T 0727/17 (Navigation through smartphone screens/APPLE) of 10.3.2022

Summary of Facts and Submissions

I. This case concerns the appeal of the applicant against the decision of the examining division refusing the European patent application on the grounds of lack of inventive step (Article 56 EPC) in the light of the disclosure of the following prior-art documents:

D1: EP 0 804 009 A2, and

D2: US 7,007,239 B1.

II. The appellant initially requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims of one of a main request as refused by the examining division and a first and a second auxiliary request filed with the statement of grounds of appeal.

III. In response to the board's communication issued under Article 15(1) RPBA 2020, the appellant filed further third to fifth auxiliary requests.

IV. Oral proceedings were held before the board on 10 March 2022 by videoconference.

The appellant's final requests were that the appealed decision be set aside and that a patent be granted on the basis of the claims of one of

- the main request, subject to the appealed decision and re-filed with the statement of grounds of appeal,

- the first and second auxiliary requests, filed with the statement of grounds of appeal, and

- the third to fifth auxiliary requests, filed with the response to the board's communication issued under Article 15(1) RPBA 2020.

V. Claim 1 of the main request reads as follows (labelling by the board):

A) "A method performed at a portable electronic device with a touch screen display, comprising:

B) displaying a list of items, the list including a plurality of interactive displayed items associated with telephone calls,

C) wherein at least one interactive displayed item in the list is associated with a missed telephone call and

D) is also associated with contact information stored in the portable electronic device (5002), and

E) wherein each interactive displayed item includes at least a first interactive displayed portion and a second interactive displayed portion, the second interactive displayed portion being distinct from the first interactive displayed portion;

F) detecting a finger tap input at a first user selected interactive displayed item associated with both a missed telephone call and contact information, wherein the finger tap input is detected at the first interactive displayed portion of the first user selected interactive displayed item (5110), and

G) in response to that input initiating a telephone call to a telephone number associated with the first user selected interactive displayed item (5112);

H) detecting a finger tap input at a second user selected interactive displayed item associated with both a missed telephone call and contact information, where the finger tap input is detected at the second interactive displayed portion of the second user selected interactive displayed item (5114), and

I) in response to that input displaying contact information for a caller corresponding to the second user selected interactive displayed item (5116),

J) the displayed contact information including simultaneous display of a plurality of contact objects,

K) the plurality of contact objects comprising:

K1) a first contact object associated with a telephonic

communication modality for calling the caller, and

K2) a second contact object associated with a

non-telephonic communication modality for

contacting the caller; and

L) in response to detecting user selection of the second contact object (5018), initiating a communication with the corresponding caller through the non-telephonic communication modality corresponding to the second contact object (5020)."

VI. Claim 1 of the first auxiliary request differs from claim 1 of the main request in that the following wording has been added at the end (labelling by the board):

", wherein:

M) in accordance with the second contact object is an email contact object initiating the communication with the corresponding caller, preparing an email message with an email address associated with the second contact object, ready for text input by the user; and

N) in accordance with the second object is an instant messaging object initiating the communication with the corresponding caller, preparing an instant message to a number associated with the second contact object, ready for text input by the user."

VII. Claim 1 of the second auxiliary request differs from claim 1 of the main request in that feature K1) now reads as follows (labelling and highlighting by the board):

K1) "a plurality of first contact objects associated

with a respective telephonic communication modality for calling the caller, wherein one of the plurality of first contacts associated with the telephone number of the missed telephone call is highlighted, and".

