T 2022/16 (Multi-stage coding II/QUALCOMM) of 19.2.2019

Summary of Facts and Submissions

I. The appeal lies from the decision of the Examining Division to refuse European patent application No. 10013232.3, filed as a divisional of European patent application 02794439.6.

II. In the decision under appeal, the Examining Division considered that the subject-matter of the independent claims of a sole request extended beyond the content of the parent application (Article 76(1) EPC) and that the sole request did not fulfil the requirements of Article 84 EPC.

In particular, the Examining Division found that the terms "dynamic encoder" and "static decoder" did not have a standard meaning, and the use of the generic expressions "static" and "dynamic" rendered all claims containing those wordings unclear. In claims 6, 14 and 15 it was unclear what the condition of a "complete decoding process" was.

III. In the statement of grounds of appeal, the then appellant, Digital Fountain, Inc., requested that the decision be set aside and that a patent be granted on the basis of a main request consisting of the set of claims considered in the decision under appeal and resubmitted with the grounds of appeal as annex A, or on the basis of either the first or second auxiliary request submitted with the grounds of appeal as annexes B and C.

IV. With effect from 19 April 2018, the EPO registered a transfer of the application to QUALCOMM Incorporated, which thereby acquired the status of appellant.

V. In a communication accompanying a summons to oral proceedings, the Board was of the preliminary view that the statement of grounds of appeal did not fulfil the requirements of Rule 99(2) EPC because it did not address the ground for refusal based on lack of clarity and that, consequently, the appeal had to be rejected as inadmissible under Rule 101(1) EPC.

The Board was also of the preliminary view that in case of the appeal being considered admissible, none of the requests seemed allowable.

VI. With a letter of reply, the appellant filed further requests corresponding to amended versions of the main request and first and second auxiliary requests as annexes A', B' and C'.

VII. Oral proceedings were held on 18 February 2019 and continued the next day. At the end of the oral proceedings, the chairman pronounced the Board's decision.

VIII. The appellant's final requests were that the decision under appeal be set aside and that a patent be granted on the basis of:

- the claims of the main request filed with the statement of grounds of appeal as annex A,

- the claims filed with the letter of 19 January 2019 as annex A',

- the claims of the first auxiliary request filed with the statement of grounds of appeal as annex B,

- the claims filed with the letter of 19 January 2019 as annex B',

- the claims of the second auxiliary request filed with the statement of grounds of appeal as annex C, or

- the claims filed with the letter of 19 January 2019 as annex C'.

IX. Claim 1 of the main request (annex A) reads as follows:

"A method of encoding data for transmission from a source to a destination over a communications channel, the method comprising:

generating a plurality of redundant symbols using a static encoder, the static encoder receiving a plurality of input symbols, the plurality of input symbols generated from data to be transmitted, the static encoder including a redundant symbol generator that generates the plurality of redundant symbols based on the input symbols; and

generating a plurality of output symbols using a dynamic encoder, the dynamic encoder receiving the plurality of input symbols and the plurality of redundant symbols, the dynamic encoder including an output symbol generator that generates the plurality of output symbols from a combined set of symbols, the combined set comprising symbols including the input symbols and the redundant symbols, wherein values of output symbols depend on values of symbols in the combined set of symbols while the number of output symbols is independent of the number of symbols in the combined set of symbols."

Claim 6 of the main request reads as follows:

"A method of decoding output symbols transmitted over a communications channel, the method comprising:

receiving a plurality of encoded output symbols and corresponding keys from the communications channel, wherein a key is determinable from each of the plurality of encoded output symbols and the number of distinct keys is independent of the number of input symbols to be recovered;

decoding at least some of the encoded output symbols using a dynamic decoder and the corresponding keys to recover a first set of input symbols and at least some redundant symbols used in the creation of a first subset of the encoded output symbols;

determining whether the decoding process is complete; and

if the decoding process is not complete, decoding at least some of the encoded output symbols using a static decoder to recover a second set of input symbols used in the creation of a second subset of the encoded output symbols that were not decoded by the dynamic decoder, and wherein

the number of the encoded output symbols decoded is dependent on a desired degree of accuracy to which the static decoder and the dynamic decoder can recover input symbols that were used to generate the encoded output symbols."

X. Claim 1 of the first auxiliary request (annex B) differs from that of the main request in that the claim part starting with "wherein values of output symbols ..." has been replaced with "wherein there is no upper or lower bound on the number of output symbols".

Claim 6 of the first auxiliary request differs from that of the main request in that the text ", wherein a key is determinable [...] to be recovered" has been deleted.

XI. Claim 1 of the second auxiliary request (annex C) differs from that of the main request in that the text "while the number of output symbols is independent of the number of symbols in the combined set of symbols" has been replaced with "while the number of possible output symbols is much larger than the number of symbols in the combined set of symbols".

Claim 6 of the second auxiliary request differs from claim 6 of the main request in that the text "wherein a key is determinable [...] to be recovered" has been replaced with "wherein a key is determinable from each of the plurality of encoded output symbols and the number of possible output symbols is much larger than the number of input symbols to be recovered".

XII. The other claims of the above requests are not relevant to this decision. The same holds true for the requests filed with the letter of 19 January 2019 in reply to the Board's communication.

