T 0986/10 (User interface/RESEARCH IN MOTION) of 19.10.2012

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 06122386.3 (publication number EP 1 773 037 A) on the ground that the subject-matter of the independent claims of each one of a main request and three auxiliary requests lacked an inventive step (Articles 52(1) and 56 EPC).

II. The following documents which were referred to in the decision are relevant to the present decision:

Dl: EP 1 193 621 A;

D2: WO 01/22680 A;

D3: US 2002/0197981 A;

D5: WO 02/35808 A; and

D6: US 6 192 258 B.

III. With the statement of grounds of appeal the appellant filed claims of a main request and new first to eleventh auxiliary requests and submitted arguments in support. Oral proceedings were conditionally requested.

IV. The appellant was summoned to oral proceedings. In a communication accompanying the summons, the board raised, without prejudice to its final decision, objections under, inter alia, Article 52(1) EPC in combination with Article 56 EPC (lack of inventive step), Article 84 EPC (lack of clarity) and Article 123(2) EPC (added subject-matter).

V. In preparation for the oral proceedings, the appellant filed with a letter dated 19 September 2012 claims of a main request and new first to fifteenth auxiliary requests (as renumbered by the board) and presented arguments in support of these requests.

VI. Oral proceedings were held on 19 October 2012. In the course of these oral proceedings the appellant withdrew the thirteenth and fourteenth auxiliary requests.

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, on the basis of one of the first to twelfth or fifteenth auxiliary requests, all requests as filed with the letter dated 19 September 2012 as main request and auxiliary requests 0, 1, 1a, 2, 3, 4, 4a, 5, 6, 6a, 7, 8 and 11, respectively.

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

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

"A method for initiating functions associated with telephone numbers from a handheld mobile telephone device (202) adapted to operate in a wireless communication network (104), comprising:

providing a user interface which includes a visual display (222) and first and second keys;

receiving a message (502) or information of a web page through a wireless transceiver (211) of the handheld mobile telephone device (202);

causing the message (502) or the web page to be visually displayed in the visual display (222), the message (502) or the web page including a telephone number string;

causing a hyperlink (506) for the telephone number string in the message (502) or the web page to be created for use while the message (502) or the web page is visually displayed in the visual display (222);

causing the hyperlink (506) for the telephone number string to be highlighted when a position marker in the visual display (222) is detected to be positioned over the hyperlink (506) during the visual displaying of the message (502) or the web page;

in response to detecting a single depression of the first key (308) following the highlighting of the hyperlink (506) and without detecting any intervening key depressions: causing a telephone call to the telephone number string to be initiated through the wireless communication network (104); and

in response to detecting an actuation of the second key (312) while the hyperlink (506) is highlighted: causing a list of functions for the telephone number string to be visually displayed in the visual display (222).".

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

"providing a user interface of the handheld mobile telephone device (202), the user interface including a visual display (222) and first and second keys;"

and in that the text of the last three paragraphs is replaced by the following text:

"causing the hyperlink (506) for the telephone number string to be highlighted when selected during the visual displaying of the message (502) or the web page;

detecting if the first key (308) is depressed and in response to detecting a single depression of the first key (308) while the hyperlink (506) is highlighted and without detecting any intervening key depressions: causing a telephone call to the telephone number string to be initiated through the wireless communication network (104); and

detecting if the second key is actuated and in response to detecting an actuation of the second key (312) while the hyperlink (506) is highlighted: causing a list of functions for the telephone number string to be visually displayed in the visual display (222).".

Claim 1 of the second auxiliary request differs from claim 1 of the first auxiliary request in that in the first paragraph "for initiating functions" is replaced by "for initiating telephone calls and SMS messages" and in that in the second paragraph the reference sign "(202)" is deleted and the wording "first and second keys" is replaced by "a first and a second key". Further, the following paragraph is added to the claim:

"the list of functions comprising a text message function designated for sending an SMS message to the telephone number string, and a telephone call function designated to call the telephone number string, wherein at least the text message function and the telephone call function are displayed concurrently in response to the actuation of the second key.".

