T 0416/19 () of 25.4.2023

Summary of Facts and Submissions

I. The appeal is against the examining division's decision to refuse European patent application No. 13 166 985.5, published as EP 2 627 080 A2.

II. In the decision under appeal, the following prior-art document was cited:

D1: GB 2 416 881 A

III. The decision under appeal was based on the grounds that the main request was not admitted into the proceedings under Rule 137(5) EPC and the subject-matter of claim 1 of the auxiliary request did not involve an inventive step within the meaning of Article 56 EPC.

IV. The applicant (appellant) filed notice of appeal. With the statement of grounds of appeal, the appellant filed claims according to a main request and an auxiliary request. According to the appellant, the claims of these requests were identical to the claims of the requests forming the basis for the impugned decision. It provided arguments to support its opinion that the main request should be admitted into the appeal proceedings and that the subject-matter of all claims involved an inventive step within the meaning of Article 56 EPC.

V. Summons to oral proceedings were issued. In a communication under Article 15(1) RPBA 2020, the board gave the following preliminary opinion.

(a) The decision of the examining division not to admit the main request under Rule 137(5) EPC was not justified.

(b) The subject-matter of claim 1 of the main request and the auxiliary request did not involve an inventive step within the meaning of Article 56 EPC.

VI. By letter dated 21 March 2023, the appellant filed amended claims of a main request and a first auxiliary request and stated that the previous main request and auxiliary request became the second and third auxiliary requests, respectively. It indicated a basis for the amendments in the application as filed and submitted that the new main request and the new first auxiliary request should be admitted into the proceedings because the amendments were motivated by the board's preliminary view set out under item 5.4 of the communication under Article 15(1) RPBA 2020. The appellant provided reasons to support its opinion that the subject-matter of claim 1 of the main request and the first auxiliary request involved an inventive step. For the second and third auxiliary requests, it referred to its statement of grounds of appeal.

VII. On 25 April 2023, the board held oral proceedings.

The appellant's final requests were that the decision under appeal be set aside and that a European patent be granted on the basis of the claims of the main request filed by letter dated 21 March 2023, or alternatively, on the basis of the claims of the first auxiliary request filed by letter dated 21 March 2023, or the second or third auxiliary requests filed with the statement of grounds of appeal as main request and auxiliary request.

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

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

"A method comprising:

providing a timeline profile indicating a temporal ordering for interleaving each one of a plurality of gating media segments with an associated one of protected segments of a media content;

if a user is a non-premium user:

rendering a presentation on a display by selectively providing access to the user to each one of the protected segments in response to the user accessing each of the plurality of gating media segments preceding its associated one of the protected segments according to the temporal ordering in the timeline profile, wherein the selectively providing includes providing at least one gating media segment associated with the plurality of protected segments based, at least in part, on a user profile information;

and

displaying a timeline on the display showing the temporal ordering of interleaving the plurality of gating media segments with the protected segments of the media content, wherein the timeline shows a linear scale to represent a temporal progression of the presentation being rendered on the display, and wherein an indicator is further shown moving the timeline toward the end of the presentation and indicating where within the temporal progression the presentation is currently being rendered;

if the user is a premium user:

providing access to the user to each one of the protected segments without requiring the user accessing each of the plurality of gating media segments preceding its associated one of the protected segments according to the temporal ordering in the timeline profile."

IX. Claim 1 of the first auxiliary request reads as follows (features added compared with claim 1 of the main request are underlined):

"A method comprising:

providing a timeline profile indicating a temporal ordering for interleaving each one of a plurality of gating media segments with an associated one of protected segments of a media content;

if a user is a non-premium user:

rendering a presentation on a display by selectively providing access to the user to each one of the protected segments in response to the user accessing each of the plurality of gating media segments preceding its associated one of the protected segments according to the temporal ordering in the timeline profile, wherein the selectively providing includes providing at least one gating media segment associated with the plurality of protected segments based, at least in part, on a user profile information;

and

displaying a timeline on the display showing the temporal ordering of interleaving the plurality of gating media segments with the protected segments of the media content, wherein the timeline shows a linear scale to represent a temporal progression of the presentation being rendered on the display, and wherein an indicator is further shown moving the timeline toward the end of the presentation and indicating where within the temporal progression the presentation is currently being rendered, and, in response to the indicator being clicked on and dragged along the timeline commencing playing media content at a point in a temporal position as indicated by the position of the moved indicator relative to the timeline;

if the user is a premium user:

providing access to the user to each one of the protected segments without requiring the user accessing each of the plurality of gating media segments preceding its associated one of the protected segments according to the temporal ordering in the timeline profile."

