T 2136/16 11-09-2017

Reasons for the Decision

1. The appeal is admissible.

This decision deals first with the substantive issues (entitlement to priority; main, third and fourth auxiliary requests) and subsequently with the appellant's requests for adjournment of the oral proceedings and referral to the Enlarged Board of Appeal (first and second auxiliary requests).

Validity of the claimed priorities

2. Claim 1 specifies that "the second interactive program guide enables the user to access the reminder function of the second interactive program guide to schedule the reminder for the selected listing, wherein the second interactive program guide is configured to transfer a setting for the reminder over the remote access link so that the reminder is set in the first interactive program guide on the television program guide equipment, and the first interactive program guide generates the reminder for the program corresponding to the listing."

2.1 The opposition division interpreted claim 1 such that it implied a combination of the steps of setting a reminder at the remote program guide access device, transmitting the reminder to and setting the reminder at the television program guide equipment, and generating said reminder at the television program guide equipment (see Reasons, points 13.5, 13.6 and 13.10). This interpretation was not contested by the parties and is also accepted by the board.

2.2 It was disputed whether D14 or D15 disclosed the above features. The appellant contended that the feature of setting a reminder at both the television program guide equipment and the guide at the remote program guide access device was disclosed in D15, page 1, lines 19 to 21, and D14, page 1, lines 17 to 31.

2.3 The board is not convinced that, if properly interpreted in their context, the cited passages of D15 and D14 directly and unambiguously disclose these features.

D15, page 1, lines 15 to 18, refers to a reminder which is sent by a guide running on the television viewing station to "a PC or other computing device (such as a hand-held PC, palmtop computer or auto PC)." It is not apparent from D15 that these devices implement an EPG. This assessment is confirmed by the final sentences of that paragraph, which state that the reminder may appear as an email message or may be sent to a pager.

The next paragraph of D15, page 1, lines 19 to 24, comes closest to disclosing the above features of claim 1. It refers to setting a reminder from a remote computer and specifies that: "These scheduled events would be transmitted to the television viewing station, where they would be acted upon at the appropriate time." The appellant interpreted the reference to "these scheduled events" as implying that a reminder has been set/scheduled at the remote guide prior to being transferred to the local guide. The board is not convinced that the passage is unambiguous in its context. It could also mean that the setting of the reminder is effected at the same time in both guides or that no scheduling is effected in the remote guide. The latter interpretation is supported by the last sentence of that paragraph, which specifies that: "These requests might also be made via a touch-tone phone". Obviously, an EPG running on a touch-tone phone was not envisaged by D15. The general statement that "there is no means to coordinate the guides in these locations" on page 1, lines 1 to 4, when read in context, makes reference to means allowing communication between devices (settop/receiver, television equipment, PCs, etc.) but does not disclose details of the transmission of reminders.

The appellant also argued that D14 disclosed that a reminder might be set "for all televisions" (see page 1, lines 27 and 28), which implied setting it in one EPG and then transferring it to the others. The board was not convinced by this reasoning. As in D15, other implementations might be considered, such as a simultaneous setting of the reminder in both EPGs.

2.4 Since the above features of claim 1 are not directly and unambiguously disclosed in either of priority documents D14 and D15, the "same invention" requirement of Article 87(1) EPC 1973 is not fulfilled in the present case. In this case, it need not be examined whether the appellant was the successor in title to the applicants who filed the priority applications D14 and D15.

2.5 It follows from the above that neither of the two priorities is validly claimed and the relevant date of the claimed subject-matter is the filing date of the earlier application. This finding applies not only to claim 1 of the appellant's main request but equally to claim 1 of its first and second auxiliary requests submitted with the written submissions on 11 August 2017 (now the third and fourth auxiliary requests) because the latter requests are distinguished only by additional features that do not affect the interpretation of the above features (see point 2. above).

Main request - inventive step in view of D11

3. Since the priority claims of the patent in suit are not valid, D11 is prior art within the meaning of Article 54(2) EPC 1973 and can be used for the assessment of novelty and inventive step of the claimed subject-matter.

