T 1397/05 (Electronic bulletin board system/GALA) of 2.4.2008

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse European patent application No. 99907900.7.

II. According to the decision appealed, the invention as defined in claim 1 of the set of claims 1-17 filed by letter dated 7 January 2005 did not involve an inventive step.

III. With the statement setting out the grounds of appeal dated 6 September 2005, the appellant requested that the decision be set aside and a patent be granted based on the claims on file. Oral proceedings were requested in the event that this request could not be granted.

IV. Claim 9 as of 7 January 2005 reads:

"An electronic bulletin board system comprising a server computer (s) adapted to communicate with user's computers (c) through a network for performing moderation of information submitted from the user's computers (c) to the electronic bulletin board (30) the electronic bulletin board system including:

a prohibited word database (40) comprising words preliminarily selected as those which are inappropriate to be posted on an electronic bulletin board (30) are registered;

a heed-required word database (50), wherein words selected as those to be heeded about a social reaction even though the message is allowed to be posted are registered in the heed-required word database,

a message registration interface (10) configured to send out a message registration screen in response to a request from any user's computer (c);

a message processor configured to acquire information (100, 116, 701, 702) entered on the message registration screen by a person who wishes to post a message from the user's computer (c); to automatically check the posting-desired message in said information entered on the message registration screen for whether or not the posting-desired message contains a certain word in the prohibited word database (40); and to register said message in the electronic bulletin board (30) when the message includes no word in the prohibited word database;

wherein the system includes a messaging system (10, 20) configured to send out a letter screen saying that the message cannot be posted toward the user's computer which originated that message when the message includes any word in the prohibited word database, and to notify a computer (m) of an operation manager of said electronic bulletin board system of the event of rejecting the posting of said message,

wherein the message processor is configured to automatically check the posting-desired message for whether or not the posting-desired message contains a certain word in the heed-required word database (50) in addition to the prohibited word database (40),

wherein the messaging system (10, 20) is configured to notify the computer (m) of the operation manager of said electronic bulletin board system of the event of posting the message including the heed-required words on the electronic bulletin board (30) when the posting-desired message includes any word in the heed-required word database (50) and no word in the prohibited word database (40)."

Claim 1 is directed to a method of moderating information in an electronic bulletin board system. Claim 17 is directed to a computer program product for executing such a method.

V. In a communication, the Board stated that it did not regard checking words as a technical activity since it corresponded closely to a mental act. The way the computer performed the check might be technical but was neither disclosed nor claimed. The decision to register or not to register a message also corresponded to a mental act. Notifying an operator and/or the user about registrations or non-registrations was a mere presentation of information. The way the presentation was performed (electronically) was technical but known. Thus, even disregarding the prior art, the invention (system and method) did not seem to involve an inventive step.

VI. Oral proceedings, which the appellant did not attend, were held on 2 April 2008. The Board verified that the appellant had requested in writing that a patent be granted on the basis of the claims presently on file, ie claims 1-17 filed before the examining division by letter dated 7 January 2005.

VII. At the end of the oral proceedings the Board announced its decision.

Reasons for the Decision

1. The invention

According to the description (cf paragraphs [0006], [0023], [0027] and [0028] of the A-publication), the object of the present invention is to provide an electronic bulletin board system which automatically inhibits postings of improper messages. A server computer examines a message to be posted and checks whether it includes words registered in a database containing prohibited words. If it does, the person who issued the message and the operation manager of the electronic bulletin board are informed that the message will not be posted. The server computer also checks whether the message includes words registered in a "heed-required" word list. (The application defines "heed-required words" as "those to be heeded about the social reaction to the posting of the message on the electronic bulletin board". The Board interprets this as words which could be regarded as offensive and therefore may require manual checking.) If it does, the message is posted but the server computer informs the operation manager of this fact.

2. Inventive step

2.1 Headnote 1 of decision T 38/86 - Text processing/IBM (OJ EPO 1990,384) states that a person who, using only his skill and judgment, detects (and replaces) linguistic expressions which exceed a predetermined understandability level in a list of linguistic expressions performs mental acts within the meaning of Article 52(2)(c) EPC. Headnote 4 of the decision then goes on to explain that if the technical implementation of such a method is obvious to a person skilled in the technical art once the steps of the method for performing the mental acts have been defined, then the method does not involve an inventive step. Finally, according to headnote 5, an apparatus for carrying out such a method is excluded from patentability if the claim defines the apparatus only in functional terms corresponding to the steps of said method, without specifying any technical features beyond those already comprised in the method claim.

2.2 In line with the findings of decision T 38/86, in which the "contribution approach" is still applied, the Board concludes that the detection of prohibited or heed-required words in a text, when performed by a human, is also a mental act, and that an apparatus defined only in functional terms for obtaining this goal is not patentable, albeit for lack of inventive step. Consequently, the following features of claim 9 cannot support an inventive step:

- performing moderation of information,

- automatically checking the posting-desired message in said information entered on the message registration screen for whether or not the posting-desired message contains a certain word in the prohibited word database,

- automatically checking the posting-desired message for whether or not the posting-desired message contains a certain word in the heed-required word database.

2.3 Claim 9 further includes the following features:

- sending out a letter screen saying that the message cannot be posted toward the user's computer which originated that message when the message includes any word in the prohibited word database,

- notifying a computer of an operation manager of said electronic bulletin board system of the event of rejecting the posting of said message,

- notifying the computer of the operation manager of said electronic bulletin board system of the event of posting the message including the heed-required words on the electronic bulletin board when the posting-desired message includes any word in the heed-required word database and no word in the prohibited word database,

- register said message in the electronic bulletin board (30) when the message includes no word in the prohibited word database.

These features have in common that they concern mere presentations of information: various persons (or, in the case of the last feature, the general public) are provided with various pieces of information. There are no technical reasons for sending or registering the messages, which are only intended as information to which the addressees may respond if they so desire.

2.4 The appellant has inter alia argued that the invention permits messages to be vetted automatically without involving any employees whereas in earlier systems words and phrases are vetted both by employees and automatically. The decision not to perform manual checks is however an administrative measure which cannot contribute to an inventive step.

2.5 It has not been alleged that the hardware mentioned in claim 9 would be new as such (electronic bulletin board, server computer, network, message registration interface, message processor, messaging system). Only the two databases may require a comment. They are defined in the following way:

- a prohibited word database comprising words preliminarily selected as those which are inappropriate to be posted on an electronic bulletin board,

- a heed-required word database, wherein words selected as those to be heeded about a social reaction even though the message is allowed to be posted are registered in the heed-required word database.

It can be seen that both databases are defined solely in terms of the data they contain. The selections of words as such are mental acts, as explained above. Therefore these databases cannot involve an inventive step either.

2.6 It follows that the electronic bulleting board system according to claim 9 does not involve an inventive step (Article 56 EPC 1973).

ORDER

For these reasons it is decided that:

The appeal is dismissed.