T 0207/08 () of 29.1.2013

Summary of Facts and Submissions

I. The appeal concerns the decision of the examining division to refuse European patent application Nº 00 939 377 for lack of inventive step within the meaning of Article 56 EPC (main and second auxiliary request) and for violation of Articles 84 and 123(2) EPC (first auxiliary request).

II. At the oral proceedings of 29 January 2013 before the board the appellant requested that the decision under appeal be set aside and that a patent be granted in the following version:

Claims 1 to 6 according to the new sole request, filed during oral proceedings of 29 January 2013;

- Description pages 1 to 3, 3a, and 4 to 22, filed during oral proceedings of 29 January 2013;

- Drawing sheets 1/13 to 13/13, filed during oral proceedings of 29 January 2013.

III. The wording of independent claims 1 and 4 of the sole request reads as follows (labelling "(1)", … "(7)" by the board):

"1. A system for enabling a vehicle occupant to place a telephone call via a cellular phone in the vehicle, the system comprising:

(1) -- the vehicle,

(2) -- a speech recording/playback system located within a visor or rearview mirror of the vehicle, wherein the speech recording/playback system has a microphone and a speaker,

(3) -- the cellular phone,

(4) wherein a first radio frequency transceiver is integrated with the cellular phone,

(5) -- a second radio frequency transceiver integrated with the speech recording/playback system,

(6) the second radio frequency transceiver being configured to communicate with the first radio frequency transceiver via a wireless communication link in accordance with a Bluetooth wireless communications protocol, wherein information is transmitted between the first and second radio frequency transceiver using the Bluetooth wireless communications protocol,

(7) commands and numbers spoken into the microphone being transmitted via the wireless communication link to the cellular phone in order to establish the telephone call.”

"4. A method for enabling a vehicle occupant to place a telephone call via a cellular phone in the vehicle, wherein a speech recording/playback system is located within a visor or rearview mirror of the vehicle, wherein the speech recording/playback system has a microphone and a speaker, wherein a first radio frequency transceiver is integrated with the cellular phone, the method comprising the steps of:

creating a wireless communication link operating in accordance with a Bluetooth wireless communications protocol between the first radio frequency transceiver and a second radio frequency transceiver integrated with the speech recording/playback system;

transmitting information between the first and second radio frequency transceivers via the wireless communications link; and

speaking commands and numbers into the microphone in the vehicle for transmission via the wireless communication link to the cellular phone in order to establish the telephone call."

IV. Reference is made to the following documents:

D6: DE 196 29 408 A1,

D7: GB 2 296 157 A,

D9: WO 99/03254 A1,

D11: EP 1 052 834 A2,

D12: US 5 810 420 A.

V. The appellant argued essentially as follows:

(a) Novelty

Document D11 failed to disclose a system for communicating information comprising a microphone in a vehicle wherein commands and numbers spoken into the microphone were transmitted via a wireless communication link to a cellular phone in order to establish a telephone call. The subject-matter of claim 1 was therefore new over document D11.

(b) Inventive step

The subject-matter of claim 1 differed from the system of document D9 at least in comprising features (1), (2), (4) and (5). Thereby a further functionality was provided and the handling of the device was simplified. The skilled person received neither from document D9 nor from document D12 any hint to combine the earpiece of D9 and the speech recording module of D12. Even if the skilled person were to consider combining them he would integrate the recording device in the earpiece in order to ensure that the quality of the voice signal remained high. This was especially important for communication via the cellular phone with another person and for a reliable speech recognition. Alternatively, the skilled person would consider to equip the speech recording device with a personal communication node (PCN) of document D9. The skilled person would therefore not arrive at the subject-matter of claim 1, which therefore involved an inventive step.

Reasons for the Decision

1. Admissibility

The appeal is admissible.

2. Amendments

Claims 1 and 4 are based on original claims 1 and 2 and on the description as originally filed (page 7, line 29 – page 8, line 2; page 15, line 6 – page 16, line 1).

Dependent claims 2, 3, 5, and 6 are based on the description as originally filed (page 15, lines 9-14).

The description and drawings have been brought into conformity with the amended claims and the relevant state of the art has been indicated without extending beyond the content of the application as filed.

Accordingly, the board is satisfied that the amendments comply with the requirements of Article 123(2) EPC.

3. Novelty

3.1 Document D11, which was mentioned by the appellant in the letter setting out the grounds of appeal, is a European patent application with a priority date (11.05.1999) before the priority date (26.05.1999) of the present application and a publication date (15.11.2000) after the filing date (26.05.2000) of the present application. Document D11 is therefore relevant for the assessment of the novelty of the subject-matter of the claims under Articles 54(3) and 89 EPC in respect of the states DE, FR, GB, IT. This is because these states are designated in D11 and the corresponding designation fees have been validly paid during the proceedings in relation to D11 (Rule 23a EPC 1973) and these states are also designated in the present application (Article 54(4) EPC 1973).

