T 1700/09 () of 15.6.2011

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse European patent application No. 05257736.8.

II. Claim 1 as considered by the examining division reads as follows:

"A method for connecting a plurality of called party terminals (14) in a bridged call session with a Voice Over Internet Protocol (VOIP) calling party terminal (12) comprising: the VOIP terminal providing the calling party with means for selecting the called party terminals to be bridged; the VOIP terminal receiving the called party terminal selections from the calling party characterized by: the VOIP terminal combining called party terminal identifiers identifying the selected called party terminals into VOIP packets, wherein each of the VOIP packets includes a VOIP header, the called party terminal identifiers and a VOIP call information payload; the VOIP terminal sending the VOIP packets to a calling party Service Control Point (SCP) (22) including an IP Gateway (24) and a Switching Center (26); and the calling party SCP creating a bridged call session connecting the called party terminals and the calling party VOIP terminal."

Claim 5 as considered by the examining division reads as follows:

"A system for bridging a plurality of called party terminals in a call session with a Voice Over Internet Protocol (VOIP) calling party terminal comprising: means for selecting the called party terminals to be bridged characterized by: means for sending called party terminal identifiers identifying each selected called party terminal to a calling party Service Control Point (SCP) (22) including an IP Gateway (24) and a Switching Center (26) in VOIP packets, wherein each of the VOIP packets includes a VOIP header, the called party terminal identifiers and a VOIP call information payload; and means for creating a bridged call session at the calling party SCP connecting the called party terminals and the calling party VOIP terminal."

III. The following documents were referred to in the impugned decision:

D1: VINEET KUMAR, MARKKU KORPI, SENTHIL SENGODAN: "IP Telephony with H.323 - Architectures for Unified Networks and Integrated Services", WILEY (2001), ISBN 0-471-39343-6, pages 145-166

D2: US 2003/185218 A1

D3: IGOR FAYNBERG, LAWRENCE GABUZDA, HUI-LAN LU: "Converged Networks and Services - Internetworking IP and the PSTN", WILEY (2000), ISBN: 0-471-35644-1, pages 206-209 and 230-232

The refusal was based on the ground that the subject-matter of claims 1 and 5 lacked an inventive step (Article 56 EPC) having regard to D1 as the single most relevant prior art document. It was argued that the features in the pre-characterizing portion of claim 1 were "trivial and well known in the art of telecommunication system, in particular when taking into account PC Terminal T2 and T3, disclosed in Document D1, Figure 4.6" (point 1.5 of the reasons) and that the last feature of claim 1 was disclosed in D1 since the SCP in claim 1 corresponded to the MCU in D1 in creating a bridged call session connecting the called and the calling terminals (point 1.6 of the reasons). The difference between the method of claim 1 and D1 was said to be combining called party identifiers identifying the selected called party terminals into VOIP packets, wherein each of the VOIP packets includes a VOIP header, the called party terminal identifiers and VOIP call information payload (point 1.8. of the reasons). This difference was considered as being an obvious alternative to sending a separate packet for each terminal identifier (point 1.10 of the reasons).

IV. In the notice of appeal the appellant requested that the decision be set aside and that a patent be granted, implicitly on the basis of the claims considered by the examining division.

V. In the statement of grounds of appeal the appellant argued that the examining division had defined the technical problem too narrowly and had not provided a cited reference teaching a VOIP terminal setting up an ad-hoc conference call with a conference bridge; this was the technical problem the invention served to solve. Furthermore, the examining division had not provided any teaching in the prior art that would have prompted the skilled person to provide the called party identifiers to the conference bridge in a single VOIP packet.

