T 2356/10 () of 25.11.2015

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division refusing European patent application No. 05019372.1 published as EP 1 670 251 A1.

II. In the decision under appeal the following prior-art document was cited:

D1: EP 1 233 576 A2.

The application was refused on the grounds that claims 1 and 8 of each of the main request and first to third auxiliary requests did not meet the requirements of Articles 123(2) (added subject-matter) and 84 EPC (clarity), and that their subject-matter did not involve an inventive step in view of D1 (Article 56 EPC).

III. With the statement of grounds of appeal the appellant filed three sets of amended claims according to a main request and first and second auxiliary requests, replacing all previous claims on file. As a precaution, the appellant also requested oral proceedings.

IV. In a communication under Article 15(1) RPBA (Rules of Procedure of the Boards of Appeal, OJ EPO 2007, 536), annexed to the summons for oral proceedings, the board informed the appellant that it was inclined not to admit the main request and the first auxiliary request into the proceedings under Article 12(4) RPBA. As to the second auxiliary request (which was identical to the main request underlying the decision under appeal), the board indicated that it tended to concur with the examining division that the requirements of clarity of Article 84 EPC 1973 were not met. The board also expressed doubts that the requirements of Article 123(2) EPC (added subject-matter) were met and that the subject-matter of claim 1 involved an inventive step (Article 56 EPC 1973) in view of D1.

V. With a letter of reply dated 28 September 2015, the appellant filed amended claims according to a main request and first to fourth auxiliary requests, replacing all previous claim sets on file.

VI. The board held oral proceedings on 25 November 2015, during which the appellant submitted several sets of amended claims in an attempt to overcome the board's objections.

The appellant's requests at the end of the oral proceedings were that the decision under appeal be set aside and that a patent be granted on the basis of the claims according to:

- the Main Request filed with a letter of 28 September 2015, or

- the 1st Auxiliary Request filed during the oral proceedings before the board and replacing the 1st Auxiliary Request filed with a letter of 28 September 2015, or

- the 2nd Auxiliary Request filed during the oral proceedings before the board, or

- the 3rd to 5th Auxiliary Requests filed with a letter of 28 September 2015 and therein labelled as 2nd to 4th Auxiliary Requests, respectively, or

- the 6th Auxiliary Request filed during the oral proceedings before the board.

At the end of the oral proceedings, the chairman announced the board's decision.

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

"A system for communicating with a plurality of communications networks, the system

comprising:

cellular processing circuitry (320) in a mobile terminal (400) that processes a plurality of cellular frequency band communications services (410, 412), comprising at least one voice service (410) and at least one data service (412), in a single cellular processor integrated circuit (402) in said mobile terminal (400); and

broadcast processing circuitry in said mobile terminal (400) that processes VHF/UHF band broadcast services (414) in a single broadcast processor integrated circuit (322, 404) within said mobile terminal (400);

wherein said cellular processing circuitry (320) communicates with, and shares at least a single memory (330, 420) with, said broadcast processing circuitry;

the system further comprising:

circuit that couples the single memory (330, 420), the single cellular processor integrated circuit (402) and the single broadcast processor integrated circuit (322, 404) via a common interface (331);

wherein said common interface (331) comprises suitable logic and/or circuitry adapted to enable communication between the cellular processing circuitry (320) and said single memory (330, 420), and to enable communication between the broadcast processor integrated circuit (322, 404) and said single memory (330, 420)."

VIII. Claim 1 according to the appellant's first auxiliary request differs from claim 1 of the main request by the following additional features at the end of the claim:

";

wherein said single cellular processor integrated circuit (402) utilizes at least said single memory (330, 420) while processing information received from said VHF/UHF band broadcast services (414); and

wherein said single broadcast processor integrated circuit (322, 404) utilizes at least said single memory (330, 420) while processing information received from said plurality of cellular frequency band communications services (410, 412)."

