T 3097/19 (Key word detection/OMRON) 16-11-2022

Reasons for the Decision

1. The application relates to a method of detecting search keywords in video streams. It is said that it is custo­mary to display text prompting the user to search for a certain keyword on the Internet (paragraph 2, all refe­rences to the application herein being to the version as amended on entry into the regional phase). Typically the keyword is displayed in a search window in the form of a box ("rectangular form") next to a character string containing a prompting word (paragraphs 16 and 24) such as "search" (referred to as the "specific character string" in the claims). In order to speed up the keyword recognition, it is proposed to search first for the specific character string (paragraphs 26, 27). If this is found, then an attempt is made to find the box containing the keyword, by detecting the lines composing it (paragraphs 55-73 and further). The detection of the search window is performed around the posi­tion of the prompting character string in different directions of the prompting string in a predetermined priority order (e.g. left, upper, right, lower; see paragraphs 74, 75).

Main request: admittance

2. The Examining Division (2.1.1) declined to consider this request because "the outstanding objections under Articles 84 and 56 EPC of the previous main request [...] had not been resolved", and, moreover, it was not convergent in view of "the last substantially examined request, i.e. Auxiliary Request I".

3. The decision does not reproduce these outstanding objections or indicate where they are to be found.

3.1 As it appears from the file, the Examining Division had raised objections under Articles 84 and 56 EPC to a sole set of claims filed on 15 January 2018. In response, the appellant filed amended claims with letter of 22 April 2019, and the Examining Division explained, in a telephone conversion on 26 April 2019, that these objections were not overcome. In reaction to this, the appellant filed, with telefax of 16 May 2019, the amended claims - especially the main request - on which the decision is based.

3.2 From the file, it must therefore be concluded that the Examining Division considered that their objections raised in its summons to oral proceedings and confirmed in the telephone conversation were not overcome by the main request filed on 16 May 2019.

3.3 These substantive deficiencies are an essential part of the reasons for the decision and must, therefore, be identified in the written decision (Rule 111(2) EPC).

4. The Examining Division also did not explain why the amendments and the appellant's pertinent counter-arguments were, at least prima facie, insufficient to overcome the objections. ­­­

4.1 And it did not explain why the main request and the auxiliary request did not converge and why that alleged lack of convergence was detrimental to procedural economy.

4.2 In the Board's view, the convergence criterion is not a sufficient reason for non-admittance, but only an indicator that procedural economy may be affected. Whether this is actually the case depends on the circumstances of the case, which, therefore, must be considered and balanced.

5. The Board's view is therefore that the grounds invoked by the Examining Division are not reasoned as required by Rule 111(2) EPC, so that the non-admittance decision under Rule 137(3) EPC cannot stand. The Board cannot therefore hold inadmissible the main request which was filed with the statement of grounds of appeal, so that it is part of the appellant's case and to be taken into account (Article 12 (2) and (4) RPBA 2007).

5.1 The lack of sufficient reasoning also amounts to a substantial procedural violation, which is however not causal for the appeal in view of the fact that the grounds invoked by the Examining Division to refuse the first auxiliary request obviously also apply to the main request. That aside, the appeal fee cannot be reimbursed under Rule 103(1)(a) EPC because the appeal as a whole is not allowable.

Main, first and second auxiliary requests: inventive step

6. The respective claims 1 of these requests define essentially the same subject matter. The discussion below applies to all of them.

7. The Examining Division denied inventive step (2.2.2.1) of claim 1 starting from document D1: JP 2010-039647, which is also cited in the current application in paragraph 13, and described as providing a method whereby all text from a frame is extracted, and then keywords are sought in the vicinity of the prompting string. The appellant provided a translation of D1 as Annex 2b (filed on 28 April 2020), which confirms its summary in the application.

8. The appellant accepted (sections A.IV.5, B.III and C.II of the grounds of appeal) that the only difference between the claimed invention and D1 relates to the fact that the search for a search box is performed around the prompting character string following a priority order.

