05 February 2011

Recent EPO Appeal Board Decisions Relating to Computer Implemented Inventions

The EPO Boards of Appeal constantly issue decisions relating to Computer/Software-Implemented Inventions (CII), often involving communication concepts or mobile applications. I have selected four recent decisions for a brief discussion:

Formatting text on a mobile device (not inventive): In T 1110/08 of 14 September 2010 Appeal Board no. 3.5.05 under Chairman AS Clelland reviewed the rejection of EP application 05 003 578 to Japanese Sharp Corporation due to lack of inventive step. This application relates to a portable device such as a mobile telephone having facilities for entering and formatting text. The user is provided with a facility to change format options of text by means of the mobile telephone. The applicant considered the claimed invention allowable basically for two reasons:
  1. formatting options are arranged in only two hierarchical menus, whereas prior art (e.g. an MS Word 97 users guide) requires a user to traverse at least three menu layers before reaching a desired menu, and 
  2. the invention provides "a simple concept by which each of a first and second menu for decorating text can be invoked by depressing only a single button", whereas prior art requires simultaneously depressing two or more keys for opening a menu and selecting a formatting option.
The Board, however, took the position that
  1. the number of menus does not imply any distinction over "Word 97", since the claimed formatting options do not exclude that they are embedded in a menu having more than two hierarchical layers, and
  2. the number of keys necessary to select an item depends on the state of a menu when selecting an item. Specifying a single key or button for selecting a formatting option cannot distinguish the claimed apparatus from a computer running "Word 97".
The Board concluded that the apparatus according to claim 1 is distinguished from "Word 97" running on a computer in that "a button is associated with a corresponding decoration function based on a positional relation and by the numeric character of the key appearing in the image of the corresponding decoration function", which the skilled person would apply when considering WO 03/084064 A1 ("character entry in wireless device"). The claimed teaching thus was considered non inventive.  

Point of sale (inventive): In T 0346/08 of 25 October 2010 Appeal Board 3.4.03 under Chairman G Eliasson addressed the rejection of 05 075 146 of January Patents Ltd. due to lack of inventive step. Claim 1 relates to an electronic point of sale (EPOS) multi-task apparatus, linkable to a main server and comprising a CPU and memory, a user input device such as a keyboard and a bar code scanner, a printer, a till drawer, and software control modules. This apparatus is characterised and distinguished over D1 (US 5,889,676 A) in that
the EPOS apparatus has means for controlling at least one apparatus for vending packed products, the vending apparatus control means comprising a software module operable to receive commands from a user, and in response to acceptable commands, the software module is operable to activate a dispensing mechanism of the vending apparatus whereby the required packed product is dispensed.
D1 discloses a bar-code reader for optically scanning bar-codes mounted on articles being sold and a keyboard for inputting prices of articles being sold. The sold items either have to be scanned in or typed in by the cashier. The Board found that the objective technical problem is to eliminate the discrepancies between items purchased and items sold, i.e. to increase the security against theft.

D6 (DE 93 21 417 U), relating to a cigarette container with a selection keyboard, was found by the Board to prompt the skilled person to provide such a cigarette container near one of the point-of-sale terminals of D1, thus eliminating the discrepancy between items purchased and items sold by providing the items in a vending machine. The skilled person would further consider to program the control mechanism of the cigarette container with the aid of the keyboard of the POS terminal.

D6 neither discloses that the cash register comprises means for activating the dispensing mechanism of the cigarette apparatus, nor that a software module is operable to activate the mechanism. The skilled person would not be led to provide a software module in the POS terminal operable to receive commands from a user and to activate a dispensing mechanism of the cigarette container. The claimed teaching was thus considered novel and inventive over D1 and D6.

