T 1402/06 (Constructing customized implementations/SUN MICROSYSTEMS) of 29.1.2010

Summary of Facts and Submissions

I. This is an appeal against the decision of the examining division to refuse the European patent application No. 00 309 874.6 published as No. 1 102 152. The decision was announced in oral proceedings held on 16 March 2006 and written reasons were dispatched on 19 April 2006.

II. The decision under appeal was based on a set of claims 1-65 filed with the letter dated 16 February 2006.

Claim 1 of said set of claims read as follows:

"A method of operating a framework (102) to provide cryptographic services to at least one computer program application (104), said method comprising:

receiving (202) a request from the computer program application for a customized implementation of a cryptographic service;

determining (204) a set of zero or more restrictions to be imposed upon said customized implementation;

dynamically constructing (206) said customized implementation, said customized implementation incorporating said restrictions, and comprising enforcement logic for enforcing said restrictions; and

providing (208) said customized implementation to the computer program application, whereby said computer program application can thereafter directly invoke said customized implementation to perform said cryptographic service."

The examining division found that claim 1 did not fulfil the inventive step requirements of Article 56 EPC 1973.

In the reasons for the decision, the examining division essentially argued to the effect that no technical subject-matter beyond the provision of cryptographic services was identifiable in the claim 1 and that the provision of cryptographic services was well known from the prior art. The remaining features of the claim were considered to relate to subject-matter excluded from patentability under Article 52(2) and (3) EPC and could not contribute to inventive step.

In an obiter dictum to the decision the following was stated: "Even if the way the method is implemented in software would be considered as a technical feature and therefore used for the assessment of inventive step it is noted that any implementation using a programming language like Java, which defines objects and supports run-time creation of objects through so-called "constructors", would fall within the terms of the claim. Those features following directly from the choice to implement the task in an object oriented programming language would then still not render claim 1 inventive."

III. Notice of appeal was filed with a letter dated 19 June 2006 which was received at the EPO by telefax on the same date. A statement setting out the grounds of appeal was filed with a letter dated 17 August 2006 which was received at the EPO by telefax on the same date. Both the notice of appeal and the statement of grounds contained precautionary requests for oral proceedings. The appeal fee was paid on 19 June 2006.

IV. In the statement setting out the grounds the appellant argued that the claimed invention was clearly distinguished from the subject-matter of D1 (EP 0 828 208) a document which had been cited in the first official communication dated 7 June 2004 in support of a novelty objection which was not subsequently pursued by the examining division (cf. statement of grounds: items 4. - 6.).

The appellant further disputed the inventive step objection which formed the basis of the impugned decision (cf. statement of grounds: item 8.). The appellant alleged that the discussion of inventive step during oral proceedings had been very confused, essentially due to the examining division attempting to discuss the matter without reference to any prior art documents whereas the representative tried to anchor the discussion to the document D1 (cf. statement of grounds: items 7.6 and 13.12).

The appellant additionally requested reimbursement of the appeal fee under Rule 67 EPC 1973 alleging that various actions of the examining division constituted substantial procedural violations, in particular:

(i) The refusal to even consider or discuss, without a bona fide reason, the established case law (viz. decision T 0204/84) cited by the representative which was of direct relevance to the primary ground of rejection of the decision (cf. statement of grounds: item 11.).

(ii) Basing the summons to oral proceedings exclusively on a new ground of rejection that should have been previously raised in a communication in accordance with Rule 51(3) and Article 96(2) EPC 1973 (cf. statement of grounds: item 13.1-13.10).

(iii) Raising in oral proceedings a completely new ground of rejection (obviousness) which had not been mentioned in either the first communication or the summons (cf. statement of grounds: item 13.11-13.13).

V. In a communication accompanying a summons to oral proceedings to be held on 29 January 2010 the board gave its preliminary opinion that none of the applicant's requests were allowable.

