T 2574/16 (Integrated management system/BOEING) of 21.11.2019

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 08018638.0, which is a divisional application claiming a priority date of 2 April 2002.

II. The Examining Division decided that the main request and first to eighth auxiliary requests did not comply with Articles 83 and 84 EPC.

III. In its statement of grounds of appeal, the appellant maintained its requests and filed copies of their claims.

IV. In a communication issued under Rule 100(2) EPC, the Board informed the appellant of its intention to set aside the decision and to remit the case to the Examining Division for further prosecution. In response, the appellant agreed to remittal without oral proceedings before the Board being held first.

V. The appellant requests that the decision under appeal be set aside and that a patent be granted on the basis of the claims of the main request or, in the alternative, one of the first to eighth auxiliary requests.

VI. Independent claim 1 of the main request reads as follows:

"A method of accessing electronic information, wherein at least a portion of the electronic information is contained within at least one collection of electronic documents indexed according to at least one predetermined indexing pattern, said method comprising:

selecting (30) at least one electronic portal document (18) comprising at least one schematic diagram of at least one operational system including a plurality of graphical elements (20) representing operational elements of the at least one operational system, wherein at least one of the graphical elements is associated with at least one pointer (24, 27) that is associated with and identifies at least a portion of the electronic information, wherein each pointer that is associated with electronic information that is contained within a respective collection of electronic documents identifies the electronic information according to the predetermined indexing pattern of the respective collection;

selecting (32) at least one graphical element to thereby access at least one associated pointer and thereafter select (36) at least one accessed associated pointer to thereby select at least a portion of the electronic information;

locating (38) the selected portion of the electronic information based upon the selected at least one pointer and, for the electronic information contained within a respective collection of electronic documents, further based upon the predetermined indexing pattern of the respective collection; and

retrieving (40) the selected portion of electronic information to thereby access the selected portion of electronic information;

wherein the at least one portal document further comprises at least one simulation element (22), the method further comprising:

selecting (42) a respective simulation element of the selected portal document and thereafter selecting (44) a first graphical element;

displaying (48) an electronic simulation document (56) corresponding to the first graphical element, wherein the simulation document is associated with operational electronic information, wherein the simulation document represents at least one control subsystem of the at least one operational system and comprises at least one simulation graphical element (54) associated with at least one graphical element on the selected portal document; and

selecting (50) a simulation graphical element of the displayed electronic simulation document, and

modifying (46) at least one graphical element on the selected portal document based upon the simulation graphical element that is selected and the operational electronic information to thereby simulate an operation of at least one of the operational elements of the at least one operational system."

Reasons for the Decision

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

2. The application

2.1 The application's background section explains that, in a large company, the documentation of a large integrated system can be spread over a large number of buildings and organised according to a large number of indexing schemes. This makes it difficult to locate information about a particular subject. If the information is stored electronically, one has to search one or more databases or electronic documents using differing sets of interfaces, search schemas and hyperlinking criteria.

2.2 To improve the access to relevant information, the application proposes a "technical information portal" that integrates multiple databases and uses a navigational technique centred around a "functional interactive diagram", which is a series of diagrams of the integrated system (page 2, line 18, to page 3, line 2).

3. The contested decision

3.1 The Examining Division decided that the last step of claim 1 of the main request was unclear within the meaning of Article 84 EPC and caused the claimed invention to be insufficiently disclosed within the meaning of Article 83 EPC. This step reads as follows:

"modifying at least one graphical element on the selected portal document based upon the simulation graphical element that is selected and the operational electronic information to thereby simulate an operation of at least one of the operational elements of the at least one operational system."

3.2 In respect of Article 84 EPC, it essentially argued that it was unclear how the "operation of at least one of the operational elements of the at least one operational system" was to be simulated on the basis of the selected "simulation graphical element" and the "operational electronic information".

The claim did not specify how the modification of the graphical element and its selection were "tied back" to the selected simulation graphical element and the operational electronic information. Nor did it provide any details about the content or structure of the "operational electronic information". The claim did not contain sufficient details allowing the skilled person to determine both which graphical elements had to be modified and how they had to be modified.

Since such details were not present in the remainder of the application either, the application also infringed Article 83 EPC.