IX. Claim 1 according to the appellant's second auxiliary request reads as follows (additions to claim 1 of the first auxiliary request are underlined, deletions are [deleted: struck-through], some identical text portions are replaced by "[...]"):

"A system for communicating with a plurality of communications networks, the system

comprising:

[...]

the system further comprising:

circuit that couples the single memory (330, 420), the single cellular processor integrated circuit (402) and the single broadcast processor integrated circuit (322, 404) via a common interface (331); wherein

[deleted: wherein] said common interface (331) comprises suitable logic and/or circuitry adapted to enable communication between the cellular processing circuitry (320) and said single memory (330, 420), and to enable communication between the broadcast processor integrated circuit (322, 404) and said single memory (330, 420);

said shared single memory (330, 420) enables coordination of a plurality of cellular frequency band communications services (410. 412) with VHF/UHF band broadcast services (414);

[deleted: wherein ]said single cellular processor integrated circuit (402) utilizes at least said single memory (330, 420) while processing information received from said VHF/UHF band broadcast services (414); and

[deleted: wherein ]said single broadcast processor integrated circuit (322, 404) utilizes at least said single memory (330, 420) while processing information received from said plurality of cellular frequency band communications services (410, 412)."

X. Claim 1 according to the appellant's third auxiliary request reads as follows (additions to claim 1 of the main request are underlined, deletions are [deleted: struck-through]):

"A system for communicating with a plurality of communications networks, the system

comprising:

cellular processing circuitry (320) in a mobile terminal [deleted: (400) ]that processes a plurality of cellular frequency band communications services [deleted: (410, 412)], comprising at least one voice service [deleted: (410) ]and at least one data service [deleted: (412)], in a single cellular processor integrated circuit [deleted: (402) ]in said mobile terminal [deleted: (400)]; and

broadcast processing circuitry in said mobile terminal [deleted: (400) ]that processes VHF/UHF band broadcast services [deleted: (414) ]in a single broadcast processor integrated circuit (322[deleted: , 404]) within said mobile terminal[deleted: (400)];

wherein said cellular processing circuitry (320) communicates with, and shares at least a [deleted: single ]flash memory (330[deleted: , 420]) with, said broadcast processing circuitry;

the system further comprising:

circuit that couples the [deleted: single ]flash memory (330[deleted: , 420]), the single cellular processor integrated circuit [deleted: (402) ]and the single broadcast processor integrated circuit (322[deleted: , 404]) via a common interface (331);

wherein said common interface (331) comprises suitable logic and/or circuitry adapted to enable communication between the cellular processing circuitry (320) and said [deleted: single ]flash memory (330[deleted: , 420]), and to enable communication between the broadcast processor integrated circuit (322[deleted: , 404]) and said [deleted: single ]flash memory (330[deleted: , 420]);

wherein the flash memory (330) contains machine-readable code executable by the cellular processing circuitry (320) to perform tasks related to the execution of signaling protocols with a cellular communications network for the establishment of cellular frequency band communication services between the mobile terminal and the cellular communications network; and

the flash memory (330) stores persistent data which are to be maintained after the mobile terminal has been powered off and subsequently powered on."

XI. Claim 1 according to the appellant's fourth auxiliary request reads as follows (additions to claim 1 of the third auxiliary request are underlined, deletions are [deleted: struck-through], some identical text portions are replaced by "[...]"):

"A system for communicating with a plurality of communications networks, the system comprising:

[...]

wherein the flash memory (330) contains machine-readable code executable by the cellular processing circuitry (320) to perform tasks related to the execution of signaling protocols with a cellular communications network for the establishment of cellular frequency band communication services between the mobile terminal and the cellular communications network; and

wherein the cellular processing circuitry (320) exchanges information with the single broadcast processor integrated circuit (322) utilizing the flash memory (330).

[deleted: the flash memory (330) stores persistent data which are to be maintained after the mobile terminal has been powered off and subsequently powered on.]"

