T 1308/13 (Customised shared environment/DISNEY) of 17.12.2019

Summary of Facts and Submissions

I. This is an appeal by the applicant (appellant) against the decision of the examining division to refuse the European patent application No. 10000283.1 for lack of inventive step (Article 56 EPC).

II. In the decision under appeal, the examining division found that the subject matter of claim 1 as filed on 14 September 2012 did not solve any technical problem over a "standard Windows network", and, lacked, for that reason, an inventive step.

III. The appellant requested, in the statement of grounds of appeal, that the decision of the examining division to refuse the application be set aside and that a patent be granted on the basis of "claims 1-15 as filed on 12 August 2011 and as enclosed". The appellant moreover requested oral proceedings if the Board would not be able to grant a patent in the written procedure.

IV. In a communication accompanying the summons to oral proceedings pursuant to Article 15(1) RPBA, the Board pointed out an ambiguity in appellant's request: The set of claims filed with the statement of grounds of appeal was not the same as the set of claims filed with the letter dated 12 August 2011; it corresponded to the claims of 14 September 2012 that were rejected in the decision under appeal.

The Board stated that it would proceed with the examination of the appeal on the assumption that the claims filed with the statement of grounds of appeal defined the matter for which protection was sought. The appellant did not refute this. Thus, the Board takes the appellant's request to be that the decision to refuse the application be set aside and that a patent be granted on the basis of the set of claims filed with the statement of grounds of appeal.

V. Claim 1 as filed with the statement of grounds of appeal reads:

A system for providing customized experiences to a plurality of client stations in a shared environment, the system comprising:

an online client application for execution by a client processor of a first client station of the plurality of client stations and for rendering the shared environment on a client display of the first client station;

an accounts database having data relating to a plurality of clients; and

an online server hosting the shared environment for access by the plurality of client stations, and the online server having a server processor configured to:

retrieve client data from the accounts database relating to a first client of the plurality of clients;

determine client preferences of the first client based on the client data;

create a customized environment from the shared environment according to the client preferences;

send the customized environment to the online client application executing on the first client station of the first client for rendering on the client display;

receive interaction data from the online client application of the first client station, the interaction data having interactions specific to a customizable element of the customized environment;

translate the interaction data separately for each of the plurality of client stations based on a particular customization of the customizable element by each of the other of the plurality of clients; and

send separately translated interaction data to each corresponding of the other of the plurality of client stations for rendering on the client display.

VI. In the statement of grounds of appeal, the appellant argued as follows:

The invention solved the technical problem of how to reconcile shared network environments with users' desire to have personal customisation.

The use of a piece of information in a technical system, or its usability for that purpose, could confer a technical character on the information itself, in that it reflected the properties of the technical system. When used in or processed by the technical system, such information could be part of a technical solution to a technical problem and thus form the basis of a technical contribution of the invention to the prior art (T 1177/97 - Translating natural languages/SYSTRAN). The customised elements and the translated interaction data in claim 1 were used in a shared social environment for the purpose of giving a customised experience for each individual using customised individual personalisation. Therefore, those features had technical character.

In decision T 769/92 - General purpose management system/SOHEI, the Board concluded that the fact that technical considerations were required in order to arrive at the invention was considered to lend sufficient technical character to the invention. Since the present invention involved technical considerations of a shared social environment, it had technical character.

VII. The Board's communication under Article 15(1) RPBA included a preliminary opinion on inventive step. The Board tended to agree with the examining division that the translation of "interaction data" in claim 1 was not technical and did not contribute to inventive step. Thus, the subject-matter of claim 1 would have been obvious starting from a standard Windows environment, or a standard shared environment as described in the application.

VIII. The appellant did not submit any further arguments in reply to the Board's communication. Instead, it informed the Board that it would not attend the oral proceedings.

IX. The Board informed the appellant that it interpreted the appellant's statement of intention not to attend the oral proceedings as a withdrawal of the request for oral proceedings, and that the oral proceedings were cancelled as a result.

Reasons for the Decision

1. Background

1.1 The invention concerns an online shared environment, for example a virtual world or a computer game. A plurality of users interact in this environment, for example in a chat.

1.2 Figure 2 shows an example of a shared environment (217). There is a room with a flower painting, a clock, and an animal (a cat). Users A, B, and C, are present in the room and can chat with each other.

1.3 The invention allows the users to customise the shared environment (257a, b and c) according to their individual preferences (223a, b, and c). User A likes cats and wants to see a cat. User B, on the other hand, prefers dogs, and user C wants to see a big fish in an aquarium. A problem arises when users A, B, and C interact with each other in relation to a customised element. For example, user B might write to user A "Isn't that a cute dog?!". However, user A who sees a cat will not know what user B is talking about.

1.4 The invention solves this problem by translating "interaction data" (the chat message in the example above) so that it fits with each user's customised environment. In other words, the chat message "Isn't that a cute dog?!" from user B to user A is translated into "Isn't that a cute cat?!", because user A's customised environment comprises a cat. This is illustrated in Figure 3.

2. Inventive step (Article 56 EPC)

2.1 The Board considers the background art described in the published application, on pages 1 and 2, to be a good starting point for assessing inventive step.

According to the published application, networked shared environments were known at the priority date. Those shared environments allowed users to interact with each other, so there was interaction data in some form. Furthermore, the third paragraph on page 2 (lines 11 to 20) suggests that networked applications at the priority date allowed a certain amount of customisation. However, it was not possible to customise the elements of the shared environment itself.

2.2 Thus, the invention in claim 1 differs from the known shared environment by the customisation of elements of the shared environment, and the translation of interaction data relating to a customised element of the shared environment.

2.3 The appellant argued that the invention solved the technical problem of reconciling customised individual personalisation with a shared social environment. This is the same problem as the one that is discussed in the application from page 2, line 11 to page 3, line 2.

2.4 The Board does not share the appellant's view that this is a technical problem. Customising a shared environment according to the users' preferences, and adapting the interaction between different users within the shared environment so as to fit with each user's customised environment, is a matter of presentation of information or playing a game, i.e. it falls within the categories of excluded matter in Article 52(2) EPC.

2.5 Neither decision T 1177/97 nor T 769/92 helps the appellant's case. According to T 1177/97, a piece of information that is used in a technical system may have technical character if it solves a technical problem in that system. However, the Board does not see that any technical problem is solved by the distinguishing features of the invention in claim 1. Furthermore, the Board does not see that the invention in claim 1 involves any technical considerations other than those relating to the computer implementation.

2.6 According to T 641/00 - Two identities/COMVIK, non-technical features, i.e. features that fall within the non-exhaustive categories of excluded matter in Article 52(2) EPC, do not contribute to inventive step. Such features are instead considered to be part of the framework of the technical problem to be solved, which is often a set of requirements to be implemented. The Board considers that the invention in claim 1 solves the problem of implementing the customisation and the translation of interaction data in the known shared environment. In the Board's view, the implementation would have been obvious to the skilled person using routine programming.

2.7 For these reasons, the Board judges that the subject-matter of claim 1 lacks an inventive step (Article 56 EPC).

Order

For these reasons it is decided that:

The appeal is dismissed.