Claim 1 of the third auxiliary request differs from claim 1 of the second auxiliary request in that in the first paragraph "and SMS messages" is deleted.

Claim 1 of the fourth auxiliary request differs from claim 1 of the third auxiliary request in that the following paragraph is added to the claim:

"wherein the second key is for use in selecting the hyperlink during the visual displaying of the message.".

Claim 1 of the fifth auxiliary request differs from claim 1 of the fourth auxiliary request in that the following paragraph is added to the claim:

"the viewing and selection mechanism is adapted for scrolling through message (502) or the web page.".

Claim 1 of the sixth auxiliary request differs from claim 1 of the fifth auxiliary request in that in the first paragraph "for initiating telephone calls" is replaced by "for initiating telephone calls and SMS messages" and in that in the second paragraph "visual display" is replaced by "visual touch screen display". Further, the following paragraph is added to the claim:

"wherein the first key comprises a visual object displayed in the visual display (222) of the user interface and detectable to the touch.".

Claim 1 of the seventh auxiliary request differs from claim 1 of the sixth auxiliary request in that in the first paragraph "for initiating telephone calls and SMS messages" is replaced by "for initiating telephone calls" and in that the last paragraph is replaced by the following two paragraphs:

"wherein the first key is a SEND key;

wherein the first key and a further key for terminating a telephone call are visual objects displayed in the visual touch screen display (222) of the user interface and detectable to the touch.".

Claim 1 of the eighth auxiliary request differs from claim 1 of the fifth auxiliary request in that the following paragraph is added to the claim:

"wherein the visual display is capable of performing device-resident functions.".

Claim 1 of the ninth auxiliary request differs from claim 1 of the fifth auxiliary request in that the eighth paragraph is amended to read as follows (amendment underlined by the board):

"detecting if the second key is actuated and in response to detecting an actuation of the second key (312) while the hyperlink (506) is highlighted: causing a list of functions for the telephone number string to be visually displayed in the visual display (222) adjacent to the message or the web page".

Claim 1 of the tenth auxiliary request differs from claim 1 of the ninth auxiliary request in that in the eighth paragraph "adjacent to the message or the web page" is replaced by "adjacent to the message".

Claim 1 of the eleventh auxiliary request differs from claim 1 of the fifth auxiliary request in that the following paragraph is inserted between the fifth and sixth paragraphs:

"causing the hyperlink (506) for the telephone number string to be appropriately identified as such in the visually displayed message by underlining, marking or otherwise emphasizing the telephone number string in the visual display of information;".

Claim 1 of the twelfth auxiliary request differs from claim 1 of the eleventh auxiliary request in that the third paragraph is amended to read as follows:

"drafting a message;".

and in that the wording "or the web page" is deleted in each of the fourth, fifth and last paragraphs.

Claim 1 of the fifteenth auxiliary request differs from claim 1 of the fifth auxiliary request in that the last two paragraphs are amended to read as follows:

"wherein the second key comprises a scrollwheel;

the scrollwheel is adapted for scrolling through message [sic] (502) or the web page and moving the position marker (504) to a different location within message [sic] (502) or the web page;

wherein the first key is a SEND key,

wherein the first key is exposed on a front side of the mobile telephone device (202) and wherein the scrollwheel is positioned on a lateral side of mobile telephone device [sic] (202).".

Reasons for the Decision

1. Main request

1.1 In the board's view, D1 represents the closest prior art, since it relates, like the application in suit, to a method of initiating communications from a mobile telephone device by selecting a hyperlinked telephone number in an electronic text, e.g. in an electronic mail message (see D1, paragraphs [0008], [0012], [0020], and [0040], and Fig. 1A).