The communication made reference to the following additional prior art documents introduced by the board of its own motion pursuant to Article 114(1) EPC 1973:

D5: M. E. Fayad et al., "Building Application Frameworks", Chapter 2, pp.29-54, Wiley Computer Publishing, September 1999, ISBN 0-471-24875-4;

D6: J. Knudsen, "Java Cryptography", Chapters 3 and 7, Appendix C, Appendix E (in part), pp.28-37, 120-162, 263-267, 279-281, 308-309, O'Reilly & Associates, Inc., May 1998, ISBN 1-56592-402-9;

D7: S. Oaks, "Java Security", Chapter 5, pp.90-123, O'Reilly & Associates, Inc., May 1998, ISBN 1-56592-403-7.

With respect to the appellant's main request, the board noted that it had reservations concerning compliance with the requirements of Article 84 EPC 1973. The board also considered the issue of exclusion from patentability under the terms of Articles 52(2) and (3) EPC to be of potential relevance with respect to the subject-matter of the independent claims.

The board was further of the preliminary opinion that even if the appellant were to succeed in establishing that the exclusion from patentability was not applicable, an objection due to a lack of inventive step would still apply. For the purpose of assessing inventive step, the board was of the opinion that it would be appropriate to take as the closest prior art the Java Cryptography Extension to the Java Platform acknowledged in [0003] of the published application. In this regard reference was made to D6, a textbook extract relating to version 1.2 of the Java Cryptography Extension.

With respect to the appellant's request for a reimbursement of the appeal fee, the board noted that it was not inclined to follow the appellant's submissions to the effect that the proceedings before the department of first instance had involved one or more substantial procedural violations. Moreover, it was noted that an essential precondition for the reimbursement of the appeal fee would be that the appeal be deemed allowable. Therefore, further consideration would be given to the request for the reimbursement of the appeal fee only in the case that the board found the appeal to be allowable.

VI. With a letter of reply dated 29 December 2009 and received at the EPO by telefax on the same date, the appellant filed new requests as detailed in item VII. below and also filed an amended version of page 5 of the description. In a further submission dated 27 January 2010 and received at the EPO by telefax on the same date, the appellant's representative informed the board that he would not be attending the oral proceedings.

VII. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of a main request comprising claims 1 to 64 as filed with the letter dated 29 December 2009 or, alternatively, on the basis of a first auxiliary request comprising claims 1 to 42 likewise filed with the letter dated 29 December 2009 or on the basis of a second auxiliary request comprising claims 1 to 65 as filed with the letter dated 16 February 2006 with claim 1 thereof being amended in accordance with the first auxiliary request set forth in the statement of grounds dated 17 August 2006 (cf. letter of 29 December 2009: item 1 c), p.1; statement of grounds: item 14., p.10).

The qualifying provision relating to the amendment of claim 1 (viz. "with claim 1 thereof being amended in accordance with the first auxiliary request set forth in the statement of grounds dated 17 August 2006") was inadvertently omitted from the specification of the second auxiliary request in the minutes of the oral proceedings which should be corrected by including the aforementioned provision.

As a third auxiliary request, the appellant requested that the case be remitted to the department of first instance for further prosecution on the basis of claims 1 to 64 of the main request.

A further conditional request was made to defer making a substantive decision in the present case until the outcome of G 03/08 be known.

Finally, the reimbursement of the appeal fee was also requested due to alleged procedural violations on the part of the department of first instance.

VIII. The further documents on which the appeal is based, i.e. the text of the description and the drawings, are as follows:

Description, pages:

1, 3, 4, 6-41 as originally filed;

2 as filed with the letter of 29 September 2004;

2a as filed with the letter of 16 February 2006;

5 as filed with the letter of 29 December 2009.

Drawings, sheets:

1/14-14/14 as originally filed.

IX. Claim 1 of the main request reads as follows:

"A computer-implemented method of operating a framework (102) to provide cryptographic services to at least one computer program application (104), said method comprising:

receiving (202) a request from the application for an implementation of a cryptographic service;

determining (204) a set of zero or more restrictions to be imposed upon a customized implementation to be provided to the computer program application in response to said request;

dynamically constructing (206) said customized implementation, said customized implementation incorporating said restrictions, and comprising enforcement logic for enforcing said restrictions; and

providing (208) said customized implementation to the application, whereby said computer program application can thereafter directly invoke said customized implementation to perform said cryptographic service."