3.1 D10, which is undisputedly a translation of D11, discloses a program guide system in the sense of claim 1 comprising television program guide equipment, including user equipment (recording apparatus 110), and implementing a first interactive program guide enabling a user to navigate through displayed program listings and select a listing, and having a reminder function ("alarm") for a selected listing (see figures 1 and 6 together with paragraphs [0024], [0025], [0033] and [0090]). The program guide system also comprises a remote program guide access device (satellite broadcast receiver 100a) implementing a second interactive program guide enabling a user to navigate through displayed program listings and select a listing, and having a reminder function ("alarm") for a selected listing (see paragraphs [0023], [0024], [0032] and [0033]).

D11 also discloses a remote access link (bus 10) between the television program guide equipment and the remote guide access device, wherein the second interactive program guide enables the user to access the reminder function of the second interactive program guide to schedule the reminder for the selected listing, wherein the second interactive program guide is configured to transfer a setting for the reminder over the remote access link and the first interactive program guide generates the reminder for the program corresponding to the listing (figure 1 and paragraphs [0024], [0025], [0032], [0033], [0037] and [0038]).

3.2 Hence, the board agrees with the decision under appeal that the subject-matter of claim 1 differs from that of D11 in that it specifies that reminders are set in the interactive program guides (see Reasons, point 14.4). According to D11 reminders are stored in the timed reservation sections 104 and 114 of the satellite receiver and the recording apparatus (see paragraphs [0070] and [0090]).

3.3 The technical effect associated with this difference is that an alternative manner of storing the reminder is provided. Accordingly, the technical problem is to provide an alternative manner of storing the reminder (see also decision under appeal, Reasons, point 14.5).

3.4 The board also holds that the decision under appeal was correct in its assessment of inventive step. In order to resolve conflicts it was necessary to manage schedule data in conjunction with reservation data and, hence, also together with the associated alarm settings. It would have been obvious to provide that necessary logical link by storing the reservation data together with the guide data.

3.5 The appellant argued that D11 disclosed a communication on a "timed reservation layer", but not between guides. There was no second guide on the video tape recorder (VTR).

The board does not interpret claim 1 as specifying a direct communication between guides. Claim 1 actually refers to a remote access link for transferring the setting of the reminder. According to the patent in suit this remote access link may be implemented in different ways involving complex communications between application constructs running on the devices involved (see paragraphs [105] to [0107] of the patent in suit). The board also concurs with the respondents' argument that D11 discloses guides on both devices that communicate in order to resolve programming conflicts (see paragraphs [0023], [0024], [0027], [0033], [0036] to [0039] and [0090]).

The appellant also argued that D11 was concerned with automating the co-ordination of two AV apparatuses. The passages in paragraphs [0024] and [0025] had to be understood in that context as referring to an electronic communication by "giving a notice" when the appropriate time arrived. There was no disclosure that an alarm was issued to the user. This would have made no sense, because D11 concerned unattended recording. There was also no scheduled reminder that was issued to the user at a specified time. The appellant further argued that the word "alarm" had been given an emotional connotation that was neither present nor intended in the Japanese text D11. It did not contest that the translation of the corresponding word in D11 was correct, but this did not imply that the alarm was issued to a user. Instead, the word "alarm" was also used in computer science, where it did not have an emotional connotation but simply referred to an electronic notification.

The board was not convinced by these arguments. It is correct that D11 is directed to the co-ordination of several AV devices (see paragraph [0001]). This co-ordination requires an electronic communication between the devices, which is described as being effected when the reservation is made. The reservation is made in a timely manner to check for any reservation conflicts (see figures 5 and 10 together with paragraphs [0044] to [0047]). In contrast, the alarm of paragraphs [0024] and [0025] is issued "when the time of reserved operation arrives", i.e. it serves no apparent technical purpose because the reservation data have already been transmitted to the timed reservation sections of the involved devices. The alarm is therefore distinguished from the transmission of the reservation data and conflict resolution. Hence, the board confirms the interpretation that an alarm "addresses the user of the device" as stated in the decision under appeal (see Reasons, point 14.9). The board takes the fact that user interface elements are described in conjunction with the alarm (see paragraph [0024]) as a further indication that the alarm is directed to the user.

