T 1506/23 () of 5.5.2025

Summary of Facts and Submissions

I. The appeal is against the examining division's decision to refuse European patent application No. 20 179 016.9, published as EP 3 790 283 A1.

II. The prior-art documents cited in the decision under appeal were the following:

D1: EP 3 306 892 A1

D2: US 2018/0122378 A1

D3: WO 2017/197184 A1

III. The decision under appeal was based on the grounds that

(a) claim 1 of the main request then on file was not clear within the meaning of Article 84 EPC and its subject-matter was not new within the meaning of Article 54 EPC, and

(b) the subject-matter of claim 1 of the auxiliary request then on file did not involve an inventive step within the meaning of Article 56 EPC.

IV. The applicant (appellant) filed notice of appeal. With the statement of grounds of appeal, the appellant made the auxiliary request on which the decision under appeal was based its sole request in the appeal proceedings. The appellant requested that the decision under appeal be set aside and that a European patent be granted on the basis of the claims of its sole request. As an auxiliary measure, the appellant requested oral proceedings. It provided arguments to support its opinion that the claims of its sole request met the requirements of Article 56 EPC.

V. The appellant was summoned to oral proceedings. In a communication under Article 15(1) RPBA, the board gave the following preliminary opinion.

The examining division's reasoning as to why the sole request was not allowable was insufficient to such an extent that the board was not able to examine whether or not the decision was justified. Hence, the requirements of Rule 111(2) EPC were not met. The board was minded to exercise its discretion under Article 111(1) EPC by remitting the case to the department of first instance for further prosecution. The board was also minded to reimburse the appeal fee in full under Rule 103(1)(a) EPC. The appellant was invited to comment on the preliminary opinion and to inform the board whether the auxiliary request for oral proceedings would be maintained, since oral proceedings did not appear to be expedient under the circumstances outlined above.

VI. By letter of reply dated 7 February 2025, the appellant withdrew its auxiliary request for oral proceedings. The appellant agreed that the case could be remitted to the department of first instance for further prosecution.

VII. Claim 1 of the sole request reads as follows:

"A method (500), comprising:

at a first electronic device, the first electronic device having one or more processors and memory storing instructions for execution by the one or more processors:

receiving (504) a voice command from a first user of a second electronic device, wherein the second electronic device is distinct from the first electronic device;

determining (508) from content in the voice command:

one or more characteristics of a target device; and

media content to be played on the target device;

identifying (516) as the target device, using the one or more characteristics of the target device determined from the voice command, a third electronic device that is distinct from the first electronic device and the second electronic device; and

in response to identifying the third electronic device (526):

modifying (528) account information for the third electronic device to associate the third electronic device with the first user, including determining that a second user, distinct from the first user, is logged into the third electronic device, and updating, without user intervention, the account information for the third electronic device so that the first user is logged into the third electronic device (530) instead of the second user; and

transmitting (532) instructions to the third electronic device to play the media content."

Reasons for the Decision

1. The appeal is admissible.

2. Sole request - insufficient reasoning of the objection of lack of inventive step (Rule 111(2) EPC)

2.1 According to Rule 111(2) EPC, decisions of the European Patent Office which are open to appeal must be reasoned.

The reasoning given in a decision open to appeal has to enable the appellant and the board of appeal to examine whether or not the decision was justified (see Case Law of the Boards of Appeal of the European Patent Office, 10th edition, 2022 ("Case Law"), III.K.3.4.1).

A decision should discuss in detail the facts, evidence and arguments which are essential to the decision. It must contain the logical chain of reasoning which led to the conclusion in the case (see Case Law, III.K.3.4.3).

In order to give the applicant a fair chance to challenge the findings of the examining division, the latter should, as a rule, at least identify where in the closest prior-art document each of the features of the claim in suit is disclosed (see e.g. T 70/02, Reasons 6).

2.2 In the decision under appeal, the examining division held that each of documents D1 to D3 disclosed the following feature of claim 1:

"modifying (528) account information for the third electronic device to associate the third electronic device with the first user"

According to claim 1, this step of modifying the account information for the third electronic device occurs in response to identifying the third electronic device using device characteristics determined from a voice command.

The examining division referred to:

(a) D1, paragraphs [0025], [0052] and [0056]

(b) D2, paragraphs [0007], [0031], [0053] and [0054]

(c) D3, paragraphs [0004] and [0068]

(see the decision under appeal, point 1.2, which relates to the request that was then the main request but also applies to the features of the request that was then the auxiliary request, with respect to which the decision under appeal only discusses the differences relative to the main request).

2.3 Document D1

2.3.1 In paragraph [0025], it is disclosed that a user (a "first user" in the wording of claim 1) may use a device (a "second electronic device" in the wording of claim 1) as a remote control to control a media playback at another device ("a third electronic device" in the wording of claim 1).

This paragraph does not disclose that the other device (the "third electronic device" in the wording of claim 1) is associated with the user (the "first user" in the wording of claim 1).

