T 1421/08 (Regeneration of runtime objects/SAP) of 24.11.2011

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division, announced in oral proceedings of 4 December 2007 and dispatched with letter of 10 March 2008, to refuse the European patent application no. 04740034.

II. The decision came to the conclusion that the indepen dent claims of the then pending requests lacked an inventive step, Article 56 EPC 1973, over the documents

D1: EP 1 001 336 A2

D2: EP 1 235 144 A2

and the Unix utility "cat" as part of the common know ledge in the art. Two further requests were not ad mitted pursuant to Rule 86(3) EPC 1973.

III. A notice of appeal was filed on 8 April 2008 and the appeal fee was paid on the same day. A statement of grounds of appeal was filed on 25 June 2008. In both the notice of appeal and the statement of grounds the appealed decision is said to be the decision of the examining division dated 18 February 2008.

IV. With summons to oral proceedings the board informed the appellant that the board intended to interpret the appeal as referring to the refusal decision dated 10 March 2008. The board also indicated that it took the appellant's requests to be that the decision under appeal be set aside and that a patent be granted on the basis of claims 1-16 according to a main request or a first auxiliary request as filed with the statement of grounds of appeal, in combination with the following application documents:

description, pages

3-31 as originally filed

1, 2a, 32 as filed by fax on 5 December 2006

2 as filed by fax on 5 November 2007

drawings, sheets

1/23-23/23 as originally filed

V. Claim 1 according to the main request reads as follows:

"An apparatus for regenerating runtime objects, the apparatus comprising:

a processor (210); and

a memory (240), coupled to the processor, storing instructions adapted to be executed by the processor to:

retrieve (100) object model data (1500) defining framework-specific relationships between object types of a computer application framework;

access (110) a generic object navigation grammar file;

incorporate (120) the object model data into the generic object navigation grammar file to produce a framework specific object navigation grammar file;

provide the framework specific object navigation grammar file to a parser generator arranged to generate a rule parser (1510);

parse (1610) one or more invalidation rules by utilizing the generated rule parser (1510) to check the one or more invalidation rules for syntactic correctness, the or each invalidation rule identifying relationships between development objects and runtime objects;

generate a respective rule object for the or each syntactically correct invalidation rule;

execute the or each rule object to invalidate one or more run time [sic] objects which are to be regenerated in response to changes made to one or more development objects; and

regenerate the invalidated run time objects."

Claim 9 according to the main request relates to a computer-implemented method comprising steps which correspond closely to the instructions stored in the memory according to claim 1.

In the light of the board's decision the wording of the auxiliary request is irrelevant.

VI. In substance the board expressed its preliminary opin ion that the invention according to the amended claims of the main request would not be obvious over the prior art to hand so that the decision would have to be set aside. It also raised a clarity objection against the independent claims of the main request and indicated its provisional intention to remit the appli cation to the examining division for further prosecution.

VII. With letter dated 27 September 2011 the appellant agreed to remittal of the application for further prose c ution on the basis of the main request without holding oral proceedings. Consequent ly, the oral proceedings before the board were cancelled.

Reasons for the Decision

1. Rule 99(1)(b) EPC provides that the notice of appeal shall contain an indication of the decision impugned. The notice of appeal and the grounds of appeal state that the appeal is "against the decision of the examining division dated 18th February 2008, in which the above patent application was refused" although the real date of that decision is 10 March 2008. Since however the appealed decision is identifiable unambiguously and without difficulty this clerical error has no consequence upon the admissibility of the appeal under Rule 99(1)(b) and 101(1) EPC. Further in view of the facts summarised under points I and III above the board concludes that the appeal is admissible as complying with Articles 106-108 and Rule 99 EPC.

The Invention

2. The invention relates to the development of object-orien ted software during which "runtime objects" are generated from "development objects". When a particular development object is modified certain runtime objects may have to be re-generated while others will not be affec ted. Which runtime objects are affected is deter mined according to so-called invalidation rules. It is a concern of the application that only the invalidated runtime objects are regenerated rather than all of them (cf. p. 11, par. 4; p. 12, par. 3; p. 27, last par. - p. 30, 2nd par.).

Claim construction and Article 84 EPC 1973

3. The present claims use terminology which is, in the board's view, not generally estab lished in the art. This includes in particular the terms "invalidation rules", "object navi ga tion grammar", and "computer application frame work" with "framework specific relationships between object types".

3.1 The term "invalidation rule" alone does not de fine what is to be invalidated or how, nor does the re quirement that the invalidation rules "identif[y] rela tionships between development objects and runtime ob jects". Simi larly, the term "object navigation grammar" on its own does not define form or function of the grammar. Also the fact that the "object navigation grammar" de fines the syntax of the invalidation rules is insufficient in this regard. However, the last five lines of claim 1 of the main request as reproduced above and the correspon ding part of claim 9 - specifying the rege ne ration of run time objects which are invali da ted by the rule objects and thus according to the inva li dation rules - clarify to the board's satisfaction the function of the invalidation rules and, indirectly, of the object navigation grammar within the context of the claimed invention.

3.2 Independent claims 1 and 9 of the main request refer to "object types" and their "relationships" without further defining either notion explicitly. The claims also leave unclear how the "relationship between object types" relates to "relationships between development objects and runtime objects" identified by the invali da tion rules. In the board's view the claims do not overcome this deficiency by defining that the "object model data defining framework-specific relationships between object types of a computer application frame work" are "incorpora ted ... into the generic object navigation grammar" and then used to parse "invalida tion rules identifying relationships between develop ment objects and runtime objects" as defined by the invalidation rules (see e. g. claim 1 of the main request as reproduced above, lines 6-8 and 20-22). For these reasons, the board considers claims 1 and 9 of the main re quest to be unclear, Article 84 EPC 1973.

