T 0426/09 (Alert notification/SAP) of 9.9.2014

Summary of Facts and Submissions

I. European patent application number 04 101 335.0 (publication number 1 475 734) relates to a method of informing parties of alert situations in business or industrial applications, alert situations like the termination of a contract, a delivery problem for an order, a decline in revenue, or some technical problems in a system.

II. The search division issued a no-search declaration under Rule 45 EPC 1973, indicating that it was not possible to carry out a meaningful search since no technical problem could be established which had required an inventive step to overcome. In the further course of the grant procedure, the examining division refused the application for lack of inventive step, objecting essentially that the invention was merely a common computer implementation of a business method. The decision was based on claim 1 filed by letter dated 4 March 2008 which has the following wording:

"A method of transmitting alert notification messages, the alert notification messages corresponding to alerts, the alerts being indicative of exceptional situations in at least one industrial application, comprising the following steps:

collecting (S1) the alerts from at least one industrial application (#5-1, #5-2,..., #5-n),

generating (S2) at least one alert notification message, and

sending out (S3) the at least one alert notification message to at least one recipient (#1, #2,...#n) through at least one transmission channel (MC),

whereby alert collecting, alert notification message generating and sending out is controlled (S4) according to an alert notification profile (1-1),

wherein the alert notification profile (1-1) is administrated in a centralised engine, and is configured to comprise information relating to at least one of:

a group of recipients;

a time schedule for transmission;

a channel of transmission (MC);

a method to create text out of the alert."

III. The appellant lodged an appeal against this decision and requested that a patent be granted on the basis of the main request or auxiliary request I filed with the statement of grounds of appeal dated 3 February 2009. Claim 1 of the main request is identical to claim 1 underlying the impugned decision. Auxiliary request I adds the following feature to the end of claim 1:

"and wherein a plurality of alerts are aggregated in the centralised engine; and whereby the alerts are stored in a database, whereby the alerts are represented as objects, each object corresponding to a one of a number of configurable alert types, wherein for each alert type a scheme of database tables and corresponding code segments to access the database tables are generated."

IV. Following summons to oral proceedings which was accompanied by a communication of the Board, the appellant filed a further amended set of claims as auxiliary request II by a letter dated 13 August 2014.

V. In the oral proceedings on 9 September 2014, the Board heard and discussed the appellant's arguments. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request or auxiliary request I filed with the statement of grounds of appeal dated 3 February 2009, or on the basis of auxiliary request II filed with letter of 13 August 2014.

VI. The appellant's arguments submitted in support of inventive step are summarised as follows. The examining division was wrong on the technicality of the claimed invention. Collecting alerts from industrial applications, and generating and sending out an alert notification message under the control of a centralised engine over communication channels like SMS, WAP, fax, pager, telephone, cellular phone, and electronic mail were clearly technical processes. The centralised engine actively filtered the alerts and created the appropriate message, depending on the respective notification profile. The technical problem was to provide a method which extended the functionality of transmitting alerts coming from industrial applications to provide messages to the appropriate users notifying them about the alerts.

VII. The invention as pursued in claim 1 of auxiliary request I provided a further improvement in that through aggregating a plurality of alerts in the centralised engine and storing the alerts as objects in a database it was possible to generate a single notification message from such a plurality of alerts and thereby limit the number of messages that were created and had to be handled by the system, as pointed out in the application, paragraph 0108. Moreover, representing the alerts as objects corresponding to the alert type and generating database schemes and code segments for database access for each alert type enabled the centralised engine to handle alerts of unknown alert type and enhanced the functionality of the centralised engine in order to provide a "self-expandable" database for storing alerts of unknown alert type.

VIII. Finally, the appellant criticised that neither the search division nor the examining division had made a search for relevant prior art. A notoriously known computer system was certainly not the closest prior art for a method claiming a new and unique combination of processing steps. Without prior art, however, it would be impossible to discuss inventive step.

Reasons for the Decision

1. The admissible appeal is partially successful in that the decision under appeal has to be set aside on the basis of auxiliary request I, whereas the main request can not be allowed.

2. As an initial point, the appellant has argued that a discussion about inventive step is impossible as long as no state of the art has been cited. However, one piece of prior art has been cited, viz. a conventional data processing system (decision, point 4.2 d)), for which the examining division - correctly - assumed that no proof was required. Certainly an assessment can be based on this prior art. Whether or not there is closer prior art is for this particular issue irrelevant.

3. Regarding the main request, the Board considers the decision under appeal to be correct. Collecting information - even information about industrial (including technical) applications - and notifying a group of interested recipients of an alert situation via a suitable channel of communication using a notification profile, i.e. for example a forwarding or dispatching list of recipients, is essentially a non-technical communication process that is per se not able to provide a contribution to inventive step. The implementation of such an alert notification process as a software application in a notorious network system comprising a central network server does not involve any technical aspect that may qualify as inventive.

The appellant has argued that "each and every feature of claim 1 has technical character". The Board does not deny that the method may work automatically. The point is however that it represents, in the Board's view, a straight-forward implementation, using commonplace technical features, of a non-technical communication process. "Generating" a message, for example, is technical for the sole reason that it is done by a computer. But the aim of the message is the usual one of conveying information, which is non-technical. Also "collecting" alerts is nothing more than an automized version of a human collecting information, and the generation of messages nothing more than its expression.

4. For these reasons, the decision under appeal is confirmed in respect to the main request.

5. Considering auxiliary request I, it is noted that claim 1 has been enriched by technical features which are neither common implementation steps nor the mere logical consequence of the alert notification or a similar communication process. The alerts are stored in a database as objects, each object corresponding to one of a number of configurable alert types, and a scheme of database tables and corresponding code segments to access the database tables are generated for each alert type. The difference between this request and the main request is thus the explicitly claimed database and the relatively detailed way data is stored in it. The appellant has argued that these features permit alerts of unknown type to be stored, providing a "self-expandable" database. In the Board's view these arguments cannot be convincingly dealt with without knowledge of the way databases are normally built. Since a prior art search has not yet been performed it is thus necessary to remit the case to the examining division for carrying out an additional search and for restarting the substantive examination on the basis of the present auxiliary request I and the results of the additional search.

Order

For these reasons it is decided that:

1. The decision under the appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution on the basis of auxiliary request I.