9. The Board remarks that, although D1 does not mention an order, some order is an inherent part of any computer program implementing such a search. The only difference may then reside in the order being a "priority" order. Since the claim does not specify to what the priority corresponds, the Board concludes, as the Examining Division also did, that no technical effect can be assigned thereto, which means that an inventive step cannot be recognized on this basis.

10. The above opinion was communicated to the appellant in the communication of the Board accompanying the summons to oral proceedings at points 21 to 23. The appellant has chosen not to respond to it in substance.

11. The Board concludes that the subject matter of the respective claims 1 of these requests lacks an inventive step (Article 56 EPC).

Third and fourth auxiliary requests: clarity and disclosure

12. The third auxiliary request contains two independent device claims configured to carry out two alternative methods of detecting the search window.

13. The Examining Division objected to clarity (2.3.2.1) and disclosure (2.3.3) of the matter defined in claim 1, because the claim, and the application, did not define the sizes and positions of the various rectangles involved in the detection process.

14. The Board is of the opinion that the skilled person would set the appropriate sizes and positions given the expected size of keywords; these are standard design considerations which do not put an undue burden on the skilled person. That sizes and positions are not explicitly specified in the claims does not cause a lack of clarity or disclosure.

15. The Examining Division also objected to claim 1 (2.3.2.1 on page 13) because it defines in respect of the upper and lower direction "detecting ... a reversely-U-shaped line in which the upper and lower sides reach the right end of the rectangle" and "detecting ... a U-shaped line in which the upper and lower sides reach the left end of the rectangle".

16. In the Board's view, the Examining Division was correct to conclude that these formulations, when taken literally, appear to make no technical sense. However, for the technically skilled person there is no doubt as to their intended meaning, given the context and the corresponding figures (see figure 4b) and paragraphs 77-78) - the U-shapes have to be understood to be in a rotated position. This objection is therefore not justified.

17. The Examining Division further objected (2.3.2.2) to the wording in independent claim 2 defining the alternative detection method for the upper and lower position. The Board disagrees with this as well, for essentially the same reasons - that it is clear what is meant given the context - this alternative method replicates by analogy the one for the left and right sides (see paragraph 79), which are also defined in the claim.

Third and fourth auxiliary requests: inventive step

18. The Board has no objections as to the obviousness of the claimed matter, because, on balance, although the skilled person could certainly have implemented the rectangle detection in the specifically claimed manner, the Board has no evidence to justify the finding that the skilled person would actually have done it starting from D1.

Third and fourth auxiliary requests: adaptation of the description

19. The respective independent claims 1 of these (and all other) requests define a key word detection device comprising inter alia (numbering by the Board)

(i) a character string detector configured to detect a specific character string; and

(ii) a search window detector configured to detect a search window from surroundings of said specific character string

(iii)by searching, [...] according to a detection priority order which sets the order of the upper, lower, left and right directions in which the search window (SB) is to be searched.

20. The description of the invention has not been amended since the entry in the European phase. It is thus the same for all requests, and it states in particular the following:

[0107] The invention is not limited to the above embodiments, but various changes can be made without departing from the scope of the invention. The embodiment obtained by a proper combination of technical means disclosed in the different embodiments is also included in the technical scope of the invention.

[0108] For example, in the embodiments, the search window SB is detected [...]. Alternatively, the search key word candidate may directly be selected from the surroundings [...]. In this case, there is a risk [...]. However, the processing of detecting the search window SB can be eliminated.

21. Also, the first embodiment of the invention is one where the search window is only searched on the left side of the character string SC (paragraph 55). This is perhaps clearest from the following passage of paragraph 74 introducing a modification of the first embodiment, this modification being now claimed (feature (iii)):

[0074] [Modification]

In the first embodiment, assuming that the search window SB is located near the left side of the [...] character string SC, the search window SB is detected near the left side of the [specific] character string SC. Alternatively, the search window SB may be located near any one of the upper, lower, right, and left sides of the [specific] character string SC (character string prompting the user to perform the search).

