T 2243/08 (Software notes/3M) of 13.12.2013

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse the European patent application No. 02721030.1. It concerns displaying information from content providers in the form of software notes on a user's computer.

II. The examining division decided that claim 1 of the sole request, filed with letter dated 4 December 2003, was not novel over the event communication application called "Tickertape", disclosed in Parsowith S. et al., "Tickertape: Notification and Communication in a Single Line", Proceedings 3rd Asia Pacific Computer and Human Interaction, Shonan Village Center, Japan, July 15 to 17, 1998, pages 139 to 144 (D3).

III. In the statement of grounds of appeal, the appellant re-filed the refused request and argued that claim 1 was novel and inventive. The appellant also made an auxiliary request for oral proceedings.

IV. In the communication accompanying the summons to oral proceedings, the Board agreed with the appellant that claim 1 was novel, but had doubts as to whether it was inventive. In a reply, the appellant provided further arguments and filed a slightly amended auxiliary request.

V. At the oral proceedings, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request filed with letter dated 4 December 2003, or auxiliary request 1 filed with the reply dated 13 November 2013, or claim 1 of auxiliary request 2 filed during the oral proceedings before the board on 13 December 2013 and dependent claims still to be adapted. At the end of the oral proceedings, the Chairman announced the Board's decision.

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

"A method performed at a content recipient comprising:

executing first program code at the content recipient so as to receive content from a content provider;

executing second program code at the content recipient so as to display the content behind a session if the session is active; and,

executing third program code so as to provide a notification that the content is available for display."

VII. Claim 1 of the first auxiliary request adds the following feature in italics into the second feature:

"executing second program code at the content recipient so as to store the content in temporary memory in order to display the content behind a session if the session is active".

VIII. Claim 1 of the second auxiliary request further adds to the end of the first feature "without identifying the content recipient", deletes the end of the second feature after the words added in the first auxiliary request, changes the word "notification" into "notifier" in the third feature and adds a fourth feature reciting:

"upon activation of the notifier by the content recipient, executing fourth program code to determine whether there is an active session being performed by the content recipient and, if there is an active session displayed in an area to be occupied by the content when the content is made to appear upon activation of the notifier, burning the content through the active session being displayed."

Reasons for the Decision

1. The invention relates to accessing information (content) from a provider and displaying and notifying it at a recipient. Figure 4 of the application as published shows that the content recipient determines (62, 64), requests (72) and receives (74) information from the content provider. The recipient is notified (78) by a notifier that the content has been received. The recipient can respond to the notification (80) to display the content (98).

2. The description gives various possibilities for notifying and displaying. The notifier may be the content itself in which case it is immediately displayed as the top active layer of the display and there is no need to respond to it (page 7, lines 11 to 14). The notifier may alternatively be an icon (Figure 6: top right and page 7, lines 14 to 17) which is activated to display the information (Figure 4: 80). In this case, if the user has an active session (e.g. writing a letter in window 92 in Figure 6), the content may be "burnt through" this window (Figure 6: 22, Figure 4: 90 and page 8, lines 7 to 11). The icon itself may contain some content, viz. the information that it refers to a note (Figure 5: 82a and page 7, line 28 to 29).

The main request

3. The first feature of claim 1 specifies receiving the content. The second, displaying it "behind" an active session and the third, notifying that it is available for display. However, the concept of displaying "behind a session" is not defined in the description. Moreover, the sequence of displaying "behind" and then notifying does not correspond to any of the embodiments (see above). In fact, at first sight, it does not appear to make sense to notify that the content is available for display if it is already being displayed. The appellant argued that the correct interpretation of the claim was that the content was always displayed upon receipt. If there was an active session, it would be displayed "behind" it. This was supported by original claim 1, which only contained the features of receiving and displaying behind. A notification that content was available for display, originally in dependent claim 3, nevertheless made sense because the content may have been displayed totally behind the active session and therefore not visible. Thus, "available for display" in the third feature meant available for display on top.

4. In the Board's view, this raises the further questions of whether the invention only applies to the situation where the content is totally behind the active session and, if so, whether in this case the content can be considered to be "displayed" at all. However, the issues of patentability can be decided on the basis of the appellant's interpretation without answering these questions.

5. The division refused the application for lack of novelty over D3. This document discloses an interface that receives and displays content by scrolling a message across a small window ("Tickertape interface" - Figure 1 and paragraph 2.2). The division considered that the window anticipated displaying the content, and that the fading of the colour of the message with time constituted the notification that the content was available for display. They also considered that displaying "behind" an active session was anticipated by the statement that the window allowed "users to continue to work with Tickertape in the background". However, the Board agrees with the appellant that the word "background" as it is used in D3 does not mean that the interface is hidden behind the active window, but, on the contrary, that it is displayed all the time the user is working.

