T 0887/92 () of 19.4.1994

Summary of Facts and Submissions

I. European patent application No. 85 114 955.9, filed on 26. November 1985 and published under No. 0 190 419, was refused by a decision of the Examining Division dated 23. April 1992.

II. The reason for the refusal was that the subject-matter of all claims lacked an inventive step having regard to the prior art documents:

D1: AFIPS Conference Proceedings Vol. 40, National Computer Conference 4-7 June 1979, New York, pp. 863 to 866, J. Rothenberg "On-line tutorials and documentation for the SIGMA message service"; and

D2: IBM Technical Disclosure Bulletin, Vol. 18 No. 2 July 1975, S.E. Engel et al. "Auto help", pp. 509 to 512.

III. The Applicant lodged an appeal against this decision on 9. June 1992, paying the appeal fee the same day. On 3. September 1992 a statement setting out the Grounds of Appeal was filed together with new Claims 1 to 8. It was submitted that there was an inventive step over the prior art, and the grant of a patent based on the new claims was requested.

IV. In a communication pursuant to Article 11(2) of the Rules of Procedure of the Boards of Appeal, dated 21. December 1993, the Rapporteur expressed his preliminary view that, having regard to the disclosure of D1, the subject-matter of Claim 1 lacked an inventive step.

V. Oral Proceedings were held on 19 April 1994. The Appellant filed new claims according to a main request and an auxiliary request.

Claim 1, the only independent claim of the Main Request, reads:

"1. A method to assist the operator of an interactive information handling system in entering command via an input device in response to the entry by said operator of a "Command Help Request"; said method involving the steps of:

(1) determining what commands are valid as the next command based on an analysis of the current state of the process task being performed by the system at the time said request command is issued, and

(2) displaying, in response to keying said "Command Help Request" at least a first help panel overlaying a partial portion of the information displayed, and containing the names of only valid commands determined by said processing means and also containing information explaining the functions of said valid commands, the displaying of said at least first help panel occurring in an area of the display being different to the command area of the screen which is normally used for entering the commands, so that the operator is still allowed to enter a command into the system while said help panel is being displayed,

(3) positioning a "selection" cursor to the line on said help panel containing the name of the command,

(4) executing, in response to the operator actuating "enter" on the keyboard, the named command selected by said selection cursor on said help panel."

No parts of the description or drawings were amended in the proceedings.

VI. The Appellant's arguments in support of his Main Request may be summarised as follows.

Claim 1 is directed to a method for assisting the operator of an interactive information handling system to enter a command in response to a help request. A key feature of the invention is that the system displays, as "help" information, only those commands which are valid in the state of the process task being performed by the system at the time help is requested. Because invalid commands are suppressed, the operator can identify more quickly the particular command he needs.

Contrary to the opinion of the Examining Division, this feature is not disclosed in D1. This document refers to commands which are "legal" in a given "state". The "state" in question is not that of the process task performed, but the state of the command window. The system in D1 merely analyses the input made by the operator; if the entered command is incorrect or incomplete, the system presents suggestions for "legal" commands, i.e. correct commands which correspond more or less to the command already typed. According to D1 it does not appear to be at all possible to get any information from a help panel when the "Command Window" is empty, i.e. when no command has been entered. A substantial difference between the invention and the disclosure of D1 is therefore the determination of the state of the process task and the displaying of only those commands which are possible in that state according to the invention.

The only feature of Claim 1 that is disclosed by D1 is displaying a help panel (which, however, does not disclose valid commands in the sense of the invention) occurring in an area of the display which is different from the command area of the screen normally used for entering the commands ("Command Window"), so that an operator when using a device according to D1 apparently also is allowed to enter a command while said help panel is being displayed. However, the use of a "selection" cursor in combination with an "enter" key as input means for the execution of a valid command indicated on the help panel is in no way disclosed by D1, according to which the commands are typed into the "Command Window". These features together with the fact that only valid commands are displayed, clearly simplify the inputting operation of commands as performed by an operator. It is true that also according to D1 a cursor is used. This one is, however, not used for the purpose of executing a command, but only for the purpose of enabling an operator to choose appropriate parameters, which are displayed when a key (Prompt) is pressed.

D2, in fact, in one way comes closer to the idea of the invention than D1. This document discloses a help panel system, "Auto help", which uses a programming procedure which automatically provides the user of a display terminal with an error feedback. However, in this case only the parameters of a command are displayed, whereby the correct parameter can be chosen by selecting from the menu of legal values on the screen. The real commands cannot be corrected in that way; on the contrary they must be correctly re-entered (i.e. without the aid of a help panel) by the operator when an error message appears. Thus, also when the selection of the parameters in this case is considered as an execution of sub-commands, the system of D2 does not display valid commands in the sense of that of the present application, but only displays a group of sub-commands (parameters) belonging to a command which has been input by the operator.

