T 0983/10 (Customizable ornamental appearance/APPLE) of 29.11.2013

European Case Law Identifier: ECLI:EP:BA:2013:T098310.20131129
Date of decision: 29 November 2013
Case number: T 0983/10
Application number: 96915599.3
IPC class: G06F 9/44
Language of proceedings: EN
Download and more information:
Decision text in EN (PDF, 310.464K)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished
Applicant name: APPLE INC.
Opponent name: -
Board: 3.5.06


Relevant legal provisions:
European Patent Convention 1973 Art 84
European Patent Convention R 111
Rules of procedure of the Boards of Appeal Art 11
Rules of procedure of the Boards of Appeal Art 15(3)
European Patent Convention R 137(3)
Keywords: Claims - clarity (no)
Remittal to the department of first instance - fundamental deficiency in first instance proceedings
Remittal to the department of first instance - special reasons for not remitting the case
Oral proceedings - held in absence of appellant


Cited decisions:
T 0049/99
T 0354/07
T 1171/06
Citing decisions:

Summary of Facts and Submissions

I. The appeals lies against the decision of the examining di­­vision, with written reasons dispatched on 23 De­cem­ber 2009, to refuse the European patent appli­cation no. 96915599.3 for lack of an inventive step, Article 56 EPC 1973. In the decision it is also re­por­ted that a second auxiliary request was not ad­mitted during oral procee­dings pursu­ant to Rule 137 (3) EPC for prima fa­cie vio­lation of Articles 123 (2) EPC and 56 EPC 1973.

II. Notice of appeal was received on 17 February 2010, the appeal fee being paid on the same day. A statement of grounds of appeal was filed on 23 April 2010. The appellant requested that the decision under appeal be re­versed since it violated both procedural and subs­tan­tive provisions of the EPC and that a patent be granted based on one of three sets of claims as filed with the grounds of appeal. The board understands the appli­ca­tion documents to be the follow­ing ones:

claims, no.

1-10 according to the main or 1st auxiliary request

1-7 according to the 2nd auxiliary request,

all filed with the grounds of appeal

description, pages

1-12 as published

drawings, sheets

1/4, 4/4, 4/4 as published

3/4 as filed with letter of 28 July 2000

III. With a summons to oral proceedings the board informed the appellant about its preliminary opinion raising inter alia objections under Article 123 (2) EPC and Article 84 EPC 1973. With regard to Article 56 EPC 1973, the board expressed its doubts whether the claimed invention made a technical contribution to the art as it would appear at best only to contribute an advice to the pro­grammer as to how to write a program for computers so as to facilitate the change of an aesthetic effect in the presentation of information. The board furthermore argued that the claimed inven­tion, even on the assumption that it did make a techni­cal contribution, appeared not to show an inventive step over the cited prior art.

IV. In response to the summons, the appellant informed the board that neither the applicant nor the respective repre­sentative would attend the oral proceedings. No amend­ments or arguments were filed.

V. Claim 1 according to the main request reads as follows:

"A computer system comprising

a display device (28),

an operating system including a graphical user interface to provide a user with a convenient mechanism to control the operation of the computer, said interface including graphical objects that are displayed on a monitor of the computer and that are accessed by users to control the operation of the computer, said interface comprising a plurality of definitions that are respectively associated with said graphical objects, each of said definition comprising a hierarchical set of software code modules, including:

a core class (52) at one level of the hierarchy which defines the structural appearance of elements that constitute a displayed image of the graphical object; and

a drawing module (54) at a lower level of the hierarchy which depends from said core class, said drawing module defining an ornamental appearance for the elements in the image of the graphical object to be displayed on the monitor."

Claim 1 of the first auxiliary request is identical to that of the main request up to the addition of the following phrase at the end:

"..., each drawing module being customizable independently of the core class."

