T 1386/13 (Metadata broker/NOKIA) of 13.7.2017

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 07825701.1, with international publication number WO 2008/068566 A.

The refusal was based on the ground inter alia that the subject-matter of claim 1 of the main request was not new with respect to the disclosure of document D1 (US 2003/0172090 A1), and that the subject-matter of claim 1 of each of a first and a second auxiliary request did not involve an inventive step having regard to the disclosure of D1 and taking into account common general knowledge.

II. The appellant filed an appeal against the above decision. In 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 claims of a main request or one of two auxiliary requests, all requests as filed with the statement of grounds of appeal. The appellant also conditionally requested oral proceedings (cf. Article 116 EPC).

III. In the statement of grounds of appeal, the appellant also requested "reimbursement of the Appeal Fee under rule 103 EPC". No further reference to this request was made in the statement of grounds.

IV. In a communication accompanying a summons to oral proceedings, the board gave a preliminary view inter alia that the subject-matter of claim 1 was not new having regard to the disclosure of D1, and that the subject-matter of claim 1 respectively of the first and second auxiliary requests did not involve an inventive step.

V. With a letter dated 11 July 2017, the appellant informed the board that it would not be attending the oral proceedings. No substantive comments were made in response to the objections set out in the board's communication.

VI. Oral proceedings were held on 13 July 2017 in the absence of the appellant. On the basis of the written submissions, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 17 of the main request or, in the alternative, on the basis of the claims of either the first or the second auxiliary request, all requests as filed with the statement of grounds of appeal.

At the end of the oral proceedings, the chairman announced the board's decision.

VII. Claim 1 of the main request reads as follows:

"An apparatus comprising:

at least one processor;

and at least one memory including computer readable instructions:

the at least one memory and the computer readable instructions configured to, with the at least one processor, cause the apparatus to perform at least the following:

store metadata associated with the apparatus;

receive an authenticated metadata request from a service provider [sic]

verify an authenticity of the metadata request from the service provider;

determine whether the service provider is permitted access to selected metadata in accordance with a selected service;

obtain the selected metadata; and

provide the selected metadata for the service provider."

VIII. Claim 1 of the first auxiliary request is the same as claim 1 of the main request except that the wording "comprising an electronic signature of an authorizing party" is inserted following the wording "receive an authenticated metadata request from a service provider".

IX. Claim 1 of the second auxiliary request is the same as claim 1 of the first auxiliary request except that the wording "wherein the metadata comprises data relating to actions corresponding to services provided by service providers" is inserted following the wording "store metadata associated with the apparatus".

Reasons for the Decision

1. Main request - claim 1 - novelty

1.1 The present application is concerned with an apparatus, e.g. a mobile phone, for providing "metadata" on receiving an authorised request. In accordance with the description, cf. paragraph [03], "there is a need to collect metadata that is related to tasks and actions corresponding to services provided by service providers". Examples of tasks and actions include "surfing the Web, making payments, downloading media and applications, and accessing content for entertainment" (cf. the description, paragraph [02]).

1.2 The closest prior art, in agreement with the examining division, is considered by the board to be represented by document D1. D1 discloses various embodiments concerned with a service provider accessing "private data" of a user stored in an "Identity Client" which may be integrated to the [user] terminal (cf. paragraph [0182] ff.). Private data here is considered to be metadata within the meaning of claim 1 since it is additional data related to service provision (e.g. names and addresses, credit card numbers, cf. D1, page 5, left-hand col., lines 23-27), i.e. tasks and actions carried out by the service provider (cf. the "Use Case Scenarios" described in paragraph [0206] ff.).

1.3 The board considers the most relevant embodiment of D1 to be that entitled "Anonymous Access to a Personalizing Service" (cf. paragraph [0197] ff.).

With regard to this embodiment, D1 discloses (using the wording of claim 1) an apparatus (cf. Fig. 6) comprising:

at least one processor ("MCU");

and at least one memory including computer readable instructions (implicit):

the at least one memory and the computer readable instructions configured to, with the at least one processor, cause the apparatus to perform at least the following:

store metadata associated with the apparatus ("PrivateData"; cf. page 13, left-hand col., line 4, and Fig. 3);

receive an authenticated metadata request from a service provider (cf. page 13, left-hand col., lines 2-5);

verify an authenticity of the metadata request from the service provider (cf. page 13, left-hand col., lines 6-8; the certificate provides for authenticity);

determine whether the service provider is permitted access to selected metadata in accordance with a selected service (cf. page 13, left-hand col., lines 9-19);

obtain the selected metadata (cf. page 13, left-hand col., lines 19-23); and

provide the selected metadata for the service provider (cf. page 13, left-hand col., lines 23-24).