VIII. Claim 1 of the third auxiliary request reads as follows (labelling and differences to claim 1 of the main request indicated by the board):

A) "A method performed at a portable electronic device with a touch screen display, comprising:

B) displaying a list of items, the list including a plurality of interactive displayed items associated with telephone calls,

C) wherein at least one interactive displayed item in the list is associated with a missed telephone call and

D) is also associated with contact information stored in the portable electronic device (5002), and

E) wherein each interactive displayed item includes at least a first interactive displayed portion and a second interactive displayed portion, the second interactive displayed portion being distinct from the first interactive displayed portion;

F) detecting a finger tap input at a first user

selected interactive displayed item associated with both a missed telephone call and contact information, wherein the finger tap input is detected at the first interactive displayed portion of the first user selected interactive displayed item (5110) [deleted: and];

G) in response to [deleted: that] detecting the finger tap input

at the first user selected interactive displayed item [deleted: initiating a telephone call to] calling a telephone number associated with the first user selected interactive displayed item (5112);

H) detecting a finger tap input at a second user

selected interactive displayed item associated with both a missed telephone call and contact information, where the finger tap input is detected at the second interactive displayed portion of the second user selected interactive displayed item (5114) [deleted: and];

I) in response to detecting the finger tap [deleted: that] input

at the second user selected interactive displayed item displaying contact information for a caller corresponding to the second user selected interactive displayed item (5116),

J) the displayed contact information including

simultaneous display of a plurality of contact objects,

K) the plurality of contact objects comprising:

K1) a first contact object associated with [deleted: a]

telephonic communication [deleted: modality] for calling the

caller, and

K2) a second contact object associated with [deleted: a] non-

telephonic communication [deleted: modality for contacting] associated with messaging the caller;

L) detecting user selection of the second contact

object (5018); and

in response to detecting user selection of the

second contact object (5018), [deleted: initiating a communication with] preparing a message to the [deleted: corresponding] caller through the non-telephonic communication [deleted: modality] corresponding to the second contact object (5020)."

IX. Claim 1 of the fourth auxiliary request differs from claim 1 of the third auxiliary request in that the following wording has been added at the end (labelling by the board):

"wherein:

M) in accordance with a determination that the second

contact object corresponds to an email contact object, preparing an email message with an email address associated with the second contact object, ready for text input by the user; and

N) in accordance with a determination that the second

object corresponds to an instant messaging object, preparing an instant message to a number associated with the second contact object, ready for text input by the user."

X. Claim 1 of the fifth auxiliary request consists of features A) to K) of the main request, features K2) and L) of the third auxiliary request, features M) and N) of the fourth auxiliary request and feature K1) of the third auxiliary request in the following amended form (added wording underlined):

K1) "a first contact object associated with

telephonic communication for calling the

caller via a return telephone number, and".

Reasons for the Decision

1. Technical background

1.1 The present application relates to the field of portable communication devices with a display and a touch-screen and, in more detail, to a method of displaying missed telephone calls and of providing the user with options to contact the caller relating to the missed call. The associated graphical user interface (GUI) is illustrated in Figures 12B and 12C of the present application as reproduced below.

FORMULA/TABLE/GRAPHIC FORMULA/TABLE/GRAPHIC

Each entry of the missed phone call list ("interactive displayed item") includes two sections ("first interactive displayed portion 2803" and "second interactive displayed portion 2808"). Tapping on those sections either initiates a phone call to the caller (i.e. "Bruce Walker" in Fig. 12C) or displays contact information of the caller ("second contact information") allowing the user to initiate a

non-telephonic communication to the caller (see e.g. email addresses "2820" and "2822" in Fig. 12C).

2. Main request - claim 1 - inventive step (Article 56 EPC)

2.1 Prior-art document D1

Document D1, which was taken as a suitable starting point for the assessment of inventive step in the impugned decision, relates to a portable communication device, which is adapted to provide the user with different functions, e.g. a "telephone mode", a "talk log" or an "electronic note", and to provide for those different functions the respective view on a screen (cf. title and abstract). Further, D1 discloses an embodiment ("Embodiment 1", columns 14 to 27) providing different views showing an address book ("ADDRESS BOOK"), a details view of an address book entry ("ADDRESS BOOK"), a list of calls ("TALK LOG") and a telephone user interface ("TELEPHONE") (see Figs. 6, 7 and 10 to 12 in conjunction with column 10, line 41 to column 11, line 9).

