T 0592/13 - Board introduces document

Key points

• In this examination appeal, the Board introduces D6 of own motion, two months before the oral proceedings. The Board finds the claims to be obvious in view of D6 and common general knowledge. D6 was cited earlier for a parallel application of the same applicant, with the same filing date and description. The Board refuses the (main) request for remittal of the case, because D6 must already have been known to the applicant. 
" 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."

EPO T 0592/13 -  link

Reasons for the Decision

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.

[...] 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).