T 1841/06 (Machine translation/AMERICA ONLINE) of 21.1.2011

Summary of Facts and Submissions

I. European patent application no. 96 944 191.4 claimed a priority date of 13 November 1995 for a method (and system) of automatically providing to a user, via an electronic communications network, translations of source documents in a target language selected by the user.

II. The examining division refused the application for lack of inventive step, citing the following document as closest prior art:

D7: Yamamoto, Hideki and Murata, Toshiki and Nagata, Junji, "W3-PENSÉE: WWW machine translation system that supports the comfortable Internet surfing", Proceedings of ISDL'95, International Symposium on Digital Libraries 1995, University of Library and Information Science, Tsukuba Science City, Japan, 22-25 August 1995; URL: http://www. dl.slis. tsukuba.ac.jp/ISDL95/proceedings/pages75/159.html; pp.159-164.

The decision was announced in oral proceedings on 11 May 2006 and issued in writing by registered letter with advice of delivery on 19 July 2006. According to the reasons given, the WWW machine translation system of document D7 preprocessed HTML documents retrieved from the web by inserting codes around HTML tags and similar elements which should be preserved during translation to keep the original document layout. The skilled person would consider it obvious to mark out and reinsert elements of a hypertext document. Determining automatically the source and target languages for translation was a trivial matter of design choice.

III. The appellant (applicant) lodged an appeal against the decision of refusal on 28 September 2006 requesting reversal of the decision and reimbursement of the appeal fee. A statement setting out the grounds of appeal was filed on 29 November 2006. Following a communication of the Board and in response to summons to oral proceedings, the appellant filed amended sets of claims by letter dated 3 June 2010 (main request) and by letter dated 7 January 2011 (auxiliary request). The wording of claim 1 of these requests is as follows:

Main request:

"1. A method of automatically providing to a user (54), via an electronic communications network, translations of source documents (56), in any of a plurality of source languages, into target documents in a target language selected by the user (54), said source documents (56) comprising character streams including codes and data characters in the source languages, said method comprising the steps of

(a) transmitting over the network via a web browser (52) a request from the user (54) for a first source document (58) in a respective source language to be translated into the target language, said first source document (58) including a reference to a second source document in a respective source language to be translated into the target language,

(b) retrieving the first source document (58) in response to the user's request,

(c) transmitting said first source document to a preprocessor, which recognizes the codes including said reference to said second document in the character stream of the retrieved source document (58) to be preserved during translation of that source document (58) and inserts boundary markers about said recognized codes,

(d) translating the source document (58) in a language translation server (40) which translates into the target language selected by the user data characters of the character steam [sic] of the source document (58) and leaves said recognized codes between said boundary markers untranslated so as to produce a target document (60) including said codes and boundary markers,

(e) transmitting the target document (60) to a postprocessor which removes the boundary markers from the target document, and

(f) displaying the target document (60) to the user (54),

characterized by the step of:-

(g) providing, by integration of said web browser (52), said pre-processor, said post-processor and said language translator server (40), on-the-fly automatic translation of said source documents (56) into said target language at the time said user (54) requests access to said source documents (56) via said browser (52)."

Auxiliary request

"1. A method of automatically providing to a user (54), via an electronic communications network, translations of web pages, in any of a plurality of source languages, into a target language selected by the user (54), said web pages comprising character streams including HTML codes and data characters in the source languages, said method comprising the steps of:

(a) transmitting over the network via a web browser (52) to a web server (64) a request from the user (54) for a first web page in a respective source language to be translated into the target language, said first web page including a reference to a second web page, in a respective source language to be translated into the target language,

(b) retrieving the first web page in response to the user's request,

(c) transmitting said first web page to a preprocessor, which recognizes the HTML codes including said reference to said second web page in the character stream of the retrieved web page to be preserved during translation of that web page and inserts boundary markers about said recognized HTML codes,

(d) translating the web page in a language translation server (40) which translates into the target language selected by the user data characters of the character stream of the web page and leaves said recognized HTML codes between said boundary markers untranslated so as to produce a translated web page including said HTML codes and boundary markers,

(e) transmitting the translated web page to a postprocessor which removes the boundary markers from the translated web,

(f) storing said translated web page in a cache (78), and

(g) displaying the translated web page to the user (54) via said web browser (52);

characterized in that:

(h) said web page is retrieved from the World Wide Web (72), translated into said target language, and cached in said cache (78) on said web server (64) before being sent to the user (54)."

IV. In oral proceedings before the Board held on 21 January 2011, the matter was discussed with the appellant.

V. The appellant has requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 16 filed with letter dated 3 June 2010 (main request) or in the alternative on the basis of claims 1 to 7 filed with letter dated 7 January 2011 (auxiliary request). The request for reimbursement of the appeal fee has been withdrawn.

