T 0660/08 () of 1.12.2011

Summary of Facts and Submissions

I. This is an appeal by the patent proprietor against the decision of the opposition division revoking European patent No. 1 197 086.

II. Opposition had been filed against the patent as a whole, based on Article 100(a) EPC 1973 (inventive step).

III. Following the withdrawal of the opposition by the sole opponent, the opposition division continued the opposition proceedings of its own motion pursuant to Rule 60(2) EPC 1973 in conjunction with Article 101(1) EPC 1973.

IV. In the reasons for the decision under appeal the opposition division had held inter alia that the subject-matter of claim 1 according to each of a main request and first to third auxiliary requests did not involve an inventive step in view of

D7: EP 0 834 798 A2

and the skilled person's common general knowledge.

V. In the statement of grounds of appeal the appellant (patent proprietor) defended the sets of claims on which the appealed decision was based.

VI. In an official communication annexed to the summons to oral proceedings, the board expressed the provisional opinion, regarding each of the appellant's requests, that:

- claim 1 contained subject-matter, introduced during the opposition proceedings, extending beyond the content of the application as filed, in violation of Article 123(2) EPC, and

- the subject-matter of claim 1 did not involve an inventive step in view of D7.

VII. With a letter dated 1 November 2011, the appellant filed sets of amended claims according to a main request and auxiliary requests I to XIX, replacing all previous claims.

VIII. On 1 December 2011 oral proceedings were held, at the end of which the board announced its decision.

IX. The appellant's final requests are that the decision under appeal be set aside and that the patent be maintained on the basis of the claims of the main request or one of auxiliary requests I to XIX, all filed with the letter of 1 November 2011.

X. Claim 1 according to the appellant's main request reads as follows:

"A method for allowing a user to access newsgroup listings via an interactive television application that is implemented using user television equipment (20) having a display on which a television program is displayed, comprising:

allowing the user to issue a command associated with viewing the newsgroup listings;

displaying the newsgroup listings on the display (75) upon the user issuing the command, wherein all of the newsgroup listings that are displayed are related to subject matters of the television program displayed on the display (75) by the interactive television application and, as the television program displayed on the display changes in response to a user input, changing the displayed newsgroup listings accordingly."

XI. Claim 1 according to the appellant's auxiliary requests I to III differs from claim 1 according to the main request by the respective following underlined text portions at the end of the claim:

"[...] changing the displayed newsgroup listings accordingly so that the displayed newsgroup listings are always related to the displayed television program."

"[...] changing the displayed newsgroup listings accordingly, the method further comprising:

allowing the user to select one of the newsgroup listings; and

displaying newsgroup message listings associated with the selected newsgroup listing on the display.

"[...] changing the displayed newsgroup listings accordingly so that the displayed newsgroup listings are always related to the displayed television program, the method further comprising:

allowing the user to select one of the newsgroup listings; and

displaying newsgroup message listings associated with the selected newsgroup listing on the display."

XII. Claim 1 according to the appellant's auxiliary request IV differs from claim 1 according to auxiliary request III by the following underlined text portions:

"A method for allowing a user to access newsgroup listings via an interactive television application that is implemented using user television equipment (20) having a display on which a television program is displayed in full screen, comprising:

allowing the user to issue a command associated with viewing the newsgroup listings;

displaying the newsgroup listings on the display (75) upon the user issuing the command, wherein all of the newsgroup listings that are displayed are related to subject matters of the television program displayed on the display (75) in full screen by the interactive television application and, as the television program displayed on the display changes in response to a user input, changing the displayed newsgroup listings accordingly so that the displayed newsgroup listings are always related to the displayed television program, the method further comprising:

allowing the user to select one of the newsgroup listings; and

displaying newsgroup message listings associated with the selected newsgroup listing on the display."

XIII. Claim 1 according to the appellant's auxiliary request V differs from claim 1 according to auxiliary request III by the following underlined text portions at the end of claim 1:

"[...]

displaying sorted and filtered newsgroup message listings associated with the selected newsgroup listing on the display."