3.3 In a section of the decision addressing the appellant's arguments, the Examining Division referred to the online Oxford Dictionary and - apparently adding to the reasons for its clarity objection - noted that the verb "to simulate" could have the meaning "to produce a computer model of" in the field of computing.

It also referred to the example disclosed on page 22, line 3, to page 23, line 9, of the description in combination with Figures 12A and 12B, which made it clear that the invention was not limited to simulating an operation in response to the selection of a single simulation graphical element but encompassed simulating an operation in response to the selection of more than one simulation graphical elements. In view of that example, the claim could not be interpreted as being restricted to displaying known modifications stored in the operational electronic information.

3.4 The Board agrees with the appellant that the skilled reader of claim 1, which is directed to providing users with access to electronic information relating to an operational system by presenting them with an interactive portal document comprising a schematic diagram of the operational system, would understand that the claim uses the verb "to simulate" in the sense of "to imitate the appearance or character of" rather than "to produce a computer model of". Indeed, the expression "modifying at least one graphical element on the selected portal document ... to thereby simulate an operation of ..." has to be understood as meaning that some aspect of the operation of the selected element of the operational system is visually imitated by means of a modification to at least one graphical element.

3.5 The kind of graphical element to be modified and how it has to be modified for there to be an "imitation of the appearance" of the operation of the operational element will depend on the selected operational element and its role in the operational system, which the claim does not - and need not - specify. The Board has no doubt that, given a particular operational system, the skilled person would have had no difficulty in implementing, for each operational element to be simulated, a suitable modification or series of modifications of one or more suitable graphical elements.

The claim includes the added detail that the modification of the at least one graphical element is "based upon the simulation graphical element that is selected and the operational electronic information". Hence, the operational electronic information includes information that - as the appellant has argued - is used to determine and carry out the required modification or modifications. Since many obvious ways of structuring such information can be envisaged, the Board sees no reason why the claim or description should provide any further details on the operational electronic information, whether for the purpose of clarity of the claims or sufficiency of disclosure of the claimed invention.

3.6 As to the example referred to by the Examining Division, the Board notes that the claim is indeed not limited to one simple way of simulating an operational element and in fact encompasses elaborate simulations going beyond any of the examples disclosed in the application as filed. But this in itself is not a problem of lack of clarity or insufficiency of disclosure. In fact, it is normal for a claim to define the scope of protection in terms that positively define the essential features of the invention. Any particular embodiment falling within the scope of the claim may have further characteristics that are not mentioned in the claim or disclosed in the application (and could even constitute a patentable further development).

In the present case, any method falling within the scope of claim 1 includes a step of modifying at least one graphical element to thereby simulate an operation of at least one operational element. This simulation may be very elaborate but may also be very simple. The contribution of this step to the claimed invention is essentially that some simulation takes place, not that such simulation is made possible for the first time. Given at least one operational element of an operational system, the skilled person would have no difficulty in implementing some simulation in the form of at least one modification to at least one graphical element. The contribution made by the step is therefore sufficiently disclosed.

3.7 Hence, the Examining Division's reasons for refusing the main request are unconvincing.

4. Remittal to the Examining Division

4.1 In its communication annexed to the summons to oral proceedings, the Examining Division raised the objections of lack of clarity and insufficiency of disclosure that led to the application's refusal and an inventive-step objection based on a notoriously known general-purpose computer. In the oral proceedings before the Examining Division, the latter objection was not maintained (see point 7 of the minutes).

4.2 However, there is no indication in the file that novelty and inventive step of the claimed invention have been assessed with respect to the state of the art as documented in the European search report. The case is therefore to be remitted to the Examining Division for further prosecution on the basis of the main request.

4.3 In original claim 3, the feature "wherein selecting at least one graphical element comprises selecting a respective simulation element ..." appears to refer to the step "selecting at least one graphical element to thereby access ..." of original claim 1. Claim 1 appears to be based on a combination of these originally filed claims but defines two separate steps "selecting (32) at least one graphical element to thereby access at least one associated pointer ..." and "selecting (42) a respective simulation element of the selected portal document and thereafter selecting a first graphical element". In its further prosecution of the case, the Examining Division should therefore examine, within the framework of Article 123(2) EPC, whether the application as filed discloses a method comprising these two separate steps.

4.4 The Examining Division should also examine whether reference signs 42 and 44 are used consistently in Figures 3 and 4, the description and the claims (Rule 46(2)(i) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.