T 1176/12 20-07-2017

Reasons for the Decision

1. The appeal is admissible.

2. Main (and sole) request - admission into the appeal proceedings (Article 12(4) RPBA)

2.1 The main request was submitted with the statement of grounds of appeal. This means that, according to Article 12(1) RPBA, it forms part of the basis of the appeal proceedings.

2.2 Under Article 12(4) RPBA, the board has the power to hold inadmissible a request which could have been presented in the first-instance proceedings. Since in fact almost every claim request could have been presented to the department of first instance, the question is whether the situation was such that the claim request should have been presented at that stage (see, for instance, T 0273/11, point 1.1 of the Reasons, with references to further decisions).

2.3 In comparison with claim 1 of the request forming the basis for the decision, claim 1 of the current request has been amended by specifying:

(a) "position information for identifying a position of an editing point at which the val­ues indicated by the POC are non-sequential";

(b) "wherein said flag insertion step includes one of: (1) inserting, into the coded stream, the flag and the position information in a sequence parameter set or in User Data Registered Supplemental Enhancement Information that is uniquely definable by a user; and (2) performing said inserting by storing the flag and the position information at a head of the coded stream or in a file that manages the coded stream".

2.4 Feature (a) was taken from originally filed claim 5. Feature (b) was not present in any of the previously filed claims and is based on the description, page 26, line 24 to page 27, line 7 (see statement of grounds of appeal, page 3, second full paragraph).

2.5 Original dependent claim 5 specified that "in the information insertion step, the position information is inserted together with the flag information". In the communication pursuant to Article 96(2) EPC 1973 dated 13 February 2006, the examining division raised the objection that inserting position information together with the flag was disclosed in D1. In the communication pursuant to Article 94(3) EPC 2000 dated 21 July 2008, the examining division repeated this objection against then claim 3. In the annex to the summons to oral proceedings, section 4, the examining division pointed out that according to the embodiment described on page 23, the flag referred to in then claim 1 corresponded to a "broken_link_flag" inserted in a recovery point SEI. The board agrees with this assessment since page 23, lines 19 to 27 disclose: "The following information is stored in the RAP SEI: "broken_link_flag" indicating that the decoded moving picture may be different from the original moving picture due to editing, or other reasons ... In the present invention, when "broken_link_flag" indicates "1", it shows that the editing is carried out...". In section 3 of the annex to the summons, the examining division reasoned that "In D1, the flag "broken_link_flag" is inserted in the random access SEI which precedes the picture data to which it refers (see the reasoning for claim 2 above). Therefore, the flag "broken_link_flag" itself which is in the random access point SEI indicates the position of the splicing. It has to be noted that each of the flags "preroll_count" and "postroll_count" which are inserted together with "broken_link_flag" in the same RAP SEI also indicates position information". This reasoning was repeated in a brief communication dated 31 August 2011. Summarising, the examining division argued on several occasions during the written proceedings that the prior art disclosed the embodiment described on page 23 according to which a broken_link_flag was inserted at the editing point.

2.6 The appellant acknowledged on page 2 of the letter dated 18 May 2017, that "the Examining Division provided, at several occasions during the examination procedure, comments on originally provided claim 5 or the corresponding amended claim 3, as to the aspect of position information being inserted together with the flag (or flag information)".

2.7 In the board's view, the paragraph starting at page 26, line 24 of the application as filed ("the flag indicating the non-sequentiality in the display order information POC is inserted between the pictures whose values indicated by the display order information POC are non-sequential, but the present invention is not limited to this ... [The flag and position] information may be stored in a sequence parameter set or in the User Data Registered SEI ... for instance, at the head of the sequence. The information may be stored in a medium which records the sequence or in a file format which manages the sequence. Such storing format is called "flag A2"") clearly presents two distinct options for inserting the flag (and the position information): either between pictures whose POCs are not sequential or at the positions specified in present claim 1 (i.e. at the head of the coded stream or in a file that manages the coded stream). In view of the objections raised by the examining division, the present set of claims directed to the option not yet discussed in the first-instance proceedings could and should have been presented in those proceedings, at least as an auxiliary request, either in reaction to one of the communications of the examining division or during the oral proceedings. Instead, the difference between the two options was not addressed (see the appellant's statement that "the issue of flag A and flag A2 in their differences were not discussed" in point 4 of the statement of grounds of appeal), and in the first-instance proceedings the appellant consistently argued that the technical meaning of the flag according to the invention was different from the technical meaning of the flags in D1 or D3.

2.8 The board has not been persuaded by the argument that the reasons for refusing the application first became apparent during the oral proceedings and the appellant had no opportunity to realise the full extent of the position of the examining division until after "careful consideration of the grounds for the decision to refuse the application". Although the examining division raised the inventive step objection (Article 56 EPC) against the subject-matter of the independent claims for the first time during the oral proceedings, the underlying assessment of the prior art had not changed in comparison with the analysis repeatedly presented in the context of the novelty objection (Article 54 EPC) raised in the written proceedings. The examining division had only changed its reasoning with respect to the question whether it was implicit or obvious that the flag was generated when detecting non-sequential POCs. However, throughout the proceedings, the examining division maintained that both the embodiment described on page 22, lines 22 to 26 ("The flag information generation unit 112 generates a flag indicating a non-sequentiality of the values presented as display order information POC, when the values indicated by the display order information POC are non-sequential because of editing or for other reasons") and the prior art disclosed generating a "broken_link_flag" upon detecting non-sequentiality in the sequence. Therefore, the board is not convinced that it was legitimate to assume that "once a proper understanding of the cited prior art and the features of the claims was reached, arriving at a finding of novelty, also the presence of an inventive step would be acknowledged" (see page 3, of the letter dated 18 May 2017, third full paragraph).

2.9 Given that the present set of claims directed to the option not yet discussed in the first-instance proceedings could and should have been presented in those proceedings, the board, under Article 12(4) RPBA, has the power to hold this claim request inadmissible. In exercising its discretion to admit or not to admit the request, the board arguendo regarded the numerous factors cited in the appellant's letter dated 18 May 2017 as being indeed relevant to this case. These factors include, in particular, the assertion that the present claims had not actively been withheld from consideration by the examining division and were a bona fide attempt to address the finding of obviousness of the previously claimed subject-matter; an additional search would not have revealed any more relevant document; the amended claims had been submitted at the earliest stage of the appeal proceedings; the substantial length of these proceedings would have a significant impact on the cost of filing a divisional application.

However, even considering the above factors arguendo to be relevant to the exercise of the board's discretion, the board has concluded that the general principle that appeal proceedings in ex parte cases are mainly concerned with examining the contested decision (G 10/93, OJ 1995, 172, at point 4) must prevail over those factors. The board has consequently decided to exercise its discretion in not admitting the claim request at issue into the appeal proceedings.

2.10 The appellant's concern about the possible impact on first-instance proceedings of not admitting requests, and its concern that the way the boards apply Article 12(4) RPBA might have changed since 2012, have not affected the exercise of the board's discretion. Neither concern is specific to the present case. As to the first concern, the board has to correctly apply the law to the facts before it, without regard to any possible impact on first-instance proceedings. And the second concern seems to reflect a subjective general perception and an assumption, without any supporting evidence, about how such discretionary decisions would have been taken years ago. As a consequence, the second concern could not have affected the exercise of the board's discretion, either.

2.11 In view of the above, the appeal is to be dismissed.