T 0700/11 (Document URL to ID conversion/COPYRIGHT CLEARANCE CENTER) of 29.6.2016

Summary of Facts and Submissions

I. The appeal lies from the decision of the Examining Division to refuse European patent application No. 07010859.2 by a "decision according to the state of the file", using EPO Form 2061 and referring to the communication dated 23 July 2010.

According to that communication the examination was carried out on claims 1 to 10 filed with the letter of 15 December 2008. The Examining Division considered that the subject-matter of independent claims 1 and 6 was not inventive. The communication referred to the following documents which had been cited in the European search opinion:

D1: US 2005/0138004 Al, published on 23 June 2005;

D2: US 6654741 B1, published on 25 November 2003.

The Examining Division also found that a claimed feature was not supported by the description (Article 84 EPC) and that the subject-matter of the dependent claims was not inventive.

II. In the statement of grounds of appeal, the appellant requested that the decision be set aside and that a patent be granted on the basis of the set of claims filed with letter of 15 December 2008, i.e. the claims on which the decision was based, description pages 2, 2a, 3, 6 and 22 filed with the grounds of appeal, and the remaining application documents as originally filed. The appellant submitted printouts of Wikipedia entries in support of its argument that the term "standard publication identifier" was well known.

III. The appellant was invited to oral proceedings. In a subsequent communication, the Board indicated that it tended to disagree with some of the objections made in the contested decision with regard to Article 84 EPC and did not find the inventive-step reasoning of the appealed decision convincing as it stood.

However, the Board expressed some doubt that claim 1 fulfilled the requirement of clarity. Furthermore, it was of the preliminary opinion that the subject-matter of the independent claims solved the problem of automating a known process carried out by a user using a web browser. The claimed solution did not seem to be inventive taking into account the acknowledged prior art, the common general knowledge of the skilled person, and the disclosure of document D2. The subject-matter of each of the dependent claims seemed to lack inventive step.

IV. With a letter of reply the appellant filed a new main request and an auxiliary request, and amended pages 2 and 3 of the description.

V. Oral proceedings were held on 29 June 2016. During the oral proceedings the appellant submitted twice, at 9.40 hrs and at 10.15 hrs, a new sole main request. At the end of the oral proceedings, the chairman pronounced the Board's decision.

VI. The appellant's final request was that the contested decision be set aside and that a patent be granted on the basis of the new sole main request filed in the oral proceedings at 10.15 hrs.

VII. Claim 1 of the sole main request reads as follows:

"A method of operating a computer having a database storage (108, 118) and a display, in order to identify a publication displayed on the display of a web browser (102) operating in the computer, the method is characterized by:

(a) storing a plurality of parser rules in a database (604), each parser rule being adapted to extract data fields for a particular domain name of the universal resource locator (URL);

(b) storing a plurality of translation rules in a database (118, 614), each translation rule providing one or more data fields as inputs and a standard publication identifier as an output of the database;

(c) obtaining from the web browser a universal resource locator (602) that specifies a location for the publication;

(d) selecting (704) in the parser rule database (604) one of the parser rules based on a domain in the universal resource locator and parsing (706) the universal resource locator with the selected rule to generate data field values;

(e) using the data field values generated in step (d) as inputs to query the translation rules database (708), matching the data field values with the translation rules in the database (710); and

(f) when the generated data field values match the inputs of a translation rule, using the output of that translation rule as a standard publication identifier that identifies the publication.[sic]

(g) using the standard publication identifier to determine all retrieved agreements that apply to the identified publication;

(h) examining each agreement that applies to the publication and meets a member context to determine the most appropriate right for the specified type of use that is included in the agreement, wherein, in performing this examination, each agreement is examined from the "bottom up", that is, more specific rights supersede more general right [sic],

(i) collecting and ordering the most applicable rights from all agreements by placing the rights into a specific best to worst order based on the type of right and whether any terms are associated with the right; and

(j) determining, after the available rights have been collected and ordered, whether the ordering yields one "clear winner", that is, one agreement that includes a right that is more applicable than rights included in all other agreements, if so, this "clear winner" is used to determine the rights and terms for the requested type of use;

(k) if it is determined that no "clear winner" exists, then it is determined that a tie exists between two or more agreements wherein a tie between two or more rights without terms indicates that identical rights are available from two different agreements and one agreement is selected and the rights and terms of that agreement are displayed, or wherein a tie between two or more rights with terms results in the display of such rights together with the terms, or wherein a tie between two or more rights exists with the "purchase" status and a list of the purchase information or capability for all of such rights is displayed."

