T 0752/08 (Displaying actuating means operating guide on information processing … of 10.5.2012

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division, dispatched 23 October 2007, refusing European patent application No. 00 304 006.0. The decision was based on the ground that the independent claims of the main, first auxiliary and second auxiliary requests did not involve an inventive step having regard to the disclosure of

D3: US 5 825 353 and

D4: "Button interface with visual cues", IBM TECHNICAL DISCLOSURE BULLETIN, vol. 28, no. 6, November 1985, pages 2648-2649, New York, US.

II. Notice of appeal was submitted by the applicant on 21 December 2007 and the appeal fee was paid on the same day. The statement setting out the grounds of appeal was submitted on 21 February 2008. Both documents were filed by fax with confirmation copy.

III. The appellant requested that the decision under appeal be set aside and that a patent be granted based, as a main request, on claims 1 to 8 filed as second auxiliary request on 6 September 2007 at the oral proceedings before the examining division and refiled with the statement setting out the grounds of appeal, or, as a first auxiliary request, on claims 1 to 8 filed with the statement setting out the grounds of appeal. The appellant also requested oral proceedings in the event that the board did not allow one of the requests in written proceedings.

IV. In a communication accompanying a summons to oral proceedings to be held on 10 May 2012, the board presented its evaluation of the above-mentioned documents D3 and D4, and of the documents

D1: US 5 530 455

D5: DE 3700913

Moreover, the board gave its preliminary opinion that the subject-matter of the claims according to both requests did not involve an inventive step, having regard to the disclosure of D4 and the common general knowledge of the skilled person, as disclosed for example in D1.

V. With a letter of reply dated 4 April 2012, the appellant filed a second auxiliary request and provided arguments in favour of the allowability of the claims of the three requests.

VI. Oral proceedings were held as scheduled on 10 May 2012.

The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request, the first auxiliary request, or the second auxiliary request.

VII. Claim 1 of the main request reads as follows:

"An information processing apparatus, comprising:

actuating means (4) having a first actuating portion (12) associated with a rotating operation and a second actuating portion (13) associated with movement actuation in one direction;

set-up means (300) for registering application programs with said actuating means at the selection of a user, whereby a registered application program has application-specific processing operations associated with actuation of the actuating means; and

control means (68, 70E) for monitoring the state of said actuating means and for executing a pre-set processing operation in response to an actuation;

said control means switching an actuating window associated with said actuating means in at least two modes responsive to the state of an application program,

wherein said two modes are (i) a mode showing a guide state allowing the operation of an activated application program to be guided and (ii) a mode showing a launcher state which launches an application program which is selected in the absence of an activated application program; and wherein

if the activated application program is registered with said actuating means (4), said control means (68, 70E) displays an actuating means operating guide (90) for the application program on said actuating window in response to a notification from said application program, said actuating means operating guide indicating the operation in the application that can be performed by rotating the first actuating portion of said actuating means and the operation in the application that can be performed by moving the second actuating portion of said actuating means, but

if the activated application program is not registered with said actuating means (4), said control means displays a standard previously set determined operation on said actuating window allowing the actuating means (4) to execute an operation in agreement with said display."

The main request includes further independent claims 4, 7, and 8 seeking protection for a method, a computer program product, and a computer program storage medium, respectively, corresponding to the independent apparatus claim 1.

VIII. At the end of the oral proceedings the chair announced the board's decision.

Reasons for the Decision

1. The appeal is admissible.

2. Inventive step

2.1 Prior art

D1 discloses a computer mouse having a roller which implements a scrolling function for computer programs running on a computer to which it is connected. The roller may also be used for a program switching function whereby its image is depicted on the computer's screen as an icon showing the switching between two programs.

D3 discloses a PDA having a thumbwheel. Rotating the wheel moves the designation of an item in a menu and pressing the wheel selects the designated item.

D4 discloses a graphic display with a button interface, wherein the functions of the buttons vary with the application program running on the display. To avoid an undesired operation by the user, symbols corresponding to the functions of the buttons in the active application program are laid down on the graphic display in the same relative positions as the buttons on the button interface (see figure 1). In another embodiment, an exact image replica of the button interface is displayed, wherein a word indicating the button function in the active application is displayed on each button image (see figure 2).

D5 discloses a computer screen which displays the image of a connected keyboard, whereby the display of each key indicates the function of that key within the application program currently active on the computer.

The actuating means in D1 (a mouse) and in D3 (a thumbwheel) always have the same functions which do not depend on the application program running on the system.

An operating guide for the actuating means, indicating to the user the current functions of the actuating means, is thus not needed and therefore not disclosed by these documents. In contrast, D4 and D5 do disclose actuating means (a button mouse and a keyboard, respectively) having functions which are dependent on the application program running on the system. D4 and D5 also disclose an operating guide for the actuating means, indicating to the user the functions of the actuating means for the currently running application program. D4 and D5 are thus directed to the same purpose as the present application. Among those two documents, D4 is the only one which discloses a computer mouse. Since equipping a mouse with a thumbwheel having a roller function was an obvious design option at the priority date of the present application (1999), D4 represents a better starting point than D5 for assessing the inventive step of the present claims using the problem-solution approach.

