T 1071/08 (Storing and retrieving of telephone numbers/LG ELECTRONICS) of 9.12.2010

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 02010621.7 (publication number EP 1259049 A).

II. The refusal was based on the ground that the subject-matter of claims 1 and 10 of a main request and of claims 1 and 9 of an auxiliary request did not involve an inventive step (Articles 52(1) and 56 EPC).

III. With the statement of grounds of appeal the appellant filed new sets of claims of a main request and first to fifth auxiliary requests as well as an amended Figure 5. It requested that the decision be set aside and a patent be granted on the basis of the claims of the main request or, failing that, on the basis of the claims of one of the first to fifth auxiliary requests, taken in that order. Arguments in support were also submitted. Oral proceedings were conditionally requested.

IV. In a communication annexed to a summons to oral proceedings the board raised, without prejudice to its final decision, objections, inter alia, against claim 1 of each one of the requests under Article 123(2) EPC and Article 52(1) EPC in combination with Article 56 EPC.

V. The following document, which was cited in the European search report and in the board's communication, is referred to in the present decision:

D2: US 6 222 921 B.

VI. The appellant did not respond in writing to the board's objections.

VII. Oral proceedings were held on 9 December 2010 in the course of which the appellant filed claims of a new third auxiliary request A. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request or, in the alternative, one of the first to third auxiliary requests as filed with the statement of grounds of appeal, the third auxiliary request A as filed during the oral proceedings, or one of the fourth and fifth auxiliary requests, both as filed with the statement of grounds of appeal.

At the end of the oral proceedings, after deliberation, the board's decision was announced.

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

"A method for accessing a phone number stored in a mobile communication terminal, including a memory (4) having a plurality of memory locations, each memory location having at least one detailed item stored therein, and each detailed item including a phone number, the method comprises [sic] the steps of:

- receiving, from a user, an [sic] numeric key input that corresponds to a memory location of a memory (4);

- receiving, from the user, at least one identification key input that indicates how the one or more detailed items stored at the memory location corresponding to the numeric key input should be displayed;

- displaying the one or more detailed items stored at the memory location, depending on the received at least one identification key input;

- initiating a call connection to a phone number that corresponds to the one or more detailed items displayed.".

Claim 1 of the first auxiliary request differs from claim 1 of the main request in that the second and third paragraphs are replaced by the following paragraphs:

"- receiving, from a user during an idle mode of the mobile communication terminal, a numeric key input that corresponds to a memory location;

- receiving, from the user, immediately after receiving the numeric key input, at least one identification key input that indicates how the one or more detailed items stored at the memory location corresponding to the numeric key input should be displayed;".

Claim 1 of the second auxiliary request differs from claim 1 of the first auxiliary request in that the second paragraph is replaced by the following paragraphs:

"- receiving, from a user during an idle mode of the mobile communication terminal, a numeric key input that corresponds to a predetermined hot key for accessing a memory location of the memory (4);

- determining whether the numeric key input is a predetermined hot key;".

Claim 1 of the third auxiliary request reads as follows (bold and underlining by the board):

"A method for accessing a phone number stored in a mobile communication terminal, including a memory (4) having a plurality of memory locations, each memory location having at least one detailed item stored therein, and each detailed item including a phone number, the method comprises [sic] the steps of:

- receiving, from a user during an idle mode of the mobile communication terminal, a numeric key input that corresponds to a predetermined hot key for accessing a memory location of a memory (4);

- determining whether the numeric key input is a predetermined hot key;

- receiving, from the user, immediately after receiving the numeric key input, a first predetermined identification key input (S54) that indicates that a predetermined detailed item stored at the memory location corresponding to the numeric key input should be displayed;

or

- a second predetermined identification key input (S54) that indicates that all details [sic] items stored at the accessed memory location should be displayed

- in case of the first identification key input (S54) initiating a call connection to a phone number corresponding to the detailed item displayed and in case of the second identification key input displaying all detailed items stored at the memory location and initating [sic] a call connection to the phone number corresponding to one of the detailed items displayed."