X. Claim 1 of the second auxiliary request reads as follows (features added compared with claim 1 of the main request are underlined and deleted features are [deleted: struck through]):

"A method comprising:

providing a timeline profile indicating a temporal ordering for interleaving each one of a plurality of gating media segments with an associated one of protected segments of a media content;

if a user is a non-premium user:

[deleted: rendering a presentation on a display by ]selectively providing access to the user to each one of the protected segments in response to the user accessing each of the plurality of gating media segments preceding its associated one of the protected segments according to the temporal ordering in the timeline profile, wherein the selectively providing includes providing at least one gating media segment associated with the plurality of protected segments based, at least in part, on a user profile information;

and

displaying a timeline on a [deleted: the ]display showing the temporal ordering of interleaving the plurality of gating media segments with the protected segments of the media content[deleted: , wherein the timeline shows a linear scale to represent a temporal progression of the presentation being rendered on the display, and wherein an indicator is further shown moving the timeline toward the end of the presentation and indicating where within the temporal progression the presentation is currently being rendered];

if the user is a premium user:

providing access to the user to each one of the protected segments without requiring the user accessing each of the plurality of gating media segments preceding its associated one of the protected segments according to the temporal ordering in the timeline profile."

XI. Claim 1 of the third auxiliary request reads as follows (features added compared with claim 1 of the main request are underlined and deleted features are [deleted: struck through]):

"A method for use by a media device (318) in communication with an application server (314) and an advertisement server (316), the method comprising:

[deleted: providing ]obtaining, by the media device (318) from the application server (314), a timeline profile indicating a temporal ordering for interleaving each one of a plurality of gating media segments (104) with an associated one of protected segments (102) of a media content;

if a user is a non-premium user:

[deleted: rendering a presentation on a display by ]selectively providing, by the media device (318) using the timeline profile obtained from the application server (314), access to the user to each one of the protected segments (102) in response to the user accessing each of the plurality of gating media segments (104) preceding its associated one of the protected segments (102) according to the temporal ordering in the timeline profile, wherein the selectively providing includes [deleted: providing ]obtaining each of the plurality of [deleted: at least one] gating media segments (104) associated with the plurality of protected segments (102) from the advertisement server (316) according to the timeline profile obtained from the application server (314) [deleted: based, at least in part, on a user profile information];

[deleted: and]

[deleted: displaying a timeline on the display showing the temporal ordering of interleaving the plurality of gating media segments with the protected segments of the media content, wherein the timeline shows a linear scale to represent a temporal progression of the presentation being rendered on the display, and wherein an indicator is further shown moving the timeline toward the end of the presentation and indicating where within the temporal progression the presentation is currently being rendered];

if the user is a premium user:

providing, by the media device (318), access to the user to each one of the protected segments (102) without requiring the user accessing each of the plurality of gating media segments (104) preceding its associated one of the protected segments (102) according to the temporal ordering in the timeline profile."

XII. The appellant's arguments relevant to the present decision may be summarised as follows.

Main request

(a) The main request should be admitted into the appeal proceedings because the amendments in it resolved the issue raised for the first time in the board's communication under Article 15(1) RPBA 2020.

First to third auxiliary requests

(b) Starting from document D1, it would not have been obvious to use a timeline as defined in claim 1. This timeline inherently required a temporal order of the protected segments and thus contradicted the aim of a media player according to document D1 to let a user arbitrarily choose from their library when to listen to which piece of music.

(c) The timeline defined in claim 1 was not standard because it indicated both the gating media segments and the protected segments.

Reasons for the Decision

2. The appeal is admissible.

3. Main request and first auxiliary request - admittance (Article 13(2) RPBA 2020)

3.1 Under Article 13(2) RPBA 2020, any amendment to a party's appeal case made after notification of a summons to oral proceedings is, in principle, not to be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons.

Article 13(2) RPBA 2020 imposes the most stringent limitations on appeal submissions made at an advanced stage of the proceedings (see Supplementary publication 2, OJ EPO 2020, Explanatory remarks on Article 13(2), first paragraph, second sentence).

When exercising its discretion under Article 13(2) RPBA 2020, the board may also rely on criteria set out in Article 13(1) RPBA 2020 (see ibid., Explanatory remarks on Article 13(2), fourth paragraph).

3.2 The main request and the first auxiliary request were filed after notification of the summons to oral proceedings and are therefore amendments within the meaning of Article 13(2) RPBA 2020.

3.3 The board accepts that the issue raised for the first time under point 5.4 of its communication under Article 15(1) RPBA 2020 (see point 3.5 below) represents exceptional circumstances within the meaning of Article 13(2) RPBA 2020 (see point XII.(a) above). However, it is still within the board's discretion to admit the main request and the first auxiliary request into the appeal proceedings.

3.4 The board finds it appropriate, in exercising its discretion, to rely on the criterion set out in Article 13(1) RPBA 2020 as to whether a party has demonstrated that any amendment, prima facie, overcomes the issues raised by the board.