XIV. Claim 1 according to the appellant's auxiliary request VI differs from claim 1 according to auxiliary request III by the following underlined text portions:

"A method [...] comprising:

allowing the user to issue a command associated with viewing the newsgroup listings;

automatically searching for news groups associated with the television program;

displaying the newsgroup listings for the news groups on the display (75) upon the user issuing the command, [...]"

XV. Claim 1 according to the appellant's auxiliary request VII differs from claim 1 according to auxiliary request III by the following underlined text portions:

"A method [...] comprising:

allowing the user to issue a command associated with viewing the newsgroup listings;

automatically searching for news groups that reference the television program;

displaying the newsgroup listings for the newsgroups on the display (75) upon the user issuing the command, [...]"

XVI. Claim 1 according to the appellant's auxiliary request VIII differs from claim 1 according to auxiliary request III by the following underlined text portions:

"A method [...] comprising:

allowing the user to issue a command associated with viewing the newsgroup listings;

querying a newsgroup server as to whether there are newsgroups associated with the television program and, if there is at least one associated newsgroup

displaying the newsgroup listings for the associated newsgroup or newsgroups on the display (75) upon the user issuing the command, [...]"

XVII. Claim 1 according to the appellant's auxiliary request IX differs from claim 1 according to auxiliary request III by the following underlined text portions:

"[...]

displaying newsgroup message listings associated with the selected newsgroup listing on the display.

allowing the user to select one of the newsgroup message listings; and

displaying a newsgroups message associated with the selected newsgroup message listing on the display, wherein the message has been automatically filtered to remove or replace specified keywords"

XVIII. Claim 1 according to auxiliary requests X to XIX differs from claim 1 according to the main request and auxiliary requests I to IX, respectively, only in that the expression "in response to a user input" has been replaced by "in response to a channel change input".

XIX. In the decision under appeal the opposition division's finding of lack of inventive step was essentially based on the following considerations:

D7 is the most relevant of the cited prior-art documents. The subject-matter of claim 1 according to the (then) main request differs from the method of D7 in that:

(a) no explicit display of a plurality of newsgroups or chat rooms is performed, and

(b) no change of newsgroup listings is performed in accordance with the content displayed.

Regarding feature (a), in view of the reference to "Usenet groups" in D7 (column 8, lines 18 and 19) it would be obvious to a skilled person to display a plurality of newsgroup listings related to a particular topic in an interactive television application. Although a selection window is not explicitly shown in the figures of D7, different electronic program guide (EPG) cells with circular icons and different numbers of circular icons per EPG cell are shown (see figure 3) which support the understanding that more than one link to a chat room per content item and different chat room links for different content items exist. Hence feature (a) is rendered obvious by the disclosure of D7. The term "content" is interpreted broadly, as relating not only to a displayed television program but also to entries in an EPG and their related descriptive text.

Regarding feature (b), the "automatic refresh" is implicitly disclosed by D7 (column 7, lines 41 to 43) wherein icons referring to a chat room (or an equivalent newsgroup listing) in an EPG are constantly updated. Moreover, updating selection lists is a well-known feature in the technical field of user interface design.

Accordingly, the method of claim 1 does not involve an inventive step in view of D7 and common general knowledge.

The respective subject-matter of claim 1 according to each of the first to third auxiliary requests also derives without inventive step from D7 and common general knowledge.

XX. The appellant essentially argued as follows:

Admissibility of the appellant's requests (main and auxiliary I to XIX) filed with the letter of 1 November 2011

Regarding the main request and auxiliary requests I to III and X to XIII, claim 1 has been amended in direct response to the board's objection under Article 123(2) EPC raised for the first time in the annex to the summons to oral proceedings.

As to auxiliary requests IV to IX and XIV to XIX, claim 1 according to each of these requests has been further amended by adding one or more features taken from the description.

In the case of auxiliary requests IV and XIV, the additional feature that the television program is displayed "in full screen" was explicitly disclosed on page 47, lines 6 to 14, and implied on page 4, lines 31 to 34, page 6, lines 6 to 8, and page 9, lines 6 to 10, of the application as filed. This feature was set out in the "Summary of the Invention" part and thus was prominent in the description, must have been searched and was implicitly included in earlier discussions on inventive step. Hence auxiliary requests IV and XIV, in particular, should be admitted into the appeal proceedings.

