T 0051/09 () of 26.4.2012

Summary of Facts and Submissions

I. The appeal concerns the decision of the examining division to refuse European patent application No. 04 024 211 for lack of inventive step (Article 56 EPC 1973) in view of the following document:

D1: EP 1 287 867 A2.

II. At oral proceedings before the board the appellant requested that the decision under appeal be set aside and that a patent be granted in the following version:

Description, pages 1-5, 44 as filed with letter dated 4 July 2006,

pages 6-43 as originally filed.

Claims 1-9 filed as 2nd auxiliary request with the grounds of appeal.

Drawings, pages 1/14-14/14 as originally filed (sole request).

III. The wording of independent claims 1, 5, and 9 of the sole request reads as follows:

"1. A mail managing apparatus for exchanging mail via a network between users in a network game,

wherein the network game comprises a plurality of types of network game,

comprising:

a mail address storage (305) for storing mail addresses,

a mail server (22) for receiving, storing, and transmitting mail using the mail addresses stored in the mail address storage (305),

characterized by

a character name collecting section for collecting a character name used in the network game by the users from a server that provides the network game, wherein

the mail managing apparatus is adapted to set an email address based on the character name collected by the name collecting section,

wherein said character name collecting section is adapted for collecting a type of network game corresponding to the character name together with the character name;

wherein said mail address storage (305) is adapted for storing a mail address, which includes the collected character name and the collected type of network game, and

wherein the mail address stored in said mail address storage (305) comprises the character name in a mail account and the type of network game name in a domain name."

"5. A method for exchanging mail via a network between users in a network game,

Wherein the network game comprises a plurality of types of network game comprising the steps of:

storing mail addresses, in a mail address storage (305);

receiving (S601), storing (S605, S609), and transmitting mail (S811) using the mail addresses stored in the mail address storage (305);

characterized by

collecting (S501) a character name used in the network game by the users from a server that provides the network game; and

setting an email address based on the collected character name,

storing the set mail address which includes a character name used by the user in the network game in the mail address storage (305),

wherein the step of collecting (S501) further collects a type of network game corresponding to the character name together with the character name;

wherein the mail address includes the collected character name and the collected type of network game, and

wherein the mail address stored in said mail address storage (305) comprises the character name in a mail account and the type of network game name in a domain name."

"9. A computer program product comprising a computer readable medium having computer readable program code embodied thereon, the program code being adapted to carry out all steps of any of claims 5 to 8."

IV. In the appealed decision the examining division held that the implementation of the characterizing features of claim 1 followed from the non-technical, administrative aim to provide meaningful mail addresses. The claimed format of the mail addresses posed no technical challenge to the skilled person. Therefore, subject-matter of claim 1 – and hence that of corresponding claims 5 and 9 - did not involve an inventive step.

V. The appellant argued essentially as follows:

Starting from the prior art known from document D1, the invention aimed at improving the mail correspondence. The characterizing features allowed to avoid conflicting email addresses by using the type of network game in the domain name. From the state of the art it was not even known to automatically create email addresses. The subject-matter of the claimed invention involved therefore an inventive step.

Reasons for the Decision

1. Admissibility

The appeal is admissible.

2. Amendments

Independent claims 1, 5, and 9 are based on original claims 1, 9, 14, 15, 19, and 20 and the description as originally filed (page 21, lines 3-10; page 28, lines 8-13).

Dependent claims 2-4 and 6-8 are based on original claims 7 and 8 and the description as originally filed (page 19, lines 8-13; page 28, lines 8-13).

The description has been brought into conformity with the amended claims and supplemented with an indication of the relevant content of the prior art without extending beyond the content of the application as filed.

Accordingly, the board is satisfied that the amendments do not violate the provisions of Article 123(2) EPC.

3. Novelty

3.1 Document D1 discloses (see Figures 1-4, paragraphs [0007] and [0023]–[0049]) an online game system 1 which aims at allowing a player to easily select a desired game. The game system 1 and information terminals 101-104, which are used by multiple players A-D, are connected on a network 200. The game system 1 provides the players A-D with a place for a match in a predetermined game and includes - among others - a lobby server 2, a message server 5, and a mail server 6. The message server 5 and mail server 6 provide environments for exchanging messages in real time and for exchanging electronic mail among the players A-D, respectively.

The lobby server 2 includes multiple chat servers 11-14 through which messages are transmitted and received among players by specifying the "nickname" of the desired player. Furthermore, the lobby server 2 has a management master program, which includes a lobby navigator 30, and includes multiple zone servers 21-24 which in turn comprise a management program including a room master 31 and a table master 32.