Claim 1 of the second auxiliary request coincides with that of the main request up to and including the defi­ni­tion of the core class, the remainder being amended in a few places so as to read as follows:


a plurality of drawing modules (54, 56) at a lower level of the hierarchy which depend from each core class, where each drawing module defines a different ornamental appearance for the elements in the image of the graphical object associated with the core class to be displayed on the monitor, each drawing modules being customizable independently of the core class

wherein said drawing modules are alternatively selectable by a user of the computer to present different themes for the graphical user interface."

All three requests also contain an independent method claim which substantially corresponds to the respective independent system claims.

VI. Oral proceedings where held on 29 November 2013 as scheduled and, as announced, in the absence of the appellant. At the end of the oral proceedings, the chairman pronounced the decision of the board.

Reasons for the Decision

Appellant's absence from oral proceedings

1. The appellant was duly summoned but chose not to attend the oral proceedings. According to Article 15 (3) RPBA the board is not obliged to delay any step in the pro­cee­dings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned who may then be treated as relying only on its written case. The following reasons are based on the board's preliminary opinion as set out in the annex of the summons to oral proceedings.

The decision not to admit a request under Rule 137 (3) EPC

2. During oral proceedings, the examining division had in­voked Rule 137 (3) EPC so as not to admit a second auxil­ia­ry request into the procedure because it appeared to in­troduce problems under 123 (2) EPC and did not over­come the examining division's objections under Article 56 EPC 1973.

2.1 The fact that an auxiliary request was not admitted after a prima facie assessment of Articles 123 (2) EPC and 56 EPC 1973 is reported in the decision under appeal in the section "Facts and Submissions" (point 1.10), where­­as the reasons of the decision under appeal do not mention this auxiliary request at all, let alone that it was not admitted or why.

2.2 According to the minutes of the oral proceedings how­ever the reasons for the non-admission were dis­cussed with the appellant. The minutes contain the non-admitted claims as an attachment and explain that the amendment "referring to drawing modules being custo­mi­zable" was considered to constitute added subject matter and that "customization of object oriented mo­dules" was considered not to add anything inventive over the prior art (see point 5.4).

2.3 The final decision of the examining division to refuse the application affects all requests pending at the time of the refusal, here in particular the non-ad­mitted second auxiliary request. Therefore, the deci­sion of the examining division not to admit a request under Rule 137 (3) EPC constitutes part of its fi­nal deci­sion un­der Article 97 (2) EPC. A decision given orally shall subsequently be put in writing and any decision open to appeal shall be reasoned, Rule 111 (1,2) EPC.

2.4 Since the written reasons lack any reference to the second auxiliary request or its non-admission, they are in­­com­plete with respect to the decision that was deli­vered orally and insufficient to justify the decision to re­fuse the application. The written decision is thus in­sufficiency reasoned, Rule 111 (2) EPC. The board con­­­si­ders that this is a fundamental deficiency in the sense of Ar­ticle 11 RPBA which could have justified an immediate remittal to the first instance. In the present case, however, this deficiency has had no pre­ju­di­cial consequence for the appellant since the reasons for the non-admission were discussed with the appellant, are reflected in the mi­nutes and referred to in the decision. The appellant itself, albeit noting that the non-admission was not reflected in the decision, did not claim any. Under these circumstances there is no reason for remitting the case to the department of first instance.

Alleged procedural violations

3. The appellant claims inter alia that the decision under appeal violates procedural provisions of the EPC (see grounds of appeal, p. 1, 1st par.). How­ever, apart from noting the deficiency of the written decision as just discussed the appellant did not sub­stan­­tiate its alle­ga­­tion. Also the board has no fur­ther reason to object against the examining division's procedural conduct.

The invention

4. The application in general relates to the customization of graphical user interfaces (GUIs).

4.1 A dis­tinc­tion is made between the "functionali­ty" and the "appearance" of indi­vi­dual GUI objects (p. 6, lines 20-31). Appea­rance is further divided into the as­pects of "structural" and "ornamental appea­rance" (p. 6, line 32 - p. 7, line 13): The former is disclosed to de­fine the "overall struc­ture of each object", in par­ti­­cular "the relative positions of different elements which make up the ob­ject" (p. 4, lines 1-2 and fig. 2), the latter to de­fine things like colour, pattern, shape, font, or line width (p. 7, lines 6-13 and 26-29) and to re­pre­sent the GUI appearance according to diffe­rent "themes" (p. 2, lines 11-26; p. 8, lines 23-26; fig. 4).

