T 1000/08 (Advertisement selection/SONY) of 14.10.2009

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse European patent application No. 02733362.4.

II. Claim 1 in the version of 8 November 2006, on which the examining division's decision was based, reads:

"A content providing system for distributing audiovisual content containing advertisement information to subscribers having subscriber terminals (30), the system comprising:

a content data base containing the audiovisual content;

a content server (10) for retrieving content from the content data base and sending the retrieved content to the subscriber terminals (30);

an advertisement information data base;

an advertisement server (20) for retrieving advertisement information from the advertisement information data base and sending the retrieved advertisement information to the content server (10) for inclusion in the retrieved content sent to the subscriber terminals (30); and

a selection arrangement (40) for selecting advertisement information to be included in the retrieved content sent to the subscriber terminals (30);

characterised in that the selection arrangement (40) comprises:

a subscriber profile data base storing subscriber attribute information representing attributes of the subscribers;

an advertisement attribute data base storing advertisement attribute information representing attributes of the advertisement information;

a content attribute data base storing content attribute information representing attributes of the content; and

an advertisement selecting server (40) comprising a rule unit (41) and a mathematical programming unit (42);

said rule unit (41) comprising

first comparing means (Ml) for matching said advertisement attribute information stored by said advertisement attribute data base with requirement data (OPTINOUT) representing content requirements and producing a first matching result representing the degree of matching,

second comparing means (M2) for matching said content attribute information stored by said content attribute data base with requirement data (OPTINOUT) representing advertisement information requirements and producing a second matching result representing the degree of matching,

third comparing means (M3) for matching said subscriber attribute information stored by said subscriber profile data base with said requirement data (OPTINOUT) representing advertisement information requirements and producing a third matching result representing the degree of matching,

fourth comparing means (M4) for matching said advertisement attribute information stored by said advertisement attribute data base with requirement data (OPTINOUT) representing subscriber requirements and producing a fourth matching result representing the degree of matching, and

means (AdSelectMPjava) for multiplying said first to fourth matching results by respective scoring factors (a-d) and totalling the multiplication results to produce a cost allocation factor for each of candidate pieces of advertisement information for inclusion in retrieved content; and

said mathematical programming unit (42) being operative to assign candidate pieces of advertisement information to retrieved content, based upon said cost allocation factors, in such a manner as to maximise matching of the advertisement information and content".

III. The examining division held that the invention was a straightforward implementation of a business or administrative procedure for selecting and distributing an appropriate advertisement to a subscriber (cf points 2.1, 2.4 and 2.5 of the decision under appeal).

IV. The statement setting out the grounds of appeal, dated 25 March 2008, was based on claim 1 as filed with the letter of 8 November 2006. The appellant requested that the decision under appeal be set aside and the application be remitted to the examining division for a search to be performed.

V. In a communication accompanying a summons to oral proceedings arranged at the appellant's auxiliary request, the Board stated that in accordance with established case law, eg decision T 1242/04 "Provision of product-specific data/MAN", OJ EPO 2007,421, an additional search was not necessarily required if the claimed subject-matter was obvious from notorious technical knowledge. In the present case the Board could not see that matching attribute information with requirement data was more than a mental act or that a weighted summation was more than a mathematical method. Means for performing these steps were disclosed only on a general level and would in any case seem to be straightforward. Although the invention might involve a "fairly complex correlation of data", as the appellant had pointed out, complexity did not imply technicality. The implementation of the method consisted of well-known apparatus (data bases, servers etc) and functional features (comparing means, means for multiplying) and was thus based on notorious technical knowledge. In such a case it would be inappropriate to carry out an additional search for documented prior art on purely formal grounds. Furthermore, in view of the notoriousness of the implementation features it appeared that the refusal of the patent application was justified for the reasons given in the decision under appeal.

VI. By letter dated 11 September 2009, the appellant presented further arguments.

VII. Oral proceedings were held on 14 October 2009. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of claim 1 filed with letter dated 8 November 2006.

VIII. At the end of the oral proceedings the Board announced its decision.

Reasons for the Decision

1. The invention

The invention is a system for distributing audiovisual contents, eg movies, containing advertisements by commercial sponsors to subscribers. After the subscriber has chosen a movie to watch, a server selects appropriate advertisements. The selection is made by adjusting the interests of three parties, viz the subscriber, the content provider and the commercial sponsor. Attribute information, characterizing the subscriber, the movie and the advertisements, is compared with the corresponding requirements of the parties. The result of the comparisons determines which advertisements to insert (see in particular paragraph [0178] of the published patent application).

