T 1265/06 (Handheld calendar application/RESEARCH IN MOTION) of 15.4.2009

Summary of Facts and Submissions

I. European patent application No. 04 256 786.7 filed on 3 November 2004 and published as EP-A-1 655 693 concerns a handheld electronic device having a calendar application for automatically checking for and notifying the user of scheduling conflicts between existing and new calendar entries.

The European search report referred among others, to prior art documents D1 (US-A-2002/0154178, published on 24 October 2002), D2 (US-A-5 761 525, published on 2 June 1998) and D3 (US-A-2001/0054072, published on 20 December 2001).

II. After various communications, the examining division issued summons to oral proceedings and advised the applicant that the application did not meet the requirement of inventive step since in the light of documents D1 and D2 the invention was merely a straightforward implementation of a business requirement.

III. With a reply dated 6 January 2006, the appellant filed new sets of claims in accordance with a main request and a first auxiliary request, claim 1 of the main request reading as follows:

"1. A method of checking a new calendar entry in a calendar application (54) of a handheld electronic device (4), said calendar application (54) having a plurality of existing calendar entries, said calendar application (54) having a calendar cache associated therewith, said calendar cache including a first subset of said existing calendar entries falling within a first date range, the method comprising steps of:

receiving information relating to said new calendar entry, said information including at least one of a date, a start time and an end time of said new calendar entry;

determining whether said date falls within said first date range of said calendar cache;

if said date falls within said first date range: (i) examining said calendar cache and determining whether said new calendar entry directly conflicts with one of said existing calendar entries in said first subset of said existing calendar entries using said information, and (ii) providing a conflict notification (60) if said new calendar entry directly conflicts with one of said existing calendar entries in said first subset of said existing calendar entries; and

if said date falls outside of said first date range: (i) updating said calendar cache to create an updated calendar cache by replacing said first subset of said existing calendar entries with a second subset of said existing calendar entries falling within a second date range, said second date range covering a predetermined time period including said date, (ii) examining said updated calendar cache and determining whether said new calendar entry directly conflicts with one of said existing calendar entries in said second subset of said existing calendar entries using said information, and (iii) providing a conflict notification (60) if said new calendar entry directly conflicts with one of said existing calendar entries in said second subset of said existing calendar entries."

IV. In oral proceedings before the examining division on 7 February 2006, the application was discussed on the basis of the main request and two new auxiliary requests filed during the oral proceedings. According to the minutes, the examining division explained that the method of claim 1 was not inventive since a person skilled in the art who received a specification requirement to implement a conflict notification in a handheld calendar would, in a straightforward manner, reduce the search of possible conflicts to a range around the new entry. To use a predefined cache or to update it if necessary was a choice a skilled person would make according to circumstances.

V. The refusal of the application was announced at the end of the oral proceedings. The reasons for the decision were given later in writing, by a letter posted on 29 March 2006. According to the written decision, the technical problem solved by the invention was the technical implementation of the conflict notification in a calendar application of a handheld electronic device having only limited memory and processing resources. Without referring to any of the available prior art documents, the examining division held that the use of a predefined cache was merely one of several straightforward possibilities from which a person skilled in the art would select, without having to exercise any inventive skills. If the predefined cache did not allow the conflict notification to take place because the new date was out of range it was straightforward that the cache had to be updated automatically.

VI. An appeal against the refusal of the application was lodged in writing on 25 May 2006. The appeal fee was paid the same day. On 4 August 2006, a letter setting out the grounds of appeal was filed, including three sets of claims titled main request, first auxiliary request, and second auxiliary request, respectively. As stated explicitly in this letter, the new requests conformed to the respective requests on which the examining division based the refusal of the application.

VII. The appellant requested as main request that the decision be cancelled and a patent be granted on the basis of the main request or (implicitly) one of the auxiliary requests on file. The auxiliary requests had been drafted to clarify that the cache was in memory and to further distinguish the invention over document D1 which the examining division up until the oral proceedings believed to be the closest prior art. As a final auxiliary request, the appellant requested oral proceedings if the Board intended to refuse the previous requests.

VIII. According to the appellant, the prior art in electronic calendar applications required a manual, and thus inconvenient and time-consuming approach to avoid conflicting calendar entries.

Some prior art calendar applications, however for non-handheld devices only, informed the user automatically if a conflict existed with a new date entry. These applications searched the entire database of calendar information each time a new appointment or meeting was entered. Due to memory and processing constraints, such an approach was not possible or practical for handheld devices.

