T 1931/09 (User Interface/BLACKBERRY) 23-01-2014

Reasons for the Decision

1. The appeal is admissible. However, it is not allowable for the reasons which follow.

2. Non-attendance at oral proceedings

2.1 Article 15(3) RPBA stipulates that 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.

2.2 At the oral proceedings held as scheduled on 24 January 2014, nobody appeared on behalf of the appellant. The appellant's representative confirmed in a telephone conversation with the board's registrar during oral proceedings that he would not be attending the oral proceedings.

2.3 Having regard to the provisions of Article 15(3) RPBA, the board decided to continue the proceedings in the absence of the appellant who had been duly summoned. By not attending the proceedings the appellant effectively chose not to avail itself of the opportunity to present comments orally before the board but instead to rely on its written case as contained in statement setting out the grounds of appeal dated 11 September 2009 and the letter of 16 December 2013.

2.4 In the present case, the board was in a position to announce a decision at the conclusion of the oral proceedings as foreseen by Article 15(6) RPBA.

3. Article 12(4) RPBA

3.1 Pursuant to Article 12(4) RPBA an appeal board is empowered to hold inadmissible facts, evidence and requests which could have been presented in the first instance proceedings. The boards of appeal thus retain discretion, as a review instance, to refuse new material, including requests (claim sets) which ought to have been, but were not, submitted during first instance proceedings.

3.2 It follows from Article 12(4) RPBA that the admission of new requests in appeal proceedings, the purpose of which is mainly to review the decision of the department of first instance, is a matter for the board's discretion and not a right of any party. In particular, the board has the discretionary power not to admit new claims, even when filed together with the notice of appeal, in cases where such claims ought to have been presented in the first-instance proceedings.

3.3 The present Article 12(4) RPBA was originally enacted as Article 10a(4) of the amended Rules of Procedure of the Boards of Appeal which were adopted under Rule 10(3) EPC on 28 October 2002 and entered into force on 1 May 2003 following approval by the Administrative Council of the EPO (cf. Decision CA/D 17/02 of Administrative Council of 12 December 2002).

3.4 The discretionary power under Article 12(4) RPBA has to be exercised appropriately which requires the appeal board to consider and weigh up the relevant factors having regard to the particular circumstances of each case.

Main and first auxiliary requests

4. The appellant's main and first auxiliary requests concern the claim set filed with the written statement setting out the grounds of appeal. In both cases, it is requested that the decision under appeal be set aside. According to the main request, the board is requested to remit the application to the department of first instance for further prosecution on the basis of said claim set. According to the first auxiliary request, the board is requested to grant a patent based on said claim set. For the reasons which follow, the board cannot allow either of the aforementioned requests.

5. Amendments to claim 1

5.1 The concluding feature of claim 1 of the auxiliary request on which the decision under appeal is based, i.e. the auxiliary request as filed on 29 October 2008 (cf. Facts and Submissions, item VII above), reads as follows:

"b) displaying the background viewing area content (74) lying beyond the foreground viewing area."

5.2 Claim 1 of the request filed with the written statement setting out the grounds of appeal has been amended by the replacement of the aforementioned feature as follows:

"b) updating the user interface to display changes to the foreground viewing area (64) by copying and redisplaying the border region (66) and portions of the background viewing area (62) that are not overlapped by the foreground viewing area (64)."

5.3 The board concurs with the appellant's submissions to the effect that the new feature of claim 1 filed with the statement of the grounds of appeal relates to the technical problem of reducing the processing burden by selectively re-painting particular sub-areas of the display. The board does not, however, accept the appellant's statement to the effect that the deleted feature of the earlier version of claim 1 referred to in 5.1 above, i.e. as filed on 29 October 2008, relates to the same technical problem (cf. Facts and Submissions, item XV(iv) above). The earlier version of claim 1 merely refers to "displaying the background viewing area content ... lying beyond the foreground viewing area" and contains no identifiable specification relating to the selective re-painting of particular sub-areas of the display.

5.4 It is apparent from the record of first instance proceedings that a version of claim 1 which did relate to substantially the same technical problem referred to in 5.3 above was filed with the letter of 16 June 2005 (cf. Facts and Submissions, item III above).

That version of claim 1 was evidently based on the "border only" transparency level embodiment of Fig. 6. Despite using somewhat different terminology and being restricted to specifying a single type of transparency level (corresponding to the aforementioned "border only" transparency level), the board judges that the version of claim 1 filed with the letter of 16 June 2005 relies on substantially the same technical effect and raises substantially the same issues with respect to inventive step as those which arise in relation to claim 1 of the claim set presently under consideration.

