T 2307/12 (Browser document editing/CIMPRESS SCHWEIZ) of 13.3.2018

Summary of Facts and Submissions

I. The applicant (appellant), which at the time was Vistaprint Technologies Limited, appealed against the decision of the Examining Division refusing European patent application No. 11169565.6, filed as divisional application of European patent application No. 03791843.0 and published as EP 2 365 446 A1. The application claims a priority date of 29 August 2002.

II. In the course of the appeal proceedings, the application was transferred to Vistaprint Schweiz GmbH (which later changed its name to Cimpress Schweiz GmbH), which thereby acquired the status of appellant.

III. The Examining Division refused the application by means of a standard form referring to a communication pursuant to Article 94(3) EPC of 10 May 2012. In that communication, the Examining Division raised the following objections with respect to the then pending sole request with the originally filed claims: lack of clarity of claim 1, lack of novelty of the subject-matter of independent claims 1, 10, 17, 19 and 20 - and, in case the applicant's claim interpretation were to be adopted, lack of inventive step of the subject-matter of claim 1 - over the prior art disclosed in the following document:

D1: Rees, M. J.: "User Interfaces for Lightweight In-Line Editing of Web Pages", Proceedings of the First Australasian User Interface Conference AUIC '00, 31 January to 3 February 2000, pages 88 to 94.

IV. 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 the main request considered in the contested decision, or of one of the auxiliary requests I to VI submitted with the grounds of appeal.

V. In a communication under Article 15(1) RPBA accompanying a summons to oral proceedings, the Board inter alia expressed its provisional opinion that the subject-matter of claim 1 of all the requests lacked inventive step in view of document D1 and the common general knowledge.

VI. Oral proceedings were held as scheduled. At the end of the oral proceedings, the chairman pronounced the Board's decision.

VII. The appellant's final request was that the decision under appeal be set aside and that a patent be granted on the basis of the main request as originally filed or on the basis of one of auxiliary requests I to VI filed with the grounds of appeal.

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

"A method for revising the object model of a document in a browser (102), the method comprising the steps of:

running an edit tool (105) in said browser (102), and, in response to a predetermined document edit request made by a user, said edit tool being implemented to:

- supply a predetermined substitute edit request to the browser (102) to cause the browser (102) to revise the object model by a placeholder element reflecting the predetermined substitute edit request, and

- access and edit the object model after revision, so as to achieve the intent of the document edit request made by the user, by replacing the placeholder element by an element corresponding to the edit as requested by the user."

IX. Claim 1 of auxiliary request I differs from claim 1 of the main request as follows:

(a) The expression "in response to a predetermined document edit request made by a user" was amended to "in response to an edit action made by a user to edit one or more text characters".

(b) The expression "substitute edit request" was amended to "substitute edit command".

(c) The expression "so as to achieve the intent of the document edit request made by the user" was amended to "so as to achieve the intended edit made by the user".

(d) The expression "the edit as requested by the user" was amended to "the edit as done by the user".

X. Claim 1 of auxiliary request II differs from claim 1 of the main request as follows:

(a) The expression "in response to a predetermined document edit request made by a user" was amended to "in response to an edit action to change a font parameter of at least one character in the document made by a user".

(b) The expression "substitute edit request" was amended to "substitute edit command".

(c) The expression "so as to achieve the intent of the document edit request made by the user" was amended to "so as to achieve the change of the font parameter".

(d) The expression "the edit as requested by the user" was amended to "the change of the font parameter".

XI. Claim 1 of auxiliary request III differs from claim 1 of the main request as follows:

(a) The expression "in response to a predetermined document edit request made by a user" was amended to "in response to an edit action made by a user to edit one or more text characters".

(b) The expression "substitute edit request" was amended to "substitute edit command".

(c) The expression "so as to achieve the intent of the document edit request made by the user" was amended to "so as to achieve the intended edit made by the user".

(d) The expression "the edit as requested by the user" was amended to "the edit as done by the user, wherein font size of the object model is specified in pixels".

XII. Claim 1 of each of auxiliary requests IV to VI corresponds to claim 1 of auxiliary requests I to III, respectively, but amends "predetermined substitute edit command" to "predetermined substitute edit action".

XIII. 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. The application relates to the editing of text in a document displayed in a browser (see paragraph [0001] of the published application). The browser uses a document object model (DOM) which is an interface allowing programs to access and change the content, structure and style of the documents. Any changes are dynamically incorporated back into the page displayed in the browser to the user (see description, paragraphs [0002] and [0003] and Figure 1). According to the application, a shortcoming in the prior art that limits the ability of users to design documents in a browser is that browsers typically do not provide a full range of editing options for certain types of editing.

