T 0589/11 (Content manipulation/ENDECA TECHNOLOGIES) of 17.2.2016

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 03759747.3, which was filed as international application PCT/US2003/031770 and published as WO 2004/036460.

II. The Examining Division decided that the then main request did not comply with Article 123(2) EPC and that the subject-matter of claim 1 of the then auxiliary request lacked inventive step in view of the following document:

D1: US 2002/083039 A1, 27 June 2002.

III. With the statement of grounds of appeal, the appellant replaced its requests with a sole substantive request based on the auxiliary request refused by the Examining Division.

IV. The appellant was summoned to oral proceedings. In a communication under Article 15(1) RPBA, the Board expressed the provisional opinion that the subject-matter of claim 1 of the sole request lacked inventive step.

V. By letter dated 15 January 2016, the appellant commented on the Board's communication.

VI. In the course of oral proceedings held on 17 February 2016, the appellant withdrew its original substantive request and filed a sole amended request. At the end of the oral proceedings, the chairman pronounced the Board's decision.

VII. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims of the new sole request.

VIII. Claim 1 of the sole request reads as follows:

"A method of determining content for a response to a query (636) in a system for searching and navigating a set of documents, the method comprising:

accepting a query;

generating a result (632) for the query;

determining dynamically desired content for the response to the query; and

providing the response with the desired content (630);

characterised in that said determining comprises a rules engine applying a script that provides logic to process a set of rules (660) using the query and the result, wherein each rule in the set of rules is composed of a respective trigger (668) for activating the rule and a respective action (670) for determining the content from the set of documents for the response to the query, the trigger being defined in relation to one or more of the query and the result, wherein the response includes only the content due to the action of the rules whose trigger is satisfied."

IX. The appellant's arguments relevant to the decision are discussed in detail below.

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

2. The invention

2.1 The invention as originally claimed is directed to "manipulating" responses to search queries in a search and navigation system. Examples of such manipulations are shown in Figures 27, 28 and 29 and described on page 18, line 20, to page 19, line 7, of the published application. In Figure 27, a user has entered the search query 636 "Red Wines". This query results in the list of search results 632 and is manipulated to include text 634 "Expand Your Horizons, Try a White Wine!". Figures 28 and 29 similarly show manipulations in the form of featured content 646 or a list of documents 654 that do not represent query results. As explained on page 17, line 18, to page 18, line 19, manipulating the content of responses to search queries may take various forms, including filtering and aggregating search results.

2.2 Present claim 1 relates to a method of "determining content for a response to a query in a system for searching and navigating a set of documents". The method first accepts a query and generates a (search) "result" for the query. It then determines "desired content" for the query on the basis of the query and the search result. This desired content is provided as the "response" to the query.

The determination of desired content is performed by means of a rules engine, which applies "a script that provides logic to process a set of rules using the query and the result". Each rule consists of a trigger and an action. The trigger is "for activating the rule" and is "defined in relation to one or more of the query and the result". The action is "for determining the content from the set of documents for the response to the query". As explained in the description on page 27, lines 9 to 12, a rule's trigger identifies conditions. If the query satisfies these conditions, the rule's action is performed.

Claim 1 specifies that the response includes "only the content due to the action of the rules whose trigger is satisfied". This feature is based on the embodiment discussed on page 31, lines 5 to 9, of the description, in which the only content presented to users is the content generated by the activated rules. In other embodiments, the content generated by the activated rules is returned along with the query results (see page 31, lines 1 to 4).

As the appellant agreed at the oral proceedings, the claim nevertheless does not rule out that the content generated by the activated rules includes the search results (for example filtered, sorted or otherwise manipulated, or even unchanged). Claim 1 leaves open what trigger conditions and actions are defined by the rules; it only specifies that the actions generate content "from the set of documents".

3. Inventive step

3.1 The Examining Division assessed inventive step starting from document D1. Document D1 relates to a "data-driven hierarchical information search and navigation system" similar to the search and navigation system that forms the context of the present application.

3.2 As disclosed in paragraph [0053], the hierarchical data-driven search and navigation system of document D1 operates on a collection of documents defined in a knowledge base and presents the user with two alternative interaction methods: the user may either select "terms" to navigate through the collection of documents or enter a desired query in a search box.

