T 1894/09 () of 15.5.2013

Summary of Facts and Submissions

I. The appeal concerns the decision of the examining division to refuse European patent application No. 00 200 655 for lack of inventive step, Article 56 EPC 1973, and extension beyond the content of the parent application, Article 76(1) EPC 1973 (main request, first and second auxiliary requests).

II. The appellant requested in writing that the decision under appeal be set aside and that a patent be granted on the basis of the main request, first auxiliary request or second auxiliary request, all filed with the letter setting out the grounds of appeal.

III. The appellant was summoned by the board to attend oral proceedings, which had been requested by the appellant. In an annex to the summons objections were raised by the board, inter alia, under Article 123(2) EPC and Article 76(1) EPC 1973.

IV. With letter dated 5 February 2013 the appellant informed the board that it would not attend the oral proceedings scheduled for 7 and 8 May 2013. Consequently, these oral proceedings were cancelled with communication of the board dated 19 April 2013.

V. The wording of the respective independent claims 1 of the main request and the first and second auxiliary requests reads as follows (labelling "(1)m", "(2)m", "(3)m"; "(1)1", "(2)1", "(3)1"; "(1)2", "(2)2", "(3)2" by the board):

Main request:

"1. A method of using an off-track wagering system (366) to interactively wager on races, using a user terminal (370) connected to communicate with a wagering facility (380) and a video and data distribution facility (368) remote of the user terminal (370), the method comprising:

(1)m causing the user terminal (370) to generate, on a display (378), an interface (458, 602) providing an opportunity to interact with the interface (458, 602) thereby to place a wager on a given race that has not been run,

wherein the given race is subsequently recorded to create a race video clip,

(2)m wherein the interface (458, 602) is configured to provide an opportunity to interact with the interface (458, 602) to transmit to the video and data distribution facility (368) a request for the race video clip,

whereupon the video and data distribution facility (368) is configured to deliver the race video clip to the user terminal (370) via a video and data link (376); and

(3)m displaying the requested race video clip in a box (472) of the display (378) showing the interface (458, 602), in response to the request for the race video clip."

First auxiliary request:

"1. A method of using an off-track wagering system (366) to interactively wager on races, using a user terminal (370) connected to communicate with a wagering

facility (380) and a video and data distribution facility (368) remote of the user terminal (370), the method comprising:

causing the user terminal (370) to generate, on a display (378), an interface (458, 602);

(1)1 interacting with the interface (458, 602) thereby to place a wager on a given race that has not been run;

subsequently recording the given race to create a race video clip;

(2)1 interacting with the interface (458, 602) to transmit to the video and data distribution facility (368) a request for the race video clip;

delivering the race video clip from the video and data distribution facility (368) to the user terminal (370) via a video and data link (376) in response to the request for the race video clip; and

(3)1 displaying on the display (378) the requested race video clip in a box (472) in the interface (458, 602), in response to the request for the race video clip."

Second auxiliary request:

"1. A method of using an off-track wagering system (366) to interactively wager on races, using a plurality of user terminals (370) connected to communicate with a wagering facility (380) and a video and data distribution facility (368), the method comprising:

causing the user terminals (370) to generate, on their respective displays (378), an interface (458, 602);

(1)2 interacting with the interfaces (458, 602) thereby to place wagers on a given race that has not been run;

subsequently recording the given race to create a race video clip;

(2)2 interacting with the interfaces (458, 602) to transmit to the video and data distribution facility (368) requests for the race video clip;

delivering the race video clip from the video and data distribution facility (368) to the user terminals (370) via respective video and data links (376); and

(3)2 displaying on the displays (378) of the user terminals (370) the requested race video clip in a box (472) in the interfaces (458, 602), in response to the requests for the race video clip."

VI. With respect to the basis of the amendments the appellant argued essentially as follows:

The feature in claim 1 of the main request related to using a user terminal connected to communicate with a wagering facility and a video and data distribution facility remote of the user terminal was based for example on Figure 29. Furthermore, the feature in claim 1 of the main request concerning the opportunity to interact with the interface to transmit to the video and data distribution facility a request for a race video clip, whereupon the video and data distribution facility was configured to deliver the race video clip to the user terminal via a video and data link, was based for example on page 6, lines 8-12 and page 63, line 10 – page 64, line 23. The corresponding features in the respective claims 1 of the first and second auxiliary requests were also based on these passages of the description.

