T 1093/12 (Database encryption/PROTEGRITY) of 10.5.2016

Summary of Facts and Submissions

I. The former applicant (appellant), Protegrity Research & Development [AB], appealed against the decision of the Examining Division to refuse the European patent application no. 01126387.8.

II. In the decision under appeal, the Examining Division held, inter alia, that the subject-matter of claim 1 filed with letter dated 2 February 2009 did not involve an inventive step, having regard to the following documents:

D1: US-A-6 122 640;

D2: John Russell: "Oracle8i Application Developer's Guide - Fundamentals", Release 2(8.1.6), December 1999;

D3: WO-A-97/49211.

In an "Obiter Dictum" annexed to the contested decision, the Examining Division also raised, inter alia, objections under Articles 83 and 84 EPC.

III. With the statement of grounds of appeal, the appellant filed new sets of claims according to a main request and auxiliary requests 1 and 2. It furthermore requested that:

- the decision under appeal be set aside in its entirety and that a patent be granted on the basis of the claims according to the main request,

- or, if this was not possible, on the basis of the auxiliary request 1 or 2.

IV. Registration of the transfer of ownership of the present application to Protegrity Corporation took effect on 31 July 2014.

V. With letter dated 9 September 2015, the appellant was summoned to oral proceedings to be held before the Board on 10 May 2016.

VI. In a communication dated 29 February 2016 pursuant to Article 15(1) RPBA, the Board expressed, inter alia, the following preliminary opinion:

- claim 1 according to the main request appeared to relate to subject-matter extending beyond the content of the application as originally filed (Article 123(2) EPC) and to give rise to objections under Article 84 EPC;

- as claims 1 of the auxiliary requests 1 and 2 were identical to claim 1 of the main request, the same objections applied.

VII. In reply to the Board's preliminary opinion, the appellant informed the Board with letter dated 4 May 2016 that it would not be attending the oral proceedings scheduled to take place on 10 May 2016.

VIII. On 10 May 2016, oral proceedings were held in the absence of the appellant. At the end of these proceedings, the Chairman pronounced the Board's decision.

IX. Claim 1 according to the appellant's main request reads as follows:

"A method for altering encrypting status in a relational database in a continuous process, comprising the steps of:

providing a table in said database, said table including a maintenance area and a base area, said base area including a first set of records;

copying said first set of records from said base area to said maintenance area, thereby creating, in said maintenance area, a second set of records;

altering the encryption status of said second set of records in said maintenance area in response to a user instruction to modify data in the first set of records in said base area; and

after said altering, copying said second set of records from said maintenance area to said base area to replace said first set of records, thereby creating in said base area a third set of records, and modifying data in said third set of records based on the user instruction to modify data."

Claims 2 to 9 of the main request are dependent on claim 1.

Auxiliary request 1 comprises claims 1 to 8 of the main request.

Auxiliary request 2 comprises claim 1 of the main request.

X. The appellant's arguments relevant to the Board's decision may be summarised as follows:

Claim 1 had been amended to reword the provision of the table in the database as a specific step of the method claimed. This was a clarifying amendment, with basis from page 5, line 25 to page 6, line 3 of the application as originally filed.

Reference to the records as comprising a "first set", a "second set" and a "third set" was of a purely clarifying nature, the basis for which would be self-evident to the reader on inspection of the application as originally filed, notwithstanding the absence of specific literal language corresponding to these terms. Distinguishing the terms in this way was consistent with the original disclosure.

The step of "directing" previously presented had been amended to "altering" for consistency with the head of claim 1. This had the added effect of addressing clarity issues raised in respect to the extent of the claim.

Reasons for the Decision

1. The appeal is admissible.

2. The present application is concerned with "a method for altering encryption status in a relational database in a continuous process reducing the need for taking the database offline" (page 1, first paragraph of the application as originally filed).

2.1 The method disclosed in the application is performed on a database which comprises at least one base area and a corresponding maintenance area. It consists essentially in copying records from the base area to the maintenance area, directing action commands intended for the base area to the maintenance area, altering the encryption status of the base area, copying data records from the maintenance area to the base area and redirecting action commands to the base area (application as filed, page 3, first paragraph).

Admission of the appellant's requests

3. In the communication dated 29 February 2016, the Board noted that the wording of claim 1 according to the main request and to the first and second auxiliary requests was substantially different from the wording of the method claim considered in the contested decision and of claim 1 as originally filed.

3.1 In the statement of grounds of appeal, the appellant had pointed out that the amendments made to claim 1 were meant to address clarity issues that had arisen in the first instance proceedings. In particular, the appellant considered that "the existence of such deficiencies, right through prosecution," seemed "to have obstructed the Examining Division in providing a proper assessment of the prospect for the grant of a patent" (statement of grounds of appeal, page 3, penultimate full paragraph).

3.2 Despite the fact that the Examining Division had addressed clarity issues and that clarifying amendments could have been presented in the first instance proceedings, the Board accepts that the new requests submitted with the statement of grounds of appeal can be regarded as a bona fide attempt on the part of the appellant's new representative to "move the application towards acceptance" (statement of grounds of appeal, page 4, lines 5 to 7).

