T 1549/15 () of 8.9.2020

Summary of Facts and Submissions

I. The appeal is against the decision of the opposition division revoking European patent No. 2 131 581.

II. The decision cited, inter alia, the following documents:

E1:|EP 0 785 679 A2|

D2:|KR 2007 0121316 A|

Document D2 had been cited in the European search report and referred to by the opponent after expiration of the opposition period. The opponent had also filed a translation of document D2 into English. The translation was cited as document D2a. Documents D2 and D2a were admitted into the proceedings by the opposition division because of their prima facie relevance.

III. The patent was revoked on the ground that the subject-matter of claim 1 of the then sole request on file did not involve an inventive step (Article 56 EPC) in view of either:

- the disclosure of document E1 combined with the common general knowledge of a person skilled in the art; or

- the disclosure of document D2 combined with the common general knowledge of a person skilled in the art or combined with the disclosure of document E1.

IV. The patent proprietor ("appellant") filed an appeal against this decision. With the statement of grounds of appeal, it requested that the decision be set aside and that the patent be maintained as granted or, in the alternative, in amended form based on the claims of an auxiliary request submitted with the statement of grounds of appeal.

V. The opponent ("respondent") did not reply to the invitation to file observations dispatched by the registrar on 16 October 2015.

VI. The board issued a summons to oral proceedings.

VII. In a communication under Article 15(1) RPBA 2020 (Rules of Procedure of the Boards of Appeal in the version of 2020, OJ EPO 2019, A63), annexed to the summons, the board gave its provisional opinion that the impugned decision was correct in concluding that the subject-matter of claim 1 of the main request lacked inventive step in view of the disclosure of document E1 combined with the common general knowledge of a person skilled in the art and in view of the disclosure of document D2 combined with the common general knowledge of a person skilled in the art. The board also indicated that it was minded not to admit the auxiliary request into the appeal proceedings because this request should have been presented during the opposition proceedings (Article 12(4) RPBA 2007).

VIII. By letters dated 4 March 2020 and 5 June 2020, respectively, the respondent and the appellant indicated that they would not be attending the oral proceedings. Furthermore, the appellant requested a decision according to the state of the file. None of the parties commented on the board's provisional opinion given in the board's communication.

IX. With a letter of 19 June 2020, the parties were informed of the cancellation of the oral proceedings.

X. Claim 1 of the main request reads as follows:

"Electrical consumer device (1) having a first and second SCART inputs for connection to a first electrical device and second electrical device respectively, said electrical consumer device (1) comprising a Power Supply Unit (8), an Audio and Video Switching Circuit section (4) wherein said Audio and Video Switching Circuit section (4) transfers signals from said first SCART input to a Video Buffer and Filter section (5) which is a means for noise coupling and conforming to the voltage level specifications and is connected to said second SCART input to allow for SCART Loop Through functionality, said electrical consumer device (1) additionally comprising

- a VCR-input and power control section (7) which is means for monitoring the stand-by mode operation of said electrical consumer device (1) by monitoring a stand by signal of the electrical consumer device (1) and the connection of the first electrical device by monitoring a slow blank pin of the first SCART input, and

characterized by

- switching means (X1) which switches off said Video Buffer and Filter section (5) when said VCR-input and power control section (7) detects that said electrical consumer device (1) is in Stand-by mode and first electrical device is not connected to said SCART input and which switches on said Video Buffer and Filter section (5) when said VCR-input and power control section (7) detects that first electrical device is connected to said first SCART input."

XI. Claim 1 of the auxiliary request reads as follows (amendments with respect to claim 1 of the main request are underlined):

"Electrical consumer device (1) having a first and second SCART inputs for connection to a first electrical device and second electrical device respectively, said electrical consumer device (1) comprising a Power Supply Unit (8), an Audio and Video Switching Circuit section (4) wherein said Audio and Video Switching Circuit section (4) transfers signals from said first SCART input to a Video Buffer and Filter section (5) which is a means for noise coupling and conforming to the voltage level specifications and is connected to said second SCART input to allow for SCART Loop Through functionality, said electrical consumer device (1) additionally comprising:

- a VCR-input and power control section (7) which is means for monitoring the stand-by mode operation of said electrical consumer device (1) by monitoring a stand by signal of the electrical consumer device (1) and the connection of the first electrical device by monitoring a slow blank pin of the first SCART input, and

characterized by

- switching means (X1) which switches off said Video Buffer and Filter section (5) when said VCR-input and power control section (7) detects that said electrical consumer device (1) is in Stand-by mode and first electrical device is not connected to said SCART input and which switches on said Video Buffer and Filter section (5) by allowing transfer of power from said Power Supply Unit (8) to said Video Buffer and Filter section (5) when said VCR-input and power control section (7) detects that first electrical device is connected to said first SCART input, wherein said switching means (X1) is a P-Channel MOSFET whose Base is connected via resistors (R4 and R5) to the collectors of two switching NPN transistors (Q1 and Q2) whose emitters is connected to ground and whose bases is respectively connected to the first SCART input and to the Stand-by signal (9) so that when said two conditions of Stand-by mode and lack of connection of the second electrical device are met at the same time NPN transistors (Q1 and Q2) will be both switched off and switching means (X1) will be also switched off so that no power is supplied to said Video Buffer and Filter section (5)."

XII. With respect to the disclosure of document D2, the appellant argued that the main advantage of the claimed electrical consumer device was that two external devices could be connected to it via two SCART inputs without waking it up from its stand-by state. Since document D2 did not disclose two SCART inputs, this effect could not be achieved starting from this document (see the statement of grounds of appeal, page 4, first full paragraph).

Reasons for the Decision

1. The appeal is admissible.

2. The invention

2.1 The patent underlying the impugned decision proposes a solution for reducing the power consumed by an electrical consumer device (such as a set-top box) having "SCART Loop-Through functionality" when it is in a stand-by state.

2.2 An electrical consumer device has "SCART Loop-Through functionality" if it comprises means for transmitting audio-video data from a SCART input (for example, connected to a video cassette recorder) to a SCART output (for example, connected to a television apparatus) (see Figure 1). Such means include circuitry for buffering and filtering the video data.

2.3 The proposed solution is to supply the video buffer and filter section with power only if it is detected that an external device is connected to the SCART input.

3. Main request - Inventive step, Article 56 EPC

3.1 According to Article 56 EPC, an invention is to be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

3.2 Document D2 can be considered the closest prior art within the context of the established "problem and solution approach" for the assessment of whether an invention involves an inventive step (Case Law of the Boards of Appeal of the European Patent Office ("Case Law"), 9th edition 2019, I.D.2).

3.3 Document D2 discloses an electrical consumer device (see document D2a, page 2, second paragraph, "set-top box") having a SCART input for connection to an electrical device (see document D2a, page 2, eighth paragraph, "SCART socket" and fourth paragraph, "TV ... HDD ... DVD-RW") and a Power Supply Unit (D2a, page 2, fifth paragraph, "12V power is supplied").

The electrical consumer device disclosed in document D2 comprises an audio and video switching circuit section (see document D2a, page 2, two last full paragraphs) that transfers broadcast signals received by the electrical consumer device to a video buffer and filter section which is a means for noise coupling and conforming to the voltage level specifications (see Figure 1 and document D2a, page 2, last full paragraph, "video / audio processing unit 108 and 110") and is connected to the SCART input to allow for "Loop-Through functionality" (see Figure 1 and document D2a, first and fifth paragraphs, "loop-through function").

The electrical consumer device disclosed in document D2 additionally comprises a power control section (see document D2a, page 3, second full paragraph, "Microcomputer 116") which is a means for monitoring the stand-by mode operation of the electrical consumer device by monitoring a stand-by signal of the electrical consumer device and the connection of the first electrical device by monitoring a pin of the first SCART input (D2a, page 2, seventh and eighth paragraphs, "in a standby mode", "using the SCART socket of the slow loop-through switching pin functions").

The electrical consumer device disclosed in document D2 further comprises switching means (see document D2a, page 3, second full paragraph, "Microcomputer 116"). This means switches off the video buffer and filter section when the VCR-input and power control section detects that the electrical consumer device is in stand-by mode and that the first electrical device is not connected to the SCART input. It switches on the video buffer and filter section when the VCR-input and power control section detects that the first electrical device is connected to the SCART input (see document D2a, page 2, sixth to eighth paragraphs).

3.4 The device defined in claim 1 differs from the device disclosed in document D2 in that:

(a) The "Loop-Through functionality" is provided between two external devices connected to the electrical consumer device via two SCART inputs. In document D2, the signal transmitted to the SCART output - to which an external device (such as a TV, an HDD or a DVD-RW, see document D2a, page 2, fourth paragraph) is connected - is a broadcast signal, not a signal received via a first SCART input (see Figure 1).

