T 1939/08 (Messaging system/AVAYA) of 7.9.2010

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 01303358.4, with publication number EP-A-1146720.

The decision was in the form of a so-called "decision according to the state of the file" and referred to communications dated 25.06.2007 and 12.04.2006. In these communications, the examining division considered that the subject-matter of the independent claims 1 and 11 did not meet the requirement of inventive step pursuant to Article 52(1) in combination with Article 56 EPC. The above-mentioned communications referred to the following documents:

D1: US-A-5742905

D2: EP-A-0854655

II. The appellant filed a notice of appeal against the above decision. Claims of a main request and first and second auxiliary requests were subsequently filed together with a statement of grounds of appeal. In the statement of grounds the appellant requested that each request be considered in turn and that the decision under appeal be set aside and the application returned to the examining division with the order to grant a patent.

The appellant stated that it "reserved the right" to request oral proceedings before any adverse decision was made by the board.

III. In a communication accompanying a summons to oral proceedings the board gave a preliminary opinion in which matters concerning Articles 123(2) and 84 EPC, as well as Article 52(1) in combination with Article 56 EPC, were raised with respect to claims of each request.

IV. In response to the board's communication, the appellant filed new claims of a main request and first and second auxiliary requests replacing the existing requests.

V. Oral proceedings were held on 07 September 2010. In the course of the oral proceedings, the appellant filed claims of a new main request. The previous second auxiliary request was maintained as the first auxiliary request. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 18 of the main request filed at the oral proceedings, or in the alternative, of claims 1 to 12 of the first auxiliary request, filed as the second auxiliary request with the letter dated 06 August 2010.

At the end of the oral proceedings, after due deliberation, the board announced its decision.

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

"A method for processing a message, wherein the message is one of two or more types, wherein the two or more types comprise two or more of: an email, a fax, and a voicemail, the method comprising the steps of:

receiving user specified content;

converting the user specified content into a format of each of said type of message;

receiving a message;

determining the type of the message received;

retrieving the converted user specified content compatible with the type of the message;

scanning the message content for the converted user specified content;

if the converted user specified content is found in the message content, applying a message handling rule to the message; and

if the converted user specified content is not found in the message content, storing the message in a conventional manner based on the type of the message."

VII. Claim 10 of the main request reads as follows:

"An apparatus for processing a message, wherein the message is one of two or more types, wherein the two or more types comprise two or more of: an email, a fax, and a voicemail, the apparatus comprising:

means for receiving user specified content;

means for converting the user specified content into a format of each of said type of message;

means for receiving a message;

means for determining the type of the message received;

means for retrieving the converted user specified content compatible with the type of the message;

means for scanning the message content for the converted user specified content;

means for applying a message handling rule to the message if the converted user specified content is found in the message content; and

means for storing the message in a conventional manner based on the type of the message if the converted user specified content is not found in the message content."

In view of the board's decision, it is not necessary to reproduce the claims of the auxiliary request.

Reasons for the Decision

1. Articles 123(2) and 84 EPC - claim 1, main request

1.1 Claim 1 is based on a combination of claims 1, 7 and 8 as filed. The step of retrieving the converted user content is implicit in the application as filed, see for example col. 5, lines 44 to 47 of the published application, whereby the user specified content is stored in the proper (ie converted) format, so that it is clear that it is retrieved when the scan is performed.

1.2 Claim 10, which is an apparatus claim corresponding to claim 1, is based on claims 21, 27 and 28 as filed, as well as the aforementioned passage of the description.

1.3 Claims 1 and 10 therefore comply with Article 123(2) EPC.

1.4 In the board's view, claims 1 and 10 are clear and thus comply with Article 84 EPC.

2. Inventive step

2.1 The present invention concerns a method and apparatus for handling and storing messages in various different formats, inter alia, email, fax and voicemail. A general aim of the invention is to identify user specified content in the various types of received message.

2.2 The board considers that document D2 represents the closest prior art.

2.3 Document D2 discloses a messaging system for handling e-mail, fax or voice messages. Incoming messages in a plurality of formats are stored on a centralised message server (cf. col. 1, line 57 to col. 2, line 2. When a user sends a request to retrieve the stored messages, the server analyses a header to determine a sender ID and sends a summary to the user ("client"; cf. col. 4, lines 7 to 13). The summary might include priority codes (cf. col. 4, lines 13 and 14), and it is also contemplated to use "software agents, which can analyze the content of messages for high priority words, or in voice messages can detect stress in the caller's voice" (board's emphasis) (cf. col. 4, lines 17 to 21). The user selects certain messages it wishes to receive, and the server then converts the selected messages into the data format used by the subscriber unit (cf. col. 4, lines 22 to 29).