1.2 More specifically, D1 discloses, using the language of claim 1 of the main request, a method for initiating functions associated with telephone numbers, i.e. initiating a telephone call, from a handheld mobile telephone device 100 (D1, Figs 1A and 1B) which is adapted to operate in a wireless communication network 120, in which the method includes the steps of:

providing a user interface 101 of the handheld mobile telephone device 100, which includes a visual display 105 and first and second keys, i.e. dialling control buttons 107 and navigation control buttons 108;

receiving a message or information of a web page through a wireless receiver of the handheld mobile telephone device, the message or the web page including a telephone number string (paragraphs [0037] and [0040]);

causing a hyperlink for the telephone number string in the message or the web page to be created (paragraphs [0013], [0020] and [0081]); and

in response to a selection of the hyperlinked telephone number by an end user causing a telephone call to the selected telephone number string to be initiated through the wireless communication network (paragraphs [0020] and [0081]).

Since the end user of the mobile telephone device can select a hyperlinked telephone number string in the received message or the web page in order to automatically dial the telephone number (paragraph [0020]), it is implicit that the message or the web page is visually displayed on the visual display 105 and that the hyperlink is suitable for use while the message or the web page is visually displayed in the visual display.

1.3 The subject-matter of claim 1 of the main request thus differs from the method disclosed in D1 by the following features:

i) causing the hyperlink for the telephone number string to be highlighted when a position marker in the visual display is detected to be positioned over the hyperlink during the visual displaying of the message or the web page;

ii) the telephone call to the hyperlinked, highlighted telephone number string is initiated in response to detecting a single depression of the first key, following the highlighting of the hyperlink, and without detecting any intervening key depressions; and

iii) in response to detecting an actuation of the (or a) second key, while the hyperlink is highlighted, causing a list of functions for the telephone number string to be visually displayed in the visual display.

1.4 The highlighting of the hyperlink facilitates the operation of the mobile phone device by the user. D1 (cf. paragraphs [0020] and [0081]) does not give details about how the hyperlinked telephone number in the message or web page is visually displayed. Nor does it describe how the selection of the hyperlinked telephone number by the user and the automatic dialling of the selected telephone number are technically implemented.

1.5 The board notes however that in D1 reference is made to mobile computing devices, such as mobile telephones and personal digital assistants (PDAs), which allow for navigation of the World Wide Web, in which a web page including hyperlinks is displayed (D1, section 3 ("Background and Relevant Art"), paragraphs [0004] to [0006]). In paragraph [0006] it is described that when a user selects a hyperlinked URL (Uniform Resource Locator), the web browser is configured to navigate to the corresponding web page identified by the URL. Since D1 discloses that the method of D1 may be practiced with many types of computer system configurations, including hand-held devices (paragraph [0030]), it would have been obvious to the skilled reader that the handheld mobile telephone device 100 may be a PDA or a smartphone which combines functions of a PDA with a mobile phone.

1.6 The board further notes that at the date of filing (in the sense of Article 76(1) EPC) of the application in suit (28 May 2004), it was part of the common general knowledge of a person skilled in the art that Internet Explorer was a widely-used graphical user interface (GUI) based web browser which was suitable for use in a mobile telephone device (also known as Pocket Internet Explorer). Hence, the use of Internet Explorer or another GUI-based browser in a PDA or smartphone in order to implement the method of D1 would not have required any inventive skill.

More specifically, a GUI-based browser, such as Internet Explorer, features the highlighting of a hyperlink in an HTML (HyperText Markup Language) document when moving a cursor over the hyperlink by means of a selecting and viewing mechanism, e.g., a mouse. In the case of a PDA or smartphone, navigation buttons, a joystick, a scroll wheel, a trackball, a pen, or button images displayed on a visual touch screen display may be used (see, e.g., D3, paragraph [0002] ("Background Art"), D5, page 3, lines 22 to 27, and D6, col. 1, lines 64 to 67, and col. 7, lines 19 to 35). In the case of a mouse, subsequently clicking the left-hand mouse button causes the hyperlink to be selected, whilst clicking the right-hand mouse button causes a context menu, also referred to as shortcut or popup menu, to be invoked, which offers a limited list of functions which relate to the hyperlink and from which the user can subsequently select one. These selecting and context menu invoking operations may alternatively, as the case may be, be carried out by operating a joystick, a scroll wheel, a trackball, a stylus, by pressing navigation and selection buttons, or by touching button images displayed on a visual touch screen display. In each case, on positioning the cursor, i.e. a position marker in the visual display, over the hyperlink during the visual displaying of the message or the web page, the hyperlink is highlighted and can be selected either directly or via the context menu.