The additional features of claim 1 according to auxiliary requests V to IX and XV to XIX were disclosed in the description of the application as filed and, in the case of auxiliary requests IX and XIX, also in claims 27 and 33 of the application as filed. These requests should also be admitted as a last opportunity to have the patent maintained.

Although amended claims comprising the additional features of the auxiliary requests IV to IX and XIV to XIX could have been filed earlier, for instance with the statement of grounds of the appeal, the appellant could not know back in 2008, when the grounds of appeal were filed, that the board's practice with regard to the admission of amended claims would become as strict as it is now.

Inventive step (for the main request and auxiliary requests I to III and X to XIII)

Re main request

The method of claim 1 according to the main request differs from the method of D7 at least in that the method further includes:

- displaying newsgroup listings (in figure 3 of D7 a chat session of one newsgroup is displayed, not newsgroup listings);

- the newsgroup listings are related to the television program displayed (in D7 the chat session is related to an EPG cell);

- as the television program displayed changes in response to a user input, the displayed newsgroup listing changes accordingly (in figure 3 of D7, the chat room and the television program are initially unrelated, at least until the user highlights and selects the chat window (100) to cause the television window to tune to the television program related to the chat: see column 8, lines 28 to 32); and

- the television program is already displayed before the newsgroup listings are displayed (in D7 the chat session is displayed before the related television program).

In view of the above differences, D7 is in fact of relatively little relevance.

Starting from D7 the method of claim 1 solves the objective technical problem of providing a more efficient and convenient way of accessing newsgroups.

D7 does not provide any hint of the above distinguishing features. D7 describes an intricate machinery i.e. a design dead-end the skilled person would have to climb out of in order to arrive at the method of claim 1.

Hence the subject-matter of claim 1 according to the main request involves an inventive step when starting from D7.

Re auxiliary requests I to III

The above arguments regarding inventive step also apply to claim 1 according to auxiliary requests I to III which make explicit the following features already implicitly present in claim 1 according to the main request:

- the displayed newsgroup listings are always related to the displayed television program (auxiliary requests I and III), and

- a selection of one of the newsgroup listings for displaying message listings (auxiliary requests II and III).

Re auxiliary requests X to XIII

XXI. Auxiliary requests X to XIII further specify in claim 1 that the second-mentioned user input is a channel change input, thus making clearer that the first user input and the subsequent user input(s) are different commands. They thus further distinguish the claimed subject-matter from the disclosure of D7.

Reasons for the Decision

1. The appeal is admissible.

Admissibility of the appellant's requests

2. According to Article 13(1) RPBA (OJ EPO 2007, 536), any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

3. In the present case, with a letter of 1 November 2011, the appellant filed twenty sets of amended claims, according to a main request and auxiliary requests I to XIX, replacing the four sets of claims on which the decision under appeal had been based.

4. Re the main request and auxiliary requests I to III and X to XIII

The claims according to the main request and auxiliary requests I to III and X to XIII differ from the claims of the appealed decision essentially only by the following amendments:

- the term "content" was replaced by "a television program";

- the term "screen" was replaced by "display";

- either the expression "in response to a user input" or the expression "in response to a channel change input" was added.

The first of these amendments limited the "content" displayed according to claim 1 to "a television program" which is displayed, thereby addressing the objection that the content could be an EPG cell as in D7. Since throughout the description of the application as filed it was clear that the content in question was meant to refer to a television program, this amendment did not add any complexity and, as it came as no surprise, did not negatively affect procedural economy.

The second amendment was an unsubstantial correction making the wording of the claims more consistent.

The third amendments were made in direct response to the board's objection under Article 123(2) EPC (added subject-matter) raised for the first time in the annex to the summons to oral proceedings. These amendments were filed within the time limit set by the board, successfully addressed the board's objection under Article 123(2) EPC and did not add complexity, as it raised no new issues.