Claim 1 of third auxiliary request A reads as follows (bold and underlining by the board):

"A mobile communication terminal apparatus to perform a method of accessing a phone number stored in the mobile communication terminal, including a memory (4) having a plurality of memory locations, each memory location having one or more detailed items stored therein, and each detailed item including a phone number, the apparatus comprising:

- an alphanumeric input unit (2) allowing a user to input key data;

- a memory (4) having multiple memory locations with detailed items stored therein; and

- a controller (1) cooperating with the input unit (2) and the memory (4), wherein the input unit (2) is adapted to:

- receive, from a user, a numeric key input that corresponds to a predetermined hot key;

- receive, from a user, in sequence after receiving the numeric key input, a first predetermined identification key input (S54) including a detailed item key,

wherein the controller (1) is adapted to:

determine whether the numeric key is input during an idle mode of the mobile communication terminal;

determine whether the numeric key input is a predetermined hot key for accessing a memory location of the memory (4);

determine whether the numeric key input corresponds to the first predetermined identification key input (S54) including a detailed item key;

determine whether a phone number corresponding to the detailed item key exists and to initiate a call to the phone number corresponding to the detailed item key, if a phone number corresponding to the detailed item key exists;

and/or wherein the input unit (2) is adapted to

- receive a second predetermined identification key (S54);

wherein the controller (1) is adapted to:

determine whether the numeric key is input during an idle mode of the mobile communication terminal;

determine whether the numeric key input is a predetermined hot key for accessing a memory location of the memory (4);

determine whether the inputted identification key is the second identification key, that indicates that all details [sic] items stored at the accessed memory location (S59) should be displayed

- display on a display unit of the mobile communication terminal all detailed items stored at the memory location corresponding to the hot key of the numeric key input, in response to the receiving of the second predetermined identification key;

- determine whether a detailed item of the displayed detailed items stored at the memory location is selected and to initiate a call connection to the phone number of the selected detailed item,

wherein the identification key of the input unit (2) is a non-numeric special symbol key, wherein the detailed item key is a numeric key."

Claim 1 of the fourth auxiliary request reads as follows:

"A method for accessing a phone number stored in a mobile communication terminal, including a memory (4) for storing an operational algorithm and data, the memory (4) having a plurality of memory locations for storing a plurality of phone numbers, wherein each memory location having [sic] memory space for storing at least two detailed items therein, wherein a detailed item includes a phone number, the method comprises [sic] the steps of:

- receiving, from a user, a numeric key input (S51) corresponding to predetermined [sic] hot key for accessing a memory location;

- receiving, from a user in sequence to the numeric key input, a predetermined identification key input (S54) for displaying all details [sic] items stored at the accessed memory location (S59), and

- initiating a call to one of the displayed phone numbers.".

Claim 1 of the fifth auxiliary request reads as follows (bold and underlining by the board):

"A method for accessing a phone number stored in a mobile communication terminal, including a memory (4) for storing an operational algorithm and data, the memory (4) having a plurality of memory locations for storing a plurality of phone numbers, wherein each memory location having [sic] memory space for storing at least two detailed items therein, wherein each detailed item includes a phone number, and one of the detailed items stored at a memory location has assigned a representative status, the method comprises [sic] the steps of:

- receiving, from a user, a numeric key input (S51) corresponding to a predetermined hot key for accessing one of the memory locations;

- determining whether a predetermined identification key input (S54) is input by the user in sequence to the numeric key, wherein in case of receiving the identification key input (S54)

- displaying all details [sic] items stored at the accessed memory location (S59) or

- in case of not receiving an identifictaion [sic] key input after the numeric key input initiating a call to the detailed item having the representative status.".

Reasons for the Decision

1. Article 123(2) EPC - amendments

In the communication annexed to the summons to oral proceedings the board raised various objections under Article 123(2) EPC in respect of the independent claims of each one of the main request and first to fifth auxiliary requests. In this decision, these objections need not however be further considered, since none of the requests on file, i.e. including auxiliary request 3A as filed in the course of the oral proceedings, are allowable for other reasons, as set out below.