Claim 22 of the request reads as follows:

"A computer system including a framework (102) for providing a cryptographic service to at least one computer program application (104), the framework comprising:

a mechanism for receiving a request from the computer program application for an implementation of a service;

a mechanism for determining a set of zero or more restrictions to be imposed upon a customized implementation to be provided to the computer program

application in response to said request;

a mechanism for dynamically constructing said customized implementation, said customized implementation incorporating said restrictions, and comprising enforcement logic for enforcing said restrictions; and

a mechanism for providing said customized implementation to the computer program application, whereby said computer program application can thereafter directly invoke said customized implementation to perform said cryptographic service."

Claim 43 of the request is directed towards "a computer program for a system comprising at least one application (104), the computer program being operable, when executed by one or more processors, to cause the one or more processors to implement a framework (102) which dynamically constructs a customized implementation of a cryptographic service for said at least one application program". The claim further specifies that the computer program comprises instructions for causing one or more processors to perform a series of actions which essentially correspond to the steps of the method defined in claim 1.

X. Oral proceedings were held as scheduled on 29 January 2010. The appellant was not represented. After deliberation by the board, the chairman announced the decision.

Reasons for the Decision

1. Admissibility

1.1 The appeal complies with the provisions of Articles 106 to 108 EPC 1973 which are applicable according to J 0010/07, point 1 (cf. Facts and Submissions, item III. above). Therefore it is admissible.

2. Non-attendance at oral proceedings

2.1 According to Article 116(1) EPC 1973, oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings. Oral proceedings provide an appellant with the opportunity to present its concluding comments on the outstanding issues (Article 113(1) EPC 1973) with the aim of ensuring that the case is ready for a decision at the end of the oral proceedings (Rule 111(1) EPC; see also Article 14(6) RPBA).

2.2 The need for procedural economy requires the board to reach its decision as quickly as possible while giving the appellant a fair chance to argue its case. In the present case the holding of oral proceedings was considered by the board to meet both these requirements. The appellant had also made a conditional request for oral proceedings. A summons was therefore issued.

2.3 In accordance with Article 15(3) RPBA the board shall not be 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 on its written case. The board considered that, despite the notification from the appellant's representative announcing his intention not to attend, the twin requirements of fairness and procedural economy were still best served by holding the oral proceedings as scheduled.

2.4 The appellant could reasonably have expected that during the oral proceedings the board would consider the objections and issues raised in the communication annexed to the summons to oral proceedings (cf. point V. above). In deciding not to attend the oral proceedings, the appellant chose not to avail itself of the opportunity to present its observations and counter-arguments orally but instead to rely on its written case.

2.5 The board considers that the reasons on which its decision are based do not constitute a departure from grounds or evidence previously put forward which would require that the appellant be given a further opportunity to comment.

2.6 In view of the foregoing, the board concludes that the appellant had an opportunity to present comments on the grounds and evidence on which the board's decision, arrived at during oral proceedings, is based. The right to be heard under Article 113(1) EPC 1973 has thus been satisfied despite the appellant's non-attendance at the oral proceedings.

Main Request

3. Claim 22

3.1 Claim 22 of the main request is directed towards a computer system including a framework for providing a cryptographic service to at least one computer program application. According to the disclosure, the Java Cryptography Extension to the Java Platform is an example of such a framework for providing a cryptographic service to at least one computer program application (cf. [0003]). In the board's judgement, said Java Cryptography Extension represents the closest prior art to the subject-matter of claim 22. In view of the fact that the application does not cite any documents relating to this prior art, the board considered it appropriate to make reference to a textbook extract, i.e. D6, in order to clarify what was generally known to the skilled person in this respect at the priority date of the application. D6 is a textbook extract relating to version 1.2 of the Java Cryptography Extension, hereinafter referred to as the JCE 1.2.

3.2 The "Cipher object class" referred to in [0016] of the present application is a known programming construct of the JCE 1.2 where it is used in a manner substantially identical to that disclosed in the present application to dynamically construct implementations (i.e. "instances") of requested cryptographic services via the associated GetInstance() method (see, for example, D6: sections entitled "Factory Methods" and "The Provider Architecture", p.31-37; section entitled "Getting a Cipher", p.129-130; section entitled "Class javax.crypto.Cipher", p.308-309).