3.2 Both document D11 and its priority document DE 19921533 (D11, paragraphs [0024]-[0033]; DE 19921533, page 10, last paragraph – page 14, last paragraph) disclose a communication system between a radio set 1 mounted in a vehicle and comprising a transceiver 18 and a mobile telephone 2 which comprises a transceiver 25. The communication between the transceivers 18 and 25 uses Bluetooth technology. The radio set 1 comprises a microphone 12 and loudspeakers 11 and serves as a hands-free communication device for the mobile phone 2. It is also described in these documents (D11, paragraph [0015]; DE 19921533, page 6, last paragraph – page 7, first paragraph) that the mobile telephone can be equipped with a speech recognition system. In order to initiate a telephone call the driver merely needs to say the name of the desired person which is recognized by the speech recognition system; the corresponding telephone number is then automatically dialled and the telephone connection is established.

However, there is no disclosure in document D11 that the telephone call is established by speaking commands and numbers into the microphone which are transmitted via the wireless communication link to the mobile telephone (feature (7) of claim 1, see point III.).

The subject-matter of claim 1 is therefore new over document D11.

3.3 The remaining prior-art documents on file are not closer to the subject-matter of claim 1 than document D11.

Independent method claim 4 corresponds to independent device claim 1 and claims 2 to 3 and 5 to 6 are dependent on claims 1 and 4, respectively, and provide further limitations.

Accordingly, the board is satisfied that the subject-matter of claims 1 to 6 is new (Article 52(1) EPC and Article 54(1) EPC 1973).

4. Inventive step

4.1 Closest state of the art

4.1.1 In the appealed decision the examining division held that the subject-matter of claim 1 of the main and second auxiliary request then on file did not involve an inventive step, when considering document D6 as the closest state of the art. In an obiter dictum, the examining division expressed the opinion that the same conclusion was reached when starting from document D7 as the closest state of the art.

4.1.2 Document D6 discloses (see column 4, line 48 – page 5, line 21; Figure 1) a transmission / reception device 6 mounted in a vehicle and a radio telephone 2. The radio telephone 2 is adapted to communicate with the device 6 via their respective infrared transceivers 4 and 5. It is also disclosed that the device 6 is provided with a microphone and a loudspeaker for hands-free operation.

However, the object of document D6 (see column 1, line 7 – column 2, line 32) is to eliminate radio waves in the interior of the vehicle in order to avoid their detrimental effects on the user's health (e.g. via their effect on a pacemaker) or on electronic devices used in the vehicle (e.g. airbags). For that purpose infrared communication is used between the radio telephone 2 and the transmission / reception device 6 in the vehicle.

Document D6 is therefore regarded to have a clear bias in favour of using infrared communication and against using radio communication between the radio telephone 2 and the device 6.

4.1.3 Document D7 discloses (see page 7, lines 1-35; Figure 1) a hands-free cellular telephone adapter 10 comprising a power adapter / speaker section 12, a cable section 14 and a phone connector / microphone section 16. The power adapter / speaker section 12 is coupled to the power socket 104 on a dashboard 108 of the vehicle 106 and the phone connector / microphone section 16 is coupled to the hand-held cellular telephone 102 to provide power to the hand-held cellular telephone 102.

In alternative embodiments it is foreseen (see page 6, lines 15-27) that wireless jacks are provided at the adapter 10 in order to couple an additional external microphone or speaker to the device. However, the connection between the adapter 10 and the cellular telephone 102 is a wired connection in all embodiments described in document D7.

Furthermore, the independent claims of document D7 (except the omnibus claim 21) specify that the hands-free telephone adapter comprises a power line having a phone connector and a power source connector to provide power to the hand-held telephone. The power is thus provided via the wired connection between the adapter 10 and the cellular telephone 102.

Document D7 is therefore regarded to have a clear bias in favour of using a wired connection between the adapter 10 and the cellular telephone 102.

4.1.4 In claim 1 of the sole request it is specified that the system comprises first and second radio frequency transceivers which are configured to communicate with each other via a wireless communication link in accordance with a Bluetooth wireless communications protocol (features (4), (5) and (6) of claim 1, see point III.). In view of the above biases contained in documents D6 and D7, these documents are not regarded as the closest state of the art for the subject-matter of claim 1.

4.1.5 Document D9 discloses (see page 2, lines 2-4; page 3, line 20 – page 4, line 21; Figure 1) a communication system for providing two-way wireless communication between a user and one or more remote devices. In particular, a "personal communication node" (PCN) 100 is connected via wireless links to earpieces 400 and 402 worn by a user. The wireless links can be radio frequency links. As an example of a remote device a cellular telephone 300 is described that is adapted for connection to the PCN 100 and is controlled by voice commands from the user. The user can, for example, use the PCN 100 connected to the cellular telephone 300 to answer calls, initiate calls, receive or send messages simply by issuing voice commands.

Since the voice-controlled cellular telephone of document D9 is suitable to be used in a vehicle, that document is considered to be related to the same purpose as the present claimed invention, namely to provide a system for enabling a vehicle occupant to place a telephone call via a cellular phone in the vehicle. Being voice-controlled and using radio frequency communication, the voice-controlled cellular telephone of D9 is also regarded to be structurally the closest to the subject-matter of claim 1.