2. Article 56 EPC - main request

2.1 Document D2 discloses, using the language of claim 1 of the main request, a method of accessing a telephone number stored in a mobile communication terminal 100 (D2, Fig. 1A) which includes a memory 208 having a plurality of memory locations for names (col. 2, lines 51 to 58, and Fig. 2), each memory location having at least one detailed item, i.e. a telephone number, stored therein (col. 3, lines 23 to 29, and Fig. 3). In particular, the method disclosed in D2 includes the steps of:

- receiving from a user a first input which corresponds to a memory location of the memory, i.e. selecting a name by scrolling a "jog dial wheel" up or down, see col. 4, lines 4 to 7, and Figs 4A and 4B (in D2 a "jog dial wheel" is an input device configured such that by turning the jog dial wheel 108 up and down, menu items displayed on the display screen 102 can be scrolled up and down, respectively, and a selected menu item displayed on the display screen can be activated by pressing-in the jog dial wheel (col. 2, lines 29 to 36));

- receiving from the user at least one identification key input that indicates that the one or more detailed items stored at the memory location corresponding to the first input are to be displayed (i.e. by pressing-in the jog dial wheel, thereby retrieving and displaying telephone numbers associated with the selected name, see col. 4, lines 21 to 25, and Fig. 4C);

- in response to receiving the at least one identification key input, displaying on a display unit 102 of the mobile communication terminal 100 the one or more detailed items stored at the memory location corresponding to the first input (in the example of Fig. 4C: three telephone numbers);

- receiving, from the user, a third input for selecting one of the displayed detailed items (by scrolling the jog dial wheel up or down, see col. 4, lines 42 to 46, and Fig. 4D); and

- initiating a call connection to a telephone number that corresponds to the detailed item displayed and selected by the user (by pressing-in the jog dial wheel, see col. 4, lines 51 to 55).

Hence, in the method of D2, compared to entering a complete telephone number digit-by-digit, a quick access to a desired telephone number is made possible by scrolling up or down and pressing-in the jog dial wheel 108, as described above.

2.2 The subject-matter of claim 1 of the main request differs from the method of D2 in that, instead of using the jog dial wheel, the first input received from the user is a numeric key input.

An example of a numeric key input is given in the description of the present application (paragraphs [0053] to [0057], reference being made to the application as published), in which a user inputs "32", "*" and "1" in order to select the name of a person, which is stored at a memory address location "032", and his telephone number at home, as indicated by what is referred to in the application as a "detailed item", here "1". Inputting "32*1" instead of entering the complete telephone number digit-by-digit provides a quick access to the desired telephone number and is referred to in the application as inputting a "hot key" (paragraphs [0031] and [0042] and Fig. 5).

2.3 The board notes however that it was well-known at the priority date to use hot keys, also known as speed-dialling, in order to quickly select and dial a desired telephone number (see, e.g., D2, col. 1, lines 19 to 21: "Using control buttons on the control panel of a telephone, a user can select a number from a telephone directory to dial the selected number."). This was not contested by the appellant at the oral proceedings and is indeed discussed in the prior art acknowledged in the present application (paragraph [0002], "When the user wants to call the telephone number stored in the memory locations, the user can attempt to connect the call using a hot key corresponding to the memory locations in which the telephone number is stored.").

2.4 Hence, it would have been obvious to the person skilled in the art to additionally include, for the same purpose, the option of using hot keys in the known mobile communication terminal 100 of D2. More specifically, since in D2 each name in the memory 208, more specifically in the name output buffer 212 of the memory 208, is provided with an associated number (Fig. 3: "01" to "09" for nine respective names), it would have been obvious to use these numbers as hot keys and to enter the hot key by using the alpha/numeric key panel 110 of the control panel 106 of the mobile communication terminal (Fig. 1A), e.g. "07" for John Smith. Thereby, an alternative way of quickly selecting the name of the person to be called is obtained. For the same reasons, once having selected the name of the person to be called using a hot key, it would have been obvious for the skilled person to use the key panel 110 in the same way for subsequently selecting one the telephone numbers associated with the selected name (for example, John Smith) by entering a corresponding number, for example "1" or "5", for selecting one out of the five telephone numbers (office, home, fax, page, and cellular) as stored in this order in the memory in connection with John Smith in the above example (D2, Figs 3 and 4C). The board notes that providing an alternative way of selecting a name and a telephone number is in line with the teaching of D2, since the use of a jog dial wheel is merely disclosed in connection with a preferred embodiment (col. 1, lines 59 to 63, and col. 6, lines 26 to 29).

