T 1775/18 (Custom word lists/BLACKBERRY) 27-01-2021

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

2. The application

2.1 The application relates to building, using and maintaining customised word lists for use in text operations (see page 1, lines 4 and 6, of the description of the application as filed). The background section of the application, on page 1, lines 9 to 31, explains that computer programs which perform spell checking, text replacement and predictive text input, which is particularly helpful for devices with reduced keyboards, are known to use word lists. Such word lists are commonly generated from standard language data, including word and frequency information, that does not reflect the actual text usage patterns of many users.

2.2 The application describes a system 10 that includes a computer system 12 and an electronic device 14 (see Figure 1). The computer system is used to scan a collection of text items associated with the user of the electronic device to identify words and to determine a weighting for each identified word (page 7, line 19, to page 8, line 20). This results in a custom word list, which is transferred to the electronic device (page 8, lines 19 to 22). The words in the custom word list are mapped to keystroke sequences either at the electronic device (page 8, line 22, to page 9, line 8) or at the computer system (page 9, lines 9 to 17).

When the user begins typing on the reduced keyboard of the electronic device, the custom word list is accessed to identify word variants that the user may be typing, and the identified variants are displayed to the user sorted according to their corresponding weightings (page 16, lines 4 to 23).

If the word entered by the user is not in the custom word list, it is added to the list together with a weighting and a keystroke sequence. The resulting update of the custom word list is transferred to the computer system (page 18, lines 21 to 28).

All requests

3. Admittance into the appeal proceedings - Article 13(2) RPBA 2020

3.1 The main request and first and second auxiliary requests were filed on 18 December 2020, which is after the notification, on 27 July 2020, of the board's summons to oral proceedings.

Since the summons to oral proceedings before the board was notified after the date of entry into force of the RPBA 2020, it follows from the transitional provisions laid down in Article 25 RPBA 2020 that Article 13(2) RPBA 2020 applies to the present case. This provision stipulates that any amendment to the appellant's appeal case made after the notification of the summons to oral proceedings is, in principle, not to be taken into account unless there are exceptional circumstances which have been justified with cogent reasons by the appellant.

3.2 Claim 1 of the main request introduces, inter alia, the following feature which was not part of any of the independent claims of the requests considered in the decision under appeal and maintained in the statement of grounds of appeal:

"wherein each word in the custom word list is mapped to a keystroke sequence on the respective type of keyboard of the electronic device when the custom word list is transferred from the computer system to the electronic device".

As the appellant explained in its letter of 18 December 2020, this feature was taken from previous dependent claim 3 and was further supported by a number of passages in the description.

The same feature is present in claim 1 of the first and second auxiliary requests.

3.3 The appellant's letter of 18 December 2020 contains no statement addressing the admissibility of the newly filed requests under Article 13(2) RPBA 2020.

At the oral proceedings, the appellant explained that the amendment identified in point 3.2 above was intended to address the inventive-step objection raised in the board's communication. As explained on page 9, lines 1 to 8, of the description, by mapping words in a custom word list to keystroke sequences when the custom word list was transferred to an electronic device, it was possible for users to use their custom word lists on devices with different keyboard layouts.

3.4 An example of exceptional circumstances within the meaning of Article 13(2) RPBA 2020 is given in the explanatory remarks on that provision, which mention that if a party submits that the board raised an objection for the first time in a communication, it must explain precisely why the objection is new and does not fall under a previously raised objection (OJ EPO 2020, Supplementary publication 2).

Since the examining division refused the application for lack of inventive step over document D2, the inventive-step objection raised in the board's communication was not a new objection.

Moreover, the appellant did not argue that the addition of the feature mentioned in point 3.2 above was necessitated by an unforeseeable new element in the board's inventive-step reasoning. In fact, the amendment is aimed at solving a problem, namely allowing the use of the custom word list maintained at the computer system on devices with different keyboard layouts, which is not mentioned in the statement of grounds of appeal.

3.5 Hence, the main request and the first and second auxiliary requests contain an amendment that is not necessitated by exceptional circumstances which have been justified with cogent reasons by the appellant.

3.6 At the oral proceedings, the appellant argued that the introduction in an independent claim of a feature taken from a dependent claim was not an amendment of its case which, under Article 13(2) RPBA 2020, required exceptional circumstances justified with cogent reasons. Such an amendment could not come as a surprise, since dependent claims were meant to define fallback positions. Moreover, dependent claim 3 formed part of the decision under appeal, as it had been discussed by the examining division in an obiter dictum.

However, while it is true that dependent claims define fallback positions for certain purposes, in EPO proceedings they cannot be equated with auxiliary requests. Article 113(2) EPC requires the EPO to decide on an application in the text submitted to it, or agreed, by the applicant. This means that it is the applicant's responsibility to file an (amended) set of application documents that fully meet the requirements of the EPC, for example in the form of an auxiliary request. Hence, if an applicant wishes to put forward as its case a fallback position as defined by a dependent claim, it has to file an amendment that turns that claim into an independent claim. For the sake of procedural efficiency, the RPBA sets limits on when such amendments can still be filed in appeal proceedings.

3.7 The appellant pointed out that it had filed its statement of grounds of appeal before the entry into force of the RPBA 2020. Although Article 25(1) RPBA 2020 provided that the revised version of the RPBA also applied to all pending appeals, applying the strict criteria of Article 13(2) RPBA 2020 to the present case would go against procedural fairness. Rather, the board should exercise its discretion and admit the newly filed requests into the appeal proceedings.

The board notes, however, that the transitional provisions as laid down in Article 25 RPBA 2020 leave it no choice but to apply Article 13(2) RPBA 2020 to the present case. In particular, the board has no doubt that the legislator was aware of, and accepted, the difficulties faced by appellants of pending appeals. In this context, the board notes that the text of the RPBA 2020 was published in the July 2019 edition of the OJ EPO, i.e. well before their entry into force on 1 January 2020 and thus leaving appellants of pending appeals time to consider whether their statement of grounds of appeal needed to be supplemented.

Moreover, already under the RPBA 2007 it was good and recommended practice for an appellant not to delay the filing of auxiliary requests corresponding to potential fallback positions (see Case Law of the Boards of Appeal, 9th edition, 2019, chapter V.A, sections 4.1.2, 4.4.1, 4.4.2 a), and 4.5.1 a)).

3.8 The board further notes that the amendment discussed above raises a prima facie clarity issue. By stating that words are mapped to keystroke sequences when the custom word list is transferred from the computer system to an electronic device, the amendment suggests that the copy of the custom word list maintained at the computer system does not include keystroke sequences. By contrast, the feature "transferring the word entered by the user and the keystroke sequence to the computer system", which is part of claim 1 of the main request and the first and second auxiliary requests, suggests that the copy maintained at the computer system does include keystroke sequences.

3.9 For these reasons, the board decides not to admit the main request and the first and second auxiliary requests into the appeal proceedings (Article 13(2) RPBA 2020).

4. Conclusion

Since none of the requests on file is admitted into the appeal proceedings, the appeal is to be dismissed.