Technical character and technical contribution

4. According to established jurisprudence of the boards of appeal the claims - directed towards apparatus and com pu ter-implemented methods, respective ly - define inven tions within the meaning of Article 52 EPC (see G 3/08, OJ 2011, 10; in particular reasons 10.7). This is not under dispute.

5. The central point at stake however is which technical effects can be attributed to the claimed matter and which technical contribution the claimed matter makes over the prior art.

5.1 The primary purpose of the claims according to the main request, witness the preamble and the last feature of both independent claims, is the regeneration of runtime objects in response to changes made to develop ment objects. This is part of what is conventionally called the "build process" of a software application.

5.2 The feature claiming regeneration of runtime objects determines the nature of the claimed invention and is, therefore, central for the assessment of patentability. The board notes that this feature was not contained in the claims subject to the appealed decision but added to the claims filed with the grounds of appeal.

5.3 Determining which runtime objects need to be regene ra ted in an individual case in view of regenerating only those rather than all of them contributes to limiting the resour ces needed for a particular build. The board con siders this as a technical effect. Therefore, according to established jurisprudence of the boards of appeal, the features contributing to this effect must be taken into account for the assessment of inventive step (see T 641/00, OJ EPO 2003, 352, Headnote 1).

5.4 According to the claims, the grammar relates to how the syntax of inva li dation rules is defined, the parser ge ne rator to how the syntactic correctness of the invali dation rules so defined is verified, and the object rules to how the syntactically correct invalidation rules are used so as to identify invalidated runtime objects. These features do not have an imme diate impact on the increased efficiency of the build process if and inso far as the invalidation rules and the runtime objects to be regenerated remain unchanged.

5.5 Further, the board cannot agree with the appellant that "the way in which the invalidation rules are parsed" or "in which the parser is generated" must "take into account the nature of the relationships be tween the development and runtime objects", or "the nature" or "the purpose of the invalidation rules" (grounds of appeal, points 18 and 19 and 38). According to conven tional understanding in the art, the parsing does not depend on the nature of these relationships but only on the way they are represented within the grammar, for instance in that the form of a grammar has an impact on whether it can be processed by a parti cu lar kind of parser or within specific time or space constraints.

5.6 However the board considers that the utilisa tion of a grammar, a parser gene ra tor and rule objects enables the software deve loper to exercise control over the build process and over the extent to and the ease with which the relevant effect is actually achieved.

5.7 The board is of the opinion that within a claimed inven tion having a primary technical effect, features enabling and supporting control of that effect will typically have technical character as well. In consequence, the board concludes that the fact that a grammar, a parser generator and rule objects are used within the context of regenerating runtime objects contributes to the tech nical character of independent claims of 1 and 9 of the main request and therefore may also contribute to inventive step.

The Prior Art

6. D1 discloses a system which processes different types of information (see e.g. pars. 7, 16, 18, 28) so as to generate "documentation or code objects" such as "pro gramming code", a "WWW page" or "input/output inter fa ces" (par. 44). The generated "objects" may contain source code (see par. 7, line 4) and thus constitute "deve lop ment objects" as claimed rather than "runtime objects". D1 does not deal with the process of genera ting runtime objects from development objects (esp. not compiling or linking), let alone the question of whether runtime objects may have been invalidated and must be regene rated. D1 thus does not relate to the software build process as a whole or its efficiency or effec tive ness.

7. D2 is concerned with the automatic recognition of user-interface objects, identifiers or descriptors in an appli cation executing on a web browser. This recogni tion is achieved by parsing the application's underly ing HTML (or other markup-language) stream or document object model according to an "application-specific grammar" (cf. par. 10, claim 1). The parser may be generated automatically from a pertinent grammar using commonly available tools such as "yacc" (see par. 35). Also D2 does not relate to the software build process as a whole. Indeed D2 was cited in the impugned decision only to establish that yacc was well-known in the art (cf. refusal, point 2.2) which is not disputed by the appellant (cf. grounds of appeal, point 28).

8. The board therefore concludes that on the basis of the prior art discussed during the procedure so far an inven tive step in the sense of Article 56 EPC 1973 has to be acknowledged.

9. In consequence, the decision has to be set aside.

9.1 However the board cannot ignore that build tools were known in the art well before the priority date of the present application. Two particularly prominent examples are "make" - which belongs to a standard set of build tools used under Unix - and the GNU autotools suite, but other build tools exist as well.

9.2 The board notes that none of the prior art cited in the search report or during the examination procedure relates to such build tools.

9.3 The board also notes that neither the original claims nor any of the claims discussed during examination were directed towards "regenerating runtime objects" as are the present claims. Instead, all earlier claims - and, in fact, the summary of the invention according to the application as originally filed - were directed towards "completing a framework-specific object navigation grammar" and "parsing ... invalidation rules using [this] grammar".

9.4 The board has no doubts that the amended claims - and in particular the limitation to the regeneration of invalidated runtime objects - are dis closed in the application as originally filed (see references under point 2 above) but cannot exclude the possibility that they were not anticipated by the search examiner and, hence, not searched.

9.5 Therefore, the board exercises its discretion under Article 111(1) EPC so as to remit the application to the examining division for further prosecution of the main request. During further prosecution, the examining division should bear in mind the clarity problem mentioned in point 3.2 above and, in particular, assess whether the search performed can be considered complete for the present set of claims or whether an additional search has to be performed.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The application is remitted to the examining division for further prosecution on the basis of the main request.