[0075] Even if the search window SB is located near any one of the upper, lower, right, and left sides of the "specific" character string SC, the search window SB can be detected as follows. Firstly, a detection priority order (for example, in the order of the left, upper, right, and lower sides) is previously set with respect to the upper, lower, right, and left directions of the "specific" character string SC."

22. Moreover, the summary of the invention (paragraphs 7 to 11) reproduces the original claims and makes, for instance, no reference to the detection of a search window.

23. Thus, in the current application, the description:

(a) summarizes the invention by a set of features which does not include all the claimed features (omitting at least features ii) and iii) (paragraphs 7 to 11);

(b) defines as embodiments of the invention devices which do not contain all the claimed features (see e.g. the first embodiment and paragraph 108)

(c) states that modifications of embodiments or new embodiments obtained by unspecified combinations of technical means remain within the scope of the invention (paragraph 107).

24. The way in which the description defines the invention is thus inconsistent with the words used by the claims. This Board is of the opinion that due to this inconsistency the scope of protection cannot be determined precisely, and that, therefore, auxiliary requests 3 and 4 do not comply with Article 84 EPC.

25. Effectively, the Board finds the third and fourth auxiliary requests not to be allowable because their description was not "adapted" to the amended claims, although it did not have any objections under Article 84 EPC to the claim language on its own (see points 16 and 17 above). With this decision, the Board also takes position vis-à-vis the recent discussion, triggered by T 1989/18, as to whether the description needs to be "adapted" to amended claims and why.

26. The Board notes that the EPC does not expressly provide an obligation for the description to be "adapted", even though this language is commonly used. In principle, amendments under Article 123 EPC concern the entire application or patent, including claims, description and drawings. The issue of "adaptation" is an artefact of the well-established examination practice at the EPO, adopted for efficiency reasons, to accept and discuss claim amendments without giving consideration to the description until allowable claims are arrived at. Strictly speaking though, the application or patent should always be amended as a whole, so that, as is explained below, the description of the invention remains consistent with the claims.

Article 84 EPC and the scope of protection

27. Article 84 EPC states that the claims shall define the matter for which protection is sought and that they shall be clear and concise and be supported by the description.

28. Often, Article 84 EPC is construed as defining three requirements on the claims, while the introductory clause is taken to merely state the role of the claims. However, the purpose of the claims to define the matter for which protection is sought imparts additional requirements on the application as whole.

28.1 The matter for which protection is sought is central for determining, after grant, the extent of protection conferred by the patent (Article 69 EPC). The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. In the Board's view, the clarity and conciseness requirements in Article 84 ultimately serve that purpose, but they are not sufficient to ensure it. To mark this distinction, the Board prefers to talk about the scope and extent of protection being "precisely determined" rather than being "clear".

28.2 As G 2/88 states in reasons 2.5: "Article 84 EPC pro­vides that the claims of a European patent application 'shall define the matter for which protection is sought [...]'. The primary aim of the wording used in a claim must therefore be to satisfy such requirement[...] having regard also to the purpose of such claims. The purpose of claims under the EPC is to enable the pro­tection conferred by the patent (or patent appli­ca­tion) to be determined (Article 69 EPC), and thus the rights of the patent owner within the designated Contracting States (Article 64 EPC), [...]".

29. The claims do not stand on their own. They are part of an application for the grant of a patent (see Article 78(1) EPC), or of a patent, which forms, as has been said (see T 2766/17, reasons 6), a "unitary document" which must be read as a whole (see also T 860/93, reasons 5).

29.1 The Board notes that claims are addressed to, and must be construed by, a person with appropriate and suffi­cient skill in the relevant field, which is determined by the description. It will - and must - be de­ter­mined from the perspective of the skilled addressee how specific terms and formulations are to be interpreted, or whether they have an established meaning in the "art" at all. It is also widely accepted that the description may, at times, define a particular term or formulation used in the claims (see pertinent referen­ces in T 2766/16, reasons 6), and that, therefore, an application may act as its own dictionary ("within rea­son", as T 1151/02 helpfully qualifies in reasons 3).