The claims therefore met the requirements of Articles 76(1) and 123(2) EPC.

Reasons for the Decision

1. Admissibility

The appeal is admissible.

2. Procedural matters

According to the established case law of the Boards of Appeal (T 3/90, OJ EPO 1992, 737, and "Case Law of the Boards of Appeal of the EPO", 6th edition 2010, VI.C.2.2) the appellant's statement in its letter of 5 February 2013 that it would not be represented at the oral proceedings is to be treated as equivalent to a withdrawal of the request for oral proceedings. Therefore, the board cancelled the oral proceedings and decided to continue the proceedings in writing and to issue a decision based on the written proceedings.

3. Main request – Article 123(2) EPC

3.1 Features (1)m and (2)m of claim 1

3.1.1 In claim 1 of the main request it is specified that the claimed method comprises causing the user terminal to generate, on a display, an interface providing an opportunity to interact with the interface thereby to place a wager on a given race that has not been run (feature (1)m). Furthermore, it is specified in claim 1 of the main request that the interface is configured to provide an opportunity to interact with the interface to transmit to the video and data distribution facility a request for the race video clip (feature (2)m).

3.1.2 In the claims as originally filed there is no mention of an interface generated on a display and providing an opportunity to interact with the interface to place a wager on a race or to transmit to the video and data distribution facility a request for the race video clip.

3.1.3 With respect to the question whether there is a basis for features (1)m and (2)m in the description and drawings as originally filed, a first consideration concerns the overall subject-matter of claim 1 of the main request. That claim relates to a method of using an off-track wagering system to wager on races involving the use of a user terminal connected to communicate with a video and data distribution facility. The claimed method relates therefore to the second embodiment, which is described with reference to Figure 29 of the application and comprises a video and data distribution system 368. Figures 30-50 and the corresponding parts of the description relate to further aspects of that second embodiment (see the description of the application, page 11, lines 9-19).

3.1.4 In respect of the second embodiment the only interface generated on a display and providing an opportunity to place a wager on a race is shown in Figure 39 (see the description of the application, page 55, lines 5-22). Figure 39 shows a screen 494 comprising a menu option 488 named "PLACE WAGER". If that option is selected wager transaction data corresponding to the selected wager is transmitted from the user terminal 370 to the wagering data management facility 380, both shown in Figure 29. The menu option 488 provides therefore an opportunity to place a wager on a race.

3.1.5 On the other hand, regarding the second embodiment the only interface generated on a display and providing an opportunity to transmit to the video and data distribution facility a request for a race video clip is shown in Figure 50 (see the description of the application, page 62, lines 14 – page 64, line 18). Figure 50 shows the menu option "WATCH THE RACE" (correcting the typographic error in "WACTH") provided with a button labelled "99¢". If that option is selected a video of the concerned race is displayed. In particular, the order for a race video may be transmitted from user terminal 370 via communication line 390, transaction data interface 394 and wagering data management facility 380 to the video and data distribution system 368. The latter may contain a high capacity storage medium for recording races received from racing video source 374. The requested race video is then delivered from the video and data distribution system 368 to the user terminal 370. Therefore, the menu option "WATCH THE RACE" provides an opportunity to transmit to the video and data distribution facility a request for a race video clip.

3.1.6 In the description and drawings as filed it is therefore only disclosed that the opportunities to place a wager on a race and the opportunity to transmit a request for a race video clip are provided in different interfaces, namely the ones shown in Figures 39 and 50, respectively. Claim 1 of the main request states however that both opportunities are provided in the same interface.

The board however cannot find any indication in the application as filed that the interfaces shown in Figures 39 and 50 could be combined or merged in any manner.

Hence, it is not directly and unambiguously derivable for the skilled person to combine the interfaces shown in Figures 39 and 50.