VIII. The appellant's arguments relevant to this 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.

Invention

2. The invention relates to determining reuse rights for document content to which multiple licenses and subscriptions apply. On the basis of a universal resource locator (URL) specifying the location of the document, a standard publication identifier is generated which identifies the document. This standard publication identifier is then used to obtain the most applicable reuse rights for the identified publication, taking into account the context and the desired type of use (see title and paragraphs [0001] to [0006], [0026] and [0066] of the published application).

2.1 The invention uses a web browser which is not further specified in the claims. As described in the application, the web browser is modified to include a small executable program, a "bookmarklet", that causes the browser to interact with a "rights advisor" program (paragraph [0023]). When the user performs a search to obtain a list of publications, the browser displays for each publication resulting from the search a hyperlink generated by the bookmarklet that enables the user to locate and display rights associated with the publication (paragraph [0024]). When such a hyperlink is selected, the bookmarklet causes the web browser to access a rights-advisor web page and sends the URL of the publication with which it is associated to that web page (paragraph [0025]).

2.2 The process performed by the rights-advisor web page to locate and resolve rights is depicted in Figure 4. It uses the publication URL, which it received from the web browser, to locate rights associated with the publication (paragraph [0025]). In order to do that, it first maps, or translates, the URL into a standard identifier (paragraph [0033]).

The method for converting a URL into a standard publication identifier uses parser rules and translation rules (paragraphs [0006] and [0034], Figures 6 and 7A and 7B). Each parser rule is "adapted to extract data fields for a particular form of universal resource locator". One of the parser rules is selected on the basis of a domain name in the URL and used to parse the URL to generate data-field values. Translation rules are used to create a standard publication identifier from those data-field values (paragraph [0006]). Starting with paragraph [0036], the description gives examples of parser rules implemented in extensible markup language (XML). For example, the parser rule of paragraph [0042] is adapted to convert URLs of the domain www.ams.org and would obtain from the example URL "http://www.ams.org/jams/2006-19-01/S0894-0347-05-00505-9/S0894-0347-05-00505-9.pdf" the data-field values "jams" and "2006" (paragraph [0043]).

2.3 In order to obtain the most applicable reuse rights from the standard publication identifier, the rights-advisor web page accesses a rights database in which the agreements are stored (paragraphs [0028] and [0062]). The components of an agreement as represented in the rights database include boundaries, designation of the publications or titles that it covers, rights and terms (see paragraph [0028] to [0032]). These features are however not specified in claim 1, which does not mention the rights database.

2.4 Claim 1 covers the conversion of the URL to a standard publication identifier using parser rules, which was the subject-matter of claim 1 considered in the appealed decision and in the preliminary opinion of the Board, and the determination of the applicable rights, substantially according to the embodiment of Figure 8 and paragraphs [0062] to [0070].

Preliminary comments

3. At the oral proceedings, the Board expressed doubts that claim 1 was clear and supported by the description, and briefly discussed some clarity issues with the appellant. It was however agreed to suspend that discussion in order to come first to a conclusion with regard to inventive step. In view of the findings on inventive step explained below, the question of whether the claims fulfil further EPC requirements does not have to be answered.

Inventive step

4. As acknowledged in paragraphs [0003] and [0005] of the application, in order to avoid infringing rights held in particular under copyright law, at the date of priority of the present application knowledge workers of an organisation determined, before using content of a publication for which they only had a URL, which rights were available for that particular content. That work was performed manually. The knowledge worker, e.g. a librarian or legal counsel, first identified the publication from the publication's URL and then reviewed, before using it, all license agreements obtained from content providers and purchased from other sources, in order to determine which reuse rights the organisation had for the given publication.