The requesting application then proceeds to interact directly with the obtained Cipher instance which it initialises by invoking its Init() method (see, for example, D6: the section entitled "Initializing a Cipher", p.131-132).

The JCE 1.2 also supports the passing of initialisation parameters via the Init() method as referred to in [0028] of the application (see, for example, D6: the section entitled "Initializing a Cipher", p.131-132; the section entitled "Class javax.crypto.Cipher", p.308-309).

3.3 Computer systems including the JCE 1.2 were clearly known at the priority date of the present application as evidenced by D6. In the wording of claim 22, such a computer system is a computer system including a framework for providing cryptographic services to at least one computer program application wherein the framework comprises:

a mechanism for receiving a request from the computer program application for an implementation of a cryptographic service;

a mechanism for dynamically constructing said implementation; and

a mechanism for providing said implementation to the computer program application whereby said computer program application can thereafter directly invoke said implementation to perform said cryptographic service.

3.4 The "framework" of claim 22 differs from the JCE 1.2 in that it additionally determines a set of restrictions to be imposed upon the implementation and provides a "customized implementation" which incorporates these restrictions along with enforcement logic for their enforcement as recited in claim 22.

In the JCE 1.2, the cryptographic service implementation returned to the requesting application executes without any inherent restriction. For this reason, legal restrictions were imposed on the distribution of the JCE 1.2 (cf. D6: p.29, item "JCE").

3.5 The effect of the differences noted in 3.4 above is to provide the requesting applications with customised cryptographic service implementations that are compliant with the prescribed legal regulations governing the use of cryptography.

3.6 The objective technical problem may thus be formulated as how to modify the JCE 1.2 to ensure that it provides the requesting application with cryptographic service implementations which are compliant with the prescribed legal regulations governing the use of cryptography.

3.7 In the board's judgement, the specification of regulations governing the use of cryptography is an inherently non-technical activity. Once such regulations have been specified, the technical task facing the skilled person in the present case reduces to modifying the framework so that the supplied implementations only provide the requested cryptographic services in accordance with the applicable regulations.

3.8 Given that, in principle, cryptographic services can be classified into two basic categories, i.e. restricted and non-restricted services, the solution of providing a basic set of non-restricted services as a built-in module and an additional set of restricted services as an extension module (or "framework") is reasonable and such an approach is used in the case of the Java Cryptography Extension referred to in [0003] of the application (cf. D6: p.29, item "JCE").

The present application is, however, concerned with a more complex legal situation, where the regulations governing the use of cryptographic services may vary from country to country and from one type of application to another. To supply a different extension for each country would clearly be very inconvenient and, moreover, would not solve the problem of different categories of application being subject to different legal restrictions. In the light of these considerations, the board judges that it would be obvious to the skilled person to supply a single extension which could respond to the varying circumstances.

3.9 The disclosed solution is based on modifying the functionality of existing JCE 1.2 programming constructs using conventional object-oriented programming techniques which, in the board's judgement, lie within the routine competence of the skilled person. In this regard, it is further noted that the description states in respect of the "limitations" associated with the cryptographic service implementations that "any desired form may be used" (cf. col.11 l.38-44). This is understood as an indication that the implementational details of the "limitations" in technical terms, as distinct from the cognitive information content thereof, are not of any particular significance for the purposes of putting the claimed invention into practice.

3.10 In the communication accompanying the summons to oral proceedings the board gave its preliminary opinion that the prior art referred to in 3.1 above, viz. the Java Cryptography Extension to the Java Platform acknowledged in [0003] of the application and as reflected by the textbook extract D6, was prejudicial to the inventive step of the claimed invention for reasons substantially the same as those set forth above (cf. communication: item 6.). The appellant did not submit any rebuttal in response to the board's preliminary opinion in this regard but merely requested remittal of the case to the department of the first instance for further consideration.