Consequently, the subject-matter of claim 1 is not new (Articles 52(1) and 54 EPC).

1.4 The appellant has not commented on the board's objection of lack of novelty. The appellant's arguments set out in the statement of grounds concern a different embodiment of D1 based on "ticket"-based authorisation. In respect of this embodiment, the appellant disputes that any request for metadata is sent from a service provider. This argument is however not applicable to the embodiment referred to by the board, in which an authorised request for metadata (here, private data) is quite clearly sent by the service provider (cf. page 13, left-hand col., lines 2-5).

2. First auxiliary request - claim 1 - inventive step

2.1 Claim 1 of the first auxiliary request differs from claim 1 of the main request in that it is further defined that the authenticated metadata request comprises an electronic signature of an authorizing party.

2.2 However, this feature is obvious having regard to D1. D1 discloses that the request includes a "Service Certificate" or "Server Certificate" (cf. page 13, left-hand col., lines 6-8). As is well-known in the art (e.g. in SSL authentication), certificates typically include a digital signature of a trusted certification authority (CA) created using the CA's private key (cf. paragraphs [38] and [39] of the description of the present application). The presence of the signature of the CA in the certificate allows the authenticity of the entity sending the request to be verified. This feature therefore makes no contribution to inventive step.

2.3 The appellant argues that the amendment clarifies that a third authorising party is used to sign and authenticate a metadata request, i.e. the request is sent to the third party for signing. The board however points out that claim 1 does not require that the request be sent to a third authorising party for signing. Claim 1 merely requires that the request received by the claimed apparatus comprises a signature of an authorising party, which would be the case if a signature were included in the server certificate mentioned in D1 as explained above.

2.4 Consequently, the board concludes that the subject-matter of claim 1 of the first auxiliary request does not involve an inventive step (Articles 52(1) and 56 EPC).

3. Second auxiliary request - claim 1 - clarity, novelty and inventive step

3.1 Claim 1 of the second auxiliary request differs from claim 1 of the first request in that it further includes the feature that "metadata comprises data relating to actions corresponding to services provided by service providers".

3.2 The board firstly notes that this feature limits only how external entities, namely the service providers, intend to use the metadata, and does not limit the apparatus itself. Consequently, this feature is considered to be not relevant to inventive step.

3.3 That notwithstanding, the board cannot see that this feature distinguishes the subject-matter of claim 1 with respect to the disclosure of D1, since any metadata such as the private data requested by the service provider in D1 can relate to actions corresponding to services provided by the service provider, otherwise there would be no need to obtain the data, cf. e.g. the various "Use Case Scenarios" described in paragraph [0206] ff..

3.4 The appellant argues that D1 discloses the authorisation of the use of private data, such as mother tongue, age, gender or location, and states that there is no disclosure of any data that relates to actions corresponding to services provided by service providers. However, the board disagrees, since these items of private data in D1 indeed influence the actions of a server in providing a service, cf. e.g. the action of reserving concert tickets described in paragraph [0209].

3.5 The appellant also argues that this feature enables data relating to actions corresponding to services provided by service providers to be shared between a user device and a service provider in a secure and trusted environment. However, this is also the aim of D1, cf. paragraph [0194]. The appellant's arguments are therefore not convincing.

3.6 Consequently, the board concludes that the subject-matter of claim 1 of the second auxiliary request does not involve an inventive step (Articles 52(1) and 56 EPC).

4. Reimbursement of the appeal fee

In the statement of grounds of appeal, the appellant requests reimbursement of the appeal fee pursuant to Rule 103 EPC, but has not given any reasons. The board itself cannot see any reason to reimburse the appeal fee pursuant to Rule 103 EPC, e.g. due to a substantial procedural violation (cf. Rule 103(1)(a) EPC). The request for reimbursement of the appeal fee is therefore rejected.

5. Conclusion

As there is no allowable request, it follows that the appeal must be dismissed.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is rejected.