In the appellant's view, this interpretation of the wording "alarm" was based, at least in part, on an alleged emotional connotation of the term and was incorrect. According to the established case law of the boards of appeal, determining the information content means interpreting what comprises the state of the art. For this purpose the technical disclosure in a prior-art document must be considered as a whole or in its overall context (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition, 2016, section I.C.4.1). The board did exactly this, i.e. it arrived at its interpretation by determining the information content of paragraphs [0023] and [0024] of D11 in their context.

The appellant's argument that D11 was not a suitable starting point for assessing inventive step also did not convince the board. Like the patent in suit, D11 is directed to the co-ordination of and communication between audio/video devices in a multimedia system using electronic program guides (see patent in suit, paragraphs [0001] to [0008], and D11, paragraphs [0001] to [0010]).

Moreover, the board cannot agree with the appellant's formulations of the objective technical problem as avoiding access conflicts to a shared resource (e.g. a recording apparatus 110) or how to reliably and consistently handle program operations regardless of a user's location. It may be that these problems are technical problems addressed by D11; however, the objective technical problem has to be based on the difference between the claimed subject-matter and the closest prior art and the technical effect which is caused by this difference. In the present case storing the reminder in the interactive program guides has no influence on program operations regardless of the user's location or on access conflicts to a shared resource such as the VTR. Essentially, therefore, the board adopts the formulation of the objective technical problem in the decision under appeal and the related reasoning for the finding of a lack of inventive step.

3.6 Hence, the subject-matter of claim 1 lacks inventive step in view of D11 and the common general knowledge of the skilled person (Article 56 EPC 1973).

Third auxiliary request - Inventive step

4. Compared with claim 1 of the main request, claim 1 of the third auxiliary request contains the following additional features:

(a) "the displayed program listings being program titles displayed in a grid, the grid being divided into a number of columns which correspond to broadcast times and having program listings rows, wherein the listing is selected by highlighting a cell of the grid where the listing is located" and

(b) the first interactive program guide generates the reminder for the program corresponding to the listing "for display in the form of a pop-up window or message on the user equipment (22)".

4.1 Feature (a) is disclosed in D11, figure 6 together with paragraphs [0033] and [0090]. The board considers feature (b) to relate to a well-known means of presenting a reminder or a user alarm (see also decision under appeal, Reasons, point 16.6).

4.2 The appellant argued that feature (b) served to distinguish the reminder in claim 1 from D11, according to which an alarm was only an electronic communication transmitted from one AV device to the other. However, this interpretation of the alarm as a mere electronic communication was not adopted by the board (see point 3.5 above).

4.3 Hence, the additional features do not combine with the remaining features of claim 1 such that they render the claimed subject-matter inventive (Article 56 EPC 1973).

Fourth auxiliary request - Admission

5. In the proceedings before the opposition division the then second auxiliary request, now the fourth auxiliary request, was not admitted because it was late-filed and because it did not prima facie overcome the objections to the higher-ranking requests (Rule 116(1) EPC).

5.1 The board agrees with decision T 556/13 (see Reasons, points 2.1.5 to 2.1.7), which considered that, under Article 12(4) RPBA, the board had its own discretionary power to hold a request admissible.

5.2 In the present case, the board decided to admit the fourth auxiliary request into the appeal proceedings for the following reasons:

(a) The additional feature of claim 1 of the fourth auxiliary request was based on dependent claim 11 of the patent as granted. Its insertion into claim 1 therefore could not take the respondents by surprise.

(b) All parties had already commented on the patentability of the claimed subject-matter during the appeal proceedings (see respondent I's letter of 11 April 2017, section 8; respondents II and III's letter of 11 April 2017, section H.IV; and appellant's statement of grounds of appeal, point 8.2, and letter dated 11 August 2017, section 3).

(c) The fourth auxiliary request was re-filed as the second auxiliary request together with the statement of grounds of appeal. Therefore, in contrast to the situation before the department of first instance, where the request was late-filed, no party could be taken by surprise by the re-filing of this request.