The board also notes that in the application in suit the steps of highlighting a hyperlink and visually displaying a list of functions for the telephone number string, i.e. displaying a context menu, on actuating the second key, in particular a scroll wheel, and subsequently selecting a function using the scroll wheel, are referred to as conventional steps for a mobile station (column 12, lines 30 to 35 and 49 to 52, column 13, lines 3 to 5, and Fig. 4, steps 410, 414, 422, and 426, of the application as published).

1.7 On applying the above-mentioned common browser functionalities to the method disclosed in D1, in which the hyperlink is a telephone number string, the skilled person would have arrived at a method in which the user, by using a key, e.g. a scroll wheel, may highlight a hyperlinked telephone number (cf. point 1.3, feature i)).

Further, since the functions in the list of the context menu are to relate to the hyperlinked telephone number string, it would have been obvious to include a telephone call function as one of the functions in the context menu, thereby making it possible, using the scroll wheel, to initiate the telephone call to the highlighted, hyperlinked telephone number string via the context menu (cf. point 1.3, feature iii)).

1.8 The board further notes that, since it was common at the date of filing that mobile telephones had a CALL, i.e. SEND, key which could be pressed in order to initiate a telephone call to a selected telephone number, it would have been obvious to the person skilled in the art that in the above-described method the SEND key may alternatively be used in order to directly initiate by a single key depression a telephone call to the highlighted, hyperlinked telephone number string, without any intervening key depressions (cf. point 1.3, feature ii)).

1.9 It follows that a person skilled in the art, when starting out from D1 and faced with the problems of facilitating the operation of the mobile telephone device of D1 and of technically implementing the steps of selecting and automatically dialling the hyperlinked telephone number, would, without the exercise of inventive skill, have implemented the method by making use of a web browser as described above such that the hyperlink to the telephone number can be highlighted and a telephone call to highlighted, hyperlinked telephone number string can be initiated either directly by using the first key, e.g. the SEND key, or via a list of functions of a context menu after actuating a second key, e.g. a scroll wheel.

1.10 In the statement of grounds of appeal the appellant argued that the claimed user interface provided for reliability in that, since the function of the first key was limited to immediately calling the hyperlinked telephone number, it was ensured that the first key was not pressed by mistake. Further, isolating the immediate call function from the selection mechanism — which was often used by the user for selection purposes — aided in ensuring that a call was not initiated by mistake.

The board does not find these arguments convincing, since in claim 1 the function of the first key is not limited in any way and a call function is not excluded from the list of functions.

1.11 In view of the above, the board concludes that a person skilled in the art, starting out from the disclosure of D1 and taking into account his common general knowledge, would have arrived, without the exercise of inventive skill, at a method for initiating functions associated with telephone numbers, which includes all the features of claim 1. The subject-matter of claim 1 of the main request does not therefore involve an inventive step (Articles 52(1) and 56 EPC).

1.12 The main request is therefore not allowable.

2. First auxiliary request

2.1 The amendments to claim 1 of the first auxiliary request (see point VII above) were made in an attempt to overcome objections under Articles 84 and 123(2) EPC in respect of the then pending main request (which is identical to the present main request). Neither in the letter dated 19 September 2012 nor at the oral proceedings did the appellant submit arguments in support of inventive step specifically in respect of the subject-matter of claim 1 of the first auxiliary request. In the board's view, the reasons concerning lack of inventive step as set out in respect of claim 1 of the main request, see point 1 above, apply mutatis mutandis to claim 1 of the first auxiliary request. It follows that the subject-matter of claim 1 of the first auxiliary request does not involve an inventive step (Articles 52(1) and 56 EPC).