The lobby navigator 30 selects a zone server 21-24 through the corresponding chat servers 11-14. In the zone servers 21-24, the room master 31 selects the rooms 0-15 and the table master 32 selects the tables 0-15. Zones, rooms, and tables are arranged in a hierarchical structure, a table being a "child" of a room, which is in turn a "child" of a zone. The room master 31 manages a room player list storing information about each player in a room, i.e. a "nickname status" (e.g. "in the process of a game", "in a chat"), and the status of each table (e.g. "during the game", "in empty state").

3.2 Using the wording of claim 1, document D1 discloses a mail managing apparatus for exchanging mail via a network between users (A-D) in a network game,

wherein the network game comprises a plurality of types of network game (implicit since a desired game may be selected),

comprising:

a mail address storage for storing mail addresses (necessarily part of the mail server 6),

a mail server (6) for receiving, storing, and transmitting mail (between players A-D) using the mail addresses stored in the mail address storage.

3.3 Document D1 does not disclose the characterizing features of claim 1, namely

(1) a character name collecting section for collecting a character name used in the network game by the users from a server that provides the network game,

(2) wherein the mail managing apparatus is adapted to set an email address based on the character name collected by the name collecting section,

(3) wherein said character name collecting section is adapted for collecting a type of network game corresponding to the character name together with the character name;

(4) wherein said mail address storage is adapted for storing a mail address, which includes the collected character name and the collected type of network game, and

(5) wherein the mail address stored in said mail address storage comprises the character name in a mail account and the type of network game name in a domain name.

The subject-matter of claim 1 is therefore new over document D1.

3.4 None of the remaining prior art documents on file is closer to the subject-matter of claim 1 than document D1.

Method claim 5 and computer program product claim 9 correspond to apparatus claim 1. Claims 2-4 and 6-8 are dependent on claims 1 and 5, respectively, providing further limitations.

Accordingly, the subject-matter of claims 1-9 is new (Article 54(1) and (2) EPC 1973).

4. Inventive step

4.1 Document D1 is regarded to represent the closest state of the art.

4.2 The subject-matter of claim 1 differs from the mail managing apparatus disclosed in D1 in comprising features (1) to (5) (see point 3.3 above).

The effect of these features is to allow the users to easily exchange emails in a network game (see the description, page 2, lines 14-16). The objective technical problem is therefore the technical implementation of a system allowing such easy exchange of emails.

4.3 It remains to be considered whether it would be obvious for the skilled person, an expert in the art of electronic mail communication, to solve the posed problem by incorporating the differing features (1) to (5) into the mail managing apparatus of D1.

In the apparatus of D1 messages are transmitted and received using the chat servers 11-14 by specifying the "nickname" of a desired player. Furthermore, a zone server 21-24 is selected through the corresponding chat server 11-14 and message communication is not foreseen over multiple zones. This implies that the "nickname" must uniquely identify a player at least within a given zone since otherwise the player to which transmission of a message is desired could not be identified by specifying the "nickname".

Furthermore, the players can see information about other players in the same room in the "player table list" PLT in which a "nickname status" is stored.

In this context it would be natural for a player, if he wanted to send an email to another player, to identify the desired player by specifying the corresponding "nickname". The skilled person would therefore consider using the "nickname" in the mail address in order to implement a system allowing an easy exchange of emails.

Since the "nickname" uniquely identifies the player it is not necessary for his identification to use the type of game in which the player is engaged in his mail address. Furthermore, using the type of game in this way would lead to multiple mail addresses all belonging to the same player and corresponding to the various games played by the player. This would be confusing for the player himself and the other players rather than contributing to an easy exchange of emails. Moreover, it would fill up the mail address storage without due cause.

The skilled person would therefore not consider to collect the type of network game played by the player (feature (3)) and to use the type of network game in the mail address (features (4) and (5)). It would therefore not be obvious for the skilled person to incorporate features (3) to (5) into the apparatus of D1.

Accordingly, the subject-matter of claim 1 involves an inventive step over document D1.

4.4 None of the other prior art documents on file contains a teaching that would lead the skilled person in an obvious way to the subject-matter of claim 1.

The subject-matter of method claim 5 and computer program product claim 9 is not considered obvious either since these claims correspond to apparatus claim 1. Nor is the subject-matter of claims 2-4 and 6-8 considered obvious as these claims are dependent on claims 1 and 5, respectively.

Therefore, the subject-matter of claims 1-9 involves an inventive step over the available state of the art (Article 56 EPC 1973).

5. Other requirements of the EPC and conclusion

The description has been brought into conformity with the amended claims in order for them to comply with the requirements of Article 84 EPC 1973. Furthermore, the description has been supplemented with an indication of the relevant content of the prior art to comply with the requirements of Rule 27(1)(b) EPC 1973.

In view of the above the sole request is allowable.

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 with the order to grant a patent on the basis of the following documents:

Description, pages 1-5, 44 filed on 4 July 2006, pages 6-43 as originally filed.

Claims 1-9 filed as Auxiliary request 2 with the grounds of appeal.

Drawings, pages 1/14-14/14 as originally filed.