XII. Claim 1 according to the appellant's fifth auxiliary request reads as follows (additions to claim 1 of the fourth auxiliary request are underlined, deletions are [deleted: struck-through], some identical text portions are replaced by "[...]"):

"A system for communicating with a plurality of communications networks, the system comprising:

[...]

wherein the flash memory (330) contains machine-readable code executable by the cellular processing circuitry (320) to perform tasks related to the execution of signaling protocols with a cellular communications network for the establishment of cellular frequency band communication services between the mobile terminal and the cellular communications network; and

[deleted: wherein the cellular processing circuitry (320) exchanges information with the single broadcast processor integrated circuit (322) utilizing the flash memory (330).]

wherein the cellular processing circuitry (320) exchanges messages with the single broadcast processor integrated circuit (322) while processing information received from said plurality of cellular frequency band communications services; or

wherein said single broadcast processor integrated circuit (322) exchanges messages with the cellular processing circuitry (320) while processing information received from said VHF/UHF band broadcast services."

XIII. Claim 1 according to the appellant's sixth auxiliary request reads as follows (additions to claim 1 of the main request are underlined, deletions are [deleted: struck-through], some identical text portions are replaced by "[...]"):

"A system for communicating with a plurality of communications networks, the system

comprising:

[...]

the system further comprising:

circuit that couples the single memory (330, 420), the single cellular processor integrated circuit (402) and the single broadcast processor integrated circuit (322, 404) via a common interface (331); wherein

[deleted: wherein] said common interface (331) comprises suitable logic and/or circuitry adapted to enable communication between the cellular processing circuitry (320) and said single memory (330, 420), and to enable communication between the broadcast processor integrated circuit (322, 404) and said single memory (330, 420); and

said shared single memory (330, 420) enables coordination of a plurality of cellular frequency band communications services (410, 412) with VHF/UHF band broadcast services."

XIV. The examining division's reasoning as to inventive step in the decision under appeal, as far as relevant to the claims under consideration, may be summarised as follows:

Main request underlying the decision under appeal - inventive step

Document D1 disclosed a system comprising all the features of the system of claim 1, except the feature that the cellular processing circuitry and the broadcast processing circuitry were single integrated circuits.

It would have been an obvious design option for the skilled person to implement these circuitries as single integrated circuits.

Hence, the subject-matter of claim 1 did not involve an inventive step in view of D1.

Third auxiliary request underlying the decision under appeal - inventive step

In the system of D1 there had to be a memory for storing executable code. Using a shared flash memory for this code would have been a mere design consideration which could not render the subject-matter of claim 1 inventive.

Reasons for the Decision

1. The appeal is admissible.

Main request - inventive step (Article 56 EPC 1973)

2. Closest prior art

The appellant did not dispute that D1 represented the closest prior art.

3. Distinguishing features

3.1 D1 discloses a system for communicating with a plurality of communications networks (see figure 2) which, in the board's view, comprises the following features of claim 1 of the main request:

cellular processing circuitry (cellular transceiver module 204) in a mobile terminal (200) that processes a plurality of cellular frequency band communications services, comprising at least one voice service (see paragraph [19]) and at least one data service (see paragraph [19]), in a [deleted: single] cellular processor integrated circuit in said mobile terminal; and

broadcast processing circuitry (DVB-T receiver 222) in said mobile terminal that processes VHF/UHF band broadcast services (DVB-T uses VHF/UHF bands) in a [deleted: single] broadcast processor integrated circuit within said mobile terminal;

wherein said cellular processing circuitry communicates with, and shares at least a single memory (218) with, said broadcast processing circuitry (see the shared memory in column 4, lines 12 to 15, and the hyperlink or URL information transmitted between the broadcast processing circuitry and the cellular processing circuitry in paragraphs [21] to [23]);

the system further comprising:

circuit (controller 206) that couples the single memory (218), the [deleted: single] cellular processor integrated circuit (204) and the [deleted: single] broadcast processor integrated circuit (222) via a common interface (controller 206);

wherein said common interface (206) comprises suitable logic and/or circuitry adapted to enable communication between the cellular processing circuitry (204) and said single memory (218), and to enable communication between the broadcast processor integrated circuit (222) and said single memory (218).