2.2 The first auxiliary request is therefore not allowable.

3. Second and third auxiliary requests

3.1 Claim 1 of the second auxiliary request (see point VII above) essentially differs from claim 1 of the first auxiliary request in that in the first paragraph "for initiating functions" is replaced by "for initiating telephone calls and SMS messages" and in that the following paragraph is added to the claim:

"the list of functions comprising a text message function designated for sending an SMS message to the telephone number string, and a telephone call function designated to call the telephone number string, wherein at least the text message function and the telephone call function are displayed concurrently in response to the actuation of the second key.".

Hence, in comparison with claim 1 of the first auxiliary request, claim 1 of the second auxiliary request essentially adds the option of selecting an SMS text message function from the list of the context menu.

3.2 The board notes that D1 discloses that a selection of a hyperlinked telephone number may result in performing "appropriate actions for a telephone number" (D1, paragraph [0020]). For example, a user may select the hyperlinked telephone number to automatically dial the telephone number (D1, paragraph [0020]). D1 does not disclose which other "appropriate actions for a telephone number" may be performed.

3.3 At the filing date of the present application (28 May 2004) the sending of a text message, in particular a text message using the Short Message Service (SMS) communications protocol, between mobile telephone devices was well-known. It would therefore have been obvious to the person skilled in the art to include an SMS text message function, in addition to the telephone call function, in the list of the context menu, thereby offering the user the option to initiate an SMS text message to the highlighted, hyperlinked telephone number string.

3.4 The above considerations equally apply to claim 1 of the third auxiliary request, which differs from claim 1 of the second auxiliary request only in that in the first paragraph "and SMS messages" is deleted (see point VII above).

3.5 In view of the above and the reasons set out above, point 2, in relation to the subject-matter of claim 1 of the first auxiliary request, the subject-matter of claim 1 of each of the second and third auxiliary requests does not involve an inventive step (Articles 52(1) and 56 EPC).

3.6 The second and third auxiliary requests are therefore not allowable.

4. Fourth and fifth auxiliary requests

4.1 Claim 1 of the fourth auxiliary request differs from claim 1 of the third auxiliary request in that the feature according to which the second key is for use in selecting the hyperlink during the visual displaying of the message is added (see point VII). Claim 1 of the fifth auxiliary request further adds the feature that a viewing and selection mechanism is provided which is adapted for scrolling through the message or the web page.

4.2 However, as set out above (points 1.6 and 1.7, "scroll wheel") these features relate to common browser functionalities, the use of which in the method disclosed in D1 does not contribute to an inventive step (Articles 52(1) and 56 EPC).

4.3 The fourth and fifth auxiliary requests are therefore not allowable.

5. Sixth to twelfth and fifteenth auxiliary requests

5.1 In accordance with Article 13(1) RPBA any amendment to a party's case after it has filed its grounds of appeal may be admitted and considered at the board's discretion. The discretion shall be exercised in view of, inter alia, the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

In this respect, the board notes that in claim 1 of each of the sixth to twelfth and fifteenth auxiliary requests one or more features are added which were not in any of the claims as originally filed and, hence, do not appear to have been covered by the search. Consequently, if the board were to admit any one of these requests, it would be compelled to remit the case to the department of first instance, which would run counter to the principle of procedural economy.

5.2 Further, in line with the established case law of the boards of appeal, one of the criteria for admitting further amendments to a claim at a late stage of the appeal proceedings (in the present case the requests were submitted one month before the oral proceedings with the letter dated 19 September 2012) is whether or not the claims are clearly allowable. In this respect, the board notes that in the letter dated 19 September 2012 the appellant did not submit any arguments in support of inventive step of the claimed subject-matter, despite the fact that in the communication accompanying the summons to oral proceedings objections under Article 52(1) EPC in combination with Article 56 EPC had been raised.

