Wednesday, 29 June 2011

T 1634/06 – Improve Your Figure

Auxiliary requests normally consist of amended claims. The present case is noteworthy because there were auxiliary requests that consisted in amendments to the drawings.

Here the applicant appealed against the decision of the Examining Division to refuse its application for lack of inventive step. 

Claim 1 before the Board read:
A method for use in an interactive television program guide implemented on user television equipment (22) for displaying programs and associated program data, the method characterised by:
storing on a digital storage device programs and program data that is associated with the programs using the interactive television program guide; maintaining on the digital storage device a directory of the program data for the stored programs using the interactive television program guide, and
providing to the user a list of selectable options, wherein a first selectable option is provided for allowing the user to access information for at least one broadcast television program and at least one recorded program stored on the digital storage device, and wherein a second selectable option is provided for allowing the user to access a list of currently stored programs from the directory.
During the appeal proceedings, on January 26, 2007, the applicant filed a new figure 5b

to replace figure 5b then on file:

In an annex to the summons to oral proceedings (OPs), the Board indicated that the new figure might be objectionable under A 123(2). The applicant then filed claims according to a new main request, a new figure 5b (“Auxiliary request #1”) and figure 5b as originally filed (“Auxiliary request #2”).

During the OPs, the applicant filed claims 1 to 8 and withdrew all previous requests. Its final requests were that the decision under appeal be set aside and a patent granted on the basis of claims 1 to 8 filed in the OPs before the board with the description and drawings on which the decision under appeal was based, except for figure 5b, which according to the main request should be that filed with the letter dated January 26, 2007. As a first auxiliary request only figure 5b of the main request should be replaced by figure 5b filed as “Auxiliary Request #1” with the letter dated 4 February 2011. As a second auxiliary request only figure 5b of the main request should be replaced by figure 5b as originally filed.

The Board found the main request to lack inventive step. When coming to this conclusion, the Board made an interesting statement on converging fields of technology:

[2.1.2] [T]he invention concerns both television technology - in particular television program guides which allow digital storage of information - and computer and computer-interface technology. In this context the board takes the view that it was well known, before the priority date of the present application, that these two areas of technology were converging. Therefore, the common general knowledge of a person skilled in the art of television program guides included common general knowledge of computers and computer interfaces in so far as it related to television technology and television program guides.

This is indeed a (novel ?) alternative to construing teams of skilled persons.

The Board also made the following comments on the auxiliary requests:

[3.1] The interpretation of claim 1 is not dependent on the content of the respective version of figure 5b. In the present case, the different presentation of the program listings grid does not change the meaning of the selectable options as claimed and is merely a matter of allowability of the respective amendment made. Hence the above analysis concerning inventive step is not dependent on the particular version of figure 5b which is part of the documents forming the basis on which grant of a patent is requested. This has also been acknowledged by the appellant. From this it follows that the first and second auxiliary requests are not allowable because of lack of inventive step of the claimed subject-matter.

[3.2] Under these circumstances there is no need for a decision on whether the inclusion of figure 5b according to the main request and the first auxiliary request respectively meets the requirements of A 123(2).

To read the whole decision, click here. The file wrapper can be found here.