2. The prior art

The hardware of claim 1 consists of connected terminals, databases and servers. The appellant acknowledges that these means are notorious. The Board regards this combination of hardware as the closest prior art, as did the examining division (decision under appeal, point 2.2).

3. Inventive step

3.1 The appellant regards the technical problem as "providing a way of selecting data for insertion into audiovisual content that takes into account the different characteristics of the viewers of the content, the information providers and the content providers" (letter of 11 September 2009, p. 2). For the purpose of the present decision the Board takes this formulation to refer implicitly to technical (computer) means for performing the selection automatically and in real time. The appellant contrasts this problem with the "business problem of providing a way of selecting advertisements for insertion into content, the selection taking into account the different interests of subscribers, commercial sponsors and content providers" (ibid). From a comparison of these formulations it appears that the appellant sees the business aspect primarily in the fact that the inserted data consists of advertisements. The examining division, on the other hand, held that the entire selection procedure was as such non-technical. The Board therefore has to determine in how far the selection performed by the system of claim 1 can be regarded as involving technical considerations.

3.2 The purpose of the invention is to select, ie decide the contents of, advertisements to be shown to a subscriber. This is only possible if the relevant information ("attributes") about the subscriber, the advertisements and the movies is known. Collecting this information is not technical since it could be done manually. Organising the data in a suitable way (eg as tables) requires logic but no technical skill since it could also be done manually. It is moreover noted that characterising the data to be inserted requires the same kind of descriptive skill whether or not the data represents advertisements. Thus, the Board cannot accept the appellant's argument that the non-technical aspects of the invention would be limited to the kind of data processed.

3.3 It is true that technical considerations might be necessary in order to convert to a computer-friendly form the attribute data of the subscriber, the content and the advertisements. But claim 1 merely specifies that this data is stored in databases, which is trivial.

Technical considerations might also be necessary to set up a computer to compare data. However, claim 1 specifies that "comparing means" are provided, which is a functional feature. Since functional features leave their technical implementation undefined, no farther-reaching technical considerations are necessary.

The final selection of an appropriate advertisement requires the comparisons to be combined to yield a single value. Claim 1 indicates that a weighted sum is calculated ("multiplying said first to fourth matching results by respective scoring factors (a-d) and totalling the multiplication results"). This mathematical rule will influence the selection. However, advertisements differ only in their informational content, which is as such not technical. The way the advertisements are inserted into the content is always the same (and not even described), and therefore the rule has no technical effect. Again, since the calculation is specified as a functional feature it requires no technical considerations.

3.4 The Board therefore holds that the (technical) implementation of the selection method on the server system was obvious. No further technical problem has been solved: the idea to select the most suitable advertisement is of a commercial nature, collecting the appropriate data requires only knowledge about human interests, formulating selection rules is a matter of logic, and proposing suitable equations a task for a mathematician. Skills in logic and mathematics may be typical for technically skilled persons but are not limited to them. It appears in fact to the Board that a business man getting the idea to select advertisements according to the requirements of commercial sponsors, content providers and individual subscribers, would hardly have turned to a programmer for developing this concept. For example, before actually writing a computer program it would have been necessary to decide what kind of attributes should be defined and what comparisons should be performed. The notional person skilled in the art of computer programming need not know anything about audiovisual contents, advertisements or human nature.

3.5 It is finally noted that the advertisement selection could in principle be performed mentally. Although it is not rare that the essential part of a technical process can be so performed, a technical effect is normally only obtained when the process is applied on a physical entity, such as a signal. The present invention affects the information content of the signal but not the way it is represented. The impact of the selection (besides any commercial advantage) is therefore solely on the subscriber's mind.

3.6 For the reasons indicated the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC 1973).

4. Additional search

In accordance with established case law (see eg T 1242/04 supra) an additional search is not necessarily required if the claimed subject-matter is obvious from notorious technical knowledge. The appellant has argued that at least the comparison means and means for multiplying in claim 1 are technical and non-notorious features which should have been searched (grounds of appeal, p. 3). The Board cannot agree (cf point V above). The means in question are part of a server, and servers were undisputedly notorious at the relevant date. Furthermore, the means are expressed in functional form. Functional features only indicate a purpose. Therefore, since in the present case the purpose was non-technical, nothing remained to be searched. It follows that it would have been inappropriate for the Board to set the decision under appeal aside and order a search to be carried out.

ORDER

For these reasons it is decided that:

The appeal is dismissed.