T 0592/13 (Disambiguation and prediction routines for reduced keyboard/BLACKBERRY) 11-05-2017

1. The appeal is admissible.

2. Non-attendance at the oral proceedings

The appellant decided not to attend the scheduled oral proceedings and provided written submissions including an amended claim request in response to the inventive- step objection raised in the board's communication under Article 15(1) RPBA.

Pursuant to Article 15(3) RPBA, the board is not "obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned who may then be treated as relying only on its written case".

In the present case, the board considered it expedient to maintain the date set for oral proceedings and was in a position to announce a decision at the end of those.

3. Main request

3.1 This procedural request is directed to setting aside the decision under appeal and to remitting the case to the examining division for further prosecution.

3.2 The appellant argued that the communication under Article 15(1) RPBA contained no comments on the merits of the decision under appeal, or on its submission in the statement setting out the grounds of appeal, but instead raised new objections based on newly cited document D6. The appellant further argued that it had received the above-mentioned communication on 15 March 2017, so that less than three weeks had been available to report the communication to the applicant, study the documents, formulate a response for the applicant and file written submissions one month in advance of the hearing. Therefore, a remittal would provide the appellant with first-instance examination based on newly cited document D6, and, if needed, appeal at second instance, in accordance with the principles of G 0009/91.

3.3 The board would first point out that the findings of G 0009/91 apply to opposition proceedings only. Rather, G 0010/93 has confirmed that, in an appeal from a decision of an examining division refusing a European patent application, the board of appeal has the power to examine whether the application meets requirements of the EPC that the examining division did not take into consideration. In the present case the board considered while studying the appeal that document D6 was much more relevant to the issue of inventive step than the other documents, in particular D1 and D2, used by the examining division in its Article 56 EPC objection which led to the refusal of the application.

Further, it is important to note that document D6 was cited during the prosecution of European patent application Nr. 07115471.0 filed by the same applicant, on the same date, and which comprised the same description and drawings as the present application. Also the representative throughout the prosecution of this application was the same as in the present case.

D6 had been cited as an "X" document in the search report for application 07115471, issued in

the same month (April 2008) as the search report for the present application, and was the basis for an inventive-step objection. It is thus clear, in the board's view, that the appellant, or at least its representative, was aware of the existence and pertinence of D6 with respect to the subject-matter of the present application long before the board issued its communication.

Nor did the appellant request a postponement of the oral proceedings, which could have given it the time it says it needed to study the document. It also decided not to attend the oral proceedings on 11 May 2017 which would have given it a further opportunity to present its case. In addition, the level of technical complexity of both the present application and document D6 is such that seven weeks before oral proceedings seems a reasonable amount of time for a technical study of the case. This is corroborated by the fact that the appellant provided a thorough analysis of D6 with respect to the first and second auxiliary requests in response to the board's communication.

For these reasons, the board judges that a remittal to the examining division is not appropriate in the present case and decides not to allow the appellant's main request.

4. First auxiliary request

D6 discloses in column 6, lines 17 to 45 a method for enabling input on a handheld electronic device with a reduced keyboard (see Figure 1A) wherein, after a user has entered initial characters, i.e. a text object, on the display using prior-art techniques, the device displays candidate words matching the initial characters, i.e. proposed completions of the text object. As an example, D6 describes that if the user has entered the letters "PLE" in the display, a dictionary look-up routine may display the word "PLEASE", "PLEAD, and "PLEDGE" on a portion of the display (see Figure 4).

The differences between the subject-matter of claim 1 and the disclosure of D6 are thus that:

a) the prior-art technique for entering the initial letters is explicitly defined as being a disambiguation scheme of ambiguous input, outputting a list comprising a number of disambiguated interpretations, and

b) the device does not display a list of proposed completions when the last input of the user is at a location disposed elsewhere than at the terminal end of the displayed text object.

Features a) and b) are juxtaposed in the claim since the trigger for displaying a completion list defined in feature b) does not depend on the kind of prior-art technique used for entering the text object.

As to feature a), it is a common measure in the field of hand-held devices with reduced keyboards, such as the one shown in Figure 1A of D6, to use the so-called T9 disambiguation scheme illustrated in D4 (see the abstract). The skilled person would thus obviously consider using the T9 scheme as a technique for entering the text object.

Feature b) defines in substance that the prediction routine implemented on the hand-held device has two modes of functioning, the first mode involving the output of a disambiguation list and a prediction list, the second mode involving the output of a disambiguation list only, the activation between the two modes being determined by whether or not the input is located at the end of the displayed text.

D6 however discloses the possibility of having the completion list not displayed in order to avoid confusion. This last mode is activated when no match with the user's wish occurs after a preset number of characters has been entered (see column 7, lines 6 to 9). Thus, two modes are also provided by the system of D6, one with the display of a completion list and one without.

Activating the mode without completion list based on the location of the input in the displayed text, as defined by feature b) represents, in the board's view, a mere alternative for the skilled person. In that respect, the appellant argued that the approach of feature b) displayed more meaningful results and thus provided an improved interface for entering text on a hand-held device. In particular, the appellant relied on paragraph [0048] of the description which stated that the quantity of displayed completions could be confusing to the user. In the board's view however, the activation of the mode with no completion list as defined in feature b) does not provide the claimed advantage in all cases. In particular, the insertion of an input at the beginning of a text object or in the middle of it may well be the last intended input of the user, for which he may wish to get a list of corresponding completed words. Therefore, the board holds that feature b) represents a mere alternative providing advantages and drawbacks mainly based on the user's preferences and thus with no inventive merit in itself.

For these reasons the board judges that the subject-matter of claim 1 does not involve an inventive step, having regard to the disclosure of D6 and common general knowledge, as exemplified by D4 (Article 56 EPC).

5. Second auxiliary request

5.1 Admissibility

This request has been submitted in response to the communication of the board pursuant to Article 15(1) RPBA, i.e. after the statement setting out the grounds of appeal. Since it has been filed in order to overcome the objection under Article 56 EPC based on D6 and raised in that communication, and considering that its technical complexity is limited, the board decides to admit this request into the proceedings under Article 13(1) RPBA.

5.2 Claim 1 adds in substance to claim 1 according to the first auxiliary request a feature defining a second condition for activating the mode without display of the completion list. As already stated in point 4 above, the board holds that an alternative way of actuating the mode without completion list, based on a particular input on the reduced keyboard during entering a text, provides advantages and drawbacks which depend on the user's preferences. Therefore, the board holds that the above-mentioned added feature cannot contribute, in combination with the other features of the claim, to inventive step (Article 56 EPC).

Thus, the board judges that the subject-matter of claim 1 does not involve an inventive step, having regard to the disclosure of D6 and common general knowledge, as illustrated by D4 (Article 56 EPC).