T 1086/07 (Document summaries/XEROX) of 22.3.2011

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse the European patent application No. 99300218.7, which concerns the problem of indicating on a summary document where the summarised portions came from in the original document.

II. The examining division decided that the subject-matter of claim 1 did not involve an inventive step (Article 56 EPC 1973) over US-A-5 297 027 (D1). The examining division considered that the skilled person would solve the problem of navigating between the document summary and the summarised document by visualising the data available in the tables in D1 according to user requirements, "the form of presentation of this information being only a mere choice for the skilled person".

III. In the statement setting out the grounds of appeal, dated 31 May 2007, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the specification and claims filed therewith, the claims corresponding to the ones the examining division had refused. The appellant also made an auxiliary request for oral proceedings.

IV. The appellant agreed with the examining division's formulation of the problem. However, it was argued that the examining division had not substantiated any motivation for wanting to visualise the information in the tables in D1, in particular using second indicators giving an absolute position in the original document. Moreover, the tables only contained sentence or word counts, which was not "absolute" information like the "vertical locations" in the invention. As a result, the method of D1 would have had to be modified to take account of non-text passages, like figures or tables. There was no motivation to add the extra information that would be required.

V. 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 claim 1 lacked an inventive step.

VI. The reply, dated 3 February 2011, stated that the representative would not be attending oral proceedings. No further comments were filed.

VII. At the oral proceedings, which took place in the appellant's absence, the Chairman announced the decision based on the appellant's above-mentioned request.

VIII. Claim 1 of the sole request reads as follows:

"A method for summarizing a document using a processor (12), the method comprising:

extracting (S200) text from the document along with corresponding location information;

identifying (S220) portions (82) of the extracted text that reflect the content of the document;

generating (S230) a presentation file that includes the identified portions (82) and a first set of indicators (84) that identify each identified portion of text, the first set of indicators being placed adjacent to the corresponding extracted text; and

presenting (S270) the presentation file, characterized by generating a second set of indicators (86) that correspond to the first set of indicators, the vertical positions of the second set of indicators (86) indicating the vertical locations of the corresponding extracted text in the document."

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 invention as claimed is essentially to extract portions of text from an original document shown as 70 in Figure 5 and display them on a summary document shown as 72 in Figure 4, each labelled with an indicator 84, e.g. "A", "B", "C" etc. A second set of indicators 86 having the same labels is generated, e.g. at the side of the document as in Figure 4, at a vertical position that indicates the "vertical location" of the extracted portions of text in the original document 70.

3. Although paragraph 39 of the published application describes at the end that the invention "may provide indicators and tabs in the output of the summarized document 70", i.e. apparently in the original document itself, claim 1 only concerns the situation where the indicators are placed next to the extracted text in the summary. Thus, there is no actual physical link between the summary page and the original document so that the second indicators essentially provide a visualisation of where the text that corresponds to the summarised parts is in the original document rather like a template (see below). The position of the tab in the summary would have to be remembered and applied mentally when looking at the original. Moreover, this would be more difficult if any of the documents were more than one page long.

Inventive step

4. The examining division started from the method of automatically mapping a document abstract to its original sentences disclosed in D1. The subject-matter of claim 1 differed from this by the generation of the second set of indicators to indicate the "vertical locations" of the original text. The objective problem was seen as how to improve navigation between the document summary and the summarised document. The division considered that the skilled person would try to solve this by providing more navigation information about the summarised document. Such data was already present in D1 in the form of the corresponding area table 410 in Figure 13, the sentence score table 408, revealing the sentence length, in Figure 8 and the abstract sentence table 409, showing which original sentence corresponds to which abstracted sentence, in Figure 9. The division considered that the skilled person would "use this data and visualize it according to user requirements, the form of presentation of this information being only a mere choice for the skilled person".

5. The Board agrees with the appellant that the examining division's reasoning is rather terse, in particular the motivation to modify D1 to arrive at the invention. If the features in question were all of a technical nature, the Board might have some doubts about the conclusion of this argument. However, as the examining division did acknowledge, albeit only at point 4.3 of the minutes, the "pure visualization of available information" cannot contribute to inventive step. In the Board's view this consideration is decisive to the outcome of the present case.

6. Moreover, the Board finds the examining division's statement of the distinguishing features slightly too generous. In the Board's view, the sentence numbers (B2, B5, B7…) shown in Figure 9 of D1 can be considered to be a second set of indicators that correspond to the first set of indicators (A1, A2, A3…), and indicate the vertical locations of the extracted text. Thus, strictly speaking the invention differs only in that these second indicators are displayed and that their vertical positions indicate the vertical locations of the text instead of using them to lookup and display automatically the text.

7. The Board considers that, in general, the idea of displaying and placing an indicator at a position to indentify a location has no technical character. It is a presentation of information, namely the results of the summarising process, and has no interaction with the possibly technical function of producing it. A similar conclusion was reached in decision T 603/89 (OJ EPO 1992, 230, in particular at points 2.1(c)/(d), and 2.6) in connection with a kind of template that displayed numbers on a card to represent notes on a keyboard instrument. Although the jurisprudence on Article 52(2) EPC was somewhat different at the time, the judgement of technical character was essentially the same. Thus, in the Board's view the idea of this distinguishing feature cannot contribute to inventive step. As the examining division stated, the skilled person would be able to implement some form of indicator based on the sentence number, and the claim gives no details of the implementation of these indicators that could contribute to inventive step either.

8. Concerning the appellant's absolute position argument, the Board considers that the claimed term "vertical locations" is not precise enough to define a position that is any more absolute than the sentence numbers in D1, in particular considering that the user must anyway make the connection between the indicator and the actual text. Since the claim does not define how the invention deals with non-text passages, this argument cannot be used to distinguish over D1.

9. In the Board's view the same conclusion can be reached starting from the general desire to refer to original sentences while reading the abstracts disclosed in the opening part of D1 at column 1, lines 23 to 26. The invention differs from this by identifying the extracted portions and providing the corresponding second indicators. Again these differences would be aspects of presentation of information having no technical character.

10. Finally, even if the features were considered to have technical character, the Board cannot see how they could involve an inventive step. The claimed portions of extracted text and first indicators essentially cover the contents page of a document or book. The second indicators cover the use of sticky tabs that indicate the position in the book of relevant passages. In the Board's view the skilled person would consider the idea of using such tabs on the contents page as an obvious possibility for keeping track of the original text using the contents page alone.

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

ORDER

For these reasons it is decided that:

The appeal is dismissed.