4.1 In the first part of the manual process, a publication was identified from the publication's URL.

Web browsers and search engines were well known and routinely used to search publications in the Internet, as specified in step (c) of the claim. This has not been contested by the appellant. The result of such a search for publications was usually a list of information about the publications found, including a URL for each publication.

As explained in paragraph [0005] of the background section of the application, such a URL "is to indicate where on a network, such as the Internet, a copy of the publication can be located". That section of the application also explains that before the date of priority of the present application, a user often obtained only a URL associated with a publication, for example a URL displayed by a web browser, and had to manually locate its publication rights (paragraphs [0003] to [0005]). The Board notes that this involved the user identifying the publication, which was commonly done by means of a standard identifier such as an International Standard Book Number (ISBN) or an International Standard Serial Number (ISSN).

Furthermore, the background section of the application also explains that even though a URL "typically does not directly identify the publication itself", it contained "information that is useful in identifying the publication". According to the description, there was at the time no standard URL configuration, so such information might be located in various places within the URL depending on the publisher or clearing-house (paragraph [0005]). This knowledge of how to extract the necessary information from different URLs depending on the corresponding Internet providers of the publications, or domain names in the URLs, was therefore acknowledged as well known and as being employed by the user when identifying a publication from the URL.

4.2 In the second phase of the manual process, the knowledge worker, using a publication identifier obtained in the first phase, obtained the applicable rights for the given context and type of intended use of the publication. As can be derived from the description, this was done on the basis of legal considerations, for example whether an agreement covered the type of intended use of the particular content by the organisation in the given context (see paragraphs [0002] and [0003]). It also required business knowledge, for instance regarding the channels through which the organisation obtained content (see paragraph [0002]), and knowing whether constraints of a specific agreement were met by the organisation member which intended to use the content (see e.g. paragraphs [0026] and [0028]).

The second phase of the process was thus performed by a knowledge worker, e.g. a "legal counsel" as explained in paragraph [0003], on the basis of legal and business criteria, following an administrative procedure designed on the basis of those legal and business considerations, the procedure comprising retrieving all licence agreements related to the publication (as defined in step (g) of claim 1), examining them and determining which ones pertain to the content and intended use (paragraph [0003]).

Steps (g) to (k) of claim 1 correspond to this second phase of determining the applicable rights on the basis of legal and business criteria. As explained at the oral proceedings, the Board finds that those steps are described in the claim essentially in terms of a non-technical administrative procedure which mainly consists of

- determining "all retrieved agreements that apply to the identified publication" using a publication identifier (as in step (g)),

- examining "each agreement that applies to the publication and meets a member context to determine the most appropriate right for the specified type of use that is included in the agreement", and examining each agreement from the "bottom up" (step (h)),

- collecting and ordering the most applicable rights from all agreements by placing them in a specific best-to-worst order (step (i));

- determining whether the ordering yields one "clear winner", and if so determining the rights and terms for the requested type of use (step (j)); and

- if there is no "clear winner", determining which form of tie between two or more agreements exists and obtaining respective information for the specific form of tie (see step (k), interpreted in the light of paragraphs [0068] to [0070] of the description).

5. At the oral proceedings the appellant argued that the invention was technical because all the steps were performed by a computer, using company databases with all the agreements and conditions. It was only with hindsight that the method was seen as a business method.

The Board agrees that the claimed subject-matter has technical character, since a computer is used to perform the method, and, as can be seen in the following discussion, recognises the technical features of the claim.

However, the Board also notes that the claim does not define the databases containing the agreements and conditions. Furthermore, as explained above, claim 1 also recites non-technical features which, in accordance with established case law, cannot contribute to inventive step and can be included in the formulation of the technical problem. This applies to the administrative steps to determine, for a particular identified publication, given context and type of use, the applicable rights on the basis of legal and business criteria (see also point 4.24.2 above).

