T 1793/12 (Selecting a word/SAMSUNG) of 24.1.2018

Summary of Facts and Submissions

I. The appeal lies from the decision of the Examining Division to refuse European patent application No. 07008941.2 for lack of inventive step (Articles 52(1) and 56 EPC) in the subject-matter of the independent claims of the main request and of the first and second auxiliary requests. The documents cited in the contested decision included:

D1: WO 00/45299 A, published on 3 August 2000;

D2: GB 2336694 A, published on 27 October 1999.

The Examining Division selected document D2 as starting point for assessing inventive step and considered some of the claimed features to be related to non-technical requirements.

II. In the statement of grounds of appeal, the appellant requested that the decision be set aside and that a patent be granted on the basis of one of the main and two auxiliary requests considered in the contested decision.

III. In a communication under Article 15(1) RPBA accompanying a summons to oral proceedings, the Board expressed its provisional opinion that the subject-matter of claim 1 of all requests lacked inventive step over either document D2 or the following document:

D5: US 6,961,722, published on 1 November 2005.

It also cited the following document:

D6: US 6,331,867, published on 18 December 2001.

Documents D5 and D6 had been cited in the European search report.

IV. With a letter dated 5 January 2018, the appellant informed the Board that it would not be attending the oral proceedings.

V. Oral proceedings were held as scheduled, in the absence of the appellant. At the end of the oral proceedings, the chairman pronounced the Board's decision.

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

"A method for selecting a word to be defined using an electronic dictionary function in a mobile communication terminal, comprising:

selecting a word in a displayed text document (S203 to S213, S301, S302) in response to a first input;

displaying the selected word in a search window (S217, S303);

providing steps enabling a user to modify the selected word in the search window (S219 to S225, S304);

searching for the displayed word (S229, S304) in response to a request to search for the displayed word (S227-YES); and

displaying information resulting from the search (S229, S305)."

VII. Claim 1 according to the first auxiliary request adds the following text at the end of claim 1 of the main request:

", wherein the selecting of the word in the displayed document comprises selecting the word in response to a touch signal input by a user on the word in the displayed document."

VIII. Claim 1 according to the second auxiliary request adds the following text at the end of claim 1 of the first auxiliary request:

", wherein the method further comprises:

adding a character to the displayed word in response to a second input, comprising:

moving a cursor in the search window in response to a second input and adding a character to the displayed word at a position corresponding to the cursor position in response to a third input."

IX. The arguments of the appellant which are relevant to the decision are discussed in detail below.

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

The invention

2. As background art the application describes mobile telephones having an electronic dictionary function (see description, page 1, line 15, to page 2, line 16). To search for the definition of a word in an electronic dictionary, the user may need to terminate the application ("mode") he is currently using on the mobile phone, such as an application for text documents, in order to enter his search word in a search window of an electronic dictionary "menu". This process is inconvenient, as the user needs to memorise the word to be looked up in the electronic dictionary.

3. In order to solve this problem, the application proposes a method and device for looking up the definition of a word in a text document displayed on a touch screen of a mobile communication terminal (see description, page 1, lines 9 to 12; page 2, line 19, to page 4, line 11; page 5, line 16, to page 6, line 13; Figure 1). The user can select a word, which is then displayed in a search window and can be modified before it is searched for in an electronic dictionary (page 6, line 14, to page 8, line 17; Figures 2A and 2B; original claims 1, 4 to 8 and 11). The information resulting from this search is then displayed.

Main request

4. Claim 1 of the main request relates to a "method for selecting a word to be defined using an electronic dictionary function in a mobile communication terminal", which comprises the following features itemised by the Board:

(a) selecting a word in a displayed text document in response to a first input;

(b) displaying the selected word in a search window;

(c) providing steps enabling a user to modify the selected word in the search window;

(d) searching for the displayed word in response to a request to search for the displayed word;

(e) displaying information resulting from the search.

Main request - inventive step

5. In the statement of grounds of appeal (see page 2, point 2), the appellant agreed with the contested decision's finding that document D2 was a suitable starting point for the assessment of inventive step.

While the Board accepts that document D2 can be used as a suitable starting point, it considers that document D5 is a more promising springboard for inventive step, as among other things it discloses different options for selecting or inputting the word to be searched for in a dictionary on a wireless device such as a telephone. By contrast, document D2 concerns a computing device such as a personal computer having a display, a mouse and a keyboard. As the claim concerns a method for selecting a word for a search in an electronic dictionary in a mobile communication terminal, the Board prefers to assess inventive step starting from document D5.

5.1 Document D5 discloses the use of a wireless device such as a telephone running a micro-browser application on a reduced operating system (see column 6, lines 19 to 23) for selecting a word for look-up in an electronic dictionary (see Figure 4, column 7, lines 14 to 23). The word to be searched for in the dictionary can be selected by highlighting it in an electronic document using a software application (column 7, lines 24 to 40). Hence, D5 discloses a method for selecting a word to be defined using an electronic dictionary function in a mobile communication terminal comprising feature (a).

5.2 Document D5 also discloses that results for the highlighted word are retrieved from an electronic dictionary in response to the user's request action (column 7, lines 41 to 55; column 8, lines 1 to 14). After retrieving the definition of the highlighted word, the electronic dictionary of D5 displays the retrieved results (column 8, lines 31 to 39). Hence, document D5 discloses features (d) and (e) of claim 1.

5.3 Features (b) and (c) are not disclosed in D5. The effect of these features is that the user can edit the selected word and search for the modified word in the dictionary. Which words the user wishes to look up is determined only by his subjective preferences and by linguistic considerations such as the wish to search for the stem of a word or for a part of a composite word.