3. The invention provides a system and method that works with the DOM to enhance the document-editing abilities of the browser (description, paragraph [0013]). An editing program using the browser application programming interface (description, paragraph [0023]) and running in the browser contains computer code that is activated by certain edit requests from the user. The program supplies a substitute edit request to the browser in place of the request received from the user. The DOM is then accessed and edited to remove the portion of the DOM related to the substitute edit request and insert appropriate tags to achieve the original edit request (description, paragraph [0013]).

In a preferred embodiment, the predefined substitute edit request is to render the character(s) selected by the user in a predefined colour (see paragraph [0040]). For a very brief time between performing the predefined substitute edit action and the completion of the revision of the DOM with the user's edit request, the DOM will contain the result of the substitute edit. Consequently, for a certain time period, the selected characters are rendered in the predefined colour. However, this time period is so brief as to be imperceptible to the human eye under normal operation (see paragraph [0041]).

Main request

4. Claim 1 of the main request relates to a "method for revising the object model of a document in a browser", which comprises the following features itemised by the Board:

(a) running an edit tool in said browser, and, in response to a predetermined document edit request made by a user, said edit tool being implemented to:

(b) supply a predetermined substitute edit request to the browser to cause the browser to revise the object model by a placeholder element reflecting the predetermined substitute edit request, and

(c) access and edit the object model after revision, so as to achieve the intent of the document edit request made by the user, by replacing the placeholder element by an element corresponding to the edit as requested by the user.

Clarity and added subject-matter

5. While the Board has doubts that the broad wording of claim 1 of the main request meets the requirements of Articles 76(1) and 84 EPC, the Board considers that a detailed assessment of these requirements is not necessary in view of the Board's finding on inventive step, which is detailed below. For its assessment of novelty and inventive step the Board interprets claim 1 in the light of the description.

Novelty - Article 54 EPC

6. The Examining Division decided that claim 1, if interpreted as suggested by the Examining Division, lacked novelty over the Pardalote editing system disclosed in document D1 (see section 8 on pages 92 and 93). In the statement of grounds of appeal, the appellant contested that D1 disclosed all features of claim 1. The appellant argued that neither D1 nor any other prior-art document disclosed features (b) and (c) of claim 1, as the use of a substitute edit request to insert a placeholder tag and the later replacement of this inserted tag by an element representing the original edit as requested by the user were not known.

7. The Board agrees that document D1 does not disclose the use of a substitute edit request and the use of a placeholder as defined in features (b) and (c) of claim 1. In particular, the fragment editing form displayed in Figure 8 of D1 cannot be regarded as a "placeholder element reflecting the predetermined substitute edit request". It follows that the subject-matter of claim 1 is new over document D1.

Inventive step - Article 56 EPC

8. According to the contested decision, if claim 1 is interpreted as suggested by the appellant, the closest prior art D1 disclosed all features of claim 1, except for feature (b) and those parts of feature (c) that related to the replacement of the placeholder element. The claimed solution was considered to lack inventive step as it was unclear which problem was solved by the invention.

8.1 Document D1 discloses the so-called Pardalote system, which is a lightweight in-line editing system (D1, page 92, left-hand column, first paragraph in section 8).

The Pardalote system uses a dynamic HTML (DHTML) document object model and client-side scripting to allow in-browser editing (D1, page 92, left-hand column, second paragraph in section 8). A Pardalote web page differs from a normal web page in that it adds a "Save Changes" button and a special in-line editing character (D1, page 92, left-hand column, second paragraph in section 8). When the user clicks the heading of a section marked with the special in-line editing character, an editing form is revealed (D1, Figure 8 and page 92, left-hand column, third paragraph in section 8). Clicking the "Save Changes" button commits the text changes to the page (D1, page 92, left-hand column, penultimate paragraph).

It follows that document D1 discloses a method for revising the object model of a document in a browser, which comprises feature (a) of claim 1 and accesses and edits the document object model after revision (when the user saves the changes) so as to achieve the intent of the document edit request made by the user in the displayed editing form.

8.2 The claimed invention therefore differs from the method of document D1 in that it includes feature (b) and edits the object model by replacing the placeholder by an element corresponding to the user's edit request as defined in feature (c) of claim 1. In the oral proceedings, the appellant agreed to this finding.

8.3 These differences introduce a substitute edit request to generate a placeholder as an intermediate step before the final update of the object model. As stated in paragraph [0041] of the application, the effect of this intermediate step on the displayed page is imperceptible to the human eye under normal operation. Hence, the appellant argued in the oral proceedings that the intermediate update of the display in line with the substitute edit request was only a by-product. Rather, the effect of these differences was to improve the possibility to identify in the DOM the location of the changes of the intended edit request made by the user. The problem to be solved could be formulated as how to identify in the DOM the changes made by the user when a change is made to a text-containing element of the document.