3.2 Hence, the board considers that the system of claim 1 differs from that of D1 by the following distinguishing features:

(a) the cellular processing circuitry is implemented as a single integrated circuit; and

(b) the broadcast processing circuitry is implemented as a single integrated circuit.

3.3 The appellant argued that the subject-matter of claim 1 was also distinguished from D1 by the following features:

(c) the common interface enables direct communication between the cellular processing circuitry and the broadcast processing circuitry; and

(d) the exchange of information between the cellular processing circuitry and the broadcast processing circuitry is bidirectional.

The appellant explained during the oral proceedings that although features (c) and (d) were not explicitly set out in claim 1, it was implicit from paragraphs [18] and [39] of the description and from figure 3c that the cellular processing circuitry and the broadcast processing circuitry were connected by a bus, i.e. by a direct bidirectional connection.

3.4 The board is not convinced by the appellant's arguments for the following reasons:

Re feature (c)

There is no mention of "direct" communication between the cellular processing circuitry and the broadcast processing circuitry in claim 1, either explicitly or implicitly. Nor is there any text mentioning such a direct connection in the description or drawings.

In the embodiment shown in figure 3c, the two circuitries are represented as two blocks connected by a "memory interface 331" represented as a line connecting the two blocks. The appellant argued that this representation of the connection as a line implied direct communication via a bus. The board cannot accept this argument because figure 3c is only a block diagram illustrating an exemplary connection between the cellular processor IC and the broadcast processor IC (see paragraph [31] of the description). Hence it cannot be derived from the schematic representation of the connection as a line either that the connection is a bus or that it is direct.

Re feature (d)

The wording of claim 1 is not limited to a bidirectional exchange of information between the cellular processing circuitry and the broadcast processing circuitry. Claim 1 states only that said cellular processing circuitry communicates with, and shares at least a single memory with, said broadcast processing circuitry. In the board's view, the wording of claim 1 also covers a one-way communication between the two processing circuitries and is thus not limited to a bidirectional exchange of information.

3.5 For the above reasons, the board considers that the only distinguishing features are features (a) and (b).

4. Technical effect and objective technical problem

The appellant did not state what objective technical problem was solved by features (a) and (b). However, it is common general knowledge that placing several circuits in a single integrated circuit achieves the technical effect of reducing the die space required for interconnections, reducing the overall number of pins and improving the processing speed. The board regards the objective technical problem as being how to achieve this technical effect.

5. Obviousness

The board concurs with the examining division that integrating several interconnected circuits in a single integrated circuit in order to achieve the above known technical effect would have been an obvious design option for the skilled person.

The appellant did not provide counter-arguments regarding the obviousness of features (a) and (b).

6. Conclusion on the main request

For the above reasons, the subject-matter of claim 1 of the main request does not involve an inventive step (Article 56 EPC 1973) in view of D1.

Hence the appellant's main request is not allowable.

First auxiliary request - clarity and support

7. Claim 1 according to the first auxiliary request differs from claim 1 of the main request by two additional features (see point VIII supra).

According to the appellant, these additional features make clear that the exchange of information between the cellular processing circuitry and the broadcast processing circuitry is bidirectional.

The board notes that these two additional features are based on nearly identical wording (only the word "may" has been deleted) used in paragraphs [18] and [22] of the description. However, there is hardly any technical disclosure corresponding to these features in the embodiments of the application. These additional features refer to "information" received from the broadcast services and processed by the cellular processor and "information" received from the cellular services and processed by the broadcast processor. Since the type of information concerned is not specified, it could be any information. In contrast, the technical embodiments described in the application disclose only a few examples of specific information exchanged in a specific context (see paragraphs [101], [104] and [107]).

In view of this discrepancy between what is claimed (any information) and what is technically disclosed in the application (specific information in specific contexts), the board considers that it is unclear (Article 84 EPC 1973) how the term "information" should be construed in the context of claim 1 if it is limited to some unspecified type of information. If the term "information" is construed broadly as meaning any information, it might be clear, but then lacks (technical) support in the description and drawings (Article 84 EPC 1973) over its entire scope.