4.2 It is disclosed that GUI objects such as push button, menus or scroll bars should generally behave the same across applications, i.e. their functionality should not change (see p. 6, lines 29-31). It is also dis­closed­ that "structural aspects" of the GUI should not change so as to maintain "consistency" of the GUI (see p. 3, lines 1-25). Program code at this level should preferably be provided by the operating sys­tem develo­per (p. 9, lines 10-12). On the other hand, it is dis­closed to be desirable that code for the "ornamental appea­rance" can be written by different developers and be varied by the user (p. 9, lines 12-14 and 29-30).

4.3 To enable this flexibility, the invention as claimed spe­ci­fies that the definitions for each individual gra­phi­cal object be provided as a "hierarchical set of soft­ware code modules". Each such hierarchy provides a so-called "core class" to define the "structural appea­rance" and "drawing modules" to define the "ornamental appearance". The latter are specified to be "at a lower level of the hierarchy" than the core class and to "[depend] from said core class".

4.4 Claim 1 of the first auxiliary request further defines that "each drawing module [be] customizable inde­pen­dent­ly of the core class" and claim 1 of the second auxilia­ry request that the drawing modules be "alter­na­tively selectable by a user ... to present different themes" for the GUI.

Claim construction and clarity, Article 84 EPC 1973

5. In the decision under appeal it was argued that the terms "ornamental appea­­­­rance" and "structural appea­rance" were vague and, when interpreted broadly, over­lapped in meaning (point 2.3.2). The appellant has challenged this, argu­ing that these terms must be in­ter­preted in view of the descrip­tion - the patent being its own dictionary (grounds of appeal, p. 4, 1st par.) - and can, on this basis, be sharply distin­guished (p. 4, 3rd par.).

5.1 The description does not contain a definition for either "structural appearance" or "ornamental appea­rance". The description appears to use as a synonym of "structural appearance" the term "overall structure" and explains it to relate to "the relative positions of different ele­ments which make up the object" (see p. 4, lines 1-2; and p. 6, lines 33-34). "Ornamental appea­rance" is introduced in contrast to "structural appea­rance" but otherwise illustrated by example (see p. 7, lines 6 ff.). A single example is further elaborated on, namely that of a scroll bar (see fig. 2): It is explained that "every scroll bar ... should have the same general structure" within which each of the ele­ments can have its own "ornamental appearance".

5.2 The board considers that even in view of the expla­na­tions given in the description the two terms are vague and cannot be sharply distinguished. The description itself discloses that one element of a scrollbar, the "thumb", allows different shapes as "ornamental appea­rance" (p. 7, lines 6-13) whereas others, the "arrows", are struc­­­­tural parts of the scrollbar (p. 6, line 36 and fig. 2) and thus can only be replaced by other shapes which are re­cog­nizable as arrows. Also it is clear that, while colour is dis­closed as an "ornamental" aspect (p. 7, line 8), it may not be possible to change colours with­out affecting the "consistency" of a GUI, for example in an alert window showing a risky option in red and a safe alter­native in green. Even entire images (like a trash can symbol) must not be changed arbi­tra­rily with­out affec­ting the in­telli­­­gibility of desk­top metaphors and thus the con­sis­­tency of the inter­face.

5.3 As a consequence the board considers that it is justi­fied to interpret both terms broadly - as did the exa­mining division in the decision under appeal.

5.4 The board is however also of the opinion that it is not central for the invention whether an individual GUI feature is considered to be part of the structural or ornamental appea­rance of the GUI: In general, it may depend on the circumstances whether a particular feature of a given GUI is (or is deemed) important for the "consis­tency" of the GUI and therefore should not be changed, or whether it is a mere "ornamental" fea­ture which may be changed without affecting GUI consis­tency. From this perspective, the board considers that these terms, while justifying a broad interpretation, do not render the claims unclear.