8.4 The Board considers that the overall effect of the claimed method, when interpreted in the light of the description, is to allow the user to edit the text in the document displayed within a browser with a full range of editing options including formatting options which are not supported by the browser software. The Board considers that the activity of editing and formatting of text is, apart from any technical means used, essentially a non-technical activity. In this respect, the Board refers to decision T 186/86 of 5 December 1989, which states in its Reasons, point 3, the following: "The activity of editing a text is principally concerned with linguistic and lay-out features of a text but, when performed with the aid of a machine (text processor), will have to include further steps for inter alia presenting to the human operator the text to be edited in a form suitable for that purpose and steps for storing and/or reproducing the finalised text. The whole editing method, however, has for its purpose the creation of a text having a desired information content and lay-out, which means that the method as such aims at solving a problem which is essentially of a non-technical nature." That editing as such is not of technical nature has also been confirmed by later decisions of the boards of appeal (see decision T 95/86 of 23 October 1990, reasons 4).

8.5 In the present case, the provision of further editing options including formatting options not supported by a browser does not serve a technical purpose as it concerns the presentation of text displayed in the browser in a specific manner as required by those further editing options to a human reader. As the presentation of information as such is regarded as not technical (Article 52(2)(d) EPC), the Board considers that a presentation of text in accordance with the chosen editing/formatting options does not contribute to the solution of a technical problem. In this respect the Board cites decision T 1143/06 of 1 April 2009, which states in point 5.4 that "a feature which relates to the manner how cognitive content is conveyed to the user on a screen normally does not contribute to a technical solution to a technical problem. An exception would be if the manner of presentation can be shown to have a credible technical effect".

8.6 According to the established case law of the boards of appeal, when assessing inventive step in accordance with the problem-and-solution approach an aim to be achieved in a non-technical field 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). Hence, the aim to allow editing options not supported by the browser may be added to the problem as such a constraint. It follows that the appellant's argument that document D1 could not suggest the claimed solution as the Pardalote system was limited to lightweight in-line editing without any formatting functionality does not persuade the Board.

8.7 At the oral proceedings, the appellant argued that the objective technical problem was how to identify in the DOM the changes made by the user when a change is made to a text-containing element of the document and that change is an editing action such as a format change which is not supported by the browser.

8.8 The skilled person trying to solve the problem posed would first consider solutions which involve a relatively low development effort as the skilled person would consider reusing existing software as far as possible. For this reason, the appellant's argument that the skilled person would rather use a "brute force" approach to solve the problem, even if this involved a massive development effort, does not convince the Board.

8.9 As D1 already discloses editing text elements in a text box and uses a DOM to implement the edit requests, the skilled person recognises that he needs to figure out how to implement in the DOM edit actions not supported by the browser. In the context of the present application, an edit action involves two aspects: identifying the start and end position in the text and the operation (such as changing the font size) which is applied to the text.

8.10 As the DOM implementation is part of the browser software, the skilled person would consider that the identification of the changes in the DOM is best done by the browser itself. For this purpose, it was obvious to use a substitute edit action, which is applied to the same text string as the user's intended edit action. As it was well-known to use mark-up elements for the definition of start and end positions within documents (see e.g. D1, page 92, left-hand column, last paragraph), the skilled person would have implemented the claimed solution, which consists essentially of the use of a predefined substitute edit action which inserts into the DOM a placeholder such as a special mark-up element to define the start and end positions in the text to which the edit action applies and which later replaces the placeholder in the DOM with an element representing the intended edit action.

8.11 As the application does not disclose how the replacement of the placeholder in the DOM is implemented and as the appellant argued in the oral proceedings that the skilled person would be able to implement this step based on his common general knowledge, the implementation of step (c) of claim 1 has to be regarded as obvious.

8.12 In the written proceedings, the appellant argued that document D1 was not a promising starting point for the invention and provided no incentive for extending the functionality provided by the invention. Known browser-integrated DOM modification routines were unsuitable for handling special or complex DOM changes. Moreover, the initial DOM standard ("DOM level 1") did not provide functionality to access style attributes assigned to the objects. This was only possible since the establishment of DOM level 2 in November 2000. D1 was published before DOM level 2, which meant that the DOM standard did not allow the document modifications claimed.

8.13 The Board observes that claim 1 does not refer to any particular document object model (such as DOM level 1 or 2). Hence, the appellant's arguments are not supported by claim 1 and cannot persuade the Board.

Moreover, it is remarked that the DOM level 2 standard was known at the priority date of the application. Consequently, for assessing inventive step, the DOM level 2 standard can be combined with document D1.

8.14 It follows that claim 1 of the main request lacks inventive step (Article 52(1) EPC in combination with Article 56 EPC) over document D1 in view of the common general knowledge.

Auxiliary request I

9. Auxiliary request I clarifies that the "edit request" is an edit action to edit one or more text characters. Moreover, the "predetermined substitute edit request" was clarified to be a "predetermined substitute edit command" based on paragraphs [0023] and [0040].

