T 0376/07 (Automatic hyperlinking/GALA INC.) of 12.2.2010

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse the European patent application No. 01301522.7 on the ground that the subject-matter of independent claims 1 to 6 did not involve an inventive step over a conventional bulletin board system in combination with WO-A-99/64965 (D1) and the skilled person's common general knowledge (Article 56 EPC 1973).

II. In the statement setting out the grounds of appeal, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 9 of an amended (broader) main request, or claims 1 to 6 of a first auxiliary request, corresponding to the refused request, or claims 1 to 6 of a second auxiliary request with minor amendments. The appellant also made an auxiliary request for oral proceedings.

III. In the communication accompanying the summons to oral proceedings, the Board summarised the issues to be discussed and tended to agree with the examining division that the claimed subject-matter lacked an inventive step.

IV. In a reply, the appellant stated that he had no further submissions and withdrew the request for oral proceedings. The oral proceedings were cancelled.

V. The present decision is therefore based on the appellant's requests in the grounds of appeal, dated 11 January 2007.

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

"An electronic bulletin board system including a server computer with an electronic bulletin board function arranged to communicate with at least one user computer via a network for mediating information exchange therebetween, the bulletin board system comprising:

a transmitter transmitting data of a message registration screen to a user computer in response to the user's request;

a section retrieving information filled in the message registration screen at the user computer and posting the retrieved information on the electronic bulletin board; and

a section allowing user computers to read the information posted to the electronic bulletin board,

the bulletin board system being characterized by further comprising:

a database operated by the electronic bulletin board system which stores a plurality of predetermined notable words;

a further database operated by the electronic bulletin board system which stores a plurality of records with text data;

a logic device arranged to inspect a message text posted to the bulletin board system to detect notable words from the database,

the system being arranged to:

post the inspected message text on the bulletin board when no notable words are detected; and to, when the message text includes a notable word in the database,

search the further database using detected notable words as keywords, wherein if a record including the notable word is found as a result of searching the further database, the word in the message text is converted into a hypertext format having a URL, the URL generated so as to constitute a start instruction to a search report program which searches the further database using the word associated with the link as a keyword and reports the result, the search report program generating a set of screen data including text from the text data; and

post the message text on the bulletin board;

the URL being configured such that when it is accessed by a specific user computer the search report program is executed to return a set of report screen data of the search result to the specific user computer."

Claim 1 of the first auxiliary request adds to the end of the second feature of the characterising portion "each record stored in the further database being linked with a corresponding URL" and at the end of the third last (search) feature that the generated screen data includes "a hypertext having the URL to which the obtained record is linked as a link destination".

Claim 1 of the second auxiliary request essentially adds to the first auxiliary request at end of the first feature of the characterising portion that the plurality of notable words are "predetermined by an operator", in the following feature that the text data is "of advertisements", and at the end of the search feature that the generated screen data further includes "the text data of the obtained record".

VII. The appellant argued essentially as follows:

The system of Dl simply provided information and automatic links to previously downloaded web pages, whereas the present invention provided links to additional content, namely the content stored in the further database.

In the arrangement of Dl, the "word database" was simply referring to the same data as the database identified by the examining division as the further database of claim 1, so the list of words contained in the word database would only have been there if there was a page with that word in it, and so there would have been no need for two separate searches. Further, Dl contained no hint of the two separately recited search steps. Thus, Dl did not teach or suggest the second search step and so the skilled person attempting to modify a conventional electronic bulletin board system based on Dl would not have included two separate searches.

Moreover, the examining division admitted that even a combination of Dl and a conventional bulletin board system would not have delivered the whole of the scope of claim 1, since as pointed out by the examining division and recited in claim 1, the set of screen data generated by the search report program additionally included text from the text data. This was presented by the examining division as a separate partial problem.

However, this was not a separate problem but was integrally linked with the whole of the present invention. The whole point of the present invention was to supply additional information, i.e. the information contained in the further database.

However, having identified a conventional bulletin board system as the closest prior art, the objective problem could only be determined by comparing claim 1 with such an electronic bulletin board system. The content of Dl, which was not the closest prior art and did not even relate to a server-based application, could not be taken into account for this determination of the objective problem without introducing hindsight. The present invention did not aim to solve the problem of retrieving previously processed files as in Dl. Thus, contrary to the opinion of the examining division, the present invention was concerned with a single problem, namely to improve a conventional bulletin board system. It could not even be said that the objective problem was to supply additional information, since this would have introduced a hint to the solution which could not be done without the benefit of hindsight.

