T 2021/15 (Parallel video encoding/MICROSOFT) of 1.10.2021

Summary of Facts and Submissions

I. This is an appeal against the decision of the examining division to refuse the European patent application No. 10759444.2.

II. The examining division found that the subject-matter of claim 1 of the main request lacked an inventive step (Article 56 EPC) over the disclosure of D1 (US 2008/310739 A1). The auxiliary request was not admitted for the reason that it related to unsearched subject-matter which did not combine with the originally claimed invention to form a single general inventive concept (Rule 137(5) EPC).

III. In the statement setting out the grounds of appeal, the appellant requested that the decision of the examining division be set aside and that a patent be granted on the basis of the refused main or auxiliary request, both filed on 20 March 2015.

IV. In a communication pursuant to Rule 100(2) EPC, the Board agreed with the examining division's assessment that the invention in claim 1 of the main request lacked an inventive step over D1. As for the auxiliary request, the Board considered Rule 137(5) EPC not to be applicable, and indicated that the case would likely be remitted to the examining division for further search.

V. In a letter of reply, the appellant stated that the main request would no longer be maintained if the Board remitted the auxiliary request to the examining division with an order to perform a search and provide an opinion. The precautionary request for oral proceedings was withdrawn under those conditions.

VI. Claim 1 of the auxiliary request reads:

A method for compressing a plurality of images (310) on a system (302) with a plurality of processors comprising:

dividing (402) each image of the plurality of images into a plurality of slices (312);

for each of at least two processors (308), associating (404) a thread per processor;

assigning (406) each slice to an associated thread;

for each slice, when the associated thread is executed on its corresponding processor, compressing the slice; and

sending each compressed slice along with an indication of which image it belongs to and where it belongs to within the image from a server of the system to a client, wherein slices from multiple images are sent interleaved.

VII. Claim 1 as originally filed reads:

A method for compressing an image (310) on a system with a plurality of processors comprising: dividing the image into a plurality of slices (312) (402);

for each of at least two processors (308), associating a thread per processor (404);

assigning each slice to an associated thread (406);

for each slice, receiving an indication that the slice has been processed (408); and

assembling the slices into a second image, the second image corresponding to the image being compressed (410).

VIII. Claim 13 as originally filed reads:

The system of claim 12, wherein sending each processed slice to a client comprises:

sending each slice with a corresponding indication of what part of the image that slice represents.

Reasons for the Decision

1. The examining division did not admit the auxiliary request for the reason that it related to unsearched subject-matter which did not combine with the originally claimed invention to form a single general inventive concept (Rule 137(5) EPC).

2. The examining division assessed whether an objection of lack of unity under Article 82 EPC would have arisen had the claims of the auxiliary request been present in the originally filed claim set. The assessment was based on a comparison between claim 1 of the auxiliary request and claim 1 as originally filed. Those claims were said to lack a technical relationship involving the same or corresponding special technical features (Rule 44 EPC).

3. It might well be that the examining division was right in that there is no general inventive concept linking claim 1 of the auxiliary request and claim 1 as originally filed. However, this is moot because claim 1 of the auxiliary request has at least one special technical feature in common with claim 13 as originally filed, namely "sending each slice with a corresponding indication of what part of the image that slice represents". This feature relates to the embodiment in which slices may be sent out of order and assembled by the client (see paragraph [0037] of the published application). Thus, there is no lack of unity between claim 1 of the present auxiliary request and claim 13 as originally filed.

4. Rule 137(5) EPC (first sentence) reads:

"Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions [emphasis added] to form a single general inventive concept."

When rejecting amended claims as inadmissible under this rule, it is not enough to show that an objection of lack of unity would have arisen if the amended claims had been part of the original claim set. It must be shown that the amended claim lacks unity with all claims in the original claim set, because each claim is part of the originally claimed "group of inventions". In other words, if there is unity with at least one of the original claims, Rule 137(5) EPC (first sentence) does not apply (see T 708/00 - Transmission frame/ALCATEL, Headnote I).

Since claim 1 of the auxiliary request relates to the same general inventive concept as claim 13, Rule 137(5) EPC (first sentence) does not apply.

5. The search covered claim 13 as originally filed and should therefore have covered claim 1 of the present auxiliary request. This subject-matter is therefore not "unsearched" in the sense of Rule 137(5) EPC. Nevertheless, the examining division apparently considered this subject-matter to be unsearched (see point 12.9 of the decision under appeal). Furthermore, claim 1 of the auxiliary request contains further features of the embodiment in paragraph [0037] that were not present in the originally filed claims. Therefore, a further search might be necessary. This constitutes a special reason for remitting the case in the sense of Article 11 RPBA 2020.

Order

For these reasons it is decided that:

1. The decision of the examining division is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the auxiliary request filed on 20 March 2015.