2.2 Main request

Starting from D4 as closest prior art, the differences (highlighted in italics) between the subject-matter of claim 1 of the main request and the disclosure of that document are the following:

a) the feature that the actuating means also have an actuating portion associated with a rotating operation;

b) the feature of the actuating window associated with the actuating means displaying a launcher state in the absence of an activated application program;

c) the provision of set-up means for registering application programs with the actuating means at the selection of the user;

d) the feature of displaying an operating guide for the actuating means for a registered application in response to a notification from the application program;

e) the feature of displaying a standard previously determined operation allowing the actuating means to execute an operation in agreement with said display, if the activated application is not registered.

2.2.1 Feature a) is juxtaposed to the other distinguishing features b) to e). In that respect, the board judges that the registration of an application program with an actuating means and the displaying of an operating guide of this actuating means for this application program, as substantially defined in features c) to e), are not dependent on the specific nature of the actuating portions of the actuating means. Therefore, feature a) on the one hand and features c) to e) on the other hand do not combine to achieve a surprising technical effect. Thus, for the assessment of inventive step, the contribution of feature a) can be examined separately. The objective technical problem solved by feature a), i.e. by adding a second actuating portion associated with a rotating operation, can be expressed as how to improve the functionality of the actuating means. At the priority date of the present application (1999), it was however well-known to provide a computer mouse with a thumbwheel (see D1 for instance). The skilled person would thus, without the exercise of inventive step, add a thumbwheel to the mouse disclosed in D4 and arrive at feature a) of

claim 1.

2.2.2 Feature b) is also juxtaposed to features c) to e) since it is not related to the registration of the application programs and to the displaying of an operating guide. For the assessment of inventive step, its contribution can therefore be examined separately. The technical effect of feature b) is that the user is provided with a display window for launching application programs with the actuating means. The objective technical problem solved by feature b) can thus be formulated as how to provide a simple user interface for starting application programs. D4 teaches that the actuating window displays the operating guide of the mouse for the active application. The skilled person, starting from D4 and faced with the above-mentioned problem, would regard a launcher program as a particular kind of application program running in the absence of any other active application program. Since no actuating window is displayed in D4 in the absence of an active application program, the skilled person would obviously consider using the actuating window associated with the mouse for guiding the user to launch a desired application program. Therefore

feature b) does not add anything of inventive significance to the subject-matter of claim 1.

2.2.3 Features c), d) and e) relate, as the appellant argued, to the concept of dividing the application programs into two groups, according to user selection at registration, whereby a first group has an application-specific operation of the actuating means, and the second group has a standard operation of the actuating means.

The technical effect of these features is that the user is able to customise the operation of the actuating means as a standard operation or an application-specific operation, for each application program.

The objective technical problem can thus be expressed as how to make the interaction of the information processing system with its actuating means more user-friendly.

The skilled person, starting from D4 and faced with the above-mentioned objective technical problem, does not have any reason, for improving the user-friendliness of the system, to depart from the principles laid down in D4, which are that the operation of the actuating means varies with each application running on the apparatus and that a corresponding, application-specific, operating guide is displayed as a visual cue for the user, for each application (see D4, page 2648, first paragraph). The skilled person would improve the system of D4 by optimising the display of the operating guide for each application rather than giving the user the choice of registering (or not) an application within the actuating means. The appellant plausibly argued that the solution proposed in claim 1, based on features c) to e), provides a high degree of user customisation which is totally absent in D4. In particular, a user loading a new application, having application-specific operations of the actuating means, may choose to use instead the standard operation of the actuating means when activating said application, by simply not registering said application. The user would thereby avoid any learning process in respect of actuating means operations, which he may find too tedious and which may be of no interest to him.

Moreover, even if the skilled person were to combine the teaching of D1 in respect of standard operation of mouse buttons and the teaching of D4, he would arrive at a system having on the one hand applications which always run with application-specific operations of the actuating means, and on the other hand applications which always run with standard operations of the actuating means. In such a system, the choice as to which applications run with application-specific operations of the actuating means would not be left to the user but fixed by the system once the applications are loaded.

For these reasons the board judges that the combination of features c), d) and e) confer inventive merit on the subject-matter of claim 1.

3. Concluding remarks

3.1 For the reasons detailed above, the board finds that claim 1 according to the main request satisfies the requirements of Article 56 EPC 1973. Since the other independent claims 4, 7 and 8 of the main request contain the same features as claim 1 but expressed in terms of, respectively, a method, a computer program product, and a computer program storage medium, they also meet the requirements of Article 56 EPC 1973.

3.2 Since the description has not yet been adapted, the case is to be remitted to the examining division for adapting the description to the independent claims.

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 with the order to grant a patent on the basis of the main request filed with letter dated 21 February 2008 and a description to be adapted.