6. In the board's understanding the application as a whole teaches that the aspects of a GUI may be divided into two groups accor­ding to their impact on the GUI consis­tency and that the one of them with the lesser impact should be made available for custo­mi­za­tion by the user. In this context, the invention is meant to provide some kind of software architecture to enable this.

6.1 All independent claims refer to a "hierarchical set of software code modules", amongst which there is "a core class" and one or more "drawing modules".

6.2 The core class and drawing module(s) are specified in terms of what they define (the structural or ornamental appearance, respectively, of "elements that constitute a displayed image of the [defined] graphical object", and by reference to different "levels of [a] hierarchy" to which they belong. In this hierarchy, apparently meant to refer to the "hierarchical set of software mo­dules" defined previously, the drawing modules are fur­ther defined as "depend[ing] from [the] core class".

6.3 This language however leaves open what exactly consti­tutes a "software code module", "a core class" or a "drawing module". In the board's judgment, any piece of code qua­li­fies as a "software code module" as claimed. The claim language also leaves open to which extent and in what manner the reference to a "hierarchy" has impli­­ca­tions on the implementation of the claimed "software code modules".

6.4 In the board's judgment the claims do not exclude the interpretation that the claimed "hier­archy" with "levels" depending on each other are mostly conceptual: That is, the claims do not exclude the possibility that the model of a GUI object in­volves a hierarchy of le­vels relating to "functiona­li­ty", "struc­tu­ral appea­rance" and "ornamental appearance" whereas the imple­mentation does not mirror this hierarchy en­tire­­ly or even at all. It is also noted that a GUI may be modelled in terms of objects and classes without having to be implemented in an object-oriented language.

6.5 Of course, there will be intrinsic dependencies between the le­vels: E.g. the functionality of an object might re­quire the existence of a scroll bar and the drawing of a scroll bar presupposes that line width and line co­­lour be predefined, if implicitly. This does not how­ever seem to li­mit significantly the ways in which such dependen­cies may be ex­pressed in an implementation.

6.6 The claim language therefore leaves unclear to what extent the fea­tures relating to a "hierarchy", its "levels" and the "dependencies" between the levels, are as­pects of modelling or to what extent they represent aspects of an implementation and, in the latter case, which ones.

6.7 This distinction is important inter alia because at least the purely conceptual aspects of software design and development will nor­mally not contribute to an inven­­tive step according to the jurisprudence of the boards of appeal (see e.g. T 49/99, T 354/07, and T 1171/06, not published).

6.8 The claim language also leaves unclear by which means the invention intends to achieve the effect of ma­king ornamental GUI aspects customizable by users.

6.9 The board therefore comes to the conclusion that inde­pen­dent claims 1 and 9 of the main request lack clari­ty, Article 84 EPC 1973.

7. The board considers that this objection also applies to the independent claims of the auxiliary requests.

7.1 Specifically, the additional feature in the independent claims of the first auxiliary request, namely that of "each drawing module being customizable independently of the core class", is insufficient to clarify the mea­ning of the terms drawing module and core class them­selves. In fact, this new feature causes the addi­tional problem that it is not clear what precisely it should mean for a drawing module to be "customi­zable".

7.2 Also the further additional feature in the independent claims of the second auxil­ia­ry request according to which "drawing modules are alternatively selectable by a user ... to present different themes" does not make clear what a drawing module is and what it should mean for a drawing module to be "selec­table" by a user "to pre­sent ... different themes".

7.3 The board therefore concludes that the independent claims of the auxiliary requests lack clarity, too, in vio­la­tion of Article 84 EPC 1973.

7.4 Under these circumstances the board's further ob­jec­tions under Articles 123 (2) EPC and 56 EPC 1973 as raised in the annex to the summons to oral proceedings need not be addressed.


For these reasons it is decided that:

The appeal is dismissed.

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