2.3.2 Paragraph [0052] discloses that a user (a "first user" in the wording of claim 1) can select on a website a device to present media content ("a third electronic device" in the wording of claim 1) from a menu, wherein "[i]n some implementations, the menu only includes those devices that are currently available to present media (e.g., those that are currently 'online' and/or logged in to the same account associated with the viewer of the web page".

Thus, this paragraph discloses that the devices a user can select may be restricted, for example to those that are currently associated with the user.

If the user's choice is restricted in this manner, account information for the "third electronic device" will not be modified to associate the "third electronic device" with the "first user", since it already is associated therewith.

If the user's choice is not subject to this restriction, it is not apparent that a device selected by the user must fulfil this restriction and that its account information must be modified accordingly.

2.3.3 Paragraph [0056] discloses that "[i]n some implementations, both the first electronic device 102-1 and the second electronic device 106-1 are connected to the same user account (or associated user accounts) on the server system 120".

This paragraph discloses that the first electronic device 102-1 (a "second electronic device" in the wording of claim 1) and the second electronic device 106-1 (a "third electronic device" in the wording of claim 1) may be associated with the same user account (the account of the "first user" in the wording of claim 1).

In this situation, account information for the "third electronic device" will not be modified to associate the "third electronic device" with the "first user", since it already is associated therewith.

Furthermore, paragraph [0056] does not disclose that other situations, namely when the first electronic device 102-1 and the second electronic device 106-1 are not associated with the same user account, would not be possible or would need to be changed.

2.3.4 Since none of the cited paragraphs refers to the concept of modifying account information and the examining division did not explain why it was of the opinion that these passages disclosed modifying account information, it is not comprehensible why the examining division believed that paragraphs [0025], [0052] and [0056] of document D1 disclosed the feature quoted in point 2.2 above.

2.4 Document D2

2.4.1 Paragraph [0007] discloses that a voice assistance server system (a "first electronic device" in the wording of claim 1) can determine a user voice request (a "voice command from a first user" in the wording of claim 1), e.g. a media playback request, based on a voice input recorded at a voice-activated electronic device (a "second electronic device" in the wording of claim 1). The voice assistance server system then directs the user voice request to a target device (a "third electronic device" in the wording of claim 1) as indicated by the voice input.

This paragraph does not disclose that the target device (the "third electronic device" in the wording of claim 1) is associated with the user (the "first user" in the wording of claim 1).

2.4.2 Paragraph [0031] discloses that "In some implementations, the voice-activated devices 104 and the controllable devices 106 are associated with a user having a respective account, or with multiple users (e.g., a group of related users, such as users in a family or in an organization; more generally, a primary user and one or more authorized additional users) having respective user accounts, in a user domain".

This paragraph discloses that the voice-activated devices 104 (a "second electronic device" in the wording of claim 1) and the controllable devices 106 (a "third electronic device" in the wording of claim 1) may be associated with the same user account (the account of the "first user" in the wording of claim 1).

In this situation, account information for the "third electronic device" will not be modified to associate the "third electronic device" with the "first user", since it already is associated therewith.

Furthermore, paragraph [0031] does not disclose that other situations, namely when the voice-activated devices 104 and the controllable devices 106 are not associated with the same user account, would not be possible or would need to be changed.

2.4.3 Paragraph [0053] discloses how the voice-activated devices 104 and controllable devices 106 are commissioned to the voice assistant service via a client device. As a result, a new electronic device 104/106 may join a wireless local area network.

This paragraph does not disclose that a controllable device 106 (a "third electronic device" in the wording of claim 1) is associated with a user.

The board notes that paragraph [0052] discloses that "[i]n some implementations, the controllable device(s) 106 and the voice-activated device(s) 104 are linked to each other in a user domain, and more specifically, associated with each other via a user account in the user domain. Information on the controllable device 106 (whether on the local network 108 or on the network 110) and the voice-activated device 104 (whether on the local network 108 or on the network 110) are stored in the device registry 118 in association with the user account".

In this situation, account information for a controllable device 106 (a "third electronic device" in the wording of claim 1) will not be modified to associate the "third electronic device" with the "first user", since it already is associated therewith.

Furthermore, paragraph [0052] does not disclose that other situations, namely when the voice-activated devices 104 and the controllable devices 106 are not associated with the same user account, would not be possible or would need to be changed.

2.4.4 Paragraph [0054] discloses that "[i]n some implementations, additional user domain information is entered on the user interface displayed on the client device 103, and used to link the new electronic device 104/106 to an account in a user domain".

This paragraph discloses that a new electronic device may be put into the same setting as described in paragraph [0052] and thus the same conclusion applies as that set out in point 2.4.3 above.

In particular, it is not disclosed that a new electronic device is linked to a user account in response to both receiving a voice command and identifying a "third electronic device".

2.4.5 Since none of the cited paragraphs refer to the concept of modifying account information and since the examining division did not explain why it was of the opinion that these passages disclosed modifying account information, it is not comprehensible why the examining division believed that paragraphs [0007], [0031], [0053] and [0054] of document D2 disclosed the feature quoted in point 2.2 above.