The board thus concludes that the requirements of clarity and support of Article 84 EPC 1973 cannot be simultaneously met in claim 1. The fact that there is purely formal support in the description in the form of quasi-identical wording is regarded as insufficient to meet the requirement of support of Article 84 EPC 1973 in the absence of technical support.

8. For the above reasons, the appellant's first auxiliary request is not allowable.

Second auxiliary request - clarity and support

9. Claim 1 according to the second auxiliary request differs from claim 1 of the first auxiliary request essentially by the additional feature that "said shared single memory (330, 420) enables coordination of a plurality of cellular frequency band communications services (410. 412) with VHF/UHF band broadcast services (414)".

The board considers that the objections under Article 84 EPC 1973 raised against claim 1 of the first auxiliary request (see points 7 and 8 supra) also apply to claim 1 of the second auxiliary request. Indeed, the mere indication that the shared single memory enables coordination of the cellular and broadcast services fails to provide a clear indication of how the term "information" should be construed in the context of claim 1.

10. For the above reasons, the appellant's second auxiliary request is not allowable.

Third auxiliary request - inventive step

11. Claim 1 according to the third auxiliary request differs from claim 1 of the main request essentially in that the single memory is a flash memory, wherein

the flash memory contains machine-readable code executable by the cellular processing circuitry to perform tasks related to the execution of signaling protocols with a cellular communications network for the establishment of cellular frequency band communication services between the mobile terminal and the cellular communications network; and

the flash memory stores persistent data which are to be maintained after the mobile terminal has been powered off and subsequently powered on.

12. It is common general knowledge that a processor needs a non-volatile semiconductor memory to store machine-readable code which is executed when the processor is powered on. The cellular transceiver module 204 of D1 would thus have needed a non-volatile memory to store such code, which for this cellular processor would have been code for performing "tasks related to the execution of signaling protocols with a cellular communications network for the establishment of cellular frequency band communication services between the mobile terminal and the cellular communications network".

Since flash memories are among the most commonly used types of non-volatile memory, it would thus have been straightforward for the skilled person to use a flash memory for storing this code. Since the memory (218) in D1 is shared, it would have been obvious to share the flash memory.

Hence the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC 1973) in view of D1 and common general knowledge.

13. For the above reasons, the appellant's third auxiliary request is not allowable.

Fourth auxiliary request - added subject-matter

14. Claim 1 according to the fourth auxiliary request differs from claim 1 of the third auxiliary request inter alia by the additional feature that the cellular processing circuitry exchanges information with the single broadcast processor integrated circuit utilising the flash memory.

15. The appellant submitted that this additional feature had a basis in the application as filed, in particular in paragraph [101].

16. The board considers that the feature that the flash memory is used for an exchange of information between the cellular processor and the broadcast processor is not directly and unambiguously derivable from the application as filed for the following reasons.

The only disclosure in the application as filed that the shared memory is used for exchanging information between the cellular processor and the broadcast processor is in the following sentence of paragraph [101]:

"The single broadcast processor IC, such as 322 in FIG. 3c, may exchange information with the single cellular processor IC, such as 320 in FIG. 3c, via a single memory to establish, for example, a service using MBMS to deliver the program via the wireless service provider network 104." (emphasis added by the board)

The flash memory is mentioned only in paragraphs [82] to [100] of the description and on figures 3c to 3f of the application as filed. In these parts of the application as filed, it is disclosed that both a RAM and a flash memory are shared between the two processors (see paragraph [83], last six lines on page 33).

Thus, even if it is assumed from the above that the shared memory of paragraph [101] consists of both the RAM and the flash memory, there is no disclosure in the application as filed as to which part of the shared memory is used for exchanging information between the two processors. It may thus well be that only the RAM is used. There is no explicit disclosure of the flash memory being used. Nor is there any implicit disclosure of it either. In fact, the only described purposes of the flash memory (see paragraph [87]) relate to the storage of machine-readable code to be executed in the context of executing signaling protocols by the cellular processor, and the storage of persistent data needed when the processors are powered on. Both purposes are unrelated to the exchange of information between processors.