- The address book view shows a list of its entries each of which can be displayed in the details view upon a double tap with contact information which include inter alia a home phone number and is implicitly stored in the communication device (column 17, lines 39 to 57; Figs. 6 and 7). Furthermore, a double tap on the home phone number in the address book details view starts the telephone function (column 17, lines 50 to 53).

- The telephone view shows inter alia numeric buttons for inputting a telephone number, a telephone number display window and a button "S" for starting the telephone call (column, 19, lines 38 to 52; Fig. 12).

- The call list view ("TALK LOG") displays for each call (entries characterised with a circular icon) the date, the opposite party or caller, the kind of transmission by means of symbols and, if available, abbreviations "ME.", "SCH." or "ADD." corresponding to the "MEMO", the "SCHEDULE" and the "ADDRESS BOOK" functions (column 19, lines 14 to 22; Fig. 11).

From the call list view, the user can jump from a call list entry directly to different functions depending on which part of each entry is tapped on. If the log relating to the telephone is double-tapped, the telephone view is opened with the corresponding number in the telephone number display window and, thus, a telephone call to this number is prepared (column 19, lines 43 to 47). If one of the abbreviations "ME.", "SCH." or "ADD." is tapped on, the corresponding screen appears (column 19, lines 23 to 25).

The "TALK LOG" list includes also sent and received mails or text messages ("mail transmission" and "mail reception") characterised by a triangular icon which implies that the communication device is also capable of non-telephonic mail communication (column 19, lines 19 and 20; Fig. 11).

2.2 More specifically, using the language of present claim 1, document D1 discloses a method performed at a portable electronic device with a touch screen display (cf. abstract) comprising the following features:

- displaying a list of items, the list including a plurality of interactive displayed items associated with telephone calls, wherein at least one interactive displayed item in the list is associated with a [deleted: missed] telephone call ("TALK LOG", "telephone call in", column 19, lines 14 to 20; Fig. 11) (features B and C)

- is also associated with contact information stored in the portable electronic device ("ADD.", column 19, lines 15 to 22, Fig. 11) (feature D)

- wherein each interactive displayed item includes at least a first interactive displayed portion ("log relating to the telephone") and a second interactive displayed portion ("ADD.", column 19, lines 23 to 25 and 43 to 45; Fig. 11), the second interactive displayed portion being distinct from the first interactive displayed portion (implicit in order to allow the choice to jump to the telephone view or the address book view) (feature E)

- detecting a finger tap input at a first user selected interactive displayed item (i.e. an entry of the "TALK LOG" list) associated with both a missed telephone call and contact information, wherein the finger tap input is detected at the first interactive displayed portion of the first user selected interactive displayed item (column 19, lines 43 to 45: "... when the log relating to the telephone is double touched ...") (feature F)

- in response to that input initiating a telephone call to a telephone number associated with the first user selected interactive displayed item (see column 19, lines 41 to 47: "... This screen [telephone screen] appears ... when the log relating to the telephone is double touched ... In this case, the telephone number in the preceding screen is displayed on the telephone number display window ..."; "initiating" is understood as beginning or commencing in accordance with its definition on the web-site of the Oxford English Dictionary www.oed.com) (feature G)

- detecting a finger tap input at a second user selected interactive displayed item (an entry of the "TALK LOG" list) associated with both a missed telephone call and contact information, where the finger tap input is detected at the second interactive displayed portion of the second user selected interactive displayed item (column 19, lines 23 to 25: "When the ME., SCH. and ADD. are touched ...") (feature H)

- in response to that input displaying contact information ("DETAILS" of the "ADDRESS BOOK", column 17, lines 44 to 50; Fig. 7) for a caller corresponding to the second user selected interactive displayed item (column 19, lines 23 to 25: "... screen corresponding to ... ADD. of the telephone talk appears") (feature I)

- the displayed contact information including simultaneous display of a plurality of contact objects, the plurality of contact objects comprising (column 17, lines 44 to 50, Fig. 7) (feature J):

- a first contact object associated with a telephonic

communication modality for calling the caller ("HOME PHONE", "OFFICE PHONE", ibid.) (feature K1),

- a second contact object associated with a

non-telephonic communication modality for contacting the caller ("HOME FAX", "OFFICE FAX", ibid.) (feature K2)

- [deleted: in response to detecting user selection of the second contact object,] initiating a communication [deleted: with the corresponding caller] through the non-telephonic communication modality [deleted: corresponding to the second contact object] ("mail transmission", column 19, lines 19 and 20) (feature L).

