronic mail format.

6.5 Before the first instance the main subject considered was the communication of facsimile files over LANs (Local Area Networks), as distinguished from the transmission in an electronic mail format (such as over the internet). The introduction of D19 and D20 with the statement of grounds of appeal made clear that the technical transmission mechanisms for compressed images in an electronic mail format were commonly known (as evidenced by D19) and that transmitting and receiving compressed facsimile images in an electronic mail format had also been proposed as a standard (D20). The board thus considers that the introduction of D19 and D20 has not created an entirely new situation which could have justified a remittal to the first instance. Moreover, although D19 and D20 partly related to common general knowledge, the patent claims were formulated such that D19 and D20 were also highly relevant in the sense that their consideration could reasonably be expected to change the final result. Also in decisions T 85/93 and T 1002/92 the boards exercised their power of discretion and, in the former case, the board introduced a late filed document representing evidence of common general knowledge (see point 1.2 of T 85/93).

6.6 On this point the respondent has argued that, up until the appellant's letter dated 15 May 2009, which reached the respondent via the EPO around three weeks before the oral proceedings, D20 had only been regarded as background information. The combination of D20 and D19 had only been relied upon by the appellant in the same letter, and the respondent's representative had not been able to contact his client in time for the oral proceedings to discuss this new combination of documents. The appellant has argued that, to save time, the appellant's letter dated 15 May 2009 was sent directly to the respondent's representative.

6.7 In general the board sees no reason for a party to assume that a document filed as "background information" will not be relevant to the question of inventive step. It was moreover already clear in the statement of grounds of appeal (see paragraphs 14 to 17) that D20 was seen by the appellant as relevant to inventive step. Indeed D20 was used as a starting document in these paragraphs to argue lack of inventive step, albeit in combination with documents other than D19. Under these circumstances the board is not convinced that the arguments based on D20 in the light of common general knowledge at the priority date, as evinced by D19, in the appellant's letter of 15 May 2009 put the respondent's representative in a completely unexpected situation. Moreover it would seem unfair to the appellant to expect him to react to the ten new sets of amended claims filed with the respondent's letter of 15 May 2009, whilst regarding the same period of time as too short for the respondent to react to the combination of documents D20 and D19. As the case is now thirteen years old, the filing date lying in 1996, and the board has already considered D19 and D20 in connection with the main request, the board is not convinced that it would be reasonable to remit the case to the first instance to give the respondent the benefit of two instances regarding D19 and D20. Consequently the board has not allowed the respondent's third auxiliary request.

6.8 The respondent has argued (see point XX above) that in particular in not allowing the respondent's third auxiliary request the board has committed a fundamental violation of Article 113 EPC concerning the respondent's right to be heard. The board dismissed the objection in the light of the reasons set out above, under points 6.1 - 6.7, and in particular because the combination of D20 and D19 was not unexpected and the appellant had had sufficient time to prepare himself to comment on this point in the period of around three weeks before the oral proceedings.

7. Conclusion

Since neither of the respondent's main and first auxiliary requests is allowable, the respondent's second auxiliary request is not admissible and the third auxiliary request for remittal is not allowed, the patent must be revoked, Article 101(3)(b) EPC. The appellant's requests are thus allowed.