T 0887/92 19-04-1994

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.