MMS forwarding (not inventive): In T 1792/06 of 03 September 2010 Appeal Board 3.5.05 under Chairman A Ritzka addressed the rejection of 03 027 818 of LG Electronics due to lack of inventive step. Method claim 1, being substantially parallel to apparatus claim 4, reads
A multimedia message forwarding method for a multimedia messaging service (MMS) server, comprising the steps of:
  • receiving a multimedia message (S11) to be transmitted to a first user agent,
  • setting an index in header information of the multimedia message to a value other than ‘0’ so as to discriminate the multimedia message from other multimedia messages,
  • storing the multimedia message in association with the set index value,
  • transmitting (S13), to the first user agent, the multimedia message including the set index value,
  • receiving (S41), from the first user agent, multimedia message header information including the index,
  • judging (S42) whether the received index has a value other than ‘0’,
  • if the value of the received index is ‘0’, forwarding a multimedia message as provided by the first user agent to a second user agent,
  • if the value of the received index is other than ‘0’, forwarding a stored multimedia message having the same index value to a second user agent.
The Board identified three differences of claim 1 over closest prior art D3, a functional description of the multimedia message system according to the ETSI standard:
  1. submission of a new message is detected by the server upon reception of an index value "0", instead of being detected, as in D3, upon reception of a predetermined message type value different from "0";
  2. the forwarding command for a stored message is detected by the server upon reception of an index value other than "0" instead of being detected, as in D3, upon reception of a predetermined message type value;
  3. a stored message to be forwarded is retrieved by the server based on the received index value instead of being retrieved, as in D3, based on a received message reference value in a different message field than the received message type value.
The Board held that feature (a) has no inventive merit and that the technical effect of features (b) and (c) is that a single message field (the index) in an MMS header is used for determining the type of operation and the address of the message to be forwarded. Since theses features do not provide any clear technical advantage over D3, the claimed invention was considered a mere alternative to prior art.

The Board held that the skilled person would know that a message field can be used for indicating both a function and data used in that function. By applying this common knowledge to the forwarding command of D3, the message reference field and the message type field would be combined in one single field defining, when not filled with "0", both the function to be performed (retrieving stored message for forwarding) and the data used for performing the function (address of stored message). The skilled person would thus arrive at claim 1 without applying an inventive step. 

Locating a site with a mobile telephone (inventive): In T 1575/06 of 26 August 2010 Appeal Board 3.5.05 under Chairman A Ritzka addressed the rejection of application 01 913 046 of ACK Ventures due to lack of inventive step. The application relates to locating a site using a mobile telephone. Indepenent claim 6 reads
A mobile telephone having a display and numbered keys in a geometric configuration, characterised in that the mobile telephone is adapted to perform a method of locating a site, comprising the steps of:
  • displaying on the display a first map of a geographic area that contains the site, wherein the map is partitioned into visually delimited regions in a geometric configuration corresponding to the geometric configuration of the keys of the keypad and wherein each region corresponds to a respective one of the numbered keys; and
  • upon a user selecting a selected one of the numbered keys, displaying on the display a second map which depicts in more detail the region of the first map that corresponds to the selected one of the numbered keys.
Claim 6 and parallel method claim 1 were found novel over closest prior art D2 (US 5,633,912 A), whose differences provide the technical effect of permitting using the mobile telephone to perform navigation operations on graphical content comprising digital maps, leading to the objective technical problem of how to extend the functionality of the mobile phone to permit navigation operations on graphical content comprising digital maps.

D2 basically discloses a mobile telephone whose functionality is essentially restricted to conventional voice-based telephony functions, but is not adapted to displaying graphical content comprising digital maps. Likewise, D4 (EP 0 883 055 A) as the only available prior art relating to presenting an navigating graphical content was found to contain no disclosure or suggestion as to performing navigation operations on such graphical content.
D4 was found to be primarily concerned with zooming of digital maps on notebook type computer displays by using a pointing means of the computer, e.g. a mouse. Since the Board further held that D4 does not disclose or suggest a user interface based on a mapping as specified by the characterising portion of above claim 6, it was concluded that the skilled person would not consider extending the functionality of the mobile phone of D2 by digital map zooming as disclosed in D4.