3.11 In view of the foregoing, the board sees no reason to deviate from the aforementioned preliminary opinion and concludes that a computer system including a framework as defined in claim 22 does not involve an inventive step over the prior art referred to in 3.1 above. Observations relating to the applicant's request for a remittal are given under 15. below.

4. Claims 1 and 43

4.1 The above finding in respect of claim 22 of the main request applies, mutatis mutandis, to claim 1 of the request. It also applies, in principle, to claim 43 of the request which is directed towards "a computer program for a system comprising at least one application".

4.2 Under the given circumstances, the board judges that with respect to claim 43 it is not necessary to give further consideration to the issue of exclusion under the provisions of Article 52(2) and (3) EPC, i.e. whether or not claim 43 relates to a computer program as such.

5. In view of the foregoing, the board concludes that the main request is not allowable.

First auxiliary request

6. The first auxiliary request comprises a set of claims 1-42 which are identical to claims 1-42 of the main request.

7. The above finding in respect of claims 22 of the main request (cf. point 3.11 above) thus applies to claim 22 of the first auxiliary request and likewise to claim 1 thereof (cf. point 4.1 above).

8. In view of the foregoing, the board concludes that the first auxiliary request is not allowable.

Second auxiliary request

9. The claims of the second auxiliary request correspond to the claims of the first auxiliary request filed with the letter dated 17 August 2009, i.e. the statement of the grounds of appeal (cf. statement of grounds: item 14.).

10. Claim 1 of the second auxiliary request differs from claim 1 of the main request in that it specifies receiving a request for a customized implementation of a cryptographic service whereas claim 1 of the main request specifies that the request is for an implementation of a cryptographic service.

11. Claim 22 of the second auxiliary request differs from claim 22 of the main request in that it is directed towards a framework for providing a cryptographic service to at least one computer program application rather than towards a computer system including such a framework and in that it specifies receiving a request for a customized implementation of a cryptographic service as opposed to receiving a request for an implementation of a cryptographic service.

12. Article 84 EPC 1973

12.1 Claims 1, 22 and 43 of the present request specify that the computer program application requests a "customized implementation" of a cryptographic service. However, according to the description, the computer program application merely requests an implementation of a particular cryptographic service. The framework responds to this request by supplying a customized implementation of the cryptographic service to the application (cf. application: [0010], [0016],[0020]).

12.2 It is noted in this regard that the aforementioned inconsistency between the claims and the description was brought to the appellant's attention in the communication accompanying the summons to oral proceedings and that the appellant amended the wording of claims 1, 22 and 43 of the main request in response thereto.

12.3 The board finds that the specification in claims 1, 22 and 43 to the effect that the computer program application requests a customized implementation of a cryptographic service is not supported by the description contrary to the requirements of Article 84 EPC. In view of this deficiency, the second auxiliary request is not allowable.

13. The board further notes that even if the deficiency noted under 12.3 above were to be remedied by appropriate amendment to the wording of claims 1, 22 and 43 of the present request, said claims would still recite substantially the same subject-matter as the corresponding claims of the main request and, thus, the objections detailed under 3. and 4. above in respect of the main request would also apply mutatis mutandis in the case of the present request.

14. Under the given circumstances, the board judges that it is not necessary to give further consideration to the issues raised in its communication relating to the question of exclusion under the provisions of Article 52(2) and (3) EPC, in particular in relation to claim 22 directed towards a framework and claim 43 directed towards a computer program.

15. Request for remittal

15.1 The appellant made an auxiliary request for the board to remit the application in the form of the main request to the department of the first instance for further consideration (cf. letter dated 29 December 2009: item 5.4). According to the appellant, the inventive step objection raised by the board was so significantly different from that given in the decision under appeal, that a remittal of the case was appropriate in order to safeguard the appellant's rights to have two levels of review.

15.2 More specifically, the appellant submitted that the decision under appeal argued that all the claim features (apart from cryptographic services per se) did not make a technical contribution and hence were to be disregarded for the purposes of considering inventive step whereas the objection raised by the board was based on a newly cited document, viz. D6, and suggested that all the claim features were known or obvious from the prior art.

15.3 The board does not concur with the appellant's submissions to the effect that the differences between the inventive step objection which the board has raised and that set forth in the decision under appeal are sufficiently significant to justify a remittal of the case to the department of first instance.