For the above reasons, the board decided to exercise its discretion under Article 13(1) RPBA to admit the appellant's main request and auxiliary requests I to III and X to XIII into the proceedings.

5. Re auxiliary requests IV to IX and XIV to XIX

5.1 The appellant did not dispute that the further amendments made in claim 1 according to each of these auxiliary requests introduced features which had not been in any of the claims of the granted patent, nor in any of the sets of amended claims examined by the opposition division.

The further amendments in claim 1 according to these requests relate to features taken from the description (see the features underlined under points XII to XVII supra) which only played a minor role in the application as filed: they were each mentioned only in one or two paragraphs of the 64-page long description and, with a few exceptions, were not even mentioned in any of the 186 claims of the international application as filed. Since these features may not even have been searched in the same context, were not examined by the examining division before grant of the contested patent, nor by the opposition division as possible amendments for maintaining the patent in amended form, they could not have been admitted, at this very late stage of the proceedings, without adjournment of the oral proceedings.

Hence, in view of the current state of the proceedings and the need for procedural economy, the board decided to exercise its discretion under Article 13(1) RPBA in refusing to admit auxiliary requests IV to IX and XIV to XIX into the proceedings.

5.2 The appellant's arguments

The appellant explained that the amendments had not been filed with the statement of grounds of appeal because, back in 2008, when the statement of grounds of appeal was filed, it was not possible to know that the board's practice with regard to the admission of amended claims would become stricter.

Regarding this argument the board noted that the current version of the Rules of Procedure of the Boards of Appeal (RPBA) had been published in the Official Journal in 2007 (OJ EPO 2007, 536) i.e. before the filing of the statement of grounds of appeal. Moreover, the text of the current Article 13(1) RPBA is identical to the text of the corresponding Article 10b(1) RPBA of the Rules of Procedure of the Boards of Appeal published in the Official Journal in 2003 (OJ EPO 2003, 61) which entered into force already on 1 May 2003. Therefore, in the absence of more specific submissions as to any tightening of the conditions for admission in the case law of the boards of appeal since 2008, this argument is not convincing.

The appellant also argued that, in the case of auxiliary request IV, the additional text "in full screen" was explicitly disclosed on page 47, lines 6 to 14, of the application as filed and implied by on page 4, lines 31 to 34, page 6, lines 6 to 8, and page 9, lines 6 to 10. The appellant emphasized that this feature was prominent in the description of the application as filed, must have been searched and had been implicitly included in earlier discussions on inventive step.

The board does not share this argument. The only clear disclosure in the application as filed of the feature that the television program is displayed "in full screen" is on page 47, lines 6 to 14, and, possibly, also on page 9, lines 6 to 10. These short text portions in a 64-page long description cannot be regarded as making this feature "prominent", within the meaning of a feature of the invention which would obviously have been taken into account in the search and examination proceedings. Moreover, these passages state or imply that, instead of being displayed in a window (as shown, for instance, in figure 13), the television program could also be displayed in full screen, but they do not indicate what would happen in response to a user command selecting to display newsgroup listings related to this program. Whether the newsgroup listings would be overlaid on the television program displayed in full screen or whether the television program would be displayed in a smaller window in order to make space for the display of the newsgroup listings in another window or whether any other unspecified solution would be found, is left unanswered. The board regards the absence of answers to these obvious questions as a further indication that the display of the television program in full screen was not "prominent" in the application as filed. Moreover, the board has no evidence that this feature and its technical effects were taken into account in the drawing up of the search report or that they were implicitly included in earlier discussions on inventive step.

Inventive step (Articles 100(a) and 56 EPC 1973)

6. Main request

6.1 Closest prior art

The appellant submitted that D7 was of little relevance to the claimed invention and thus was less appropriate as a starting point for the analysis of inventive step than a "conventional interactive television system". The appellant nevertheless admitted during the oral proceedings that D7 could be used as a starting point for the analysis of inventive step.

In any case, the board regards D7 as more relevant to the method of claim 1 than an unspecified "conventional interactive television system" briefly mentioned by the appellant because D7 relates both to an interactive television system and to newsgroups.