In the board's judgement, claim 1 of each of the sixth to twelfth and fifteenth auxiliary requests is, having regard to the available prior art documents on file only and taking into account the common general knowledge of a person skilled in the art, in the case of each of these requests not clearly allowable. The reasons are as follows:

Claim 1 of the sixth auxiliary request essentially differs from claim 1 of the fifth auxiliary request in that the visual display is a visual touch screen display and in that a feature is added according to which the first key comprises a visual object displayed in the visual display of the user interface and detectable to the touch (see point VII above). Further, claim 1 of the seventh auxiliary request adds the feature that the first key, which is a SEND key, and a further key for terminating a telephone call are visual objects displayed in the visual touch screen display of the user interface and detectable to the touch (ibid.).

However, it appears that at the date of filing of the application in suit (28 May 2004) mobile telephones provided with a visual touch screen display were well-known (see, e.g., D5, page 3, lines 19 to 27, and D6, col. 1, lines 64 to 67, col. 3, lines 50 to 53, and Fig. 2). Regarding the SEND key, reference is made to point 1.8 above. It follows that the use of a mobile telephone provided with a visual touch screen display, which supports various touch control functions, including a SEND key, in the method disclosed in D1 does not prima facie contribute to an inventive step.

Claim 1 of the eighth auxiliary request adds the feature that the visual display is capable of performing device-resident functions (see point VII above).

In the board's view, it was however common at the date of filing to use the visual display of a handheld mobile telephone device for performing device-resident functions, such as requesting a personal identification number (PIN), displaying the entries and results when using a calculator function or playing a game, or displaying a clock, a calendar, or a background image.

According to claim 1 of the ninth auxiliary request the list of functions for the telephone number string, i.e. the context menu, is displayed in the display "adjacent to the message or the web page". Claim 1 of the tenth auxiliary request includes the same feature, except that that "adjacent to the message or the web page" is replaced by "adjacent to the message".

However, positioning the context menu adjacent to the message or the web page appears to be a common feature of a GUI-based browser and, in any case, an obvious choice, since the list of functions relates to the telephone number string which is highlighted in the message or the web page and it would thus be practical to be able to see the message or the web page on the display when making a selection from the list of functions.

Claim 1 of the eleventh auxiliary request adds the feature of "appropriately" identifying the hyperlink for the telephone number string in the visually displayed message by underlining, marking or otherwise emphasizing the telephone number string.

The board notes that D1 discloses that a hyperlinked telephone number "may appear" hyperlinked (page 2, lines 53 to 55). In the board's view, this seems to suggest that the hyperlink for the telephone number may be appropriately identified as such, i.e. in that the user may visually recognise that the telephone number is hyperlinked in a way similar to identifying an embedded Universal Resource Locator (URL) as such. In this respect, reference is made, by way of example, to D2 (page 6, lines 16 to 20), which discloses that an identified embedded URL may be displayed to the user in some highlighted fashion (e.g., via underlined text, reverse text fonts, different color scheme, and the like) so that the user can more easily recognize the existence of the embedded URL within a received SMS message, and D5 (page 7, lines 14 to 22).

Claim 1 of the twelfth auxiliary request specifies that the message is drafted, instead of being received as in claim 1 of each of the higher ranking requests. The board notes however that in D1, instead of receiving a message through the wireless receiver of the handheld mobile telephone device, the message may alternatively be internally generated by one of the application programs executed locally on the telephonic device (cf. paragraphs [0037] and [0039]).

Claim 1 of the fifteenth auxiliary request additionally specifies that the first key is a SEND key which is exposed on a front side of the mobile telephone device and that the second key comprises a scroll wheel which is positioned on a lateral side of mobile telephone device. These are however common features of mobile telephones, see points 1.7 and 1.8 above and, e.g., D6, Figs 1A and 2 ("various keys 131" and "rotary push switch 132").

5.3 Consequently, in view of the above considerations and the reasoning given above in respect of the higher ranking requests, the subject-matter of claim 1 of each one of the sixth to twelfth and fifteenth auxiliary requests does not prima facie involve an inventive step and, hence, is not clearly allowable.

5.4 Exercising its discretion pursuant to Article 13(1) RPBA the board did not therefore admit the sixth to twelfth and fifteenth auxiliary requests to the appeal proceedings.

6. 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.