According to the invention the operator at every point in the process may call up the help panel for assistance and will therefrom get the necessary command. This can also be done when the command to be entered is unknown to the operator. Thus, total flexibility is achieved as the command structure is built up hierarchically and the operator is prompted to perform actions that logically follow or are allowable at every point in the process performed.

VII. The Appellant requests that the decision under appeal be set aside and the patent be granted on the basis of Claims 1 to 8 filed during oral proceedings (Main Request); or on the basis of Alternative Claim 1 filed during oral proceedings and Claims 2 to 8 according to the Main Request (Auxiliary Request).

Reasons for the Decision

1. The appeal is admissible.

Main Request

2. Admissibility of the amendments

Claim 1 contains features which were not present in the original Claim 1, but the application provides support for the inclusion thereof. Thus "the displaying of said at least first help panel occurring in an area of the display being different to the command area of the screen which is normally used for entering the commands, so that the operator is still allowed to enter a command into the system while said help panel is being displayed" is disclosed at column 5, lines 47 to 53 of the printed patent application; and the steps of "positioning a 'selection' cursor to the line on said help panel containing the name of the command and executing, in response to the operator actuating 'enter' on the keyboard, the named command selected by said selection cursor on said help panel" is disclosed in the original Claims 3 and 4.

Thus no objection arises under Article 123(2) EPC.

3. Inventive step

Novelty not being in issue, only the question of inventive step requires consideration.

3.1. One of the objects of the present invention is to render the usual HELP facility provided with many programs more user-friendly by displaying only those commands which are "valid" when help is requested (column 2, lines 56 to 62). "Valid" commands are those which "logically follow or are allowable at this point in the ... process" (column 5, line 9). The set of valid commands is thus a sub-set of all existing commands and dependent on the state of the program execution. The description mentions as an example a program for word processing; after having completed a document, the operator has the choice of printing the document or copying it, and the HELP panel indicates those two commands only.

3.2. In respect of this feature the Examining Division relied on D1 for its argumentation. D1 describes a computer terminal referred to as SIGMA. SIGMA provides two kinds of help functions, "HELP" and "PROMPT". The PROMPT facility is described as follows: "When the user presses the key labelled PROMPT on the SIGMA terminal keyboard, the CLP /Command Language Processor/ remaps the working area of the screen as a PROMPT Window and shows all commands that are legal in the current state" (page 863, last paragraph).

The question arises what is meant by the expression "legal in the current state". The Examining Division understood it as referring to the state of the program execution, which would make "legal" synonymous with "valid" in Claim 1. The Board, after having heard the Appellant's observations on this point, takes the view that this reading is not the only possible interpretation of D1, nor is it necessarily the most probable one. The reasons for this opinion are set out below.

3.3. As the Appellant argues, the word "state" might in fact refer to the state of the command window (where inputted commands are echoed). The set of "legal" commands would in such a case not depend on the "current state of the process task being performed by the system", as stated in Claim 1, but only on the command, or part of a command, which the operator has just typed. This is clearly something different.

The Appellant has cited a number of instances in the text which point in this direction, among others the following:

First, it is stated that it is the Command Language Processor (CLP) which implements the PROMPT facility and thus decides what commands are "legal" (see the citation above). The general function of the CLP is to parse the user's input commands (page 863). This might imply that the PROMPT function is active only if the command window is not empty, i.e. if the operator has at least started to type one command. In contrast, the invention is intended to cover the situation where the operator does not know what command to enter.

Second, the reference to "legal" commands at the bottom of column 2 on page 863 may be regarded not as an independent statement but as an introduction to the two statements which follow: "if the user cannot recall the arguments or form of a command he is typing ..." and "if he types an ambiguous command ..." (emphasis added). If so, the PROMPT function appears to rely on a command input to be active.

Third, it is said on page 864 that "if the user needs a more detailed description of a command or cannot remember which command to use" (emphasis added), he should use the alternative HELP facility. This passage may suggest that the invention corresponds rather to the SIGMA command HELP than PROMPT.

3.4. It appears that D1 comprises merely the kind of HELP facility which displays an invariable list of all (or the most important) commands. An example of such prior art is the SERVICE FACILITIES described on page 865 (first paragraph) of D1, which "shows an Index-like list of the major topics and commands in SIGMA"; this function corresponds to the prior art acknowledged in the description of the present application (column 1, lines 49 to 66).

3.5. These points, taken together, cast doubt on the interpretation of D1 made by the Examining Division. In the Board's opinion, it would be mere speculation to try to determine how the skilled man would actually interpret the document. It may be true that the Examining Division's interpretation is the more immediate one; this impression could on the other hand be due to the fact that anyone reading D1 with the present application in mind cannot help connecting the word "legal" in D1 with the ideas associated with the word "valid" in Claim 1.