For the above reasons, the board considers that the additional feature mentioned in point 14 supra introduces subject-matter extending beyond the content of the application as filed, in violation of the requirements of Article 123(2) EPC.

17. Hence the appellant's fourth auxiliary request is not allowable.

Fifth auxiliary request - admission

18. According to Article 13(1) RPBA, 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. This discretion is to 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.

19. In the present case, the appellant filed the amended claims according to the present fifth auxiliary request after filing its grounds of appeal, namely with its letter of 28 September 2015, approximately two months before the date of the oral proceedings.

20. Claim 1 of the fifth auxiliary request differs from claim 1 of the fourth auxiliary request in that the last feature is replaced by the following additional features (see point XII supra):

- the cellular processing circuitry exchanges messages with the single broadcast processor integrated circuit while processing information received from said plurality of cellular frequency band communications services; or

- said single broadcast processor integrated circuit exchanges messages with the cellular processing circuitry while processing information received from said VHF/UHF band broadcast services.

The board notes that these additional features are based on identical wording used in paragraphs [18] and [22] of the "BRIEF SUMMARY OF THE INVENTION" section of the application as filed. There is no further mention of "messages" in the remainder of the application as filed. Thus these features increase the complexity of the case by introducing into the claims the new feature of "messages" and temporal considerations ("while processing ...").

The board further notes that the application does not define the meaning of the term "messages". In the board's view, any transmitted piece of information can be regarded as a message. The board is thus not convinced that the expression "messages" is clearer or more specific than the term "information" used in claim 1 of the first auxiliary request and objected to under Article 84 EPC 1973 (see points 7 and 8 supra). Thus, considering these new features would have required an in-depth analysis of their technical meaning for the claimed subject-matter, without a realistic prospect of them actually solving the problems under Article 84 EPC 1973. This would be contrary to procedural economy.

In view of the above, during the oral proceedings the board exercised its discretion under Article 13(1) RPBA in not admitting the fifth auxiliary request into the proceedings.

Sixth auxiliary request - inventive step

21. Claim 1 according to the sixth auxiliary request differs from claim 1 of the main request by the additional feature that said shared single memory enables coordination of a plurality of cellular frequency band communications services with VHF/UHF band broadcast services.

In the system of D1, the mobile terminal may receive via the broadcast network internet data containing a hyperlink or a URL indicating the location of further information on a remote computer (see paragraph [21]). If the user decides to request the further information, the hyperlink or URL is passed from the broadcast processor (222) to the cellular processor (204) so that the cellular processor can send the request to the cellular network (see paragraphs [21] to [23]). The further information is then transmitted to the mobile terminal either via the cellular network (see paragraph [22]) or via the broadcast network (see paragraph [23]).

Hence, in the system of D1 there is a coordination of a plurality of cellular frequency band communications services (the cellular services) with VHF/UHF band broadcast services (the broadcast services).

D1 does not describe how the hyperlink or URL is passed from the broadcast processor (222) to the cellular processor (204). However, D1 states that the two processors share a common memory (see paragraph [19], last sentence, and figure 2). The board thus regards it as obvious for the skilled person to use the shared memory for the transfer of the hyperlink/URL, all the more so since D1 does not disclose any other way of transferring information between the two processors.

22. The appellant argued that the system of D1 was different because it required the user's involvement.

23. The board does not find this argument persuasive because the wording of claim 1 does not exclude user input from being requested at some stage for the coordination of cellular frequency band communications services with VHF/UHF band broadcast services.

24. For the above reasons, the additional feature does not add anything inventive to the subject-matter of claim 1 of the main request. Hence, the subject-matter of claim 1 of the sixth auxiliary request does not involve an inventive step in view of D1.

25. As a result, the sixth auxiliary request is not allowable.

Conclusion

26. Since all the appellant's requests are either unallowable or not admitted into the proceedings, the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.