2.4 The subject-matter of claim 1 therefore differs from the disclosure of document D2 in the steps of:

receiving user specified content;

converting the user specified content into a format of each of said type of message;

determining the type of message received;

retrieving the converted user specified content compatible with the type of message; and

scanning the message content for the converted user specified content.

2.5 The problem to be solved starting out from document D2 is regarded by the board as the need to find a practical implementation of the proposal in D2, according to which software agents can analyse the content of messages for high priority words.

2.6 The appellant argued that this aspect of document D2 was a "black box" which could only be implemented in the claimed manner by making use of hindsight. The board agrees for the following reasons.

2.7 The board notes firstly that document D2 is vague with regard to the idea of scanning messages for high priority words (the passage highlighted above is the only reference to it in the entire document) and gives no hint as to a practical implementation. Indeed, it is not even entirely clear to the board that the reference quoted above was intended to apply to the scanning of the content of messages not in a text format, such as voicemails and faxes, or whether it is merely referring on the one hand to messages in a text format and on the other hand to stress detection in voicemail messages. The board notes however that claim 1 of the main request requires at least one of the message types voicemail and fax to be scanned. Furthermore, as pointed out by the appellant, it is not derivable from document D2 that the high priority words can be specified by the user.

2.8 However, if for the sake of argument the skilled person reading document D2 did deduce that at least two of the message types email, fax and voicemail should be scanned for high priority words specified by the user they would be confronted with several options. In the first place, they might decide to treat each type of message separately, possibly by entering the user specified content directly in the format of the respective message type. Alternatively, a plausible approach would be to convert all messages into text format and perform a text search. The invention however takes an alternative approach, namely inputting the user specified content in a single format, and converting this content into the format of each message.

2.9 The board observes that no document at its disposal suggests this approach. The reference in document D2 to detecting stress in a caller's voice suggests that each type of message is to be treated separately with respect to screening criteria, since these criteria may differ from message type to message type. This would appear to discourage the skilled person from entering a single content to be converted into each message format.

2.10 The only other document at the board's disposal disclosing a messaging system for receiving email, voicemail and fax messages, ie D1, also teaches away from the claimed solution. In accordance with D1, messages can be screened for different criteria, eg message type, sender, and message length (cf. col. 6, lines 5 to 10). Separate menu-driven applications for each type of message enable a user to input screening criteria (Figs. 35 to 39). E-mails can be screened by searching for words in a subject field, or on the basis of a sender address (cf. col. 26, line 66 to col. 27, line 4; Figs 36, 37). Voicemails can be screened on the basis of caller number (cf. col. 35, lines 64 to 67). No explicit screening of faxes appears to be shown.

Thus document D1 suggests merely screening for words in the subject field of an email. Hence, D1 gives no hint to the scanning of different types of message for the presence of high priority words. Even if for the sake of argument the skilled person were to contemplate scanning for high priority words in all types of message format, D1 teaches that a separate procedure should be implemented for entering screening data for each type of message. This would in the board's view be more likely to lead the skilled person to arrange for entering the content directly in the format of each respective type of message.

2.11 It follows from the above that, firstly, the board has doubts about the correct interpretation of the closest prior art document D2; secondly, both D1 and D2 appear to teach away from the invention; and finally, starting out from D2 and reading a requirement to scan two types of data message for the presence of high priority words specified by the user into this document, there is no compelling logic leading the skilled person to the invention as claimed instead of to one of the several other possible solutions suggested above.

2.12 In view of the above, the board concludes having regard to the prior art at its disposal that the subject-matter of claim 1 of the main request is not obvious; claim 1 thus meets the requirement of an inventive step (Articles 52(1) and 56 EPC).

2.13 The above comments apply, mutatis mutandis, to apparatus claim 10.

3. The board concludes that the independent claims of the main request are allowable. Therefore, it is not necessary to consider the claims of the auxiliary request.

4. The board has not examined the dependent claims for compliance with, inter alia, Articles 123(2) and 84 EPC. It is therefore necessary to remit the case to the department of first instance for further examination.

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 examination on the basis of claims 1 to 18 of the main request filed at the oral proceedings.