T 2008/12 (Providing a service/NATIONAL UNIVERSITY OF SINGAPORE) of 10.1.2018

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 04736295.9, filed as international application PCT/SG2004/000170 and published as WO 2004/109576 A1.

II. The Examining Division decided to refuse the application for lack of inventive step (Articles 52(1) and 56 EPC) of the subject-matter of independent claims 1, 12, and 23 of the sole request over a computer network as exemplified in the following documents:

D1: WO 02/102016 A2, published on 19 December 2002;

D2: GB 2 338 862 A, published on 29 December 1999.

The Examining Division considered most of the claimed features to be related to a non-technical scheme for providing a service, which would be given as requirements specification to a data-processing expert as person skilled in the art. The implementation of those requirements on a computer network, known by way of example from documents D1 and D2, was regarded as straightforward to the skilled person using conventional programming skills.

The Examining Division also decided that none of the dependent claims defined inventive subject-matter.

III. With the statement of grounds of appeal, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the amended claims of the sole substantive request filed with the grounds of appeal. With a further letter of 11 April 2017, the appellant's representative requested oral proceedings by video conference with respect to several applications including the present one.

IV. In a communication under Article 15(1) RPBA accompanying a summons to oral proceedings to be held as a normal hearing, the Board inter alia expressed its provisional opinion that the subject-matter of claim 1 of the sole request might comprise added subject-matter (Article 123(2) EPC), lacked clarity (Article 84 EPC) and, in the interpretation of the Board, lacked inventive step (Articles 52(1) and 56 EPC).

V. With its letter dated 18 December 2017, the appellant informed the Board that it would not be represented during the oral proceedings, but did not reply in substance to the Board's objections.

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

"A method of providing a communication service, comprising the steps of:

(300, 302) performing a communication to one of a plurality of server electronic addresses (Pj) of a server from a first electronic address (Mi);

(304) identifying, at the server electronic address, the first electronic address from which the communication is made; and

(306) identifying a service definition from a plurality of service definitions depending on a combination of the server electronic address and the first electronic address;

wherein the service definition comprises one or more second electronic addresses (Qj) for execution of the service; and

providing at least a content of the communication to the one or more second electronic addresses based on said service definition (308, 310); and

wherein the communication comprises a voice call, the service definition further comprises a third electronic address (Rj), and the first, second and third electronic addresses comprise respective phone numbers; and

the method comprises the steps of:

the server making a phone call to the second electronic address (Qj) from the third electronic address (Rj) and connecting the first electronic address (Mi) to the second electronic address (Qj) via the server electronic address (Pj) and the third electronic address (Rj) such that at least voice content of the communication is provided to the second electronic address (Qj)."

The further claims are not relevant to the present decision.

VII. Oral proceedings were held as scheduled, in the absence of the appellant. At the end of the oral proceedings, the chairman pronounced the Board's decision.

VIII. 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.

Request for oral proceedings by video conference

2. Since the "general framework" that would be required as a prerequisite for holding oral proceedings by video conference before a board of appeal, as set out in decision T 1266/07 of 26 November 2009, reasons 1.2, is still not in place, the Board refused the appellant's request to hold the oral proceedings by video conference.

The invention

3. The application relates to a method of providing a service over a communication network such as a telecommunication network (see the international publication, for example page 4, summary, second paragraph, and page 11, penultimate paragraph). While the application discloses a variety of services in the network, the claimed invention has been amended at the appeal stage to a service for making anonymous phone calls (see section X of the description starting on page 46).

At the start of the method, a user of a phone with phone number Mi registers a phone number Qj at a phone number (electronic address) Pj of a server. When the user then calls Pj, the server identifies the phone number Mi of the caller, and determines the desired service on the basis of the phone numbers Mi and Pj. When the server has determined that an anonymous call is desired, the server calls Qj from a number Rj (that may be private) and connects this call to the call from Mi to Pj so that a voice conversation between Mi and Qj can take place. Since the called party receives the call from Rj (and not from Mi), the phone number Mi (the identity of the caller) is not revealed to the called party.

Sole request

4. Claim 1 of the sole request relates to a "method of providing a communication service", which comprises the following features itemised by the Board:

(a) performing a communication to one of a plurality of server electronic addresses (Pj) of a server from a first electronic address (Mi);

(b) identifying, at the server electronic address, the first electronic address from which the communication is made; and

(c) identifying a service definition from a plurality of service definitions depending on a combination of the server electronic address and the first electronic address;

(d) wherein the service definition comprises one or more second electronic addresses (Qj) for execution of the service; and

(e) providing at least a content of the communication to the one or more second electronic addresses based on said service definition; and

(f) wherein the communication comprises a voice call, the service definition further comprises a third electronic address (Rj), and the first, second and third electronic addresses comprise respective phone numbers; and

(g) the server making a phone call to the second electronic address (Qj) from the third electronic address (Rj) and connecting the first electronic address (Mi) to the second electronic address (Qj) via the server electronic address (Pj) and the third electronic address (Rj) such that at least voice content of the communication is provided to the second electronic address (Qj).

Added subject-matter - Article 123(2) EPC

5. With the statement of grounds of appeal, the appellant amended independent claim 1 as refused by the Examining Division in the contested decision by adding the features (f) and (g), which correspond to the features of refused dependent claim 24. This dependent claim had itself been introduced into the proceedings before the Examining Division with reference to the originally filed description, page 50, lines 4 to 21, as basis (see the appellant's letter dated 13 July 2009, page 3, paragraph 5).

