T 0755/08 (PDA system/MOTOROLA) of 25.6.2012

Summary of Facts and Submissions

I. The appeal is against the decision by the examining division dispatched on 27 November 2007 to refuse European patent application 01 916 975.4 on the basis that the subject-matter of claims 1, 2 and 13 was not inventive, Article 56 EPC 1973, in view of the following documents:

D1: US 6 014 090

D2: Hellaker J. et al.: "Real-time traveller information - in everyone's pocket? - a pilot test using hand-portable GSM terminals", Vehicle Navigation and Information Systems Conference, 1993, Proceedings of the IEEE-IEE Ottawa, Ont., Canada 12-15 Oct. 1993, New York, NY, USA, IEEE, 12 October 1993, pages 49-52, ISBN: 0-7803-1235-X, XP010219744

D3: Philipp Zambelli: "Shared Bookmarks - Building an Application on a Distributed Object System", Master's Thesis in Telematics for the Award of the Academic Degree Diplom Ingenieur at the Graz University of Technology, December 1999, XP002247750

D4: CA 2 264 474 A

II. A notice of appeal was received on 29 January 2008, the appeal fee being paid on the same day. A statement of grounds of appeal was received on 2 April 2008.

III. The appellant requested that the decision be set aside and that a patent be granted on the basis of claims 1-14 filed with the grounds of appeal. The appellant further made a conditional request for oral proceedings.

IV. The independent claims of the sole request read as follows:

Claim 1

A personal digital assistant system, having

a data recording means (8);

means for receiving, via a radio link between the data recording means and a mobile station, voice data input by a user of the mobile station after initiating an information finding process at the mobile station;

means (1) for assigning an identifying marker to the voice data, the identifying marker including a marker indicative of the location of the mobile station; and

means, associated with the data recording means (8), for retrieving information relevant to the identifying marker and the voice data from external data sources (10-14), the system being characterized by:

the identifying marker and the voice data are stored as a digital bookmark (9) associated with the mobile station or the user of the mobile station in the data recording means (8), and

the digital bookmark (9) is subsequently accessible by the mobile station or the user of the mobile station.

Claim 2

A personal digital assistant system, comprising:

a mobile station (1), including a data recording means (33);

means for providing voice data input by a user of the mobile station in response to the user of the mobile station initiating an information finding process;

means (1) for assigning an identifying marker to the voice data, the identifying marker including a marker indicative of the location of the mobile station; and

means, associated with the data recording means, for retrieving information relevant to the identifying marker and the voice data from external data sources (10-14) via a radio link, the system being characterized by:

the identifying marker and the voice data are stored as a digital bookmark (39) associated with the mobile station or the user of the mobile station in the data recording means (33), and

the digital bookmark (9) is subsequently accessible by the mobile station or the user of the mobile station.

Claim 13

A method of retrieving information, comprising inputting voice data at a mobile station (1) in response to an user of the mobile station initiating an information finding process,

assigning an identifying marker to the voice data, the identifying marker including a marker indicative of the location of the mobile station, storing the voice data and identifying marker as a digital bookmark (9) associated with the mobile station or the user of the mobile station in data recording means (8) for subsequent access by the mobile station or the user of the mobile station, and

retrieving information relevant to the digital bookmark from external data sources (10-14).

Reasons for the decision

1. Reference is made to the transitional provisions in Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, for the amended and new provisions of the EPC, from which it may be derived which Articles of the EPC 1973 are still applicable to the present application and which Articles of the EPC 2000 shall apply. As far as the Implementing Regulations are concerned, the board refers to Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations of the European Patent Convention 2000.

2. The admissibility of the appeal

In view of the facts set out at points I and II above, the appeal is admissible, since it complies with the EPC formal admissibility requirements.

3. Multiple independent claims in the same category, Rule 29(2)(c) EPC 1973

The presence of two independent system claims, i.e. claims 1 and 2, is justified in the present case, because they set out alternative solutions to a particular problem and it is not appropriate to cover these alternatives by a single claim.

What distinguishes these claims is that claim 1 relates to a personal digital assistant (PDA) system having a data recording means, with a radio link between the data recording means and a mobile station, as well as means, associated with the data recording means, for retrieving information, whereas claim 2 relates to a PDA system comprising a mobile station including a data recording means, with a radio link to external data sources from which information is retrieved. The essential difference between the claims is therefore the location of the mobile station and the data recording means. Otherwise, the systems of claims 1 and 2 work according to the same principle.

In the board's view, the only conceivable way to avoid the presence of two independent system claims would be to combine an abstractly formulated independent claim with two dependent claims, which would render the claims as a whole less concise and more difficult to comprehend.

Therefore the presence of two independent system claims is justified according to Rule 29(2)(c) EPC 1973.

4. Novelty, Article 54(1)(2) EPC 1973

None of the documents cited in the search report or introduced by the first instance discloses the storage of voice data. The subject-matter of the independent claims 1, 2 and 13 is therefore novel.

5. Inventive step, Article 56 EPC 1973

The closest prior art is given by document D1. It discloses a mobile communication system (see figure 1). The passage cited in the reasons for the decision, i.e. D1, column 4, line 25, only mentions a mobile communication system in general, not a personal digital assistant (PDA), according to any possible definition of this term. It could however be argued that a digital mobile communication system (e.g. a cellular phone, as disclosed in D1) assists its user and is therefore a "personal digital assistant" system in the broadest sense of the term.

D1 further discloses:

data recording means (column 4, lines 32-33);

a radio link (wireless link 140) for transmitting data between the mobile communication system and the telecommunications network, after initiating an information finding process (see column 4, line 64);

a geographic location identifier associated with the mobile station (see figure 2); and

means, associated with the data recording means, for retrieving information relevant to the geographic location (column 6, lines 26-32).

D2 also discloses a mobile communication system that has many features in common with the system of claim 1. In particular, the "Personal Communicator" in D2, page 49, right column, paragraph 2 is a particular kind of PDA according to the current definition of that term. However, contrary to what is implied in the reasons for the appealed decision, page 6, penultimate paragraph, D2 is less relevant than D1, because D2 does not disclose a "geographic location identifier", even if it could be argued that the presence of such an identifier would make sense in order to facilitate the use of some of the services, such as "Estimated Time of Arrival", listed in D2, figure 5.

The subject-matter of claim 1 differs from the disclosure of D1 by the storage of voice data, together with the identifying marker, as a bookmark. This solves the problem of making it easier for the user of the mobile communication system to retrieve, at a later time, information of interest to the user at a particular location whilst the user is moving around.

There is no apparent reason why the skilled person would introduce said distinguishing feature in the system of D1. Column 3, lines 33-39, does disclose an interactive voice response. There is however no need, in D1, to store the voice data (for later retrieval), given that the voice data is merely used to interface with the telecommunications transceiver.

The subject-matter of claim 1 is therefore considered to involve an inventive step. For the same reason, the subject-matter of the independent claims 2 and 13 is also considered to involve an inventive step.

6. Other issues

The description has not been amended to take into account the wording of the new claims, Rule 27(1)(c) EPC 1973.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.