T 0140/21 (Scene graph/MICROSOFT) 14-06-2023

Reasons for the Decision

The application

1. The application relates to cross-platform data visualizations. It proposes the use of a common data description to support the visualization of data and interaction with it on various software platforms (e.g. Windows, iOS - paragraphs 2 and 6 of the description). More specifically, it proposes the use of a generic (metadata) "scene graph" to represent a user interface and of a scene graph processing layer which accesses the scene graph and renders it using platform specific rendering engines, such as OpenGL, XAML, DirectX, Cocoa/Quartz etc. (paragraphs 7 and 30).

1.1 The scene graph defines behaviors attached to graph nodes. These can serve, for instance, to define node animations or styles (font, colors etc.), or to specify how input gestures are handled, e.g. by invoking a particular command or action (paragraphs 39 to 41, 44 and 45). The scene graph processing layer can route and adjust the input gesture data in a manner consistent with the scene graph metadata (paragraphs 44 and 63).

Prior art

2. Document D1 describes a scalable graphical user interface (SGUI) system. It relies on a device and a platform independent hierarchical intermediate representation (a tree - paragraphs 77 and 78) of the application GUI which is transformed into a platform device specific representation, the latter being rendered on the target device platform (paragraphs 8, 9 and 58 to 67). The SGUI also provides for GUI events, which result from user interaction and may trigger different actions (paragraphs 52 and 96 to 100). One example implementation relies on Java and the Java Virtual Machine for portability to different platforms (paragraphs 44 and 45).

Main request

3. The Examining Division considered that claim 1 of the main request differed from D1 only "by specifying the technology used to render graphic data: OpenGL, XAML, DirectX, Cocoa/Quartz" (decision 11.1.7.2), that these technologies were commonly known, and that the selection of these technologies could not support the presence of an inventive step.

4. In its statement of grounds of appeal, the Appellant was of the opinion that it was not only the choice of technologies that was different. The feature "wherein the platform specific rendering sub-systems of different platforms vary based on the technology used to render graphics data, comprising at least two

of OpenGL, XAML, DirectX, Cocoa/Quartz.." (henceforth referred to as the "wherein" clause) made independent claim 1 "clearly restricted to platforms that at least vary with respect to the claimed technologies" (grounds of appeal page 3), whereas D1 only considered a variation with respect of the hardware (grounds of appeal, page 4).

5. In its preliminary opinion (point 5) the Board remarked that it was unclear how the "wherein" clause restricted the claimed invention, or whether at all. Claim 1 also defined "the scene graph processing layer accessing a generic scene graph from common code [...] the generic scene graph defining the data visualizations independent of any of a plurality of different platform specific rendering sub-systems". Since the scene graph was independent of any rendering sub-systems, the scene graph was not limited by the express specification of concrete rendering sub-systems that might be used.

6. During the oral proceedings before the Board the Appellant argued that the feature cited in the preceding paragraph (henceforth referred to as the independence feature) only implied some sort of "generic independence". The rendering sub-systems were defined by software and hardware and the scene graph might be independent only of hardware characteristics of the target platforms, for instance of resolution or scale of the different graphic elements, but not of the rendering software.

6.1 The independence feature could also not be construed to mean an independence of everything, as this could only be achieved by an empty graph. Some dependency had to be assumed.

6.2 In contrast, the "wherein" clause specified that the scene graph was independent of at least two software "technologies" used for rendering. This was effectively a limitation, because it implied that the graph could not contain any instruction related to these.

7. The Board notes that the claim is to a method "to be performed at a", i.e. one, "computer system" (under­lining by the Board). So, irrespective of the formu­lation of the "wherein" clause, a plurality of plat­forms (or even two of them) is not part of the claim.

7.1 The scene graph is stated to be "independent of any of a plurality of different platform specific rendering sub-system". In the Board's judgment, this expressly defines general, i.e. full, independence of any rendering sub-systems, be it in terms of hardware or in terms of software. The claimed scene graph will thus also be independent of any rendering software used for rendering, and in particular of any of the claimed ones. Hence the "wherein" clause does not restrict the claim any further.