Reasons for the decision

1. Claims 1 and 5 - inventive step (Article 56 EPC)

1.1 D1, an extract from a chapter of a technical book on the operation of H.323 protocols for IP VOIP telephony, describes the extension of point-to-point calls to multipoint and explains different scenarios for multi-point conferences and network configurations. In particular, D1 mentions multipoint conferences of the types "meet-me", "ad hoc" and "interactive broadcast" (pages 146 and 147). The type "meet-me" requires a conference bridge or a multipoint control unit MCU as a meeting place for the conference. The participants of the conference are provided with the telephone number of the bridge or the MCU and call at the time the conference starts (page 146, lines 2-3 and 8-9). The "ad hoc" conference is said in D1 to start as a point-to-point call between two participants and to transform to a multipoint call by further participants being invited to join in the call. "Interactive broadcast", briefly explained on page 147, is not relevant to the invention. Furthermore, D1 describes configurations of networks for a multipoint conference (page 148) operating in multi-unicast, multicast or master-slave configurations. In the multi-unicast configuration each terminal sends copies of signalling packets to every other terminal whereas in the multicast configuration signalling packets are sent and received by terminals on known multicast addresses; in the master-slave configuration signalling packets are unicast by the slave to the master and multi-unicasted from the master to the slaves (second paragraph after heading "Network configurations). At page 153 D1 describes a possible conference scenario using H.323 and then describes in more detail some messages and commands added to the call control protocol H.245 for the purpose of supporting multipoint conferences (pages 155-166).

1.2 As regards the setting up of a call from a VOIP terminal, it is implicit in D1 that the terminals configured as PC terminals, e.g. terminals T2 and T3 in figure 4.6(a), provide means to the user for entering a dialling address for the purpose of setting up a call to a called party. Hence, both features in the pre-characterizing portion in claim 1 are implicitly known from D1, and this has not been contested by the appellant.

However, the disclosure of D1 as regards the signalling for setting up a multipoint conference is limited to a configuration in which each conference participant has the phone number of the conference bridge and calls it at a predetermined time. In contrast to the assumption set out in point 1.9 of the impugned decision, D1 does not disclose that the terminal identifiers of the other conference participants are made known to the conference bridge by a single caller terminal. Furthermore, there is no suggestion in D1 which leads to the conclusion that the conference bridge must be able to have the identifier of a conference participant for the purpose of setting up a conference. The message group "ConferenceRequest" explained on pages 164-166 of D1 and referred to at point 1.9 of the impugned decision is part of the H.245 call control protocol. This protocol is not applied during call setup but only for call control after a connection between a caller and a called party has been established. This message group does therefore not serve for setting up a new conference.

It follows that the method of claim 1 differs from D1 by the features in the characterizing portion of D1.

1.3 The skilled person is not led to any of these features by D1 itself since, as pointed out above, D1 does not suggest any conference type in which a calling party informs the conference bridge of the identifiers of the terminals of the other conference participants and that the conference bridge connects the terminals using the received terminal identifiers.

Nor are the characterizing features rendered obvious by the disclosure of D2 or D3. D2 suggests that an "audio bridge session may be created by first receiving a plurality of call requests with the access number" (paragraph [0029]). This is understood by the board as meaning that a multipoint conference of the "meet-me" type is established in the same manner as described at page 146 of D1, i.e. by starting a phone call to the conference bridge by each conference participant. D3 is rather general as concerns the architecture of multimedia conferences and their possible applications but is silent as regards the setting up of a conference. Nor is the board aware of any document which would suggest that setting up a multipoint conference according to the characterizing features of claim 1 is part of the common general knowledge of the skilled person.

1.4 The board therefore concludes that the skilled person would not have been led to the method as claimed in claim 1, having regard to any of D1, D2 or D3, either alone or in combination, and taking into account the skilled person's general knowledge. For the same reasons the skilled person would not have been led to a system as claimed in claim 5. For this reason the impugned decision has to be set aside.

2. Remittal

The board is not however in a position to remit the case for grant of a patent since it is not clear that the substantive examination has been completed.

The board therefore considers it appropriate to remit the case to the department of first instance for further prosecution pursuant to Article 111(1) EPC.

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 for further prosecution.