Inventive step - Article 56 EPC

10. With respect to inventive step, the appellant argued that the invention according to auxiliary request I performed an edit action on the text directly, whereas D1 used a form to edit the text. Hence, the objective problem solved over D1 was how to modify the object model of a document when a change is made affecting a text-formatting element. D1 did not propose any solutions for format changes and did not disclose revising the object model by a placeholder element.

10.1 The Pardalote system of D1 supports the insertion and deletion of characters (D1, Figure 8). Moreover, the Board has already considered editing options including format changes in the assessment of inventive step of claim 1 of the main request. As the further clarifications do not change the substance of the claimed subject-matter, the Board considers that the amendments made in claim 1 of auxiliary request I cannot lead to a different assessment of inventive step. It follows that claim 1 of auxiliary request I lacks inventive step (Article 52(1) EPC in combination with Article 56 EPC).

Auxiliary request II

11. Auxiliary request II essentially amends auxiliary request I to specify that the edit action changes a font parameter of at least one character (description, paragraphs [0032] and [0040]; originally filed claim 2).

Inventive step - Article 56 EPC

12. The appellant argued that for the invention according to auxiliary request II, the objective problem to be solved was how to modify the object model of a document when a change to the font parameter is made affecting a text-formatting element. As the Pardalote system was a lightweight editing tool that did not support text formatting and as the DOM standard available at the time of D1, DOM level 1, did not allow the change of style attributes via programs and scripts, the invention as defined in auxiliary request II was not obvious.

12.1 However, these arguments are not convincing as the Board has already considered format changes as editing options in the assessment of inventive step of claim 1 of the main request. Formatting changes such as changing the font type, size or colour or changing the font style to bold or italics as disclosed in paragraph [0032] of the application are considered to be steps of a non-technical nature as they aim at specifying the manner in which the text is to be presented to a user. Moreover, such formatting changes were well known at the priority date. Hence, the Board considers that the amendments made in claim 1 of auxiliary request II do not change its assessment of inventive step. It follows that claim 1 of auxiliary request II lacks inventive step (Article 52(1) EPC in combination with Article 56 EPC).

Auxiliary request III

13. Auxiliary request III essentially amends auxiliary request I by adding that the font size of the object model is specified in pixels (description, paragraphs [0033] and [0042]).

Inventive step - Article 56 EPC

14. According to the appellant, auxiliary request III indicated that the font size specified in the object model is in pixels. As the applicable HTML standard at the time of D1, HTML 4.01, did not support font sizes in pixels, the objective problem to be solved was how to modify the object model of a document when a change was made affecting a text-formatting element and provide absolute font sizing. Absolute font sizing was an essential feature of WYSIWYG ("what you see is what you get") document design and printing services as it allowed to precisely control and match character sizes (see description, paragraph [0011]).

14.1 As the Board has already considered document edit options not supported by the browser in its assessment of inventive step of claim 1 of the main request, the issue is whether the specification of the font size in pixels contributes to the solution of a technical problem. The appellant argued that such an absolute font sizing feature was essential for WYSIWYG document design and printing services. However, claim 1 of auxiliary request III is not concerned with printing and does not specify that the document is presented to the user using the revised object model or that a WYSIWYG design was intended. Hence, the Board doubts that a credible technical effect can be derived from the specification of the font size in pixels. In any case, WYSIWYG document design was notorious at the priority date and hence supporting such a design by means of a font size specified in pixels was an obvious extension of the teaching of document D1. The argument that HTML 4.01 did not support such font sizes is not convincing for the following reasons: The relevant date for assessing inventive step is not the publication date of the closest prior art D1, but the priority date of the application. The skilled person would have been able to modify the Pardalote system of D1 by adding the font size in pixels to specific markup elements, such as the SPAN and DIV markup elements known in HTML 4.01, without any need to exercise inventive skills. At the priority date, the use of markup elements to add metadata such as a font size was a matter of routine.

It follows that claim 1 of auxiliary request III lacks inventive step (Article 52(1) EPC in combination with Article 56 EPC).

Auxiliary requests IV to VI

15. Auxiliary requests IV to VI correspond to auxiliary requests I to III, respectively, but differ in that the term "predetermined substitute edit command" is replaced by the term "predetermined substitute edit action" (see paragraph [0040] as originally filed).

16. The Board considers that these requests do not differ in substance from auxiliary requests I to III, respectively, as the Board, in the light of the description of the present application, cannot see a substantial difference between an edit action made by the user and an edit command. Consequently, the Board's negative assessment of inventive step of claim 1 of auxiliary requests I to III applies mutatis mutandis to claim 1 of auxiliary requests IV to VI.

Conclusion

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

Order

For these reasons it is decided that:

The appeal is dismissed.