T 1221/12 (Sharing Playlists / APPLE) of 7.3.2017

Summary of Facts and Submissions

I. This is an appeal against the Examining Division's decision to refuse European patent application 05739940 for lack of inventive step in consideration of common general knowledge and of document D1 (WO 2004/061608).

II. In the statement setting out its grounds of appeal, the appellant made the following requests:

- that the Examining Division's decision be set aside;

- that a patent be granted on the basis of the main, the first auxiliary, or the second auxiliary request; all of which were filed with the statement setting out the grounds of appeal, the main request being identical to that underlying the impugned decision;

- that oral proceedings be held, if the Board were minded to refuse any of the foregoing requests.

III. The Board issued a summons to oral proceedings and set out its provisional view of the case in an accompanying communication.

IV. The appellant withdrew its request for oral proceedings, and requested that the Board reach a decision on the basis of the submissions made thus far.

V. Claim 1 according to the main request reads as follows.

A method of sharing a playlist via an online store provided by a media commerce server (102), comprising:

receiving (302) the playlist over a data network from a client computer (104) of a user, the playlist identifying at least one of one or more tracks and one or more albums;

receiving a request to publish the playlist over the data network from the client computer of the user;

filtering (306) the playlist to remove those of the one or more tracks or the one or more albums from the playlist that are not available from the online store; and

subsequently publishing (308) the playlist such that the playlist is viewable by one or more individuals via the online store, wherein only those items that can be purchased from the online store are present in the published playlist.

VI. Claim 1 according to the first auxiliary request differs in that the playlist identifying at least one of one or more tracks and one or more albums is replaced by the playlist identifying a plurality of tracks and/or a plurality of albums where the emphasis shows the parts that change.

VII. The second auxiliary request replaces the same clause by:

the playlist identifying a plurality of tracks and/or a plurality of albums in an order and further adds that publication is in the order.

The appellant argued, in the statement setting out the grounds of appeal, that the Examining Division had mistakenly regarded both the playlist and the online store as non-technical entities. They were in fact both technical and had to be taken into account in assessing inventive step. A playlist was a list of "tracks" or "albums". That it represented music was non-technical, but the list was technical in so far as it was a set of interrelated data items. The uploading of a playlist to the server allowed various analyses to be done.

The online store involved technical considerations at least in its ability to store data and make it available.

The invention, when restricted to its technical content, consisted of the reception (over a network, from a client computer) of a set of interrelated data items; the reception (over a network, from a client computer) of a request to publish the set; filtering the set to remove items not available in a database; publishing the filtered set.

Those steps were not part of the common general knowledge at the priority date.

D1 failed to disclose the steps of filtering and of publishing the result. Filtering had the technical effect of saving resources at the online database. By removing unavailable items, the server would need to carry out fewer searches. Without filtering, a user might select an item that was not available, but the server would have to search the entire database to establish that.

The order of items in a playlist, as in the second auxiliary request, was a further technical feature that had to be taken into account when assessing inventive step.

Reasons for the Decision

Background

1. The invention concerns an online music store and the sharing of playlists. A playlist is simply a list of songs or of collections of songs. A user can publish a list for other users to see. The problem is that another user might want to buy one or more of the songs or collections on a list but cannot do so, because the store does not sell it.

2. The solution to this problem is to remove those song and collections that are not available, before the playlist is published.

Main request, claim 1, inventive step

3. It is common ground that the claimed invention differs from D1 only in that the playlist is published and that the publication is in filtered form. It is, therefore, necessary to consider what, if anything, this contributes to inventive step.

4. Publication of a list is not a technical matter. The fact that items on it are interrelated does not make it so, and that is particularly clear when one considers that they may be interrelated only by virtue of their appearing together in the list. A random collection of English words does not acquire technical character by being collected.

5. Nor is it a technical matter that users might try to buy an item which is not for sale. Nor is the solution of removing the identifiers of such items before publication.

6. These non-technical differences therefore form part of the requirements that would be given to the skilled person. Since there are no further technical differences, the problem to be solved boils down to implementing the publication of, and removal of items from, the playlist

7. There is no specification of how the computer removes identifiers other than to call the process "filtering". It must determine which tracks or collections are available and which are not. How it does that might well involve non-obvious technical considerations in the way the database is consulted, for example. The same applies to the way in which the computer goes about removing identifiers.

8. The claimed invention, however, is not concerned with those matters. According to the claim, it is sufficient that the correct items are removed. It does not matter how. The possible technical considerations are, therefore, of no help to the appellant. For the same reason, the appellant's argument that there is a saving in database searches is of no more avail.

9. In the Board's judgment, therefore, the subject matter of claim 1 does not involve an inventive step (Article 56 EPC).

The auxiliary requests

10. The restriction to playlists with more than one item, in the first auxiliary request, does not affect the reasoning given for the main request.

11. The second auxiliary requests adds the restriction that playlists have an order which is maintained on publication. This is a further non-technical requirement, and cannot affect the outcome in respect of inventive step.

12. The Board's judgment, therefore, is that the subject matter of claim 1 according to neither auxiliary request involves an inventive step.

Order

For these reasons it is decided that:

The appeal is dismissed.