5.2 In view of the above, the fourth auxiliary request was admitted into the proceedings (Article 12(4) RPBA).

Fourth auxiliary request - Inventive step

6. Claim 1 of the fourth auxiliary request contains the following additional features appended to claim 1 of the third auxiliary request:

(c) "wherein the second interactive program guide is further configured to obtain program listings information from the first interactive program guide over the remote access link (19) and to provide the program listings information to the user".

6.1 The board agrees with the decision under appeal that this feature was disclosed in D11. Figures 4 and 6 disclose program titles which have to be considered program listings information within the meaning of feature (c). D11 discloses that the program titles are transferred from the VTR to the satellite receiver as part of reservation data and provided to the user (see paragraphs [0033], [0034], [0042], [0050] and [0090]).

6.2 The appellant contested that program titles constituted listings information within the meaning of claim 1. According to paragraph [0059] of the patent in suit, information for scheduling recordings was distinguished from listings information.

The board endorses the reasoning given in the decision under appeal that "the wording 'program listing information' is broad and encompasses the title of the program selected for viewing/recording" (see decision under appeal, Reasons, point 18.3). Furthermore, claim 1 does not exclude that the listings information is transmitted as part of a scheduling operation for recordings.

6.3 Hence, the subject-matter of claim 1 lacks inventive step in view of D11 and the common general knowledge.

First auxiliary request - adjournment of the proceedings

7. As a first auxiliary request, the proprietor requested an adjournment of the oral proceedings in order to gather evidence as to whether the alleged connotation of the translated term "alarm" in paragraphs 24 and 25 of D10 was consistent with the original term in D11.

The appellant contested that the term "alarm" had an emotional connotation implying that it was directed to a human user. This alleged connotation was the basis of an argument raised by the respondents for the first time during oral proceedings before the board.

7.1 The board cannot accede to this request. It is based on the allegation that the word "alarm" disclosed in paragraphs [0024] and [0025] of D10 was given a new connotation or interpretation, i.e. that the alarm is issued to the user, for the first time during the oral proceedings. This allegation is incorrect, as is evidenced by the fact that the decision under appeal is clearly based on the same interpretation of "alarm" as the present decision, i.e. that the alarm of D11 "addresses the user of the device" (see Reasons, point 14.9). No other connotation was and is considered to be implied in the word "alarm". It follows from this and the findings on inventive step above that it was not during the oral proceedings that the word "alarm" was first given a new connotation or interpretation, i.e. that it implied an emotional communication directed to a human user.

7.2 Hence, the appellant's request for an adjournment of the oral proceedings cannot be allowed.

Second auxiliary request - referral to the Enlarged Board of Appeal

8. The appellant submitted the following question for referral to to the Enlarged Board of Appeal:

"In an argument raised for the first time during oral proceedings before a Board of Appeal, is it allowable to form an opinion of the presence of direct and unambiguous disclosure with regard to a translated term in a foreign language prior art document based on an alleged connotation of that translated term without first gathering evidence on the connotation of that term in the native language? If this is generally allowable is it also allowable where there is disclosure elsewhere in that translated document that is inconsistent with that connotation?"

8.1 According to Article 112(1) EPC 1973, a question may be referred to the Enlarged Board of Appeal in order to ensure uniform application of the law, or if a point of law of fundamental importance arises. A board of appeal may, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for these purposes.

8.2 As set out under point 7.1 above the board did not base its findings on the term "alarm" on a new connotation or interpretation presented for the first time in the oral proceedings. Therefore, the board considers that the question according to the appellant's request does not contain a point of law which is relevant for the present case.

8.3 However, for a question to be referred to the Enlarged Board of Appeal, it must be relevant for deciding the case in question (G 1/14, OJ EPO 2016, A95 and G 2/04, OJ EPO 2005, 549). Since this not the case here, the appellant's request for a referral to the Enlarged Board of Appeal has to be refused for this reason alone.

Conclusion

9. Since none of the appellant's requests is allowable the appeal must be dismissed.