T 1900/10 23-09-2015

Reasons for the Decision

1. The appeal is admissible

2. Main request: sufficiency of disclosure (Article 83 EPC 1973)

2.1 According to Article 83 EPC 1973, "The European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art." It is established case law that the invention referred to in Article 83 EPC 1973 is the claimed invention (see the Case Law of the Boards of Appeal of the European Patent Office, 7th edition 2013, points II.C.1 and II.C.4.1 to 4.4).

2.2 In the present case, the steps specified in claim 1 of the main request are all well within the capabilities of a person skilled in the art. Indeed, inputting data to encode is a common step of encoding methods. Also, the selection of a particular encoding transform from one or more (stored) encoding transforms does not involve any particular difficulties. The same is true for the feature that each of the encoding transforms is stored in a location associated with a location identifier. The feature that one of these (stored) encoding transforms is a starting encoding transform means essentially that one encoding transform is given a label "starting encoding transform". Similarly, in the decoder, there is one stored encoding transform which is labelled "starting encoding transform". The further step of encoding the input data with the selected particular encoding transform is commonplace. The same is true for the steps of outputting the location identifier corresponding to the selected particular encoding transform and outputting the encoded data.

2.3 The objections raised in the decision under appeal do not refer to any feature of a claim. In particular the key questions identified in the decision under appeal need not be answered for carrying out the method steps of claim 1. For instance, it is undisputed that achieving lock-step in updating the cache at the decoder is an essential element of the described example, but the claimed encoding method does not specify updating anything. Similarly, while it is true that different matrices are labelled "matrix A" in the description, claim 1 does not refer to any matrix. The same holds true for the cache line and the profile.

2.4 A number of additional complications are present in the described example, such as the handling of errors in the case of lossy compression, or considering a sequence of blocks b0, b1, b2 instead of groups of m blocks, and updating the AT. Moreover, there are inconsistencies in the designation of the forward and backward transforms (U, V). However, these complications do not affect the coding method of claim 1.

2.5 In view of the above, the reasons given in the decision under appeal did not persuade the board that the application does not disclose the invention of claim 1 of the main request in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

3. First auxiliary request: sufficiency of disclosure (Article 83 EPC 1973)

In comparison with claim 1 of the main request, claim 1 of the first auxiliary request additionally specifies that the storing location associated with a location identifier is a cache line associated with a corresponding cache line number. Thus in respect of claim 1 of the first auxiliary request the question "What is stored in a cache line?" might be relevant. However, claim 1 makes it clear that a cache line stores an encoding transform. Since the storing of an encoding transform in a cache line per se is well within the capabilities of a person skilled in the art, the reasons given in the decision under appeal did not persuade the board that the application does not disclose the invention of claim 1 of the first auxiliary request in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

4. Second auxiliary request: sufficiency of disclosure (Article 83 EPC 1973)

In comparison with claim 1 of the first auxiliary request, claim 1 of the second auxiliary request additionally specifies that the starting encoding transform is a baseline transform and a corresponding inverse baseline transform. It is clear from the application (see, e.g., paragraph [0025]) that a "baseline transform" is a pre-arranged transform agreed between the encoder and the decoder and may be, for instance, the identity transform. Defining such a baseline transform is also within the capabilities of a person skilled in the art. Thus the reasons given in the decision under appeal did not convince the board that the application does not disclose the invention of claim 1 of the first auxiliary request in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

5. The other independent claims

5.1 The application comprises other independent claims. For instance, claim 15 of the main and the first and second auxiliary requests specifies decoding methods corresponding to the encoding methods. The only question discussed in the decision under appeal which is specific to decoding is that which relates to the way in which lock-step in updating the cache at the decoder is achieved.

5.2 In this respect, the appellant's arguments have convinced the board. In a first step, the encoder and the decoder initialise their caches identically. This is essentially part of the pre-arranged agreement between the encoder and the decoder. Indeed, figures 3 and 4 and paragraphs [0087] and [0090] make it clear that the last cache lines N-1 (of cache lines 0 to N-1) of both the encoder and the decoder are preloaded with the baseline transform and set to locked (steps 306 and 406). The other cache lines 0 to N-2 are set to invalid, see also paragraph [0043], step 3 of the encoding procedure and paragraph [0044], step 2 of the decoding procedure.

5.3 In the subsequent steps, the encoder and decoder independently apply the same operations to their respective caches. For instance, there must be a pre-arranged agreement between the encoder and the decoder as to which invalid cache line is to be selected if available or which unlocked cache line is selected as a "victim" (see steps 328 and 428 in figures 3 and 4). Moreover, in the case of a "miss" the same block (the recovered block b**(+).i in steps 330 and 430) is added to the respective selected cache line in the encoder and the decoder. In the case of a "hit" the same (inverse) transform (that stored in cache line k**(*) of the encoder and of the decoder) is used to decode the block (see steps 334 and 434).

5.4 In particular, the first m blocks of data are encoded using the baseline transform and sent to the decoder (see paragraph [0033]). Thus the decoder is capable of decoding the encoded first m blocks of data using the inverse of the agreed baseline transform. The first m blocks of data are also subject to an agreed AT (such as a singular value decomposition SVD or an eigenspace decomposition ESD) at the encoder. The resulting pair of transforms U, V is stored in a cache line. Since the AT is agreed between the encoder and the decoder, the decoder can calculate the transforms U, V from the first m blocks in the same manner as the encoder (see figure 5). The incorrect step of "decoding said received encoded data with said created new transform" in claim 15 (which should refer to decoding with the starting transform, i.e. the baseline transform, see block 424 in figure 4) is not an Article 83 EPC 1973 issue.