2.5 In view of the above, a person skilled in the art would, without exercising inventive skill, have arrived at a method of accessing a telephone number stored in a mobile communication terminal, which includes the step of receiving a numeric key input from the user and, hence, which includes all the steps of claim 1 of the main request.

2.6 The subject-matter of claim 1 of the main request does not therefore involve an inventive step (Articles 52(1) and 56 EPC). The main request as a whole is therefore not allowable.

3. Article 56 EPC - first auxiliary request

3.1 Claim 1 of the first auxiliary request differs from claim 1 of the main request in that two features are added, namely that the numeric key input from the user is received "during an idle mode of the mobile communication terminal" and that the at least one identification key input is received from the user "immediately after receiving the numeric key input" (see point VIII above). These two additional features do not however contribute to an inventive step for the following reasons:

3.2 The application as filed does not give a specific meaning to the term "idle mode" (cf. paragraphs [0005], [0015], [0037], and [0044]). The board interprets this term as referring to any operating mode of the mobile communication terminal in which no call is ongoing.

3.3 It is however self-evident that speed dialling by means of hot keys can only be carried out as long as no call is ongoing and the above-mentioned first additional feature therefore follows as a matter of course.

3.4 The above-mentioned second additional feature is encompassed by the method referred to at point 2.4 above in connection with claim 1 of the main request and, hence, does not contribute to an inventive step either.

3.5 The subject-matter of claim 1 of the first auxiliary request does not therefore involve an inventive step (Articles 52(1) and 56 EPC). The first auxiliary request as a whole is therefore not allowable.

4. Article 56 EPC - second auxiliary request

4.1 Claim 1 of the second auxiliary request only differs from claim 1 of the first auxiliary request in that the numeric key input referred to in the second paragraph of the claim "corresponds to a predetermined hot key for accessing a memory location of the memory" and in that the method includes the step of "determining whether the numeric key input is a predetermined hot key" (see point VIII above).

4.2 In the method referred to at point 2.4 above use is made of hot keys and, hence, it is implicit that the method includes a step of determining whether or not the numeric key input received from the user corresponds to a hot key.

4.3 Hence, taking into account the reasons as set out at points 2 and 3 above in respect of claim 1 of the respective main and first auxiliary requests, the subject-matter of claim 1 of the second auxiliary request does not involve an inventive step (Articles 52(1) and 56 EPC).

4.4 The second auxiliary request as a whole is therefore not allowable.

5. Article 56 EPC - inventive step - third auxiliary request

5.1 Claim 1 of the third auxiliary request (see point VIII above) includes two alternative methods, namely a first method which includes the step of receiving "a first determined identification key input (S54) that indicates that a predetermined detailed item stored at the memory location corresponding to the numeric key input should be displayed", and a second method which includes the step of receiving "a second predetermined identification key input" as further specified in the claim. According to the first method, "a call connection to a phone number corresponding to the detailed item displayed" is initiated. The remaining features of the first method correspond to those of the method according to claim 1 of the second auxiliary request.

5.2 The board notes that the method according to the first alternative does not exclude that more than one, e.g. three, detailed items stored at the memory location corresponding to the numeric key input are displayed. Further, it is noted that in the method of D2 one of the three telephone numbers displayed is a predetermined number, which is referred to as the "primary number" and to which a call connection may be initiated (D2, col. 3, lines 60 to 66, and col. 4, lines 35 to 41).

5.3 The board therefore concludes that, taking into account the reasons set out at points 2 to 4 above, the subject-matter of claim 1 of the third auxiliary request, at least according to the first alternative, does not involve an inventive step (Articles 52(1) and 56 EPC).