VI. According to the appellant, the subject matter of both requests was related to the integration of machine translation in a web browser to permit navigation of web pages in a preferred target language. The main request was directed to the embodiment of figure 8, the auxiliary request to the embodiment of figure 9. Both embodiments had in common that all web pages selected by the user were provided automatically in the target language. Once the preferred target language had been selected, all web pages requested were translated into the selected language; the user automatically received translations of the web pages. The whole process remained transparent to the user, giving the user the impression of seamlessly browsing through the Web in his own language.

The WWW machine translation system of document D7 was the closest prior art; the claims had been delimited against this translation system. This system neither translated web pages automatically into the preferred language, nor was the translation cached on a web server before being sent to a user. The prior art system presented the user with the web page in the original language and required the pressing of a translation button to provide the translated content of the page. In the prior art, therefore, the user was constantly exposed to a situation where a web page was received in a language which was not understood and a decision had to be made therefore whether to request a translation. The present invention eliminated such inconveniences for the user.

The invention solved the technical problem of providing the user with a kind of seamless browsing service for a fully automatic and transparent machine translation of web pages. There was no hint in the prior art to such kind of service. Accordingly, the subject matter of both the main and auxiliary requests was novel and inventive over the prior art.

Reasons for the Decision

1. The appeal although admissible is not allowable since the requests before the Board do not remove the objections raised against the claimed invention.

2. In particular, the methods according to the main claims of both requests do not meet the requirement of inventive step (Article 56 EPC 1973). An invention does not involve any inventive step if the skilled person striving for the solution of a technical problem is led by the prior art from its starting point (the closest prior art) along a path clear of serious technical hurdles to the invention.

It is undisputed that the machine translation system of document D7 is the closest prior art and an appropriate starting point for assessing inventive step. The appellant has chosen a two-part form for the independent claims to delimit the invention against document D7. According to the two-part form, features (a) to (f) of claim 1 of the main request and features (a) to (g) of claim 1 of the auxiliary request are found in combination in the prior art translation system; the present invention is only characterised by feature (g) (main request) and feature (h) (auxiliary request) of the respective claim 1 (see III. above).

3. The delimitation is considered to be correct in that the first part of the respective claim 1 is fully anticipated by the prior art. In D7, the system architecture of type 2 (the "communication line type", see document D7, figures 1, 3, and 4) comprises a web browser (client), a web server (WWW server), and a machine translation system (W3-PENSÉE). The translation system, which is located between the server and the browser, automatically translates data received in a foreign language. The translation results are stored in a cache area (Translation Cache).

The claimed method is essentially characterised in that the source documents are automatically translated on-the-fly at the time the user requests access to the source documents (main request), or in that the web page retrieved is translated and cached on the web server before being sent to the user (auxiliary request).

4. However, the Board has some doubts about the appellant's interpretation of the characterising features of the claims (see VI. above). In particular, original independent claim 13 specifies that the method for translating documents comprises the step of "viewing and interacting with said document in said first language" - ie in the original language. It is therefore doubtful if there is sufficient support in the application as filed for the reading that the translation of a web page is carried out and presented to the user without first displaying the original web page. A broader interpretation of the claims would appear to lead to a conclusion of lack of novelty in respect of both requests.

However, even the particular interpretation of the claims favoured by the appellant, and essentially adopted below by the Board, does not lead to a positive assessment since the requests then fail to comply with the requirement of inventive step.

5. In the prior art, at the time the translation process is invoked the translation system adds a header line including a translation button to the original data and sends them to the web browser. The browser renders the original data and a menu which allows the user to request the translation after having seen the original web page (see D7, section 4 at p. 162).

According to the claims as interpreted by the appellant, all web pages requested have been translated into the selected language before being sent to the user; this serves the aim to present to the user only the translated versions of web pages.

This aim and object of the invention is at best the result of balancing various mental preferences of the user but it is per se not a technical problem. Having the option of choosing between an original language and the preferred language might be felt as an inconvenience by one user but as an advantage by another. The invention brings about a mental simplification and subjective advantage for some users but it does not provide any objective advantage nor any technical advance in any field of technology. Such purely subjective preferences like any other non-technical aspects of an invention do not form a valid basis for a technical and inventive contribution over the prior art (for a summary of the practice of the EPO in dealing with non-technical subject matter, see for example the EPO-publication "Case Law of the Boards of Appeal of the European Patent Office", sixth edition, European Patent Office, July 2010, chapter I.D.8.1).

The computer implementation of the claimed methods requires only minor changes to the machine translation system of document D7. In the W3-PENSÉE type 2 system (see figure 4), for example, only the step of sending the original data need be omitted (the box in the middle of the flow diagram); then the subsequent step shown in the right box at the bottom of the flow diagram (see document D7, figure 4) fully meets the aims of the present invention. These changes to the prior art system do not involve any inventive step.

It might be argued that in the type 2 system the web pages translated are cached but not in a cache on the web server. However, it is an obvious alternative to locate the translation cache at any appropriate place in the World Wide Web other than between Internet and client. Such an alternative arrangement is shown, for example, in document D7, figure 1 in connection with the WWW server type.

In summary, both requests fail to meet the requirement of inventive step. On these grounds alone, the appeal cannot succeed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.