2.3 Hence, contrary to the appellant's view, the method of D1 therefore differs from the method of D1 solely in that

(i) the communication list ("TALK LOG") includes missed telephone calls;

(ii) the non-telephonic communication is initiated in response to detecting the user selection of the second contact object and is directed to the corresponding caller.

2.4 In the board's view, these differences relate only to the type of messages listed in the communication log and to navigating between different views and triggering actions. In other words, the distinguishing features appear to be related merely to distributing functions over different windows or other GUI elements of a touch screen and navigating through them. Thus, they are related to user preferences and/or the

look-and-feel design of the user interface (cf. T 1579/07, Reasons 12.1) rather than credibly providing device-specific and performance-oriented technical improvements as to the efficient implementation of the underlying touch-screen device. Hence, they do not provide any synergistic technical effect.

2.5 In the appellant's view, the advantages of the claimed method were to provide a "better" user interface in that the desired functionality was achievable with "fewer clicks and less screens".

2.6 Although it is questionable whether a valid objective technical problem can be formulated in this case (see point 2.4 above) - regardless of whether a somewhat unexperienced GUI user or an advanced one is considered here - the board, in the appellant's favour, assumes the objective technical problem to be "how to respond to missed calls by non-telephonic communication by fewer clicks and less screens in the system of D1".

2.7 As to distinguishing feature (i), although D1 is silent on whether the calls in the call log include missed calls, a skilled person in the field of mobile telecommunication devices would have certainly included such missed calls in a list since a user would have been interested not only in the established calls but all the more in the missed calls.

Furthermore, as to distinguishing feature (ii), it was well within the skills of the skilled person at the present application's priority date to make the contact object for non-telephonic communication in the address book details view interactive to allow the user to initiate the non-telephonic communication by selecting it, in order to reduce the number of necessary clicks and screens. The board notes in this respect that D1 already discloses an "interactive contact object" in the address book details view, namely the "HOME PHONE" entry. As a consequence, in order to solve the

above-mentioned problem, the skilled person would have readily arrived at a method with all the features of present claim 1 without exercising inventive skills.

2.8 The appellant argued that the priority of the present application dates from the year 2006, i.e. 16 years ago, when smartphones where developed. From this point of view, only with hindsight a lack of inventive step could be identified. Moreover, the claimed method was distinguished from the method of D1 in at least features C, E, F, G, J, K2 and L. Figure 12 of the present application would show two elements, a return symbol and an arrow, which provided a double functionality within the call list which was not provided by the method of D1, which required multiple interactions and created a problem of efficiency. The claimed method, in contrast, provided a solution by means of the second portion within the call list which allowed sending text messages. This would reduce the number of necessary inputs to reply to incoming calls. In D1, conversely, the user would need to jump from one screen to another. Providing two user selectable portions was therefore inventive. The design of the navigation through different views of a communication device with a display and its operation was an important challenge in the respective field since long before smartphones became widespread.

2.9 As to the alleged distinguishing features, the board makes reference to points 2.1 and 2.2 above.

With respect to feature G, it is added that the term "initiating" is used in feature L with respect to the non-telephonic communication. This, in the case of a text message, implicitly requires a separate send action after the entry of the text. Feature G therefore also includes the case that the telephonic communication is commenced and needs to be effected in a further step, as it is disclosed in D1.

The double functionality in the call list, although allegedly missing, is actually disclosed in D1, namely the "ADD." object for accessing the address book details view (column 19, lines 23 to 25) and the "log relating to the telephone" for changing to the telephone view (column 19, lines 41 to 45).