2.5 Document D3

2.5.1 Paragraph [0004] discloses that a voice-activated electronic device (a "second electronic device" in the wording of claim 1) is configured to record a voice message from which a cloud cast service server (a "first electronic device" in the wording of claim 1) determines a user voice request, e.g. a media play request, and then directs the user voice request to a destination cast device coupled to a media display device (both of these devices may be regarded as a "third electronic device" in the wording of claim 1) as indicated by the voice message.

This paragraph does not disclose that a cast device or a media display device coupled thereto (a "third electronic device" in the wording of claim 1) is associated with a user.

2.5.2 Paragraph [0068] discloses that "[t]he cast device 108 is configured to execute a media play application for controlling the designated display device to display media content received from a media content host. In some implementations, both the electronic device 190 and the cast device 108 are associated with a user account of the user domain".

This paragraph discloses that a voice-activated device 190 (a "second electronic device" in the wording of claim 1) and a cast device 108 (a "third electronic device" in the wording of claim 1) may be associated with the same user account (the account of the "first user" in the wording of claim 1).

In this situation, account information for the "third electronic device" will not be modified to associate the "third electronic device" with the "first user", since it already is associated therewith.

Furthermore, paragraph [0068] does not disclose that other situations, namely when the voice-activated device 190 and the cast device 109 are not associated with the same user account, would not be possible or would need to be changed.

2.5.3 Since none of the cited paragraphs refer to the concept of modifying account information and since the examining division did not explain why it was of the opinion that these passages disclosed modifying account information, it is not comprehensible why the examining division believed that paragraphs [0004] and [0068] of document D3 disclosed the feature quoted in point 2.2 above.

2.6 In view of all of this, the board is of the opinion that the examining division did not provide reasons why it believed that the cited paragraphs of documents D1 to D3 disclosed the feature quoted in point 2.2 above. This applies in particular because the examining division only referred to these paragraphs in the decision under appeal and did not provide any further explanations.

2.7 This lack of reasoning is all the more serious because the appellant repeatedly submitted detailed arguments in this regard, see

(a) the appellant's letter dated 18 August 2021, "Novelty" section on pages 1 to 3

(b) the appellant's letter dated 25 March 2022, "Novelty" section on pages 5 to 7

(c) the appellant's letter dated 23 January 2023, "Novelty" section on pages 7 to 13

None of these arguments were discussed in the decision under appeal.

2.8 Therefore, the examining division's reasoning as to why the subject-matter of claim 1 of the sole request lacked inventive step is insufficient to such an extent that the board cannot examine whether or not the decision was justified. Hence, the requirements of Rule 111(2) EPC are not met.

2.9 Moreover, for the reasons set out in point 2.7 above, the board is of the opinion that the appellant's right to be heard under Article 113(1) EPC has been infringed. Indeed, the party's right to be heard encompasses the right to have its comments duly considered (see Case Law, III.B.2.4.2 and III.K.3.4.2), which the examining division failed to do. The infringement of the appellant's right to be heard constitutes a substantial procedural violation (see Case Law, III.B.2.4.2).

3. Remittal to the department of first instance (Article 111(1) EPC and Article 11 RPBA)

3.1 According to Article 111(1), second sentence, EPC, when deciding upon the appeal, the board may either exercise any power within the competence of the department which was responsible for the appealed decision or remit the case to that department for further prosecution.

3.2 The board is not in a position to assess, on the basis of the examining division's reasoning, whether the examining division's conclusion that the subject-matter of claim 1 of the sole request lacked inventive step was justified (see point 2.8 above).

3.3 Thus, if the board were to decide on the substance of the case, and not remit it to the examining division, the board would first have to carry out a full examination of the application as to the patentability requirements. This, however, is primarily the task of the examining division (see decision G 10/93, OJ EPO 1995, 172, point 4 of the Reasons).

In particular, it appears that the examining division has not yet identified all of the relevant prior art. This is exemplified by the fact that document US 2014/0196075 Al, which was cited in parallel US proceedings, discloses the concept of modifying user account information. Particularly Figure 5 and the corresponding paragraphs [0100] to [0121] of the description of that document appear to be pertinent to the feature of claim 1 quoted in point 2.2 above as well as to the subsequent features of claim 1. In this situation, the board is of the opinion that a further search is appropriate, which should be carried out by the examining division.

3.4 The examining division's deficient examination of the sole request with respect to inventive step, which amounts to a fundamental deficiency in the proceedings before it (see point 2.9 above), constitutes a special reason within the meaning of Article 11 RPBA. Therefore, the board remits the case to the examining division for further prosecution in exercise of its discretion under Article 111(1) EPC.

4. Reimbursement of the appeal fee (Rule 103(1)(a) EPC)

4.1 Under Rule 103(1)(a) EPC, the appeal fee is reimbursed in full where the board deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

4.2 Since the decision under appeal involved a substantial procedural violation (see point 2.9 above), the board finds that the appeal is allowable and that the reimbursement of the appeal fee is equitable.

5. The appellant withdrew its auxiliary request for oral proceedings and agreed that the case could be remitted to the examining division for further prosecution. Therefore, the board is in a position to decide on the case without holding oral proceedings.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution.

3. The appeal fee is to be reimbursed.