It is undisputed that D7 discloses a method for allowing a user to access the chat room of a newsgroup (see e.g. figure 3 and column 8, lines 11 to 37) via an interactive television application (see interactive EPG in figure 3) that is implemented using user television equipment having a display on which a television program is displayed (see figure 3). More specifically, the user can issue a command associated with viewing a newsgroup by selecting a circular icon 30 in a cell of the EPG (see figures 2 and 3, column 7, lines 7 to 30, and column 8, lines 23 to 37). In response to this command, the chat room of the newsgroup related to the television program of the EPG cell is displayed in a window (see windows 100 in figure 3).

6.2 Distinguishing features

The appellant argued that the method of claim 1 was distinguished from the disclosure of D7 by the following features:

(a) displaying newsgroup listings;

(b) as the displayed television program changes in response to a user input, the displayed newsgroup listings change accordingly;

(c) the newsgroup listings are related to the displayed television program; and

(d) the television program is already displayed before the newsgroup listings are displayed.

Although the board is not convinced that some of the above features (a) to (d) are not at least implicitly disclosed in D7, it will assume in the following discussion for the sake of simplicity that the appellant's analysis is correct in this respect.

6.3 Objective technical problem

The appellant submitted that the method of claim 1 solved the objective technical problem of providing a more efficient and convenient way of accessing newsgroups.

The board has no reason to dispute this formulation of the objective technical problem.

6.4 Obviousness

According to figure 3 of D7, the television screen is divided into three non-overlapping windows: a television program window, a chat window (100) and an EPG window. As shown in figure 3, some EPG cells contain two circular icons, thus indicating that two separate newsgroups are available for a given television program associated with the EPG cell. It is undisputed that when the user selects one of these two circular icons, a chat session (or other "linked content"; see figure 3 of D7) of the newsgroup corresponding to the selected chat icon is launched and appears in the chat window. The board, however, considers that the skilled person would regard the following solution as a straightforward alternative way of accessing chat sessions or newsgroups in a more efficient and convenient way when a plurality of newsgroups are available: displaying only one chat icon in the EPG cell, and in response to the user selecting it, displaying a list containing the newsgroups listings associated with the EPG cell, and inviting the user to select one of them in order to access the chat room (distinguishing feature (a)).

Moreover, when the television program being displayed in the television program window as shown in figure 3 of D7 has two related newsgroups, these are shown as two circular icons in the EPG cell associated with this television program. The user can then select one of the circular icons and display the selected newsgroup (or select one of the other icons to display other linked content). In such a situation, the displayed chat sessions are thus always related to the television program displayed and the television program would be displayed before the chat session is selected. The board sees no reason why a person skilled in the art would have changed this convenient and efficient way of issuing a command while watching a television program and displaying related content, when he chose to first display a plurality of newsgroup listings instead of a particular session (features (c) and (d) above).

Finally, D7 states on column 7, lines 11 to 16, that "[...] by selecting a given icon within a cell, a television program may be selected, the tuner arrangement may be forced to a given channel [...]". With this wording D7 thus strongly suggests (if not discloses) that if a user selects a chat icon in an EPG cell of another television program, the related chat session and the television program would change in response to the user input. A person skilled in the art would have kept this function when choosing to first display a plurality of newsgroup listings instead of a particular session because it allows a user to change both the television program and the related content in an efficient and convenient way. Hence D7 at least strongly suggests distinguishing feature (b).

For the above reasons, the board considers that the method of claim 1 does not involve an inventive step in view of D7.

6.5 The appellant's arguments

The appellant argued that the disclosure of D7 was unclear and difficult to parse. In relation to distinguishing feature (d), the appellant specifically referred to column 8, lines 27 to 30, in D7 which appeared to contradict column 7, lines 11 to 16, referred to by the board.

According to column 7, lines 11 to 16, selecting a chat icon in the EPG can also cause the associated television program to be displayed. According to column 8, lines 23 to 37, selecting a chat session cell may first cause the display of the chat session in the chat window which may be "tied directly to a movie cell or other television program cell". The "video window (100) as shown in Fig. 3" would cause the computer to tune to that channel.