29.2 Article 69 EPC expresses the same principle, that a patent application (or a patent) must be interpreted as a whole (see, e.g., T 556/02 reasons 5.3, T 1871/09, reasons 3.1, T 1817/14 reasons 7.3).

30. Therefore, under a systematic interpretation of the EPC, the function of the claims, as defined in Article 84 EPC, is only achieved when the potentially conferred scope of protection can be determined precisely. Whe­ther this is the case for a specific patent application (or an amended patent) can only be made with due consideration of the description.

31. In the Board's view, this implies in particular an appre­ciation that under the EPC, a patent, and hence protection, is granted for an invention (Article 1 EPC). What is the claimed scope of protection has thus to be determined on the basis of the claims in conjunction with the description of the invention (Article 78(1)(b) EPC), in consideration of the fact that protection is sought for the invention described.

32. So, if a claim is directed to something which is different than that described to be the invention, then the application for grant is self-contradictory, and it can be questioned for which matter the protection is actually sought. For the scope of protection to be determined precisely, the definition provided by the claims of the matter for which protection is sought must therefore be consistent with the definition of the invention provided by its description.

33. The Board also considers that this consistency between the claims and the description is necessary for legal certainty. The skilled person to whom the claims - and the entire application - are addressed (see point 29.1) must not be confronted with contradictory statements when reading the patent application as a whole. Other­wise, they may be left with doubts as to what is the invention sought to be protected.

34. As mentioned, a series of recent decisions have discussed the necessity, or not, of the "adaptation of the description". On the basis of the above, the Board the Board disagrees with the conclusions in T 1989/18, but rather concurs with the conclusions expressed in, especially, T 1024/18 and T 2766/17. It also disagrees with the conclusions of T 2194/19 (catchword), inasmuch as it considers necessary that embodiments said to be "of the invention" must fall within the scope of the claims.

Some comments on claim interpretation and clarity

35. The Board is aware that its interpretation of Article 84 EPC may appear to be in tension with case law of the Boards of Appeal regarding clarity and claim interpretation. In particular, the often expressed requirement that the claims be clear "from the wording of the claims alone" appears to be hardly compatible with the idea that the patent (application) must be read "as a whole".

36. The Board does not agree with a verbatim reading of the former requirement, nor, without further qualification, with the statement of T 454/89 (reasons 4.1 (vii) as cited in T 1989/18 (reasons 4) that "Claims must be clear in themselves when being read with the normal skills including the knowledge about the prior art, but not including any knowledge derived from the descrip­tion of the patent application or the amended patent".

36.1 The Board considers that these statements cannot literally be correct, for the reasons given above, and rather concurs with the qualification in the Guidelines for Examination, F-IV, 4.1, according to which "the meaning of the terms of a claim must, as far as possible, be clear for the person skilled in the art from the wording of the claim alone".

36.2 That, however, the claims should be, as far as possible, clear from their wording alone, is an expression of the desire, in the interest of legal certainty (see G 1/04, reasons 5), that the divergence of post-grant jurisprudence be limited (see also T 1817/14, reasons 7.4 and 7.5).

37. The Board underlines again its opinion that the requirement in Article 84 EPC that the claims be clear is different from the purpose of Article 84 EPC according to which it must be possible to determine the scope of protection precisely, although the former serves the latter.

Conclusions for the case at hand

38. As stated above, in the case at hand the way the invention is described in the description is inconsistent with the wording of the claims. As a consequence, the Board is convinced that the scope of protection cannot be determined precisely, due in particular to conflicting statements as to which features constitute the invention (see point 23a) and b)) and to the sweeping statement that new embodiments of the invention can be obtained by combining technical means (see 23 c)). Therefore, in the absence of an adapted description, the requirements of Article 84 EPC are not met.