T 1182/10 (Mobile phone instructions conversion/SIEMENS) of 22.1.2015

Summary of Facts and Submissions

I. The appeal is against the decision by the examining division, with reasons dispatched on 30.12.2009, to refuse European patent application 06 734 076.0, on the basis that the subject-matter of the claims of both the main and the auxiliary request was not inventive, Article 56 EPC 1973. The following document was cited during the first instance procedure:

D1 = US 6 704 798 B

II. A notice of appeal was received on 18.02.2010, the appeal fee being paid on 18.02.2010. A statement of the grounds of the appeal was received on 05.05.2010.

III. The appellant requested that the decision under appeal be set aside and a patent granted on the basis of a sole request corresponding to the refused main request. The appellant made a conditional request for oral proceedings.

IV. The board issued a summons to oral proceedings. In an annex to the summons, the board set out its preliminary, negative opinion on the appeal, according to which the claims did not satisfy the requirements of Articles 84 and 83 EPC 1973.

V. On 22.12.2014, the appellant filed a new main request and two auxiliary requests. During the oral proceedings the appellant filed a new single request ("Neuer Hauptantrag"), replacing all previous requests.

VI. The appellant requests that the decision under appeal be set aside and a patent be granted on the basis of claims 1 and 2 of its single request filed during the oral proceedings and on the basis of the description pages 3-19 as originally filed and pages 1 and 2 as received on 21.08.2008, and drawing sheets 1-5 as originally filed.

VII. Claim 1 reads as follows:

"A system (400), comprising

a first wireless phone (410) to define a first sequence of UI navigational steps directed to achieving a result;

a server (420) in communication with the first wireless phone (410), wherein the server (420) is to receive the first sequence of UI navigational steps from the first wireless phone (410) and convert the first sequence of UI navigational steps, by means of a lookup, to a second sequence of UI navigational steps directed to achieving the result; and

a second wireless phone (430) in communication with at least one of the first wireless phone (410) or the server (420), wherein the second wireless phone (430) is provided with the second sequence of UI navigational steps and wherein the second wireless phone (430) is to execute the second sequence of UI navigational steps to achieve the result."

VIII. Claim 2 is a method claim comprising method features corresponding to the apparatus features of claim 1.

IX. At the end of the oral proceedings, the board announced its decision.

Reasons for the Decision

1. Added subject-matter; Article 123(2) EPC

1.1 The board considers that no subject-matter has been added to claim 1 of the new request, for the following reasons:

1.1.1 The feature according to which the user devices are wireless phones is disclosed on the last line of page 2 of the original description.

1.1.2 The feature according to which the set of instructions is a sequence of UI navigational steps is disclosed on page 16, first full paragraph, fourth sentence of the original description.

1.1.3 The feature according to which the conversion takes place by means of a lookup is disclosed on page 13, last paragraph, sentences 1 and 2 of the original description.

1.1.4 The feature according to which the second wireless phone is provided with the second sequence of UI navigational steps is disclosed on page 11, last sentence of the original description. As to the two possible communication ways for the provision, see page 16, paragraph 3, second sentence (provision by the server) and the paragraph bridging pages 16 and 17, third sentence (provision by the first wireless phone).

1.1.5 The requirements of Article 123(2) EPC have therefore been satisfied for claim 1.

1.2 For similar reasons, the board considers that the requirements of Article 123(2) EPC have also been satisfied for the corresponding method claim 2.

2. Clarity; Article 84 EPC 1973

The amendments introduced by the appellant to address the lack of clarity objection formulated by the board in its summons (5.1.1 and 5.1.3) are considered to deal with that objection in a satisfactory manner.

It will be the task of the first instance to verify both that any future amendments to the claims do not render the claims unclear and that such new claims are supported by the description.

3. Sufficiency of disclosure; Article 83 EPC 1973

The board considers it undisputable that the skilled person would be able to implement a system and method which convert, by means of a lookup, a sequence of UI navigational steps on a first phone to a sequence of UI navigational steps on a second phone which achieves the same result. The claims therefore satisfy the requirement of Article 83 EPC 1973.

4. Novelty and inventive step; Articles 54 and 56 EPC 1973

The subject-matter of the present claims differs from the disclosure of D1 at least in that D1 does not mention a conversion of UI navigational steps between wireless phones. The board also fails to see why such a measure would be obvious in the light of D1 either taken alone or in combination with the document cited in the International Search Report.

It is however apparent that the search was not directed to the subject-matter of the claims as presently formulated. It will be the task of the first instance to examine whether the claims satisfy the requirements of Article 54 and 56 EPC 1973 in the light of further prior art which it might possibly uncover.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the first instance for further prosecution on the basis of the Main Request ("Neuer Hauptantrag") as filed during oral proceedings.