In the statement of grounds of appeal (see page 2, last paragraph, to page 3, first paragraph), the appellant argued that the subject-matter of present claim 1 provided the technical advantage of allowing a calling party to anonymously call the called party and referred to the exemplary embodiment of section X of the description (see international publication, pages 46 to 48). In the appellant's view, a further technical effect of the claimed subject-matter was to enhance caller security, since the caller's phone number could be hidden from the callee.

5.1 The embodiment described in section X of the description describes a service of making anonymous phone calls. The electronic addresses of a user and a service provider are phone numbers and the service allows the user to make an anonymous call from his phone number Mi to another user's phone number Qj. At the start of the disclosed method, the user registers the phone number Qj at the service provider's phone number Pj for this service. As a consequence of this registration, when the user with phone number Mi calls the service provider using phone number Pj, the service provider calls Qj from another phone number Rj and connects the two calls so that a conversation between Mi and Qj can take place. Due to the registration, the phone numbers Pj and Rj are paired, i.e. associated at the service provider. Later, when the user calls the phone number Pj from his phone number Mj (see Figure 12, step 151), the service provider calls the phone number Qj from the registered phone number Rj (see Figure 12, step 153). The service provider then connects the call from Mi to Pj with the call from Rj to Qj (see Figure 12, step 155). Finally, the called user with phone number Qj receives a call from Rj (see Figure 12, step 157).

It follows that this embodiment shows features (f) and (g) of claim 1 in isolation. In the Board's understanding, features (d), (e) and (f) of claim 1 define that a content of the communication made from the phone number Mi is provided to one or more second phone numbers Qj. Hence, a telephone conference between phone number Mi and more than one phone number Qj is specifically claimed as one alternative in amended claim 1. However, the embodiment of section X does not disclose that content of the phone call from Mi is communicated to more than one phone number (second electronic addresses) as specified in features (d), (e) and (f) of present claim 1.

5.2 In the proceedings before the Examining Division, the appellant referred to page 50, lines 4 to 21, as the basis for features (f) and (g). This passage describes an embodiment of a service of emergency calling disclosed in section XV of the description on pages 49 and 50. This embodiment allows a user with phone number Mi to make a call to another user with phone number Qj, by registering a second phone number Rj at the service provider, which the service provider can then use to call the user with phone number Qj. The purpose of this embodiment is that the called user can determine from the use of the specific phone number Rj that the user with phone number Mi makes an "emergency call" to him, for example if there is an accident, as opposed to a normal phone call received from Mi. As the called user knows that phone number Rj is associated with the user of phone number Mi, this embodiment cannot support the effect of anonymity claimed in the statement of grounds of appeal. However, also in this embodiment the content of the phone call from Mi is provided only to a single called phone number Qj that was registered at the service provider for phone number Pj. Hence, at least feature (e) of claim 1 is not disclosed in this embodiment. Hence, the embodiment disclosed on page 50, lines 4 to 21, cannot be a basis for features (d) and (e) in combination with features (f) and (g) of claim 1.

5.3 The Board has attempted to identify further passages of the description which relate to a service for anonymous calling in order to examine whether any such passage could be a basis for the combination of features of present claim 1. The only further passage identified is the last paragraph on page 25. It discloses the following:

"The next service described is Anonymous calling. Here the service S can be described as 'anonymous calling to target phone numbers'. The user first registers one or more phone numbers for this service at phone numbers P1, P2, and so on. When he calls Pj, the service provider dials out the phone numbers registered by the user at Pj and completes the voice call. For conference calling, the system may also allow the user option to select from the list of registered phone numbers and add more phone numbers."

While this passage discloses a service for anonymously calling one or more phone numbers, it does at least not disclose features (f) and (g) as it does not disclose that the service definition comprises a third electronic address. The skilled person could also not have directly and unambiguously derived this information, as there is no technical need to store a specific phone number Rj for anonymous calling. For example, the service provider could have determined each time the service is invoked a different temporary phone number. It follows that this passage cannot be a basis for the combination of features (d), (e), (f) and (g) of present claim 1.

5.4 The application discloses many different embodiments and implementation variations of the general scheme of providing a service over a computer or telecommunication network. At least some of these variations are claimed in the originally filed claims. Hence, the Board has also examined whether a disclosed combination of features specified in original method claims 1 to 11 could be considered as a valid basis for present claim 1. The Board considers that the combination of original method claims 1, 5, 7, and 11 comprises several features of present claim 1. However, even this combination of claims cannot be a valid basis for present claim 1 as it fails to disclose that the third electronic address Rj comprises a phone number (see feature (f) of present claim 1) and that at least voice content of the communication from Mi is provided to more than one second electronic address Qj (see features (a) and (e) of present claim 1). Original claim 5 discloses that the service definition can comprise making a voice call to the one or more second electronic addresses, but this service definition differs from the service definition according to present claim 1 (see feature (d)).

5.5 The appellant did not reply in substance to the Board's objection under Article 123(2) EPC raised for the first time in the annex to the summons. In particular, the appellant did not provide the Board with a basis for the specific combination of features (d), (e), (f) and (g) of claim 1.

5.6 As the Board has not been able to identify any basis for the specific combination of features of present claim 1, it follows that claim 1 of the sole request does not meet the requirements of Article 123(2) EPC.

Conclusion

6. As the appellant's sole request cannot form the basis for the grant of a patent, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.