5.5 The second m blocks of data are encoded using the baseline transform or the pair of transforms U, V which were determined on the basis of the first m blocks, depending on whether the baseline transform or the pair of transforms U, V is better suited for transforming the second m blocks ("miss" or "hit", see paragraphs [0035] to [0037]). The decoder receives the encoded blocks and the "hit" or "miss" designator and thus can decode the encoded blocks using either the baseline transform (in the case of "miss) or the pair of transforms U, V (in the case of "hit", see paragraph [0044], points 3 and 4).

5.6 Essentially the same thing happens for further groups of m blocks. The relevant cache line (i.e. the one comprising the best suited transforms) is found by the encoder and the corresponding cache line index is transmitted together with the encoded blocks.

5.7 Thus, the board finds that the application discloses how lock-step between the encoder cache lines and the decoder cache lines may be achieved.

5.8 In view of the above, the reasons given in the decision under appeal did not convince the board that the application does not disclose the invention claimed in claim 15 of the main request, first auxiliary request or second auxiliary request in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

6. Analogous considerations apply to the other independent claims, which relate to a machine-readable medium, a system and an apparatus which are specified by a reference to other independent claims.

7. Remittal (Article 111(1) EPC 1973)

7.1 The board does not consider that the grant of a patent could be ordered on the basis of the claims filed with the statement of grounds of appeal. This is because full examination of the application, including the claims, as to patentability requirements has yet to be carried out. This is the task of the examining division (see decision G 10/93 of the Enlarged Board of Appeal, OJ EPO 1995, 172, point 4 of the Reasons). In the present case, it is clear that a number of objections were raised in the first-instance proceedings against the patentability of the claims then on file. It is up to the examining division to consider whether these (or any other) objections need to be raised in view of the claims filed with the statement of grounds of appeal, even if the board decides the specific issue considered in the decision under appeal in favour of the appellant.

7.2 Thus the board decided to exercise its discretion under Article 111(1) EPC 1973 in remitting the case to the department of first instance for further prosecution.

8. The appellant's request for reimbursement of the appeal fee

8.1 The appellant requests the refund of the appeal fee under Rule 103 EPC on the grounds that its right to be heard under Article 113(1) EPC might have been infringed (see section B of the statement of grounds of appeal).

8.2 It is Rule 67 EPC 1973 that applies to the present case, not corresponding Rule 103(1)(a) EPC 2000 (see T 630/08, at point 1, citing J 3/06, OJ EPO 2009, 170, point 3, and J 10/07, OJ EPO 2008, 567, point 7). On the same basis, Article 113(1) EPC 1973 is applicable. In substance, the transition from the EPC 1973 to the EPC 2000 did not change the two decisive criteria for such a reimbursement, namely that the appeal must be deemed to be allowable and that such reimbursement must be equitable by reason of a substantial procedural violation.

8.3 In the present case, the latter criterion is not met. The board finds that no substantial procedural violation occurred that breached the appellant's right to be heard under Article 113(1) EPC 1973 (whose wording is identical to that of Article 113(1) EPC). The reasons are as follows:

8.3.1 The appellant argued that it "simply required more time to completely resolve these complex technical questions than the time allotted by the Examining Division" (see point 9 of the statement of grounds of appeal). However, according to the uncontested minutes of the oral proceedings before the examining division (page 3, last two paragraphs and page 4), the appellant was given the requested time to consider the objections under Article 83 EPC raised by the examining division. In particular, according to the minutes there were two interruptions of over one hour each (10.35 until 11.46 hrs and 13.25 until 14.40 hrs) in which the representative had time to consider the examining division's objections, each interruption then being followed by discussions lasting about one hour. Moreover, the objections concerned only the disclosure in the application. Other documents did not need to be considered at that stage. Under these circumstances, the board finds that the representative was given adequate time to consider the objections.

8.3.2 The board also notes that the summons to oral proceedings (section 2 and point 3) left no doubt that the examining division saw essentially unresolvable problems in the application ("the description does not define these features in a sufficiently clear manner to make technical sense of the filed subject-matter"). Moreover, the appellant submitted to the examining division, during the oral proceedings, previously prepared Annexes 1 and 2 to illustrate how the described invention functioned. In particular Annex 2 also indicates paragraphs of the application. The board can interpret this submission only in the sense that the applicant was aware, when preparing for the oral proceedings, that the examining division saw major problems with the disclosure of the described invention, even though it had referred to Articles 56 and 84 EPC as the relevant legal bases in the summons. It was clear from the summons that the applicant's reply to the first communication had not persuaded the examining division that all the raised objections had been overcome.

8.3.3 The appellant also emphasised the distinction between objections under Article 83 EPC and Article 84 EPC and stated that it had considered the objection under Article 83 EPC to have been overcome (see point B.4 of the statement of grounds of appeal). However, it is undisputed that both these articles had been (at least implicitly) referred to in the written phase of the first-instance proceedings. As discussed above, the summons to oral proceedings (section 2 and point 3) left no doubt that the examining division saw essentially unresolvable problems in the description of the application. In particular, some of the features objected to under Article 84 EPC were considered to be insufficiently disclosed in the description (see point 3 of the summons). Thus objectively there could have been no doubt that the examining division considered the description of the invention to be insufficient. Moreover, according to the undisputed minutes of the oral proceedings the examining division informed the appellant in those proceedings that an objection under Article 83 EPC would be raised if the technical questions ultimately recited in the decision under appeal were not answered. Hence, the mere fact that the refusal was ultimately based on Article 83 EPC alone does not raise any problems under Article 113(1) EPC 1973.

8.3.4 In view of the above, the board does not see that any infringement of Article 113(1) EPC 1973 occurred in the first-instance proceedings. No other procedural violation, let alone a substantial one within the meaning of Rule 67 EPC 1973, has become apparent either.

8.4 Therefore, the appellant's request for reimbursement of the appeal fee is to be refused.