3.3 Paragraph [0056] explains the first interaction method with reference to Figure 4. The user interface presents a "navigation state" consisting of a list 50 of terms 52 and a list 41 of some or all of the documents 42 that correspond to that state. Upon selection of a term, the user interface presents a new navigation state (paragraph [0060]).

3.4 According to the second interaction method, the user enters free-text search queries into the search box. These search queries may be interpreted and dealt with in various ways, as explained in paragraphs [0066] to [0070].

In most of these embodiments, the search query is used to generate a list of terms from which the user may select. Selection of a term results in the display of a navigation state corresponding to that term.

In the embodiment discussed in paragraph [0070] with reference to Figure 12, the user interface responds to free-text search queries by directly presenting the set of matching documents. This implies that a "result" is generated for the query, namely the set of documents matching the query.

3.5 The search and navigation system of the present application offers the same two interaction methods. The description of these two methods on page 10, line 28, to page 17, line 17, is in fact largely identical to the text of paragraphs [0053] to [0075] of document D1. The claimed invention is essentially a further development of the embodiment discussed in paragraph [0070] of document D1. That embodiment is hence a suitable starting point for the assessment of inventive step.

3.6 In its decision the Examining Division referred to paragraph [0072] of document D1 as disclosing a step of "determining dynamically desired content for the response to the query". But this paragraph relates to the display of supplemental navigation options in a particular navigation state, i.e. to the first interaction method.

3.7 So the subject-matter of claim 1 differs from the embodiment discussed in paragraph [0070] in that

(i) in response to a search query not the search result is displayed, but only information ("desired content") determined from the set of documents on the basis of the search query and the search result; and

(ii) the "desired content" is (dynamically) determined by a rules engine which processes a script comprising a set of rules, each rule being composed of a trigger and an action as specified in claim 1.

3.8 In support of inventive step, the appellant argued that the claimed invention was a system that allowed a domain specialist to improve responses to search queries. For example, if the system operated on a collection of decisions of the boards of appeal, the domain specialist could add a rule that, in response to a search query for decisions by a particular board, triggered a search for decisions by another board dealing with a neighbouring field of technology.

The appellant stressed that the invention did not rely on any particular cognitive information contained in the document base on which it operated; the system was completely generic and hence the work of a computer specialist, not that of a business expert. It gave the domain specialist the flexibility to add rules that increased the relevance of the responses to search queries. That was a technical effect, because different results were returned.

3.9 The Board notes first that feature (i) relates to the choice of what cognitive information to display to the user. Such a choice is a non-technical matter of presentation of information not contributing to inventive step, unless it interacts with the technical subject-matter of the claim for solving a technical problem. In this respect it is true that the invention as claimed is not restricted to any specific cognitive information or to any particular rule for generating content, but just as the inclusion of such claim limitations could not be detrimental to inventive step, so too their absence is not a valid argument in favour of inventive step. The broadness of feature (i), which encompasses arbitrary determinations and not just "useful" ones, in fact rules out the possibility that the claimed choice of the "desired content" contributes to the solution of any technical problem.

The Board therefore considers the idea of replacing the presented search result with other content from the document base in dependence on the search query and its search result to be a non-technical idea. It therefore does not contribute to inventive step and may permissibly be referred to in the formulation of the problem to be solved.

3.10 On the other hand, the Board agrees with the appellant that adding to the system of document D1 in accordance with feature (ii) the flexibility that allows a domain specialist to specify how the other content is to be generated from the document base on the basis of the search query and its search result, is technical. Thus the objective technical problem is that of adding such flexibility to the system of document D1.

The solution to this problem according to claim 1 consists in the provision of a rules engine for applying a script comprising rules composed of triggers and actions.

3.11 The appellant did not dispute that, at the priority date of the application, rules engines were well known. Rules engines process series of rules of the form "IF <conditions> THEN <action>" and are used to allow customisation of the logic of a software system without having to change its source code. The skilled person, starting from the system of document D1 and faced with the problem of providing the domain specialist with the possibility to customise content generation, would, therefore, add a rules engine to the system and so arrive at the subject-matter of claim 1 without the exercise of inventive skill.

3.12 Thus the subject-matter of claim 1 lacks inventive step (Articles 52(1) and 56 EPC).

4. Since the sole request on file is not allowable, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.