T 1297/23 (Digital stroke grouping/Microsoft) 05-02-2025

1. The application relates to grouping digital strokes.

Main request

2. Inventive step

2.1 Claim 1 of the main request is directed to a device "to improve accuracy and computer efficiency for selecting a grouping of digital strokes".

The device comprises a digital stroke analyser, a grouping generator and a user interface engine.

2.1.1 The digital stroke analyser receives a selection of a digital stroke, apparently from among a number of digital strokes displayed on a canvas within a graphical user interface (see paragraphs [0037] to [0039] of the description as filed), and checks whether the digital stroke is part of an existing "stroke grouping".

2.1.2 If the digital stroke is not part of an existing stroke grouping, the grouping generator creates a new stroke grouping which includes the selected digital stroke. This is done by looking for strokes in a "sampling region" around the selected stroke and repeatedly extending the sampling region along a first axis until no new strokes are found and then along a second axis, where the first axis is a horizontal axis and the second axis is a vertical axis or the other way around.

The initial size of the sampling region and the amounts by which the sampling region is stepwise extended are based on the average stroke width and the average stroke height in a "scale testing region" around the selected digital stroke.

2.1.3 The user interface engine updates the graphical user interface to display the existing or new stroke grouping.

2.2 Document D1 discloses a computing device programmed to process "digital ink", which is a sequence of strokes drawn by a user on a canvas ("digital ink receiving area") in a graphical user interface (see paragraphs [0026], [0031], [0032], [0086] and Figure 5).

In response to the selection by a user of a digital stroke, a stroke grouping is automatically created by means of ink analysis and displayed within the graphical user interface (paragraphs [0058] and [0090] and Figure 8).

2.3 Referring to paragraph [0059] of document D1, the appellant argued that document D1 did not disclose automatically creating a stroke grouping because human intervention was required.

The board does not agree. Paragraph [0059] explains that if the "automatic grouping" is not "exactly what the user wanted to select", the user may modify the grouping by manipulating the selection boundary. This confirms that the initial grouping, described in paragraph [0058], is indeed "automatic". Any subsequent manual correction by the user in accordance with paragraph [0059] is only optional and, in any event, not ruled out by any of the features of claim 1.

2.4 The device of claim 1 therefore differs from the device of document D1 in two sets of distinguishing features:

(a) if the user-selected digital stroke is part of an existing stroke grouping, the grouping generator selects the existing stroke grouping instead of generating a new stroke grouping; and

(b) features specifying the algorithm used for generating a new stroke grouping (see point 2.1.2 above).

2.5 As for the distinguishing features (a), in Figure 8 of document D1, if, after the creation of the stroke grouping 810, the user again selects a stroke within that stroke grouping, it would be an obvious possibility to select the existing stroke grouping 810 instead of re-generating that stroke grouping.

The appellant did not dispute this and relied solely on the distinguishing features (b).

2.6 The distinguishing features (b) are algorithmic in nature and are thus to be taken into account in the assessment of inventive step only to the extent that they contribute to a technical effect.

2.7 The appellant argued that the features (b) made a technical contribution because they related to "how" the task of grouping strokes was automated. This was done not by recognising cognitive information such as characters or meanings but by analysing the positions of strokes on a canvas.

However, the mere abstract formulation of an algorithm for a task, i.e. the specification of "how" a task is to be automated, is not a technical contribution (see decisions G 3/08, Reasons 13.5.1; and G 1/19, point 112). Technical aspects may be present when the algorithm is particularly suitable to be run on a computer in that its design was motivated by technical considerations relating to the internal functioning of the computer, but the board is unable to identify such considerations in the present case. In this respect, the board notes that the distinguishing features (b) give no details on how the strokes on the canvas are electronically represented, e.g. as pixels or vectors or otherwise.

2.8 The distinguishing features (b) do not contribute to a technical effect through a subsequent use of the created and displayed stroke grouping, either.

2.8.1 In its communication, the board observed that claim 1 did not specify any further technical use of the displayed stroke grouping. In response, the appellant argued that it was evident that the created stroke grouping would be used in editing actions such as deleting or moving a group of strokes.

2.8.2 The board has doubts that this non-claimed intended use of the created stroke grouping qualifies as an "implied" use within the meaning of decision G 1/19, points 94 and 95, i.e. as the only relevant use of the stroke grouping that can thus be considered to extend over substantially the whole scope of the claimed subject-matter.

2.8.3 However, even if this intended use were considered to be an implied use of the created stroke grouping, the distinguishing features (b) would still not contribute to a technical effect over document D1, for the following reasons. The stroke grouping created by the device of document D1 is also intended to be used in editing actions such as deleting and moving (see paragraphs [0058], [0088] and [0089] and Figure 7) and thus suitable for such use. The stroke grouping of the claimed invention is formed by the algorithm specified by the distinguishing features (b), which imposes certain further limitations on the resulting stroke grouping as compared with the disclosure of document D1. But these limitations cannot be seen to produce any specific technical effect through the subsequent use of the stroke grouping in editing actions. In particular, whether a stroke grouping created by the claimed invention is more likely to correspond to the group of strokes on which the user wishes to carry out an editing operation than other stroke groupings, such as those created by the device of document D1, is a matter of subjective user preferences rather than a technical matter.

2.9 The appellant further argued that the claimed invention credibly assisted the user in performing the technical task of grouping digital strokes. However, the device of document D1 already carries out this task automatically (see points 2.2 and 2.3 above). Moreover, grouping digital strokes is not in itself a technical task.

2.10 Hence, the board concludes that the specific algorithm specified by the distinguishing features (b) does not provide an inventive contribution over document D1.

2.11 Hence, the subject-matter of claim 1 lacks an inventive step (Article 56 EPC).

Auxiliary requests 1 and 2

3. Admission into the appeal proceedings

3.1 Auxiliary requests 1 and 2 correspond, up to the correction of an obvious mistake in auxiliary request 1 (replacing "fracture" with "fraction"), to the auxiliary requests 1 and 2 considered in the decision under appeal. The examining division decided not to admit these requests into the proceedings under Rule 137(3) EPC.

3.2 In its statement of grounds of appeal, the appellant did not give any reason why auxiliary requests 1 and 2 should be admitted into the appeal proceedings.

Hence, in respect of auxiliary requests 1 and 2, the statement of grounds of appeal does not set out clearly and concisely why it is requested that the decision under appeal be set aside, as required by Article 12(3) RPBA. The board therefore has discretion not to admit these requests into the appeal proceedings (Article 12(5) RPBA).

3.3 Moreover, under Article 12(6), first sentence, RPBA, the board may admit a request which was not admitted in the first-instance proceedings only if the decision not to admit the request suffered from an error in the use of discretion or if the circumstances of the appeal case justify its admission.

The presence of such an error or such circumstances was not argued by the appellant and is not apparent to the board.

3.4 The appellant did not comment on the intention expressed in the board's communication not to admit auxiliary requests 1 and 2 into the appeal proceedings.

3.5 Hence, the board decides not to admit auxiliary requests 1 and 2 into the appeal proceedings (Article 12(3) to (6) RPBA).

4. Since the sole request admitted into the appeal proceedings is not allowable, the appeal is to be dismissed.