The board, however, sees no contradiction between these two passages but construes them instead as describing two possible options. Both options provide an "easy mechanism to engage in a given chat session which is tied to a given television show" (D7, column 8, lines 30 to 32). Which of these options a person skilled in the art would have selected may depend on whether a chat session cell is directly linked to a given (single) television program.

6.6 Conclusion

Since the subject-matter of claim 1 does not involve an inventive step in view of D1 the main request is not allowable.

7. Auxiliary request I

Claim 1 according to auxiliary request I differs from claim 1 according the main request by the following underlined feature: "[...] as the television program displayed on the display changes in response to a user input, changing the displayed newsgroup listings accordingly so that the displayed newsgroup listings are always related to the displayed television program."

As explained in point 6.4 supra, when the user input in D7 is the selection of a newsgroup icon of a television program in another channel, D7 strongly suggests that both that television program and the related newsgroups (or newsgroup listings) are displayed in their respective windows shown in figure 3. Thus, for the reasons already given in point 6.4 above, in response to this user input, the displayed newsgroup listings and the displayed television program would always be related in an obvious modification of the method known from D1.

Hence the subject-matter of claim 1 according to auxiliary request I does not involve an inventive step.

Accordingly, auxiliary request I is not allowable.

8. Auxiliary request II

Claim 1 according to auxiliary request II differs from claim 1 according the main request by the following underlined feature: "[...] as the television program displayed on the display changes in response to a user input, changing the displayed newsgroup listings accordingly, the method further comprising:

allowing the user to select one of the newsgroup listings; and

displaying newsgroup message listings associated with the selected newsgroup listing on the display."

These additional features are essentially the description of the well-known steps of allowing the user to select a newsgroup listing from a list and of displaying the chat room of the selected newsgroup as a result.

Hence these features add nothing inventive to the subject-matter of claim 1 according the main request.

Accordingly, auxiliary request II is not allowable.

9. Auxiliary request III

Claim 1 according to auxiliary request III differs from claim 1 according to the main request by the additional features of claim 1 according to auxiliary requests I and II underlined under points 7 and 8 supra.

Since the board considers the presentation of newsgroup listings which are always related to the displayed television program as an obvious modification of the known method of displaying related sessions and since the further steps of how a newsgroup is selected constitute well-known steps, the inclusion of both distinguishing features does not render the subject-matter of claim 1 inventive either. No synergistic effect between these features has been alleged, and the board cannot see any. Therefore, the subject-matter of claim 1 according to auxiliary request III lacks an inventive step for the reasons set out under points 7 and 8 supra.

Hence auxiliary request III is not allowable.

10. Auxiliary requests X to XIII

These requests differ from claim 1 according to the main request and auxiliary requests I to III, respectively, only in that the expression "in response to a user input" has been replaced by "in response to a channel change input".

As explained in point 6.4 and under point 7 supra, the board considers that D7 strongly suggests (if not discloses), as a result of the user selecting a newsgroup icon in a EPG cell of a television program on another channel having two related newsgroups, that the system of D7 simultaneously tunes to that other television program and displays the related newsgroup (or newsgroup listings in an obvious modification). This action of selecting a newsgroup therefore comprises the action of inter alia changing the channel of the displayed television program. It is thus indistinguishable from the "channel change input" of claim 1 according to auxiliary requests X to XIII.

The appellant argued that the expression "channel change input" makes clearer that the first user input and the subsequent user input(s) are different commands. However, the wording of claim 1 according to each of these requests does not exclude that the first user input, i.e. the "command associated with viewing the newsgroup listings", may at the same time also be a channel change input.

Hence the subject-matter of claim 1 according to each of auxiliary requests X to XIII does not involve an inventive step.

Conclusion

11. Since the appellant's main request and auxiliary requests I to III and X to XIII are not allowable and the appellant's auxiliary requests IV to IX and XIV and XIX are not admitted into the proceedings, the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.