T 1421/08 – Technicality

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse his application.

The ED had come to the conclusion that the requests lacked an inventive step over the documents

D1, D2 and the Unix utility “cat” as part of the common know ledge in the art.

Claim 1 on file before the Board read:

An apparatus for regenerating runtime objects, the apparatus comprising:

a processor (210); and

a memory (240), coupled to the processor, storing instructions adapted to be executed by the processor to:

retrieve (100) object model data (1500) defining framework-specific relationships between object types of a computer application framework;

access (110) a generic object navigation grammar file;

incorporate (120) the object model data into the generic object navigation grammar file to produce a framework specific object navigation grammar file;

provide the framework specific object navigation grammar file to a parser generator arranged to generate a rule parser (1510);

parse (1610) one or more invalidation rules by utilizing the generated rule parser (1510) to check the one or more invalidation rules for syntactic correctness, the or each invalidation rule identifying relationships between development objects and runtime objects;

generate a respective rule object for the or each syntactically correct invalidation rule;

execute the or each rule object to invalidate one or more run time [sic] objects which are to be regenerated in response to changes made to one or more development objects; and

regenerate the invalidated run time objects.

In what follows, the Board discussed the technicality of the claimed subject-matter:

[4] According to established jurisprudence of the boards of appeal the claims – directed towards apparatus and computer-implemented methods, respectively – define inventions within the meaning of A 52 (see G 3/08 [10.7]). This is not under dispute.

[5] The central point at stake however is which technical effects can be attributed to the claimed matter and which technical contribution the claimed matter makes over the prior art.

[5.1] The primary purpose of the claims according to the main request, witness the preamble and the last feature of both independent claims, is the regeneration of runtime objects in response to changes made to development objects. This is part of what is conventionally called the “build process” of a software application.

[5.2] The feature claiming regeneration of runtime objects determines the nature of the claimed invention and is, therefore, central for the assessment of patentability. The board notes that this feature was not contained in the claims subject to the appealed decision but added to the claims filed with the grounds of appeal.

[5.3] Determining which runtime objects need to be regenerated in an individual case in view of regenerating only those rather than all of them contributes to limiting the resources needed for a particular build. The board con siders this as a technical effect. Therefore, according to established jurisprudence of the boards of appeal, the features contributing to this effect must be taken into account for the assessment of inventive step (see T 641/00 [headnote 1]).

[5.4] According to the claims, the grammar relates to how the syntax of invalidation rules is defined, the parser generator to how the syntactic correctness of the invalidation rules so defined is verified, and the object rules to how the syntactically correct invalidation rules are used so as to identify invalidated runtime objects. These features do not have an immediate impact on the increased efficiency of the build process if and insofar as the invalidation rules and the runtime objects to be regenerated remain unchanged.

[5.5] Further, the board cannot agree with the appellant that “the way in which the invalidation rules are parsed” or “in which the parser is generated” must “take into account the nature of the relationships between the development and runtime objects”, or “the nature” or “the purpose of the invalidation rules” […]. According to conventional understanding in the art, the parsing does not depend on the nature of these relationships but only on the way they are represented within the grammar, for instance in that the form of a grammar has an impact on whether it can be processed by a particular kind of parser or within specific time or space constraints.

[5.6] However the board considers that the utilisation of a grammar, a parser generator and rule objects enables the software developer to exercise control over the build process and over the extent to and the ease with which the relevant effect is actually achieved.

[5.7] The board is of the opinion that within a claimed invention having a primary technical effect, features enabling and supporting control of that effect will typically have technical character as well. In consequence, the board concludes that the fact that a grammar, a parser generator and rule objects are used within the context of regenerating runtime objects contributes to the technical character of independent claims of 1 and 9 of the main request and therefore may also contribute to inventive step.

The case was finally remitted to the ED for further prosecution.

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