XIII. The appellant's arguments, where relevant to this decision, are addressed in detail below.

Reasons for the Decision

Admissibility of the appeal

1. Under Article 108 EPC, third sentence, a statement of grounds of appeal shall be filed within four months of notification of the decision. According to Rule 99(2) EPC, in the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended. If this requirement is not complied with before the expiry of the time limit for filing the statement of grounds of appeal, the appeal is to be rejected as inadmissible (Rule 101(1) EPC).

The statement of grounds of appeal is to contain a party's complete case and to set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld (Article 12(2) RPBA). For the statement of grounds of appeal to comply with Rule 99(2) EPC, it has to address in sufficient detail each of the grounds for the decision. A ground can be addressed either by amending the claims and explaining why the ground for the decision no longer applies, or by giving arguments why the objection on which the ground was based is incorrect (see T 1187/04 of 6 December 2006, reasons 1.1 and 1.2; T 305/11 of 26 April 2016, reasons 1.1; and T 899/13 of 29 January 2014, reasons 2.1).

2. The present application was refused for containing subject-matter extending beyond the content of the parent application as filed (Article 76(1) EPC) and for lack of clarity of the claims (Article 84 EPC). In the statement of grounds of appeal, the appellant addressed the objection under Article 76(1) EPC but did not provide any reasons with regard to lack of clarity.

2.1 The decision under appeal considered, under point 2 titled "Article 84 EPC", that the terms "dynamic encoder" and "static decoder" did not bear any standard meaning. The terms "static" and "dynamic" were generic terms and their use in the claims rendered the definition of the subject-matter claimed unclear, contrary to Article 84 EPC.

It was not clear either what the term "complete decoding process" used in independent claims 6, 14 and 15 meant. In particular, it was not apparent from claim 6 whether "decoding at least some of the encoded output symbols [...]" qualified as a complete or an incomplete decoding process.

2.2 The claims of the main request filed with the grounds of appeal are the same as those considered in the decision under appeal, and therefore still use the terms "dynamic encoder", "static decoder" and "complete decoding process" in the same way. Claims 1 and 6 of either of the two auxiliary requests filed with the statement of grounds of appeal use those terms in essentially the same manner without additionally defining those features. Therefore, the ground of lack of clarity has not been overcome by amending the claims.

The statement of grounds of appeal does not explain why those terms should be considered to have a clear meaning in the context of the claims. It refers to "earlier responses" and, in particular, to the appellant's letter of 28 July 2014 allegedly addressing further objections. However, mere references to earlier submissions are usually considered insufficient to substantiate the appeal in accordance with Rule 99(2) EPC. Furthermore, those letters do not provide any reasoning with regard to the lack-of-clarity objections of the contested decision concerning the terms "dynamic", "static" and "complete decoding process".

2.3 In its letter of reply to the Board's communication, the appellant did not provide any arguments with regard to the admissibility of the appeal.

At the oral proceedings on appeal, the appellant contended that during a telephone conversation in advance of the oral proceedings before the Examining Division, it had argued that "complete" was clear in the context of claim 6 as a whole. But the Examining Division had not dealt with those arguments. The decision under appeal merely repeated the reasoning of the communication accompanying the summons to oral proceedings. The Examining Division's reasoning was insufficient and the objection against the expression "complete decoding process" was objectively wrong.

The Board notes, however, that the applicant/appellant had never mentioned before that its arguments made in a telephone conversation, of which there is no record on file, had not been dealt with by the Examining Division. The appellant should therefore have dealt with all the grounds for refusal, even if the arguments in the decision under appeal merely repeated objections to which the appellant had already responded during the alleged telephone conversation.

The appellant's arguments that the reasoning in the decision under appeal was "insufficient" and "objectively wrong" are not convincing either. If the reasoning of the decision under appeal with regard to a particular ground is so deficient that it does not enable the appellant to file substantive arguments addressing the objection, the appellant may state so in the grounds of appeal and in that manner deal with the ground (see decision T 395/13 of 12 November 2014, reasons 1, for an example of insufficient reasoning of a decision under appeal). However, in the present case, it is clear from points 2.1 and 2.2 of the contested decision that lack of clarity is one of the grounds on which the refusal was based, and that lack of clarity was considered to be caused by the three features: "dynamic encoder", "static decoder" and "complete decoding process". The reasoning is intelligible and could have been dealt with by the appellant in its statement of grounds of appeal. In any event, in its statement of grounds of appeal the appellant did not object to a lack of reasoning of the contested decision.

2.4 A further argument advanced by the appellant was that in the statement of grounds of appeal the clarity objections had been implicitly dealt with in the context of the reasoning concerning added subject-matter.

The statement of grounds of appeal describes how the dynamic and static encoding work, citing passages of the description, and argues that the claimed subject-matter is supported by the description and does not contravene Article 76(1) EPC. However, it does not explain why the use of the three above-mentioned expressions, especially the phrase "complete decoding process", is clear in the context of the claims.

2.5 The Board therefore judges that the statement of grounds of appeal does not fulfil the requirements of Rule 99(2) EPC and that, consequently, the appeal has to be rejected as inadmissible under Rule 101(1) EPC.

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.