T 0993/11 (Messaging system/APPLE) of 12.12.2014

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division, posted on 29 December 2010, refusing European patent application No. 07802544.2 on the grounds of Article 123(2) EPC and lack of inventive step (Article 56 EPC) with regard to prior-art publications:

D1: WO 01/55892 A1 and

D3: EP 1239395 A2.

II. The notice of appeal was received on 28 February 2012. The appeal fee was paid on the same day. The statement setting out the grounds of appeal was received on 28 April 2012. The appellant requested that the appealed decision be set aside and that a patent be granted on the basis of the main request or the auxiliary request, both filed with the statement setting out the grounds of appeal. Oral proceedings were requested on an auxiliary basis.

III. With a communication dated 12 September 2014 the board summoned the appellant to oral proceedings on 12 December 2014. In an annex to the summons the board expressed its preliminary opinion that both requests did not appear to fulfil the requirements of Article 123(2) EPC and furthermore appeared to lack an inventive step (Article 56 EPC ).

IV. By letter dated 12 November 2014 the appellant submitted a set of claims according to a second auxiliary request supported by arguments in favour of an antecedent basis and inventive step for all requests on file.

V. By letter dated 5 December 2014 the board was informed that the appellant would not be attending the oral proceedings.

VI. The appellant requested in writing that the decision under appeal be set aside and that a patent be granted on the basis of the main request, or, subsidiarily, on the basis of any of the first or second auxiliary requests, the main request and first auxiliary request as filed with letter dated 28 April 2011 (the latter then filed as "Auxiliary Request"), or the second auxiliary request as filed with letter dated 12 November 2014.

VII. Independent claim 1 according to the main request reads as follows:

"1. A method of selecting a recipient of a store-and-forward message on the basis of data identifying access to previously transmitted messages, said message being one of an SMS, MMS or WAP message, and comprising content data (501, 503) for display within a display area of a receiving mobile terminal and control data comprising data indicative of a user selectable portion within the display area, the method comprising:

receiving content data (C) having one of a plurality of different types for use in creating a said message;

accessing (S6.3, S6.9) tracking data corresponding to a previously transmitted message (M1) containing content data of a given type, the tracking data being indicative of selection of a said user selectable portion upon display thereof at a said receiving mobile terminal; and

selecting a recipient of the message on the basis of the received content data and the tracking data,

wherein the control data associated with the user selectable portion comprises instructions for the receiving mobile terminal, said instructions causing the receiving mobile terminal to transmit a response store-and-forward message (M2) upon selection of the user selectable portion by the recipient, said response store-and-forward message being used to update tracking data for the previously transmitted message, said response store-and-forward message being one of SMS or WAP message, and

wherein the tracking data is updated on the basis of data identifying the receiving mobile terminal, said data identifying the receiving mobile terminal having been derived from the response store-and-forward message (M2)."

Independent claim 1 according to the first auxiliary request reads as follows:

"1. A method of selecting a recipient of a store-and-forward message on the basis of data identifying access to previously transmitted messages, said message being an SMS message, and comprising content data (501, 503) for display within a display area of a receiving mobile terminal and control data comprising data indicative of a user selectable portion within the display area, the method comprising:

receiving content data (C) having one of a plurality of different types for use in creating a said message;

accessing (S6.3, S6.9) tracking data corresponding to a previously transmitted message (M1) containing content data of a given type, the tracking data being indicative of selection of a said user selectable portion upon display thereof at a said receiving mobile terminal; and

selecting a recipient of the message on the basis of the received content data and the tracking data,

wherein the control data associated with the user selectable portion comprises instructions for the receiving mobile terminal, said instructions causing a software application on the receiving mobile terminal to transmit a response store-and-forward message (M2) upon selection of the user selectable portion by the recipient, said response store-and-forward message being used to update tracking data for the previously transmitted message, said response store-and-forward message is an SMS message,

wherein said instructions cause the software application to access said previously transmitted message in order to retrieve data identifying said content data, and thereafter generating said response store-and-forward message comprising said retrieved data, and

wherein the tracking data is updated on the basis of data identifying the receiving mobile terminal, said data identifying the receiving mobile terminal having been derived from the response store-and-forward message (M2)."

Independent claim 1 according to the second auxiliary request reads as follows:

"1. A method of selecting a recipient of a store-and-forward message on the basis of data identifying access to previously transmitted messages, said message being one of an SMS, MMS or WAP message, and comprising content data (501, 503) for display within a display area of a receiving mobile terminal and control data comprising data indicative of a user selectable portion within the display area, the method comprising:

receiving content data (C) having one of a plurality of different types for use in creating a said message;

identifying (S6.1) attributes of the received content data (C);

querying (S6.3, S6.5) a database for previously transmitted messages having content with one or more attributes which match the identified attributes of the received content data;

generating (S6.7) a list of content identifiers corresponding to said previously transmitted messages having content with one or more attributes which match the identified attributes of the received content data, said list being ranked in accordance with the correlation between the attributes of the content in said previously transmitted messages and the identified attributes of the received content data;

accessing (S6.9) tracking data corresponding to the previously transmitted messages (M1) in said list containing content data of a given type, the tracking data being indicative of selection of a said user selectable portion upon display thereof at a said receiving mobile terminal; and

selecting a recipient of the message on the basis of the received content data and the tracking data,

wherein the control data associated with the user selectable portion comprises instructions for the receiving mobile terminal, said instructions causing the receiving mobile terminal to transmit a response message (M2) upon selection of the user selectable portion by the recipient, said response message being used to update tracking data for the previously transmitted message, and

wherein the tracking data is updated on the basis of data identifying the receiving mobile terminal, said data identifying the receiving mobile terminal having been derived from the response message (M2)."