For these reasons the example of document D9 relating to the voice-controlled cellular telephone is regarded as the closest state of the art for the subject-matter of claim 1.

4.2 Objective technical problem

4.2.1 Using the terms of claim 1 the closest state of the art discloses a system for enabling a vehicle occupant to place a telephone call via a cellular phone (cellular telephone 300) in the vehicle, the system comprising:

(3) -- the cellular phone (cellular telephone 300).

The closest state of the art does not disclose (see point III. above) the features of claim 1 relating to a vehicle (feature (1)), a speech recording/playback system located within a visor or rearview mirror of the vehicle and having a second radio frequency transceiver (features (2) and (5)), the radio transceiver being integrated in (rather than connected to) the cellular telephone (feature (4)), a Bluetooth communications protocol (feature (6)), commands and numbers being used to establish the telephone call (feature (7)).

4.2.2 The effect of features (1), (2), (4), and (5) is to provide an additional functionality, where the structure and the operation of the system is simplified. The objective technical problem related to these features is thus to achieve this effect.

4.3 Obviousness

4.3.1 In document D9 it is also envisaged (see page 14, lines 5-11) to connect the PCN 100 to a radio / tapedeck in an automobile. It has also been disclosed to use the PCN 100 to control other functions in an automobile, such as cruise control or temperature settings.

In the board's opinion it would therefore be obvious for the skilled person to consider document D12, which relates to a digital voice recorder for use in an automobile, when attempting to provide an additional functionality to the closest state of the art.

4.3.2 Document D12 discloses (see column 2, line 16 – column 3, line 37; Figure 1) a vehicle 10, such as an automobile, with a visor assembly 20, on which is mounted a digital voice recorder 30. The recorder 30 comprises a speaker 27, a microphone 28, and a record switch 25 and a playback switch 26 for recording a message and playing a previously recorded message.

4.3.3 In the board’s view it would be an obvious choice for the skilled person, when attempting to provide an additional functionality to the voice-controlled cellular telephone according to the closest state of the art, to provide the digital voice recorder 30 of D12 in parallel to the voice-controlled cellular telephone.

The user would thus use the earpieces 400 and 402 of D9 and utter voice commands in order to communicate via the cellular telephone 300. When desiring to use the digital voice recorder 30, the user would operate the record switch 25 and playback switch 26 of the recorder 30 in order to record and play messages.

In order to avoid any interference between the devices, the user would simply avoid using one device when using the other and possibly take off the earpieces 400 and 402 when using the digital voice recorder 30.

4.3.4 Moreover, it is envisaged in document D9 (see page 5, line 7 – page 7, line 14; Figures 2 and 3) to connect the PCN 100 to a plurality of different remote devices at the same time through a universal adapter 200. The PCN 100 is connected to the adapter 200 via a connector 280. The adapter 200 also includes various ports for connection to remote devices. In the example shown in Figure 2, the adapter 200 is connected to a cellular telephone 302, a fixed wireline telephone 304, and a personal computer 308.

Even if the skilled person were to consider structurally combining the cellular telephone of D9 and the digital voice recorder of D12 in order to simplify the structure and operation of these devices, the disclosure of document D9 would therefore lead the skilled person away from the claimed invention, in particular away from integrating the first and second radio frequency transceivers with the cellular phone and the speech recording/playback system, respectively (features (4) and (5) of claim 1; see point III. above). Rather, the skilled person would be led to controlling the cellular telephone 300 of D9 as well as the digital voice recorder 30 of D12 with the aid of the PCN 100 and the universal adapter 200. The digital voice recorder would then merely have to be connected to the universal adapter 200.

Therefore, the combination of the documents D9 and D12 would not lead the skilled person in an obvious way to the subject-matter of claim 1.

4.3.5 Furthermore, none of the other documents of the state of the art on file contains a teaching that would lead the skilled person in an obvious way to the subject-matter of claim 1.

The subject-matter of claim 1 is therefore regarded as involving an inventive step over the available state of the art.

4.3.6 Independent method claim 4 corresponds to independent device claim 1 and claims 2 to 3 and 5 to 6 are dependent on claims 1 and 4, respectively, and provide further limitations.

Accordingly, the board is satisfied that the subject-matter of claims 1 to 6 involves an inventive step within the meaning of Article 56 EPC 1973.

5. Other requirements of the EPC and conclusion

In view of the amendments effected during the appeal proceedings, the claims are regarded to be clear (Article 84 EPC 1973).

Furthermore, in order to comply with the requirements of Article 84 EPC 1973 and Rule 27(1)(b) EPC 1973, the description has been brought into conformity with the amended claims and supplemented with an indication of the relevant content of the state of the art.

In view of the above the sole request is allowable.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to grant a patent in the following version:

- Claims 1 to 6 according to the new sole request, filed during oral proceedings of 29 January 2013;

- Description pages 1 to 3, 3a, and 4 to 22, filed during oral proceedings of 29 January 2013;

- Drawing sheets 1/13 to 13/13, filed during oral proceedings of 29 January 2013.