3.1.7 In view of the above, the combination of features (1)m and (2)m of claim 1 of the main request is not directly and unambiguously derivable for the skilled person from the content of the application as filed.

3.2 Feature (3)m of claim 1

3.2.1 In claim 1 of the main request it is specified that the requested race video clip is displayed in a box of the display showing the interface (feature (3)m).

3.2.2 In the claims as originally filed there is no mention of the requested race video clip being displayed in a box of the display showing an interface.

3.2.3 Concerning the interface shown in Figure 36, it is stated in the description of the application (see page 53) that in the box 472 of the interface a real time racing video 470 is displayed. The racing video is a simulcast from the selected racetrack corresponding to the next scheduled race. It is furthermore stated that, if no racing videos is available from the selected track, the box could contain a video clip of races at other tracks or advertising information.

It is also stated that the box 472 of the interface shown in Figure 37 contains the same information as in Figure 36 in order to avoid confusion of the user (page 54, last paragraph). It can therefore be assumed that also the box shown in the interface of Figure 39 contains the video information described above.

However, it has not been disclosed that the box shown in the interface of Figure 39 could contain the requested race video clip.

3.2.4 On the other hand, concerning the requested recorded race video, it is merely specified that after the user made the selection "WATCH THE RACE" the "user terminal 370 displays the video on monitor 378" (see page 62, lines 22-26, and page 64, lines 19-22). It is not even mentioned that the race video clip is shown in a box in that case, let alone in a box of the interface, which - - according to feature (1)m - provides an opportunity to place a wager on a race. Rather, the video could as well be shown in a full screen mode.

3.2.5 Figures 31-34 are logic flow diagrams illustrating the operation of the wagering system of the second embodiment shown in Figure 29.

The option "WATCH THE RACE" mentioned above, which is provided in the interface of Figure 50, is indicated in these logic flow diagrams in the box with reference sign 600 (see Figure 34). Selection of the option "WATCH THE RACE" leads to the display of the video of the race indicated in the box with reference sign 602. There is however no indication in the logic flow diagrams that the selection of the option "WATCH THE RACE" leads to a transfer to the interface of Figure 39 comprising the option "PLACE WAGER", which is referred to in the box 486 (see Figure 31). Rather, the double arrow between boxes 600 and 602 implies that after the display of the video clip the control is transferred back to the interface comprising the option "WATCH THE RACE" shown in Figure 50.

3.2.6 In view of the above features (3)m of claim 1 of the main request is not directly and unambiguously derivable for the skilled person from the content of the application as filed.

3.3 For these reasons claim 1 of the main request contains subject-matter which extends beyond the content of the application as filed contrary to the requirements of Article 123(2) EPC.

4. Main request – Article 76(1) EPC 1973

In the original claims of the parent application there is no mention of an interface generated on a display and providing an opportunity to interact with the interface to place a wager on a race or to transmit to the video and data distribution facility a request for the race video clip. Furthermore, in these claims there is no mention of the requested race video clip being displayed in a box of the display showing an interface.

The description and drawings of the application are identical with those of the parent application. For the reasons given under point 3. above there is therefore no basis for the features (1)m, (2)m and (3)m in the description and drawings of the parent application.

Consequently, claim 1 of the main request contains subject-matter which extends beyond the content of the parent application contrary to the requirements of Article 76(1) EPC 1973.

5. First and second auxiliary requests - Article 123(2) EPC and Article 76(1) EPC 1973

Features (1)1, (2)1, (3)1 of claim 1 of the first auxiliary request and features (1)2, (2)2, (3)2 of claim 1 of the second auxiliary request are essentially equivalent to the corresponding features (1)m, (2)m and (3)m of claim 1 of the main request.

Consequently, for the reasons given under points 3. and 4. above claim 1 of the first auxiliary request and claim 1 of the second auxiliary request contain subject-matter which extends beyond the content of the application as filed contrary to the requirements of Article 123(2) EPC and beyond the content of the parent application contrary to the requirements of Article 76(1) EPC 1973.

6. Conclusion

Since none of the requests is allowable the appeal has to be dismissed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.