6. The Board, however, instead chooses to pursue an alternative interpretation of D3 commented upon in the grounds of appeal (at point 3.1.3). D3 states at the end of section 2.2 that a blue button appears at the start of a message if the message includes an attachment. In the Board's view, this anticipates the notification that the content, i.e. the attachment, is available for display. Clicking on the blue button displays the attachment.

7. However, as mentioned above, according to the appellant's interpretation of claim 1, display comes before notification. Thus, under this interpretation, claim 1 would differ from D3 by the feature of immediately displaying the content behind a session if the session is active as opposed to only after activation of the notifier (blue button in D3).

8. The appellant furthermore argued that the first feature of claim 1, specifying "program code at the content recipient so as to receive content from a content provider" reflected one of the main aspects of the invention, namely that it hid the content recipient's identity from the content provider, solving a problem of anonymity. However, in the Board's judgement this is so general as to be anticipated by the subscribing to a message group disclosed in D3 at the end of page 139, so that this is not a distinguishing feature. The Board notes that, although this aspect is not considered to be distinguishable over D3, it is actually mentioned in the opening part of the description, whereas the features subsequently relied on to support inventive step, discussed below, are not given any special significance, and in some cases, are not even mentioned, anywhere in the description.

9. The appellant also argued that in the invention the notifier did not have any content unlike the interface in D3, which was aiming to display all the content, but only had one line available. Thus a further difference was that the notifier of the invention did not have any content. However, in the Board's view, the mere word "notifier" could refer to anything and is also not distinguished over D3. Moreover, as mentioned above, the present description even discloses an embodiment in which the notifier is the content itself and also an embodiment in which the notifier has some content.

10. Thus the only distinguishing feature over D3 is the above-mentioned (point 7) immediate displaying of the content behind a session if the session is active. When examining inventive step, it is established jurisprudence of the boards of appeal that an allowable invention must be a technical solution to a technical problem. However, in the Board's view it is not possible to derive a technical problem from the feature of displaying the content "behind" a session. It is an aspect of presentation of information, namely when and where the user wants to see the content. The user may want to see the content immediately or not be bothered by it. The user may want to see the message away from any other windows or save space on the screen and have it overlapping or underneath. Moreover, the description does not suggest any technical effect of this feature either because, as mentioned above, it does not actually disclose displaying the content "behind" and in this generality, but only after activating the notifier and even then only in combination with an overlapping window and "burn through". Also the description gives the example of displaying the content immediately on top as well, reinforcing the impression that all possibilities are matters of presentation according to the taste of the users.

11. The appellant argued that displaying the content upon receipt implied the technical effect of not requiring its downloading upon activation of the notifier. However, even if this can be acknowledged as an implicit effect, it does not in the Board's view result from the feature of displaying "behind", but simply from displaying it (automatically) upon receipt. Thus the feature of displaying "behind" still cannot contribute to a technical problem and the implicit effect can at most justify a technical problem along the lines of how to provide an alternative to downloading after activating the notifier. However, downloading before or after activating the notifier are both obvious possibilities and the skilled person would choose one depending on the circumstances, available memory/bandwidth, urgence of the data contents, etc.

12. Accordingly the Board judges that claim 1 of the main request does not involve an inventive step (Article 56 EPC 1973).

The first auxiliary request

13. Claim 1 of the first auxiliary request adds that the content is stored in temporary memory before being displayed.

14. The appellant considered that this reinforced the technical character of the feature of displaying the content behind the active session. It also explicitly defined that the content was available at the recipient before activation of the notifier, not afterwards as in D3. However, since in any practical system displayed content would have to be stored in a memory, this feature would be a self-evident requirement whenever it was decided to display the content (as a result of the non-technical considerations).

The second auxiliary request

15. The amendments in claim 1 of the second auxiliary request relate to two different aspects of the invention.

16. The first aims to clarify that the invention hides the recipient's identity from the provider. Thus, the receiving feature additionally specifies "without identifying the content recipient". The appellant had in mind things like not identifying the recipient by name or user ID. However, the term "without identifying" cannot be interpreted literally because at some level, the identity must be known - even if it is only the IP address of the recipient's computer, which is necessary to send the content to it. Thus, the term is essentially only a relative term that cannot distinguish over a means capable of operating at the same level, here the "subscribe function" in D3.

17. The second amendment relates to the displaying aspect and boils down to making the content appear ("burn") through any active session when the notifier is activated. Even if this implies some new functionality over a standard windows situation where a window receiving the focus would become "active", it remains in the Board's judgement a matter of presentation of information. The effect is simply to show the content in a particular way. How this is achieved by any technical manipulation of the windows/sessions is not specified.

18. Accordingly, claim 1 of all requests 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.