T 1302/09 () of 30.11.2012

Summary of Facts and Submissions

I. European patent application number 04 104 474 (publication number EP 1 638 015 A1) was filed on 15 September 2004 for an invention related to displaying content on a mobile communication device.

II. In preparation of oral proceedings before the examining division, the applicant requested by letter dated 30 December 2008 amendments to the claims and the description, amended claim 1 thereof reading as follows (angled brackets **(1)<> and **(2)<> are added for convenience of reference):

"1. A process for viewing an enlarged area of a server stored original image on a mobile communication device (12), comprising:

transmitting an image size limit from said mobile communication device (12) to said server (28) indicative of screen size of said mobile communication device;

downloading and displaying said original image from said server to said mobile communication device, said image being re-sized in the server in the event that the dimensions thereof exceed said image size limit;

determining crop rectangle coordinates of an area of the displayed image to be enlarged;

sending a request from the mobile communication device to the server to enlarge the area to be enlarged based on the determined coordinates, said request including device screen characteristics;

in response to receiving said request, collecting and modifying image binary data from said image to create said enlarged area of said original image; and

downloading said enlarged area of said original image to said mobile communication device,

wherein:

the process comprises downloading from the server to the mobile communications device original size data for said original image;

said step of determining coordinates for said area to be enlarged comprises calculating in the communications device the crop rectangle coordinates based on an image zoom area defined on said mobile communication device, said image zoom area comprising said area to be enlarged, and translating said crop rectangle coordinates based on said downloaded original size data; and

said server extracts said translated crop rectangle coordinates; and collects and modifies said image binary data from said image based on said translated crop rectangle coordinates and said image size limit to create said enlarged area of said original image;

the process being characterized in that it further comprises:

building a Document Object Model 'DOM' representing said original **(1)<image>;

retrieving and traversing said DOM within the server (28) to locate any corresponding image component for said original image and, upon locating said corresponding image component iterating through attributes of the image component to determine if a separate image component has been constructed for said image size limit;

in the event that said separate image component has not been constructed then collecting initial image binary data from said original image within said server and constructing a new image component from said binary data; and

caching said new image component as an attribute of the original image **(2)<in said graph structure>."

III. The examining division refused the application in oral proceedings for reasons of lack of inventive step. In the written decision posted on 18 February 2009, among others, the following documents were cited:

D3: US 2004/0177327 A1 (published on 9 September 2004)

D6: WO 02/33976 A1 (published on 25 April 2002)

D8: US 2004/0003117 (published on 1 January 2004)

According to the decision the subject matter of claim 1 as filed by the letter of 30 December 2008 did not involve an inventive step over D6 and D8.

IV. The refusal decision was appealed on 14 April 2009; in a letter dated and received on 16 June 2009, the appellant (applicant) filed a statement setting out the grounds of appeal, including three sets of claims as requests submitted to the Board for consideration. These requests leave claim 1 above largely unchanged; the amendments are as follows:

According to the main request, passage **(2)<...> (see above) reads: "in said DOM".

The first and second auxiliary requests further amend passage **(2)<...> to read:

"in said DOM;

in the event that said separate image component has been constructed then using the constructed image component to create said enlarged area of said original image".

In addition, passage **(1)<...> (see above) reads in the second auxiliary request as: "image as a number of image components".

V. In a communication dated 2 May 2012, which was annexed to the summons to oral proceedings, the Board gave a provisional opinion on the prospects of the appeal, making the following observations on the issue of inventive step:

"..., the overall conclusion of the examining division regarding inventive step seems to be correct.

As far as the Board understands the invention, the contribution provided by the invention over the prior art of document D6 (WO 02/33976 Al) can be broken down into the following three groups of features characterising different aspects of the invention:

(1) The crop rectangle coordinates which correspond to the zoomed image area are calculated by the client device on the basis of the original image size.

(2) An image that contains the same information as the original image but has been resized by the server for fitting the client device screen size is stored together with the original image in a cache memory of the server.

(3) A Document Object Model (DOM) representing the original image is built and stored in the memory cache, adding any such resized image version as an attribute to the original image component (with the client device screen size as the attribute name).

These three aspects of the invention are independent of each other: there is no synergistic interaction between the features of these groups which would result in any kind of technical effect and possibly contribute to the technical solution of a technical problem. Hence, we have here the situation of a non-inventive juxtaposition, which requires that the inventive contribution to the prior art has to be examined separately for each one of said groups of features.

The said first group of features raises the question whether this aspect of the invention provides a technical contribution at all. It seems to be quite arbitrary where and how the calculations of the coordinates of the zoomed area are made. ...

The above second group of features is apparently an obvious option if time is a critical factor. ...

The third aspect invokes the Document Object Model, a well known standard for accessing and manipulating HTML and XML documents (see e.g. the abstract of document D3...). It seems to be an obvious step to apply such a programming interface to a wireless network/Internet environment for storing and accessing XML image data."

VI. By letter dated 27 September 2012, the appellant informed the Board that it would not attend the oral proceedings. The appellant, however, made observations in support of inventive step and requested that a patent be granted on the basis of the main request or the first or second auxiliary requests filed with the statement of grounds of appeal.

VII. The oral proceedings took place before the Board as scheduled without participation of the appellant, and ended with the announcement of the decision.