In the first auxiliary request, the additional feature of providing a set of screen data including hypertext having the URLs stored in the further database was likewise not taught or suggested by Dl.

In the second auxiliary request, the records were said to be text data of advertisements. Although this may not at first sight have appeared to be a technical feature, it clearly distinguished from Dl since it required the text data stored in the further database to be completely distinct from the bulletin board system since the data presented on the bulletin board by the user was not "advertising" data. Thus, it specifically required the further database to have different data from the user-entered data in the bulletin board system. Further, it was clarified that the notable words were selected by an operator.

Reasons for the Decision

1. The appeal complies with the requirements referred to in Rule 65(1) EPC 1973 and is therefore admissible.

The application

2. The application concerns the problem of automatically turning words in messages posted on an electronic bulletin board (e.g. discussion forum) into hyperlinks that link to additional relevant information, e.g. advertising information.

3. Looking at the bulletin board "Ski - Snowboard" 100a of Figure 3, if the user selects message no. 35, for example, he sees the usual bibliographic data and the text 102 of the message. Before displaying the message, the system of the invention processes it to find out whether any of the words in the message are present in a collection of "notable words" (database in claim 1 and paragraph 21 of the published application). If a word is found, a database relating words to additional information ("further database" in claim 1) is searched using that word as a keyword. If any record for this word is found in this further database, the word in the original message (e.g. "SKI" 103) is turned into a hyperlink (paragraph 22). When clicked, it links to the start page of a search program that searches the further database for all records having the keyword and displays a list of results as in Figure 4 (paragraph 24). The list includes text relating to the word and (in claim 1 of first auxiliary request) an address (URL) of a page containing information relating to the word. The additional information may be advertising information (in claim 1 of second auxiliary request), which can therefore be associated with words in messages on the bulletin board (paragraph 25).

Main request

4. It is common ground that the closest prior art is a conventional bulletin board system and that the subject-matter of claim 1 differs by the characterising part. In essence, this specifies the above-mentioned conversion of words into hyperlinks.

5. The examining division considered at page 4 of the decision under appeal that these features solved the problem of allowing the system to retrieve previously processed files relevant to the posted message (problem "a"). The appellant considers that including this aspect of supplying additional information into the problem impermissibly involves hindsight. However, even if the problem is formulated more broadly as improving the conventional bulletin board system as suggested by the appellant, the Board considers that an obvious improvement would have been to provide additional information relevant to the message using hyperlinks. This is because it was a well known general technique that was applicable to all types of documents as essentially acknowledged in paragraphs 5 to 7 of the published application.

6. Furthermore, the Board considers that, when trying to improve the bulletin board system by adding hyperlinks, the skilled person would indeed consider D1 because it discloses the same idea at the top of page 2, namely "to identify electronic documents or files which are relevant to another electronic document downloaded from a data network, and to incorporate direct or indirect links to those relevant documents or files into the downloaded document". The appellant argues that D1 is not relevant because it does not relate to a server-based application. However, although the system of D1 identifies the relevant documents at the browser, i.e. client side, the Board is of the view that it is a closely related field, being another example of the generic field of document processing over a network.

7. The appellant also argues that D1 does not actually solve the problem of providing additional information, but a different problem, namely retrieving previously processed files. However, in the Board's view, the electronic documents that D1 refers to in the passage cited above are electronic documents in general. The "previously downloaded web pages" are only disclosed as examples of a "previously analysed document", mentioned at page 7, beginning of last paragraph. In fact, it appears that the documents in D1 can be any set of documents provided that they have been "previously analysed", i.e. put into the relevant database and keywords calculated, which would also appear to be necessary in the invention. In this respect, D1 discloses at the paragraph bridging pages 8 and 9 that the data in the tables can be pre-installed, based on the analysis of a number of (apparently arbitrary) representative documents. Finally, in the Board's view, even "downloaded web pages" are not limited to the appellant's interpretation. This can be seen from the extension of the system, described in D1 at the bottom of page 13, where the databases contain data "downloaded to all users in the company", i.e. not necessarily those previously downloaded by the user reading the message and thus, for this user, documents in general.