VIII. Oral proceedings were held on 12 December 2014. After due consideration of the appellant's written arguments the chair announced the decision.

Reasons for the Decision

1. Admissibility

The appeal complies with Articles 106 to 108 EPC (see Facts and Submissions, point II above). It is therefore admissible.

2. Non-attendance at oral proceedings

By letter dated 5 December 2014 the board was informed that the appellant would not be attending the oral proceedings. The board nonetheless considered it expedient to maintain the date set for oral proceedings. Nobody attended on behalf of the appellant.

Article 15(3) RPBA stipulates that the board is not obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned who may then be treated as relying only on its written case.

Hence, the board was in a position to announce a decision at the end of the oral proceedings.

Main request

3. Article 123(2) EPC

3.1 In the board's judgement, no antecedent basis is found in the application as filed for the feature "response store-and-forward message being one of SMS or WAP message" of claim 1.

3.2 While a direct and unambiguous disclosure is found that the messages M1 sent to a user can be store-and-forward messages such as SMS, MMS and WAP (see e.g. page 11, lines 31 and 32, or page 12, line 9 of the application), no such explicit disclosure is found for the response messages M2. Whenever it is referred to store-and-forward messages being one of SMS or WAP message, no direct reference to messages M2 is found.

None of the passages referred to by the appellant (see page 2, section "Amendments" of the statement setting out the grounds of appeal; page 2 of the letter dated 12 November 2014) provides for a direct and unambiguous disclosure for the feature objected to above as required under Article 123(2) EPC. In particular, the passage on page 7, lines 9 to 12 of the description as filed and Figure 1, which were referred to, disclose a system, i.e. an arrangement with network components, "suitable for delivery of WAP messages". It does not directly and unambiguously disclose what kind of messages are used for the response message M2 as claimed according to claim 1. Claim 1 being a method type claim goes beyond merely being suitable for delivery of WAP or SMS messages. The mere possibility of sending WAP or SMS messages for response messages M2 is not considered to be a sufficient antecedent basis for a corresponding method step as claimed in method claim 1.

In particular, since this feature according to the appellant's arguments is to be considered as establishing an inventive step over the prior art on record, such a selection among several possibilities of a general disclosure needs to be clearly disclosed. However, the board does not find such a direct and unambiguous disclosure for the response message M2 being advantageous if being of a WAP or SMS type.

3.3 Claim 1 therefore does not fulfil the requirements of Article 123(2) EPC.

First auxiliary request

4. Claim 1 of this request is limited to the use of SMS messages and further comprises the feature of a software application wherein instructions cause the software application to access the previously transmitted message M1 in order to retrieve data identifying the content data, and thereafter generating the response store-and-forward message M2 comprising said retrieved data.

4.1 Article 123(2) EPC

Claim 1 according to this request still comprises the feature the "response store-and-forward message is an SMS message". The objection raised in point 3 above therefore applies, mutatis mutandis, to independent claim 1 of this request as far as the response message M2 being an SMS message is concerned.

4.2 Claim 1 of this request therefore does not fulfil the requirements of Article 123(2) EPC either.

Second auxiliary request

5. Admissibility of the request

5.1 This request was filed in reaction to the board's objections raised in the annex to the summons for oral proceedings in order to overcome those objections. While the decision under appeal was already based on objections under Articles 123(2) and 56 EPC, it has to be noted that, regarding its objection for lack of an inventive step, the board did not concur with the decision under appeal that D1 discloses response messages in form of an email (see point 5.3 in the annex to the summons and point 2.5 on page 5 of the decision under appeal). Thus, the objection based on Article 56 EPC raised by the board was a different line of argumentation to which the appellant could react for the first time in response to the annex to the summons for oral proceedings.

5.2 Although it was late-filed, the board therefore admits this request into the proceedings in accordance with Article 13(1) RPBA.

6. Article 123(2) EPC

6.1 Claims 1 and 14 according to this request no longer comprise the feature that the response store-and-forward message is a WAP or an SMS message. The objection raised in point 3 above is therefore overcome by the amendments to independent claims 1 and 14 of this request as far as the response message M2 is concerned.

6.2 The added features concerning the specification of the mechanism for categorising by attributes are considered to be originally disclosed in Figure 6 and on page 13, lines 1 to 22 as filed (see reference to steps S6.1, S6.3, S6.5, S6.7 and S6.9).

6.3 Claims 1 and 14 of this request therefore fulfil the requirements of Article 123(2) EPC.

7. Remittal

7.1 According to Article 111(1) EPC the board may exercise any power within the competence of the examining division (which was responsible for the decision under appeal) or remit the case to that department for further prosecution. It is thus at the board's discretion whether it examines and decides the case or whether it remits the case to the first instance.

7.2 Since the features added by amendment were not claimed before, but were taken from the description of the present application, the appellant has created a fresh case in the appeal proceedings. The board cannot know whether the features added by amendment were covered by the search for prior art carried out in the first instance proceedings. In the light of the uncertainty whether the prior art on file is complete for assessing novelty and inventive step, the board therefore considers that in the present case remittal of the case to the department of first instance (Article 111(1) EPC) on the basis of the second auxiliary request is the more appropriate course of action.

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 for further prosecution on the basis of claims 1-27 submitted as Second Auxiliary Request with letter dated 12 November 2014.