6. The invention of claim 1 therefore solves the problem of automating that known process carried out by a user of determining information about the rights applicable for a given context and type of use of a publication from the corresponding URL obtained from the web browser, in accordance with the above-mentioned non-technical administrative steps.

The Board notes that from the acknowledged manual process it was known how to extract from the different URLs, depending on the domain name, the necessary data for identifying the publication, i.e. for obtaining a publication identifier. Such knowledge was typically expressed in the form of rules.

7. The decision to use a standard identifier as publication identifier in the invention could be seen as a non-technical administrative decision, and therefore as a non-technical aspect of the administrative process. Independently of that, the Board notes that, as explained above, the customary way of identifying a publication was to use a standard identifier such as an ISBN. It was therefore obvious to use such standard publication identifiers to identify publications and related licences in the automated process and, since only a publication URL was known, to automatically map a displayed publication URL to a standard publication identifier.

8. With regard to the first phase of the process of the present invention of mapping a URL to an identifier, the Board notes that document D2 discloses a method of mapping an input URL used by a client into an output URL used by a rendering engine on a server in order to provide a requested resource such as a web page (column 1, lines 11 to 17 and column 1, line 66 to column 2, line 6). The mapping is performed by means of a mapping engine which includes a rule cache and a parser (column 2, line 63 to column 3, line 8). As described in column 6, lines 44 to 59, the rules are organised in groups, a particular group being designed for a particular purpose. Document D2 describes different groupings of rules used in the method, for instance for the purposes of mapping the host-name part of an input URL string, mapping the parameters part, or supporting a "scoping function".

8.1 In the opinion of the Board, it was therefore obvious for the skilled person to use a mapping engine including rules and a parser as disclosed in document D2 in order to map a publication URL to a standard publication identifier. It was also obvious to store those rules in a database, which is similar, in the context of both the present invention and the method of document D2, to the rule cache or internal store mentioned in document D2 (column 2, lines 7 to 8).

8.2 Given as a starting point the information about how different URLs map to publication identifiers, the decision of which rules to use to do the mapping of URLs to standard publication identifiers is a question of routine programming. The skilled person would use different groups of rules, as in document D2 (column 6, lines 28 to 59).

Taking into account that, according to the acknowledged background knowledge, it is first necessary to extract data fields from a URL in a specific manner depending on the domain, and then to map the extracted fields to identifiers, the skilled person would, as a matter of customary work, decide to split the rules into "parser rules" adapted to extract data fields for a particular form of URL, and into "translation rules" for translating the data fields to standard publication identifiers, as specified in claim 1.

The appellant argued that although the process of document D2 was a multiple-step process, the result was a translated URL, not an identifier. The Board is however of the view that the skilled person would consider the teaching of document D2 and, without inventive skills, be able to apply its teaching in converting a URL to an identifier.

8.3 From the above reasoning, it follows that it was obvious to store the parsing rules and the translation rules in a database, as recited in steps (a) and (b). Steps (d) to (f) simply describe the standard way of performing the mapping automatically using the well-known rules-based mapping engine, e.g. that of document D2, once the rules are stored.

9. With regard to the second part of the method, the Board finds that steps (g) to (k) of claim 1 simply reflect the non-technical process of determining the applicable rights on the basis of legal criteria (see also point 4.2 above). Even though they are listed in claim 1 as steps of a "method of operating a computer", and it can be derived from the description that at least in part they are automatically performed by the rights-advisor web page (see also point 2.32.3 above), steps (g) to (k) are described in the claim in essentially administrative terms.

Apart from the use of a computer, the claim does not specify any technical features used to carry out steps (g) to (k). The technical features that may indirectly be derived from the definition of those steps are hence the use of a computer for determining, examining, collecting, sorting ("ordering" in the claim), and displaying information. The use of a computer for automating a process involving such tasks, and the associated advantages, were well known at the date of priority of the present application. It would therefore be obvious for the skilled person to use a computer to carry out those steps.

10. The subject-matter of claim 1 therefore lacks inventive step (Articles 52(1) and 56 EPC).

Conclusion

11. 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.