15.4 The objection raised by the examining division starts from the premise that cryptographic services are known per se. This effectively implies an underlying assumption that cryptographic services represent a technical aspect of the claimed invention but one which is a matter of general knowledge. It is implicit in the examining division's argumentation that this undocumented general knowledge constitutes the closest prior art to the subject-matter of claim 1. On this basis, the examining division proceeded to argue that none of the other claim features made a technical contribution to the claimed subject-matter and hence were to be disregarded for the purposes of considering inventive step.

However, the board notes that in an obiter dictum to its decision the examining division further indicated that it was of the opinion that even if features which it had discounted as not making a technical contribution were to be considered as technical features this still would not lead it to acknowledge an inventive step in respect of the subject-matter of claim 1 (cf. item II of the Facts and Submissions of the present decision).

15.5 The inventive step objection raised by the board is based on the premise that the prior art referred to in 3.1 above, viz. the Java Cryptography Extension to the Java Platform acknowledged in [0003] of the description and reflected in the disclosure of D6, represents the closest prior art to the subject-matter of the independent claims.

15.6 The prior art referred to in 3.1 above is not at variance with the undocumented prior art underlying the examining division's objection inasmuch as it relates to a framework for providing cryptographic services and thereby confirms the examining division's assertion that cryptographic services were generally known per se.

In addition, as may be inferred from 3.3 above, the textbook extract D6 provides evidence that further features of the claimed invention were known from this prior art at the relevant priority date. These further features are features which the examining division had discounted as not making a technical contribution. However, irrespective of whether these further features are treated as making a technical contribution or not, they are clearly known from the prior art referred to in 3.1 above and this has not been disputed by the appellant.

The issue which the examining division would have to decide upon in the case of a remittal effectively reduces to the question as to whether the distinguishing features of the claimed invention as identified in 3.4 above involve an inventive step.

15.7 The board notes that the appellant has not submitted any argumentation as to why the aforementioned distinguishing features should be considered to involve an inventive step. In the absence of any relevant submissions in this respect there are no identifiable grounds for supposing that the examining division would be inclined to deviate from its original finding of a lack of inventive step merely due to taking the aforementioned prior art as the starting point for its assessment, in particular, when due account is taken of the obiter dictum referred to in 15.4 above.

15.8 In view of the foregoing, the board judges that the arguments advanced by the appellant in support of its request for remittal are not compelling and that, under the given circumstances, a remittal would not be justified. This request is therefore rejected.

16. Request to defer making a substantive decision

16.1 The appellant also made a conditional request for the board to defer making a substantive decision until the outcome of the referral G 03/08 to the Enlarged Board of Appeal be known in the case that the board intended to place any reliance upon the decision T 0204/93 (cf. letter dated 29 December 2009: item 4.5).

16.2 The decision T 0204/93 was referred to in the board's communication in the context of observations relating to the question of exclusion under Article 52(2) and (3) EPC (cf. communication: item 5.4). The appellant submitted that G 03/08 placed the validity of this decision into doubt and could lead to it being overruled.

16.3 The board notes that in its communication it referred to decision T 0204/93 solely in the context of its observations relating to the question of exclusion under Article 52(2) and (3) EPC. Neither in said communication nor in the present decision has decision T 0204/93 been relied on or invoked in relation to the issue of inventive step. Thus the conditions under which the board would be required to consider this request do not apply.

17. Conclusion

17.1 Referring in particular to points 5., 8. and 12.3 above, the board judges that in the absence of an allowable request, the appeal is to be dismissed.

18. Request for reimbursement of appeal fee

18.1 An essential precondition for the reimbursement of the appeal fee under Rule 67 EPC 1973 is that the appeal be deemed allowable. Given that the board does not deem the present appeal to be allowable, the request for the reimbursement of the appeal fee cannot be granted.

18.2 In view of the foregoing, it is not necessary for the board to give further consideration to the allegations of substantial procedural violations raised by the appellant in relation to the proceedings before the department of first instance.

ORDER

For these reasons it is decided that:

The appeal is dismissed.