2.10 Consequently, the subject-matter of claim 1 of the main request is not inventive with respect to the disclosure of document D1 and the skilled person's common general knowledge (Articles 52(1) and 56 EPC).

3. First auxiliary request - claim 1 - inventive step (Article 56 EPC)

3.1 In claim 1 of the first auxiliary request, the

non-telephonic communication corresponds to an email or an instant message, the contact object being accordingly an email or instant message contact object, and initiating the communication includes preparing the message for text input by the user.

3.2 However, D1 already discloses communication by means of "mail" which is understood as email and which is equivalent to an instant message (column 19, lines 19 and 20, Fig. 11). The skilled person, in order to add further non-telephonic response options, would have readily included the existing mail communication along with the corresponding contact object into the call list without having to exercise inventive skills. To provide the possibility to enter text when initiating a

non-telephonic communication was almost mandatory, since otherwise only standard messages would be possible.

3.3 At any rate, the board furthermore holds that initiating a text message ready for text input by the user was known from D2 (cf. column 14, lines 53 to 61).

3.4 The features added to claim 1 of the first auxiliary request therefore do not contribute to an inventive step either.

3.5 Consequently, the subject-matter of claim 1 of the first auxiliary request is likewise not inventive (Article 56 EPC).

4. Second to fifth auxiliary requests - admittance (Article 13(2) RPBA 2020)

4.1 Since the second to fifth auxiliary requests were filed after the notification of the summons to oral proceedings before the board, their admittance is in principle governed by Article 13(2) RPBA 2020. In accordance with the case law of the Boards of Appeal, besides the provision of "cogent reasons" justifying "exceptional circumstances", a well-established criterion for determining whether or not to admit such requests is whether or not they are, prima facie, allowable (cf. Article 13(1) RPBA 2020).

4.2 Claim 1 of the second auxiliary request essentially adds to claim 1 of the main request that one of the telephone number entries in the address book details view associated with a missed call is highlighted. D1 discloses highlighting one contact object in the address book details view by underlining it ("HOME PHONE", Fig. 7). To apply this feature also to contact objects related to missed calls in the call list does not contribute, prima facie, to an inventive step.

4.3 Claim 1 of the third auxiliary request, besides some editorial changes, essentially differs from claim 1 of the main request in that

- "initiating a telephone call" was replaced by "calling" and

- "initiating a communication with" was replaced by "preparing a message to".

4.4 The term "calling" is understood as immediately effecting a call in contrast to "initiating" a call which was understood by the board as commencing a telephone call allowing an intermediate step/action, like the telephone view of D1 (Fig. 12). However, leaving out this intermediate screen and the step of pressing the call button "S" in order to further reduce the number of necessary views and clicks does not contribute, prima facie, to an inventive step. Moreover, in the ambit of non-telephonic communication related to the second contact object, "preparing a message" and "initiating a communication" are considered to be equivalent. Thus, no limitation is added by this amendment which consequently does not contribute, prima facie, to an inventive step either.

4.5 Claim 1 of the fourth auxiliary request is essentially a combination of claim 1 of the third auxiliary request and the features added to claim 1 of the first auxiliary request in slightly amended form (see point IX above). Hence, the added limitation, also in combination, does not, prima facie, contribute to an inventive step.

4.6 Claim 1 of the fifth auxiliary request is essentially a combination of features already included in claim 1 of the higher-ranking requests. The amendment that the first contact object is associated with telephonic communication for calling the caller via a return telephone number does not constitute a technical limitation, since calling a caller implicitly occurs via a return telephone number. Thus, the added limitation, also in combination, does not, prima facie, contribute to an inventive step.

4.7 As claim 1 of none of the second to fifth auxiliary requests is at least prima facie allowable, these requests were not admitted into the appeal proceedings (cf. Article 13(2) RPBA 2020 in conjunction with Article 13(1) RPBA 2020).

5. Since there is no allowable claim request on file, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.