5.5 The foregoing interpretation of claim 1 as filed with the letter of 16 June 2005 is confirmed by the appellant's submissions referring to the official communication of 7 May 2007 (cf. Facts and Submissions, item XV(ii) above). The board does not, however, concur with the submissions of the appellant in this regard according to which it is alleged that the significance of the technical contribution provided by the selective re-painting of particular sub-areas of the display was "not appreciated fully" in the official communication of 7 May 2007. On the contrary, it would appear from said official communication that the examining division recognised the technical effect provided by the concluding feature of the claim, i.e. the step of updating the user interface, but took the position that this feature did not provide a non-obvious technical contribution in the light of D4 (cf. Facts and Submissions, item IV above).

5.6 The response of the then applicant and present appellant to the objections raised in this regard in the official communication of 7 May 2007 was to amend the aforementioned claim 1 by deleting the step of updating the user interface (cf. Facts and Submissions, item V above). There was no identifiable attempt on the part of the applicant to contest the inventive step objection raised against the claim and no further independent claim incorporating such a feature was pursued during the remainder of the proceedings before the department of first instance. The board interprets this behaviour as an effective abandonment of the corresponding subject-matter.

6. Admissibility

6.1 In the board's view, Article 12(4) RPBA (cf. 3. above) confers discretionary powers to hold inadmissible requests relating to subject-matter which was effectively abandoned during first instance proceedings, irrespective of the stage of the appeal proceedings at which such requests are filed. Thus, the board may validly exercise this discretionary power with respect to requests which have been filed with the written statement setting out the grounds of appeal.

6.2 If the board were to admit the claim set filed with the written statement setting out the grounds of appeal it would be compelled either (in accordance with the appellant's main request) to remit the case to the department of first instance for further prosecution or (in accordance with the appellant's first auxiliary request) to decide itself on the critical issues which arise in this regard.

6.3 In the present case, in particular insofar as the question of inventive step is concerned, a remittal to the department of first instance in accordance with the appellant's main request would effectively return the proceedings to the status prevailing at the time of the official communication dated 7 May 2007 and would oblige the examining division to revisit issues which had previously been raised in relation to claims seeking protection for substantially similar subject-matter but which had not, through a deliberate choice of the appellant, been pursued to a final decision. In the board's judgment, such a course of action would be contrary to the principle of procedural economy.

6.4 If, on the other hand, the board were to admit the claim set and proceed to decide upon its merits in accordance with the first auxiliary request, it would be effectively compelled give a first ruling on issues, in particular the question of inventive step, which had not been the subject of a decision during first instance proceedings. Such a course of action would run contrary to the primary purpose of appeal proceedings which is to review that which has been decided at first instance (cf. T 0390/07, point 2 of the Reasons).

6.5 In this regard, it is additionally noted that the board has reservations as to whether the version of claim 1 presently under consideration complies with the requirements of Articles 84 and 123(2) EPC.

6.6 Said claim is evidently based on the embodiment of the invention illustrated in Fig. 6 and disclosed in the corresponding passages of the description. It would appear from [0038] of the originally filed disclosure that the updating step specified in the concluding feature of the claim is only disclosed in connection with one of the transparency levels, i.e. the "border only" transparency level. However, the concluding feature of the claim lacks any such limitation and consequently the question of compliance with the requirements of Article 84 and Article 123(2) EPC arises in respect of this feature. As the appellant was not represented at the oral proceedings before the board, there was no possibility to discuss and resolve this question in the appellant's favour during said proceedings.

6.7 Thus, admission of the claim set in its present unamended form would effectively compel the board to proceed to a first ruling on the aforementioned question which has not been the subject of a decision during first instance proceedings due to the effective abandonment of the relevant subject-matter in the first instance proceedings (cf. 5.6 above). In the board's view, this is a further relevant factor to be taken into account against the admissibility of the claim set.

6.8 In view of the foregoing, the board decided to exercise its discretionary power under Article 12(4) RPBA not to admit the claim set filed with the written statement setting out the grounds of appeal. For this reason, neither the main request nor the first auxiliary request can be granted.

7. Observations re the appellant's submissions

7.1 The board refers to the appellant's submissions to the effect that the claim set should be considered admissible in view of the case law at the time that the appeal was filed (cf. Facts and Submissions, item XV(iii) above) and notes that it cannot concur with these submissions for the reasons which follow.