VIII. The arguments of the appellant relevant to the present decision may be summarised as follows.

(a) The appellant disagreed that the three groups of features identified by the Board in its communication were independent and did not interact in a manner to produce a synergistic effect. All distinguishing features contributed to the solution of the joint technical problem of how to quickly retrieve, at a mobile communication device, different parts at different resolutions of a large image attachment that has been resized by a server. Translation of the crop rectangle coordinates at the device increased flexibility with regard to the selected area to be enlarged and accelerated the retrieval of the requested area from the server. To reduction of the retrieval time also contributed the use of a DOM at the server that stored previously determined resized versions of the original image and thereby allowed for a possible reuse of already resized versions or excerpts of the original image.

(b) The appellant further argued that none of the prior art documents cited disclosed any of the features distinguishing claim 1 from D6. Referring to document D3, the prior art did not suggest constructing a new image component from the original image data and caching the new image component as an attribute of the original image in the DOM.

(c) The additional features of the first and second auxiliary requests were supported by figure 10 and paragraphs 0038 to 0041 of the application as originally filed and corresponded to the path taken from step 52 of the flowchart in response to a "Yes" finding that a separate image component for the size limit has already been constructed. From paragraphs 0030 to 0032 it was clear that an original image could be represented in a DOM by a number of image components. Since they were stored within the DOM, they could be reused when requested, thereby allowing for quickly retrieving different parts and different resolutions of a large image attachment and hence contributing to the joint technical problem of the invention.

Reasons for the Decision

1. The appeal, although admissible, is not allowable since none of the substantive requests before the Board complies with the requirement of inventive step (Article 52(1) EPC and Article 56 EPC 1973).

2. The following reasoning for lack of inventive step is confined to claim 1 of the second auxiliary request, which includes all features of claim 1 of the higher ranking requests.

2.1 The appellant has not challenged the examining division's approach to examine inventive step by starting from document D6 as the closest prior art and also the Board considers it as an appropriate starting point.

2.2 It has also not been disputed that, in the terminology of the present application, document D6 discloses a process for dynamically viewing an original or resized image or an enlarged area of the original image, which are downloaded from a remote server to a mobile communication device, e.g. a cellular phone, PDA etc. (see document D6, the abstract and the following passages of the description: page 2, line 29 to page 3, line 7, page 4, lines 3 to 18, and page 4, line 25 to 29). If in the prior art the user of the device sends a request to the server to enlarge an area of the displayed image, the server uses the screen size of the device and the area to be enlarged as determined by the user of the device to collect and modify image binary data from the original image to create the enlarged area and to download that area to the device (see figure 3 of document D6 and the accompanying parts of the text).

2.3 Finally, the appellant has not disputed the prior art analysis presented by the Board in its communication of 2 May 2012 insofar as the differences between the claimed invention and D6 were concerned (see point V. above).

2.4 However, the appellant disagreed that the three groups of features identified by the Board were independent aspects of the invention and did not provide a synergistic effect over the prior art. The appellant referred to a speedier retrieval process as the joint technical problem solved by the distinguishing features of the invention in combination (see point VIII(a) above).

2.5 The Board, having considered the facts in the light of the appellant's arguments, still finds that document D6, in particular figure 3 together with page 4, line 3 ff., gives a clear indication to the skilled person that image retrieval and display on a portable device should use the processing power of a server for performing the necessary image tailoring and transformation processes and should take account of the restricted device screen size, the original image size and the desired image details.

The skilled person would immediately realise that the image processing operations can be distributed between the client (device) and server. Within the bounds of the available processing resources, the distribution of the functions between the device and the server is arbitrary. The claimed distribution - including the translation of the crop rectangle coordinates at the mobile device - is a simple possibility which does not provide any unexpected advantages or effect. Hence, in absence of any conclusive evidence to the contrary, the alleged improvements of the retrieval and rendering process are considered purely speculative.

2.6 Doubts are also justified with regard to the allegedly accelerated retrieval by using a DOM at the server for storing previously constructed image components for different image size limits. The appellant cited figure 10 of the present application as basis of the features defining the caching of new image components as an attribute of the original image in the DOM (see point VIII (c) above). However, box 60 in figure 10 clearly indicates, and no other conclusion can be drawn from the cited passages of the description, that the new image data segment is created by tailoring the "original data". The application does not seem to disclose that this "original data" is identical with the image component cached as attribute to the original image component. It can thus not be assumed that the cached image components and the DOM are used for creating the image segment downloaded to and displayed on the portable device, as argued by the appellant. It follows that an improvement of the retrieval process cannot be invoked as argument in support of inventive step.

2.7 Caching as well as the use of document object models in storing and retrieving image data are undisputedly per se common tools of electronic data processing. The use of these tools according to present claim 1 does not go beyond this normal usage.

2.8 Finally, the Board notes that even if different claim features serve the same overall purpose - here: quick retrieval of image data - this does not necessarily mean that there is synergy. Synergy requires that features are interrelated in such a way that their combined effect is greater than the sum of their individual effects. This is however not seen to be the case here.

3. It follows that the concerns raised in the communication of 2 May 2012 with regard to inventive step have not been removed by the appellant in its written submissions. Since the appellant did not appear at the oral proceedings there has been no possibility to discuss the matter further in detail. Hence, given the facts outlined above, the appeal cannot be allowed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.