(b) The connection of an external device to the electrical consumer device is monitored by monitoring a slow blank pin of the SCART input.

3.5 The objective technical problem to solve starting from document D2 can be formulated as how to extend the functionality of the set-top box.

3.6 In the statement of grounds of appeal (page 4, first full paragraph), the appellant argued that the main advantage of the claimed electrical consumer device was that two external devices could be connected to it via two SCART inputs without waking it up from its stand-by state. Since document D2 did not disclose two SCART inputs, this effect could not be achieved starting from this document.

3.7 The board has not been convinced by this argument.

Document D2 mentions that several external devices, such as a TV apparatus, an HDD or a DVD-RW, may be connected to the set-top box (see D2a, page 2, fourth paragraph). Document D2 moreover only discloses SCART sockets for connecting external devices to the set-top box. To allow a user to watch, on the TV apparatus, programmes recorded on the HDD (or the DVD-RW), it would have been obvious to provide an additional SCART "Loop-Through functionality" from the HDD (or the DVD-RW) to the TV apparatus.

3.8 This additional "SCART loop" would necessarily comprise an audio and video switching circuit section since audio and video signals are transmitted over different pins in a SCART socket. It would also necessarily comprise a video buffer and filter section to convert the audio and video signals in the format specified by the SCART standard.

3.9 The person skilled in the art would furthermore have applied the power management solution disclosed in document D2 to any transmission "loop" within the set-top box and thus also to any additional "SCART loop".

3.10 Additionally, the patent itself indicates that the slow blank pin of a SCART socket is "a standard SCART Interface (pin#8) signal for detection of a connection and aspect ratio of transferred video" (paragraph [0018], point [6])). Hence, this difference cannot contribute to an inventive step either.

3.11 The board has therefore come to the conclusion that the impugned decision was correct in concluding that the subject-matter of claim 1 lacked an inventive step in view of the disclosure of document D2 and the common general knowledge of the person skilled in the art.

3.12 Since for this reason alone the patent cannot be maintained as granted, the board does not consider it meaningful to assess whether another ground prejudices its maintenance. In particular, it is not necessary to decide whether the subject-matter of claim 1 would have also been obvious having regard to the disclosure of document D1 and the common general knowledge of a person skilled in the art.

4. Admission of the auxiliary request - Article 12(4) RPBA 2007

4.1 According to Article 12(4) RPBA 2007 which applies to the auxiliary request (see Article 25(2) RPBA 2020), the board has the discretionary power to hold inadmissible requests which could have been presented in the first-instance proceedings.

Since almost every claim request could have been presented before the department of first instance, the question is whether the situation was such that this request should have been filed during the first-instance proceedings (see Case Law, V.A.4.11.1 and V.A.4.11.3 d)).

4.2 The board has come to the conclusion that the auxiliary request could - and should - have been presented during the opposition proceedings. All the grounds, facts and evidence underlying the decision of the opposition division were laid out in the notice of opposition and the letter of the respondent dated 30 April 2014. They were thus known to the appellant. In its letter dated 30 April 2014, the respondent had provided further arguments as to why the subject-matter of claim 1 of the granted patent lacked inventive step in view of document E1 and a new, prima facie very relevant, document cited as document D2. The appellant should have expected that the opposition division would deem the sole request then on file not to be allowable in view of this prima facie very relevant document and should have prepared its position in view of this inventive-step objection. Moreover, the features of dependent claims 4 and 5 of the patent as granted (which are comprised in claim 1 of the auxiliary request) were explicitly dealt with in the notice of opposition (see page 21). If the appellant considered that these particular dependent claims emphasised the "novel and inventive features of the present patent" (see page 4 of the statement of grounds, penultimate paragraph) such that they could serve as a fallback position for a maintenance of the patent in amended form, it should have sought a decision of the opposition division on the current auxiliary request. Instead, the appellant chose not to react to the letter of the respondent dated 30 April 2014.

4.3 Admitting the auxiliary request in the appeal procedure would force the board to give a first ruling on the new subject-matter, thus depriving the respondent of the opportunity of having the matter reviewed by two instances, or to remit the case to the department of first instance. This would be at odds with the principle of procedural efficiency.

4.4 The board has therefore decided not to admit the auxiliary request into the appeal proceedings.

5. Since none of the appellant's requests is allowable, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.