5.4 The third auxiliary request as a whole is therefore not allowable.

6. Article 56 EPC - inventive step - third auxiliary request A

6.1 Document D2 discloses, using the language of claim 1 of auxiliary request 3A, a mobile communication terminal 100 (D2, Fig. 1A) suitable for performing a method of accessing a telephone number stored in the mobile communication terminal, which includes a memory 208 having a plurality of memory locations for names, each memory location having one or more detailed items, i.e. telephone numbers, stored therein (col. 2, lines 51 to 58, and col. 3, lines 23 to 29, and Figs 2 and 3). The mobile communication terminal apparatus 100 further includes:

- an alphanumeric input unit, i.e. control panel 106 which includes a jog dial wheel 108 and a key panel 110 with twelve alpha/numeric keys (col. 2, lines 25 to 29, and Fig. 1); and

- a controller, i.e. processor 204, cooperating with the input unit and the memory (col. 2, line 59, to col. 3, line 2, and Fig. 2).

Since the key panel 110 includes alpha/numeric keys, it is adapted to receive from a user a numeric key input that corresponds to a predetermined hot key, e.g. "07", and, in sequence after receiving the numeric key input, a first predetermined identification key input including a detailed item key, e.g. "1". Further, the processor 204 interacts with the control panel 106 and is able to access the memory 208 and execute an application stored in the memory, which includes a dialling routine (col. 2, line 59 to col. 3, line 2, and col. 4, lines 52 to 55).

6.2 For the reasons given at point 2 above, it would have been obvious to a person skilled in the art to include in the mobile communication terminal apparatus 100 the option of using hot keys for quickly selecting a desired name and telephone number. Consequently, it would have been obvious to the skilled person to adapt the processor 204 of the mobile communication terminal apparatus 100 such that it carries out the necessary steps for hot key processing, namely determining whether the numeric key is input during an idle mode of the mobile communication terminal and whether it is a predetermined hot key, e.g. "07", for accessing a memory location of the memory, determining whether the subsequently received numeric key input corresponds to the first predetermined identification key input including the detailed item key, e.g. "1", determining whether a telephone number corresponding to the detailed item key exists, and, if a telephone number corresponding to the detailed item key, e.g. "1", exists and is selected by the user, initiating a call to the telephone number corresponding to the detailed item key.

6.3 Having adapted the processor as set out above, the skilled person would, without the exercise of inventive skill, have arrived at a mobile communication terminal apparatus which includes all the features of claim 1 of third auxiliary request A up to the expression "and/or" (see point VIII).

6.4 The board notes however that the mobile communication terminal apparatus thereby arrived at would also include the remaining features of the claim, i.e. the features after "and/or". More specifically, the input unit would be adapted to receive a second predetermined identification key, i.e. the pressing-in of the jog dial wheel 108 (see D2, col. 4, lines 21 to 25) after having selected the person's name by means of the first numeric key input and the controller would be adapted to determine whether the first numeric key is input during an idle mode of the mobile communication terminal and is a predetermined hot key, e.g. "07", for accessing a memory location of the memory. Further, by the above-mentioned pressing-in of the jog dial wheel, the processor would determine that the inputted identification key is the second identification key which indicates that all detailed items stored at the accessed memory location "07" should be displayed, namely in the case of the user having stored only three detailed items in advance (D2, col. 5, lines 7 to 27, and Fig. 5). In that case, all detailed items stored at the memory location corresponding to the hot key of the numeric key input would be displayed on a display unit 102, 406 (Figs 1A and 4C) of the mobile communication terminal 100 in response to the receiving of the second predetermined identification key. The processor would then determine whether a detailed item of the displayed detailed items stored at the memory location is selected, e.g. by inputting "1", and, if so, would initiate a call connection to the phone number of the selected detailed item. The second identification key of the input unit, i.e. the pressing-in of the jog dial wheel 108 would arguably be a non-numeric special symbol key (see Fig. 1A,

FORMULA/TABLE/GRAPHIC

whereas the detailed item key would be a numeric key, e.g. "1".

6.5 The board therefore concludes that the subject-matter of claim 1 of third auxiliary request A does not involve an inventive step (Articles 52(1) and 56 EPC). Third auxiliary request A as a whole is therefore not allowable.