8. The Board agrees with the examining division that D1 discloses the above described dual database solution. Specifically, if a predetermined notable word (keyword in D1) in a first database (word Table 1 - page 7, last paragraph) is found in the text, it is converted to a hyperlink (page 9, second full paragraph). The URL of the hyperlink causes a program (DLL - page 11, lines 16 to 20) to search a further database (document Table 2 - page 8, second full paragraph) using the word as a keyword (page 11, lines 26 to 28) and to return "text data" of the records found (URLs of the documents - page 12, lines 20 to 24 - can be considered to be "text data"). Thus the Board judges that the general idea of improving the conventional bulletin board system by the replacement of "notable" words in a first database by hyperlinks that start a search for additional information in a further database would be obvious to the skilled person.

9. A difference remains in that claim 1 specifies (first part of third last feature) searching the further database for the notable word as an additional condition for converting the word to hypertext (two-stage search). The examining division considered at page 5 of the decision that this was implicit from page 2, lines 17 to 20 of D1, which disclosed that links were introduced for documents "containing at least one of said keywords". However, the Board is of the view that this is a general disclosure, which although covering a two-stage search, does not actually disclose it. The appellant argues that such a search would not be obvious since it is not disclosed or necessary in D1 because all the potential keywords in the word table must necessarily also be in the document table so that there is no need to search for them there (it appears from page 7, last paragraph, that the word table can be a histogram of the data in the document table plus the keywords derived therefrom, derived automatically).

10. However, the Board considers that having had the idea of replacing notable words by links to relevant information, the two-stage search in two databases is an obvious implementation detail. Firstly, the use of one or two databases in the first place is an obvious matter of routine design depending on circumstances such as speed and complexity of the databases. Even the inventor apparently saw the possibility of combining the URL data with the notable words, thus requiring only a single search, as a simple alternative (see paragraph 27 of published application). Moreover, having decided to use two databases, the decision to populate the first one automatically with words only found in the second as in D1, or to check both at the time of the conversion as in claim 1 is a similar design choice that in the Board's view does not require inventive skills. The latter would be more appropriate if there is any possibility that the word table contains extra words not in the further database, such as if the notable words are entered manually as is envisaged in the invention (see point 13, below). In this case, there might be no data associated with those words, so that it would be an obvious precaution to check this before changing a word into a hyperlink.

11. Thus, in the Board's view, all the distinguishing features of claim 1 are known from D1, or follow in an obvious manner, not providing any surprising effect or requiring any technical difficulty to implement. Accordingly, the Board judges that the skilled person would arrive at the claimed invention without requiring an inventive step (Article 56 EPC 1973).

Auxiliary requests

12. Claim 1 of the first auxiliary request adds that each record in the further database also has a URL that is returned with the search results. This implies that for this claim the URL cannot be interpreted as the claimed "text data", which is thus an additional distinguishing feature (difference "B" in the decision under appeal). However, the Board judges that the idea of adding additional text data to the URL text data is a non-technical presentation of information as a result of editorial decisions such as whether a summary of the data at the URL is required. Moreover, it requires no further technical implementation. Thus it does not contribute to inventive step and there is no need to consider whether this feature has synergy with the other features, or what the precise formulation of the problem should be.

13. Claim 1 of the second auxiliary request adds that the notable words are predetermined by an operator and that the text data is associated with advertisements. There is also an additional feature that the generated screen data further includes "the text data of the obtained record". However, this text data appears to be the same as the above-mentioned text data already claimed in the same feature, so that the Board cannot see that it adds anything new. The appellant argues that the fact that the text data is associated with advertisements implies the technical consideration that the further database is not limited to contain data related to web pages previously downloaded by the user as is the case in D1. However, since the Board does not interpret D1 so narrowly (see point 7, above), it cannot agree that such a technical consideration exists. The effect of the operator determining the notable words is to limit the invention to a manual determination of the keywords that can be searched in the further database. However, the Board does not consider that changing an automatic determination into a manual one involves an inventive step.

14. Accordingly, the subject-matter of claim 1 of all requests does not involve an inventive step (Article 56 EPC 1973), so that it follows that the appeal must be dismissed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.