The present application solved the technical problem to implement a calendar application with automatic conflict notification for a handheld electronic device.

The prior art cited was neither concerned with this type of problem, nor proposed a solution to it.

In particular, document D1 disclosed a multi-layered online calendar purchasing system which did not relate to a handheld electronic device and was thus not suitable to be cited as closest prior art. Although this online system used an event cache, there was no hint to the present arrangement.

Closest prior art was rather document D3, since it was related to a handheld or mobile calendar application. The present invention was distinguished therefrom by the calendar cache including a first subset of existing calendar entries falling within a first date range. Moreover, if the new appointment fell outside of said first date range the calendar cache was updated by replacing the first subset with a second subset of existing calendar entries falling within the second date range covering a predetermined time period including the date of the new entry, thus resulting in a kind of "moving cache". There was no hint in document D3 or elsewhere in the prior art cited to such a kind of "moving cache" as a means of efficiently implementing the conflict check and notification on a handheld electronic device.

Reasons for the Decision

1. The appeal is admissible.

2. The appeal is, moreover, allowable on the merits since the reasons for the refusal of the application do not hold up to examination, and there are no other reasons, on the face of the file, which could preclude the grant of a patent.

3. The decision under appeal is indeed insufficient regarding the reasons given for lack of inventive step.

The first steps of the reasoning are not objectionable: the management of appointments and meetings as well as the general idea of checking new calendar entries for a conflict with existing calendar entries are abstract methods analogous to the schemes and methods for performing mental acts and doing business, and therefore as such excluded from patentability by Article 52(2) and (3) EPC. Since applying any such scheme or method does generally not serve to solve a technical problem, they are also not suited to provide a novel and inventive contribution over the prior art.

It is also correct in the present case to limit the possible technical contribution to the implementation aspect of the invention and to identify as the relevant technical problem underlying the invention, the technical implementation of a calendar application which provides an automatic conflict notification on a handheld electronic device.

4. In the light of the prior art cited by the examining division there is no evidence, however, that the use of the calendar cache in the solution of this problem would be merely "one out of several straightforward possibilities from which a person skilled in the art would select, without the exercise of inventive skill" or that updating the cache as claimed was straightforward.

The present application explains that the term "cache" meant "a section of a computing device's memory which retains certain data in order to speed up repeated access to the same data" (see the A-publication, paragraph 0020). The application hence uses this term in the ordinary meaning it has in the field of computer technology.

Claim 1 does not refer merely in general terms to the use of cache memory but rather defines a specific calendar cache, namely a cache including existing calendar entries falling within a first date range and updated according to the specifically claimed update process, resulting in what was, as a convenient shorthand, called a "moving cache".

As described in the present application, the calendar cache facilitates the automatic checking of calendar entries and obviates the need to search the entire database of existing calendar entries (see the A-publication at paragraph 0020). The calendar cache and the claimed update process are thus part of the technical solution of the technical problem to implement a calendar application providing an automatic conflict notification in handheld devices, and have thus to be taken into account in assessing inventive step as a technical contribution to the prior art.

5. Nevertheless, such a contribution could still be obvious for various reasons, for example, if the contribution was a direct or necessary consequence of the abstract scheduling method which the calendar application embodies. Such a link does not exist in the present invention; the conflict notification could be implemented for example, perhaps resulting in a lower performance, without using any kind of cache at all.

Nor does the "moving cache" follow from the common practice in the field. The skilled person, even when considering the use of a cache memory in the context of a handheld device, would choose for updating the cache any one of the common replacement methods, for example updating by replacing the least recently or the least frequently used entry, i.e. by methods which are all different from the presently claimed cache algorithm.

Finally, the invention could be rendered obvious directly by published prior art. In the present case, however, the examining division did not cite a single prior art document which was related to the use of a cache in a handheld device, let alone something like a "moving cache" for implementing the calendar application on a handheld device. The Board essentially agrees with the analysis presented by the appellant in the statement of grounds of appeal with respect to the prior art documents cited in the first instance proceedings.

In summary, none of the possible reasons of lack of inventive step apply to the present invention, at least not on the basis of the prior art cited.

6. Finally, on the face of the facts on file, the Board has no reason to maintain the decision under appeal on any other grounds or to raise new objections against the main request on its own motion. The main request can thus be allowed on the condition that the description is adapted accordingly. Hence, it is not necessary to consider the auxiliary requests in deciding the case.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.