Consequently, allowing the user to modify the selected word before retrieval is a non-technical requirement. According to the established case law of the boards of appeal, when assessing inventive step in accordance with the problem-and-solution approach such a non-technical requirement may legitimately be added to the problem as a constraint to be met (see decisions T 641/00, OJ EPO 2003, 352; T 154/04, OJ EPO 2008, 46).

5.4 In view of the above, the objective technical problem to be solved can be formulated as how to implement a function allowing a user to modify the selected word before look-up in the dictionary.

5.5 The implementation of the solution according to features (b) and (c) of claim 1 does not go beyond the use of a "search window". This is a window of the graphical user interface which displays the selected word with a cursor for editing according to input by the user. If a confirmation key is input, the displayed word is searched for using an electronic dictionary function (description, page 10, line 13, to page 12, line 4). Using a notorious graphical user interface element such as a window and providing means for (interactively) modifying the selected word in such a window were within the normal skill of the skilled person at the priority date.

5.6 The appellant argued that all claim features contributed to the solution of the objective technical problem of how to provide a method to search and retrieve words stored in a dictionary in a more efficient, faster or different manner and referred to decision T 643/00 in support of its view that retrieval from a dictionary was a technical task. Modification of the word to be searched allowed the user to manage this technical task.

5.7 The Board considers that the task of retrieving a word from a conventional paper-based dictionary and also the task of modifying a word prior to retrieval are tasks in a non-technical field. Hence, it agrees with the Examining Division that the wish for the user to be able to modify the word to be searched for before retrieval from the dictionary starts is to be regarded as a non-technical user requirement to be given to the skilled person.

5.8 As to the cited decision T 643/00 of 16 October 2003, the Board does not share the appellant's view that this decision is relevant for the present case. Decision T 1741/08 of 2 August 2012, reasons 2.1.13, comments on decision T 643/00 as follows:

"Therefore, in the board's view the technicality in T 643/00 comes from the technical character of images and their resolution, and the technical effect is the ability to display several images simultaneously if low resolution versions of the image are used. In the present case, there is no analogy to the technical feature of an image resolution."

The Board agrees with this analysis of decision T 643/00, and in the present case too sees no analogy to the technical feature of an image resolution. In the circumstances of the present case, the fundamental issue is rather that the task to be solved is in a non-technical field and that the claimed solution does not specify details of a technical implementation in a computer system that go beyond the use of notorious user interface elements such as windows.

In addition, the Board notes that the possibility to modify the search word essentially allows the user to freely search in the dictionary. Such a search possibility is per se self-evident for a dictionary and corresponds merely to the normal use of a conventional paper-based dictionary (see D5, column 1, lines 10 to 14; column 7, lines 30 to 31). Hence, the possibility to modify the search word essentially adds just this well-known free-text search option. The invention would therefore have to be regarded as obvious even if features (b) and (c) were considered to contribute to a technical effect.

5.9 It follows that claim 1 of the main request lacks inventive step (Articles 52(1) and 56 EPC) over D5.

First auxiliary request - inventive step

6. Claim 1 according to the first auxiliary request adds the following feature at the end of claim 1 of the main request:

(f) wherein the selecting of the word of the displayed document comprises selecting the word in response to a touch signal input by a user on the word in the displayed document.

The amendment is based on the description as filed (page 7, lines 8 to 11; page 12, line 22, to page 13, line 4).

7. Claim 1 of the first auxiliary request differs from D5 in features (b), (c) and (f).

8. Features (b) and (c) on the one hand and feature (f) on the other are not inter-related and provide no synergistic effect, since selection of the word is independent of its later modification. Hence, these different features have to be assessed independently in the problem-and-solution approach.

As it has already been established in the context of the main request that features (b) and (c) do not involve an inventive step, in the following the Board need only assess feature (f).

9. Feature (f) solves the problem of providing a means for selecting a word on a display.

10. Document D5 in column 7, lines 31 to 34, discloses that an electronic or virtual pointing device can be used to select a word from within an electronic document. A touch-sensitive screen as known for example from D1, page 44, lines 10 to 11, was an obvious choice for implementing an electronic or virtual pointing device. As further evidence that touch-sensitive screens were well known, the Board refers to document D6, abstract, which discloses a hand-held reading device with a touch-sensitive display. D1 and D6 provide sufficient evidence that touch-sensitive displays were well-known input devices, in particular for mobile (hand-held) devices. Thus the skilled person would have arrived at feature (f) without exercising inventive skill.

11. It follows that claim 1 of the first auxiliary request lacks inventive step (Articles 52(1) and 56 EPC).

Second auxiliary request - inventive step

12. Claim 1 according to the second auxiliary request adds the following features at the end of claim 1 of the first auxiliary request:

(g) adding a character to the displayed word in response to a second input;

(h) moving a cursor in the search window in response to a second input and adding a character to the displayed word at a position corresponding to the cursor position in response to a third input.

Features (g) and (h) are based on original claims 11 and 12, respectively.

13. Features (g) and (h) define further details on modification of the selected word. In its decision, the Examining Division considered these features to be trivial implementation details of a modification which the skilled person would implement as a matter of routine. The Board agrees with this argument, as the interactive editing of text in a graphical user interface was well known at the priority date, even to casual computer users.

14. It is not important that document D5 does not address editing operations, since editing, including the addition of characters at specific positions, is merely a more detailed description of an interactive modification by a user that is per se well known.

15. Hence, claim 1 of the second auxiliary request lacks inventive step (Articles 52(1) and 56 EPC).

Conclusion

16. As none of the appellant's requests can form the basis for the grant of a patent, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.