3.6. Procedural fairness demanding that an evident risk that a prior art document may be misinterpreted to an applicant's disadvantage must be excluded, the Board decides that, on the evidence on file, D1 does not disclose the feature that "valid" commands (in the sense of the present patent application) are determined and displayed by the described SIGMA system.

3.7. The Board considers D1 to be the closest prior art document cited. This document discloses the general method as identified in the first paragraph of Claim 1. Moreover, to some extent it discloses the first part of step (2) in that the Prompt Window (comparable with the "first help panel" in Claim 1) overlays the working area of the screen (but not the Flash and Status Windows which also display information) and, as has been explained above under VI, also to a certain extent the second part of step (2). The Prompt Window according to D1, however, does not display valid commands in the sense of the "at least first help panel" mentioned in step (2) of Claim 1. Starting from the teaching of that document, it appears that the technical problem to be solved by the present invention can be seen in making the known method more efficient and convenient for the operator in that the handling of the complex and numerous procedures (such as keystrokes sequences) is facilitated.

As has been concluded above, D1 does not suggest that only "valid" commands are displayed. The Board also agrees with the Appellant's arguments concerning D2 under VI above and agrees that said document does not give a hint towards a command structure in the sense of the present invention, i.e. that a command selected from one "at least first help panel" can immediately be followed by a command selected from a subsequently called-up further help panel. It appears, therefore, that steps (1) and (2) make an important contribution to an inventive step in that they make it possible to use the simple command input means defined by steps (3) and (4), which do not require commands to be typed. Thus, the subject-matter of Claim 1 clearly involves an inventive step.

4. The Board in this case finds it appropriate to demonstrate that the subject-matter of the present invention is not excluded from patentability under Articles 52(2) and (3) EPC. It is accepted case law of the Boards of Appeal that it is the intention of the EPC to permit patenting only in those cases in which the invention as claimed involves a contribution to the art in a field not excluded from patentability. On the other hand, when examining whether an invention as claimed falls under the exclusions pursuant to Article 52(2) and (3) EPC, the claim under consideration must be considered as a whole. A difficulty sometimes arises in determining whether a particular subject-matter or activity has a technical character and, therefore, is an invention within the meaning of Article 52(1) EPC, when the claimed subject-matter includes both technical and non-technical features.

However, when considering the features of Claim 1 added to the prior art as disclosed by D1, it immediately appears that the last steps (3) and (4), as already hinted at above, rely on a tool (a selection cursor and an enter key) for inputting a command into the processor. In fact, already this tool appears to be clearly of a technical character. Moreover, said tool apparently is a link between the display (help panel) and the processing means. In this respect this Board has in an earlier decision (T 115/85, OJ EPO 1990, 30) come to the conclusion that giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem. It, therefore, appears that the displaying of the help panel according to step (2) of Claim 1 also clearly must be considered to be of a technical character, as the displaying of only valid commands clearly reflects the status or condition of the system or apparatus.

Step (1) of Claim 1 clearly relies on a computer program and, therefore, at first glance appears to be excluded as such from patentable matter. However, when considered within the context of Claim 1 as a whole, this step (1) provides that only valid commands are displayed (as defined by step 2) at every point of the running process and that only those valid commands can be input by said tool (features (3) and (4)). Therefore, although step (1) relies on a computer program, which as such would not be patentable, it appears that in this case that program must be considered to constitute a technical means necessary for carrying out the invention (T 208/84, OJ EPO 1987, 14).

It would clearly be devious to interpret step (1) of Claim 1 as a mental act to be performed by the operator (in the light of Article 52(2)(c), (3) EPC which excludes "schemes, rules and methods for performing mental acts" as such from patentability).

All inventions require preceding mental activities on the part of the inventor. In this respect computer programs are not an exception: they also require such preceding activities from their authors. Decisive for a possible contribution of a computer program to the solution of a technical problem is what the program effectively does within the context of an alleged invention as claimed.

Apparently, all the novel features added by the invention according to Claim 1 to the prior art of D1, taken separately or (in the case of step (1)) in combination with other features of the claim, may be considered to have technical character. Moreover, as has been shown above, all of them contribute to the solution of the technical problem and to the inventive step (see under 3.7 above). The subject-matter of Claim 1, therefore, clearly makes a contribution to the art in a field outside the range of excluded matters.

5. The Board is therefore satisfied that the subject-matter of Claim 1 meets all the requirements of Article 52(1).

6. Since the Main Request is regarded as allowable, there is no need to examine the Auxiliary Request.

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 with the order to grant a patent on the basis of Claims 1 to 8 according to the Main Request and a description to be adapted.