3.3 In these circumstances, the Board finds it appropriate to admit the appellant's requests into the appeal proceedings (Article 12(4) RPBA).

Main request

4. Claim 1 according to the main request comprises the following steps itemised by the Board:

(a) providing a table in said database,

(i) said table including a maintenance area and a base area,

(ii) said base area including a first set of records;

(b) copying said first set of records from said base area to said maintenance area,

(i) thereby creating, in said maintenance area, a second set of records;

(c) altering the encryption status of said second set of records in said maintenance area in response to a user instruction to modify data in the first set of records in said base area; and

(d) after said altering, copying said second set of records from said maintenance area to said base area to replace said first set of records,

(i) thereby creating in said base area a third set of records, and

(e) modifying data in said third set of records based on the user instruction to modify data.

4.2 Claim 1 considered in the contested decision, after introducing the terms "base area" and "maintenance area" in its preamble, spells out the following steps:

- copying all records from said base area to said maintenance area,

- directing action of commands intended for said base area to said maintenance area;

- altering encryption status of said base area;

- copying all data records from said maintenance area to said base area, wherein all data records being copied from the maintenance area to the base are encrypted/decrypted in accordance with the altered encryption status of the base area;

- redirecting action of commands to said base area.

4.3 As a comparison with the first and second paragraphs of page 3 and with the paragraph bridging pages 3 and 4 of the description shows, the subject-matter of claim 1 on which the refusal was based corresponds essentially to the summary of the invention given in the application as originally filed.

4.4 Claim 1 now on file and the previous claim 1 present, inter alia, the following differences:

- in the present claim 1 not "all records" are copied from the base area to the maintenance area and from the maintenance area to the base area, but "a second set of records" is created in the maintenance area when a "first set of records" is copied from the base area to the maintenance area, and a "third set of records" is created in the base area when the "second set of records" is copied from the maintenance area to the base area;

- claim 1 on file does not include the step of "directing action of commands" or "redirecting action of commands";

- according to claim 1 on file, the encryption status of the second set of records in the maintenance area is modified in response to a user instruction to modify data in the first set.

4.5 Hence, contrary to claim 1 considered by the Examining Division, claim 1 on file no longer reflects a key aspect of the invention which consists in the "rerouting of the access" in order to keep the database online while the encryption settings in the database are altered (see lines 14 to 18 at page 3 of the original application).

5. As to the appellant's argument that the basis for referring to the data records as comprising "a first set", "a second set" and "a third set" would be self-evident to the reader, the Board considers that this amendment constitutes a considerable departure from the original description of the invention and that, far from clarifying the claimed subject-matter, it appears to introduce undisclosed features into the claim.

5.1 In fact, claim 1 as originally filed and claim 1 considered by the Examining Division do not identify different sets of records, but specify that "all records" are copied from the base area to the maintenance area and then back to the base area.

6. Furthermore, the Board fails to see a basis in the application for amending the step of "directing" to "altering" "for consistency with the beginning of the claim", as submitted by the appellant. In fact, "altering the encryption status of the base area" and "directing actions of command" (or "redirecting actions of command") are quite distinct steps of the invention as originally disclosed and previously claimed.

6.1 According to page 4, lines 4 to 6 of the application as originally filed "data elements [...] are encrypted as they are copied to, or from, the maintenance area". Similarly, the detailed embodiment of the invention on page 7, lines 16 to 20 specifies that when the step of activating encryption means is performed, "all data written to the base column 'password' will now be written in encrypted form".

6.2 For the sake of consistency with the cited passages of the description, the step of "altering the encryption status of said second set of records in said maintenance area" should relate to the fact that the set of records in the maintenance area is encrypted as a result of encryption performed while data elements are moved from the base area to the maintenance area. However, a combined reading of steps (b), (c) and (d) promotes a different understanding of the claimed method, according to which the encryption of data is performed on the data stored in the maintenance area, namely after copying the first set of records from the base area and prior to copying the second set of records from the maintenance area to the base area.

6.3 From the wording of claim 1, it is also unclear whether the modification of data referred to in step (c) relates to a modification of the encryption status of the first set of records or anticipates an unspecified modification to be performed on the third set of records in step (e).

6.4 In fact, modifying data records in the base area in the sense of altering their encryption status is not performed according to the original application as an independent step, but is the result of copying data with a modified encryption status from the maintenance area to the base area.

7. In summary, the Board finds that claim 1 according to the main request does not provide a clear definition of the matter for which protection is sought (Article 84 EPC) and covers subject-matter extending beyond the content of the application as originally filed (Article 123(2) EPC).

Auxiliary requests

8. As pointed out in the statement of grounds of appeal, the set of claims of the auxiliary request 1 comprises claims 1 to 8 of the main request and the auxiliary request 2 comprises only claim 1 of the main request.

8.1 As claims 1 of the auxiliary requests 1 and 2 are identical to claim 1 of the main request, the same objections under Articles 123(2) and 84 EPC apply.

9. For the above reasons, the Board comes to the conclusion that none of the appellant's requests can form a basis for the grant of a patent. Hence, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.