7.2 In the first place, it is noted that the appellant only refers in a general manner to "the case law of the Boards of Appeal" and does not cite any specific decisions to support its assertions in this regard.

7.3 As noted previously (cf. 3.3 above), the Rules of Procedure of the Boards of Appeal have included provisions corresponding to those of the present Rule 12(4) RPBA since 1 May 2003, i.e. more than six years prior to the filing of the present appeal. The exercise of the discretionary power accorded under these provisions requires the appeal board to have regard to the particular circumstances of each case and to arrive at a decision on the basis of its own discretionary judgement.

7.4 The appellant has not succeeded in establishing that, at the time of filing the appeal, it was the common practice to exercise the aforementioned discretionary powers in the favour of appellants under directly comparable circumstances. Even if the existence of such a practice on the part of other boards had been established, it is doubtful as to whether this could be relied on to bind the present board with respect to exercising the aforementioned statutory powers on the basis of its own discretionary judgement and having due regard to the particular circumstances of the present case.

7.5 Moreover, the board notes that prior to the entry into force of the provisions of the Rules of Procedure of the Boards of Appeal corresponding to the present Article 12(4) RPBA in May 2003, decisions had been taken not to admit requests filed at the commencement of appeal proceedings on the grounds that they contained substantially similar subject-matter to requests which had been withdrawn during first instance proceedings.

7.6 In this regard, reference is made to T 0528/93 (cf. Headnote; Reasons, point 1). The approach taken in that decision was confirmed and followed in the later decision T 0390/07 (cf. Headnote 1; Reasons, points 1 to 3). The board is aware that the aforementioned decisions relate to inter partes proceedings but nevertheless considers that the considerations on which they are based are also applicable mutatis mutandis to ex parte cases.

7.7 In view of the foregoing, the board judges that the appellant's arguments invoking a "reasonable expectation" that the claim set should be admissible in view of the case law at the time that the appeal was filed must be rejected.

Second and third auxiliary requests

8. The appellant's second and third auxiliary requests concern the claim set filed with the letter of 16 December 2013. In both cases, it is requested that the decision under appeal be set aside. According to the second auxiliary request, the board is requested to remit the application to the department of first instance for further prosecution on the basis of said claim set. According to the third auxiliary request, the board is requested to grant a patent based on said claim set. For the reasons which follow, the board cannot allow either of the aforementioned requests.

9. Amendments to claim 1

9.1 Claim 1 as filed with the letter of 16 December 2013 is substantially identical to claim 1 filed with the written statement setting out the grounds of appeal and differs only in that it has been amended vis-à-vis its earlier filed counterpart to specify that the updating step applies only for a "border only" type of transparency level (cf. Facts and Submissions, item XV(vi) above).

10. Admissibility

10.1 In view of the fact that the later filed claim 1 raises substantially the same issues with respect to inventive step as its earlier filed counterpart, the objections detailed under 6.2 to 6.4 above apply mutatis mutandis with respect to the admissibility of the later filed claim set.

10.2 In this regard, it is additionally noted that the board has reservations as to whether the later-filed version of claim 1 complies with the requirements of Articles 84 and 123(2) EPC. Said claim is evidently based on the embodiment of the invention illustrated in Fig. 6 and disclosed in the corresponding passages of the description. It would appear from [0036] to [0038] of the originally filed disclosure that in addition to the updating step specified in the concluding feature of claim 1 in relation to the "border only" transparency level other types of updating procedures are executed with respect to the other types of transparency level. However, the claim omits any specification of the updating procedures to be executed in the case of the other specified types of transparency level and a question of compliance with the requirements of Article 84 and Article 123(2) EPC arises in respect of this omission. As the appellant was not represented at the oral proceedings before the board, there was no possibility to discuss and resolve this question in the appellant's favour during said oral proceedings.

10.3 Hence, admission of the claim set in its present unamended form would effectively compel the board to proceed to a first ruling on the aforementioned question which has not been the subject of a decision during first instance proceedings. In the board's view, this is a further relevant factor to be taken into account against the admissibility of the claim set.

10.4 In view of the foregoing, the board decides to exercise its discretionary power under Article 12(4) RPBA not to admit the claim set filed with the letter of 16 December 2013. For this reason, neither the second nor the third auxiliary request can be granted.

Conclusions

11. In the absence of an allowable request the appeal must be dismissed.