7.2 A different way of looking at the matter is to note that here "independent of" is effectively a negative feature, which here has the function of a disclaimer: "not dependent" of. So the graph is first defined to be a scene graph, but not one of a first set constituted by the scene graphs dependent on any type of rendering technologies. The "wherein" clause then defines a scene graph, but not one of a second set constituted by the scene graphs dependent on some specific type of software rendering technologies. The second set is included in the first set, hence the second negative feature actually defines a broader set of possible scene graphs than the first one.

8. In conclusion, the "wherein" clause does not restrict claim 1. It is therefore redundant, which means that claim 1 lacks conciseness. In addition, as the preceding discussion has shown, redundancy of the wherein clause or its possible meaning within claim 1 is not self-evident and concerns a feature argued to be central for novelty and inventive step. Therefore, claim 1 does not comply with Article 84 EPC.

First auxiliary request

9. The Appellant argued novelty and inventive step (of the main request) in comparison with D1 only in view of the feature discussed above (the "wherein" clause), the other features being known from D1 (see 3 and 4 above). This feature being deleted, the Board thus finds the subject matter of claim 1 to lack novelty over D1.

Second auxiliary request

10. Claim 1 of this request also contains the "wherein" clause. It therefore does not comply with Article 84 EPC for the same reasons as those given in respect of claim 1 of the main request.

Third auxiliary request

11. This auxiliary request is based on the auxiliary request underlying the decision, which was "not admitted into the proceedings under Rule 137(3) EPC because the subject-matter of claim 1 [did] not comply with the requirements of Rule 137(5) EPC" (decision, reasons 12.1.5). As a reason it is stated (reasons 12.1.2) that "the amendment introduces features related to unsearched subject matter which does not combine with the originally claimed invention to form a single general inventive concept", and reference is made to the Guidelines for Examination, H-II, 6.2. So the Examining Division apparently meant to refer to Rule 137(5) EPC, first sentence.

11.1 Further, in its reasons the Examining Division argued that "original claim 1 was concerned with solving the problem of platform-independent graphics rendering, but the amended features are concerned with solving the different problem of handling and processing input gestures" (underlining by the Board). It is clear that this argument is not affected by the deletion of the "wherein" clause in the present third auxiliary request.

12. Rule 137(5) EPC, first sentence, states that "Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept." For this rule to apply, it must thus be shown (i) that the amended claims relate to unsearched subject-matter and (ii) that they lack unity with the originally claimed invention or group of inventions".

12.1 The reasoning of the Examining Division is deficient at least in what regards the question whether the amended claims were searched. The Examining Division stated that "original claim 1 was concerned with solving the problem of platform independent graphics rendering, but the amended features are concerned with solving the different problem of handling and processing input gestures" and that "These amended features could not have been expected to be searched since they do not relate to the originally claimed invention nor are they disclosed in combination with the originally claimed invention in a specific embodiment of the originally filed description".

12.2 The latter two assertions are inaccurate. Although the International Search Authority had identified three separate inventions, only the second and third of which contained the gesture-related features, all were even­tually searched (see the Written Opinion of the Inter­national Search Authority, 5 June 2014, Box No. IV and Box No. V). Moreover, original claim 10 contained both the gesture-related features and referred to "platform independent graphics rendering" (reciting a "generic scene graph [...] executable on a plurality of different technology platforms").

12.3 Original claim 10 having been searched, the Board has no doubt that the subject-matter of the claims of the third auxiliary request was also searched.

13. The Board concludes that Rule 137(5) EPC, first sentence, does not preclude consideration of the third auxiliary request. As the Examining Division justified their denial of consent under Rule 137(3) EPC merely with reference to Rule 137(5) EPC, this decision cannot stand.

Remittal

14. The Board notes that no claim with the new, gesture-related features has as yet been considered by the Examining Division in substance. In view of the primary object of the appeal proceedings to review the decision under appeal, Article 12(2) RPBA 2020, the Board considers that this first substantive assessment should be carried out by the Examining Division and deems this to constitute special reasons for remittal under Article 11 RPBA 2020.

14.1 At the same time, the Board notes that by setting aside the decision for the above reasons, it has not itself given consent to the present third auxiliary request. It is therefore up to the Examining Division during the further prosecution to decide again on their consent under Rule 137(3) EPC to this amendment.