7. Article 56 EPC - inventive step - fourth auxiliary request

7.1 Document D2 discloses, using the language of claim 1 of the fourth auxiliary request, a method of accessing a telephone number stored in a mobile communication terminal 100 (D2, Fig. 1A) which includes a memory 208 for storing an operational algorithm and data (col. 2, lines 51 to 58, and Fig. 2) and having a plurality of memory locations for storing a plurality of telephone numbers (col. 2, lines 51 to 58, and Fig. 2), each memory location having memory space for storing at least two detailed items, i.e. telephone numbers (col. 3, lines 23 to 29, and Fig. 3: five telephone numbers). More specifically, the method includes the steps of:

- receiving from a user a first input which corresponds to a predetermined input for accessing a memory location (i.e. selecting a name by scrolling a jog dial wheel up or down, see col. 4, lines 4 to 7, and Figs 4A and 4B);

- receiving from the user, in sequence to the first input, a predetermined identification key input that indicates that three detailed items stored at the accessed memory location corresponding to the first input are to be displayed (i.e. by pressing-in the jog dial wheel, thereby retrieving telephone numbers associated with the selected name, see col. 4, lines 21 to 25, and Fig. 4C);

- in response to receiving the predetermined identification key input, displaying on a display unit 102 of the mobile communication terminal 100 detailed items stored at the memory location corresponding to the first input (in the example of Fig. 4C: three telephone numbers);

- receiving from the user a third input for selecting one of the displayed detailed items (by scrolling the jog dial wheel up or down, see col. 4, lines 42 to 46, and Fig. 4D); and

- initiating a call connection to a telephone number that corresponds to the detailed item displayed as selected by the user (by pressing-in the jog dial wheel, see col. 4, lines 51 to 55).

7.2 Since claim 1 of the fourth auxiliary request includes the step of initiating a call to one of the "displayed" phone numbers, the board interprets the claim such that the step of receiving a predetermined identification key input "for displaying" all detailed items stored at the accessed memory location includes the step of actually displaying all detailed items.

7.3 The subject-matter of claim 1 of the fourth auxiliary request differs from the method disclosed in D2 in that according to claim 1:

i) the first input is a numeric key input;

ii) the numeric key input corresponds to a predetermined hot key for accessing the memory location; and

iii) all detailed items stored at the accessed memory location are displayed.

7.4 Features i) and ii) do not contribute to an inventive step for the reasons as set out at point 2 above in connection with claim 1 of the main request.

Further, the board notes that D2 does not impose any restrictions on the number of telephone numbers a user may store for a particular name when executing the data entry routine for entering the names and telephone numbers (col. 5, lines 7 to 27, and Fig. 5). Hence, it would have obvious to the skilled person that if the user stored only three detailed items for a particular name, all three detailed items stored at the accessed memory location would be displayed on the display unit 102, 406 (Figs 1A and 4C) of the mobile communication terminal 100. Hence, feature iii) does not contribute to an inventive step.

7.5 The subject-matter of claim 1 of the fourth auxiliary request does not therefore involve an inventive step (Articles 52(1) and 56 EPC). Hence, the fourth auxiliary request as a whole is not allowable.

8. Article 56 EPC - inventive step - fifth auxiliary request

8.1 Claim 1 of the fifth auxiliary request includes two alternatives, a first method in which the identification key input is received and all detailed items stored at the accessed memory location are displayed, and a second method in which the identification key input is not received and a call to the detailed item having the representative status is initiated (see point VIII, claim 1 of the fifth auxiliary request, last three paragraphs).

8.2 All the steps of the first method are also part of the method of claim 1 of the fourth auxiliary request, with the exception of one additional feature according to which one of the detailed items stored at the memory location is assigned a representative status (see point VIII, claim 1 of the fifth auxiliary request, first paragraph).

8.3 This additional feature is however known from D2, in which the stored telephone number which is assigned a representative status is referred to as the "primary number" (col. 3, lines 60 to 66).

8.4 Consequently, taking into account the reasons set out at point 7 above in connection with claim 1 of the fourth auxiliary request, the subject-matter of claim 1 of the fifth auxiliary request, at least according to the first alternative, does not involve an inventive step (Articles 52(1) and 56 EPC).

8.5 The fifth auxiliary request as a whole is therefore not allowable.

9. There being no allowable request, it follows that the appeal must be dismissed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.