3.5 Under point 5.4 of the communication under Article 15(1) RPBA 2020, the board raised the issue that the feature of displaying a timeline was a mere presentation of information. This feature could not credibly assist a user in performing a technical task by means of a continued or guided human-machine interaction process because the defined timeline neither included a progress indicator nor was used as a graphical user interface allowing a user to access a particular media segment.

3.6 Claim 1 of the main request was amended to specify that: "the timeline shows a linear scale to represent a temporal progression of the presentation being rendered on the display, and wherein an indicator is further shown moving the timeline toward the end of the presentation and indicating where within the temporal progression the presentation is currently being rendered".

3.7 This amendment does not overcome the issue raised by the board because it does not specify a graphical user interface allowing a user to access a particular media segment.

3.8 The appellant argued that the timeline defined in claim 1 of the main request indicated the position of gating segments and protected segments. This allowed the user to judge whether it was worthwhile watching a gating segment before getting access to a protected segment and to jump to the right location (see point XII.(a) above).

The board is not convinced by this argument because neither the defined timeline nor any other feature of claim 1 of the main request enables the user to select a particular media segment, i.e. to interact with a machine providing the media segments. Hence, the timeline defined in claim 1 of the main request remains a mere presentation of information and does not enable a continued or guided human-machine interaction process.

3.9 Therefore, the board exercised its discretion under Article 13(2) RPBA 2020, relying on the criteria of Article 13(1) RPBA 2020, and did not admit the main request into the appeal proceedings.

3.10 Claim 1 of the first auxiliary request contains the amended feature quoted under point 3.6 above and further specifies that: "in response to the indicator being clicked on and dragged along the timeline commencing playing media content at a point in a temporal position as indicated by the position of the moved indicator relative to the timeline".

3.11 This amendment does overcome the issue raised by the board because it specifies a progress indicator and a graphical user interface allowing a user to access a particular media segment.

3.12 Therefore, the board exercised its discretion under Article 13(2) RPBA 2020, relying on the criteria of Article 13(1) RPBA 2020, and did admit the first auxiliary request into the appeal proceedings.

4. First auxiliary request - inventive step (Article 56 EPC)

4.1 Document D1 may be considered the closest prior art for the assessment of inventive step of the subject-matter of claim 1.

4.2 Document D1 discloses a method (see page 3, line 2: "method of distributing digital media content") comprising:

if a user is a non-premium user (see page 3, lines 12 to 17 and 25 to 28; a user with a decryption key associated with an advertisement belongs to a first class of users and a user who purchased content and who has a key to permanently decrypt the content belongs to a second class of users):

selectively providing access to the user to each one of the protected segments in response to the user accessing each of the plurality of gating media segments preceding the protected segments (see page 3, lines 12 to 17: "decryption of stored media content, beyond the limited amount decrypted once a decryption key associated with a given advertisement has been received and processed, is possible only as long as subsequent advertisements are received at and played back by the player" and page 8, lines 8 and 9: "player then plays the content, interspersed with advertisements which are received from time to time and provide the necessary decryption key(s)"), wherein the selectively providing includes providing at least one gating media segment associated with the plurality of protected segments based, at least in part, on a user profile information (see page 15, lines 21 to 28: "It is envisaged that stored content would contain linking information ... [which] may include profile information ... [which] may be used by the player to automatically select a specific type or selection of unlocking data that also contains such profile information or superset thereof, that most closely matches the profile of the content being played"); and

if the user is a premium user:

providing access to the user to each one of the protected segments without requiring the user accessing each of the plurality of gating media segments preceding its associated one of the protected segments (see page 3, lines 25 to 28: "End-users therefore have the flexibility to purchase content, allowing them to play it back without the need for advertisement interruptions")

4.3 The subject-matter of claim 1 thus differs from the disclosure of document D1 in that the former specifies the following distinguishing features:

(a) providing a timeline profile indicating a temporal ordering for interleaving each one of a plurality of gating media segments with an associated one of protected segments of a media content and selectively providing access to the user to protected segments accordingly

(b) if a user is a non-premium user: rendering a presentation on a display by displaying a timeline on the display showing the temporal ordering of interleaving of the plurality of gating media segments with the protected segments of the media content, with the timeline showing a linear scale to represent a temporal progression of the presentation being rendered on the display, and where an indicator is further shown moving the timeline toward the end of the presentation and indicating where within the temporal progression the presentation is currently being rendered, and, in response to the indicator being clicked on and dragged along the timeline, commencing playing media content at a point in a temporal position as indicated by the position of the moved indicator relative to the timeline

4.4 Distinguishing feature a) relates to a logical association between gating media segments and protected segments, while distinguishing feature b) relates to a graphical user interface for all segments. These features do not mutually influence each other to achieve a technical success over and above the sum of their respective individual effects. What has to be established is thus whether each of these distinguishing features is separately obvious in light of the prior art (see Case Law of the Boards of Appeal, 10th edition, 2022, "Case Law", I.D.9.3.2).

4.5 The effect of distinguishing feature a) is to specify an association between a gating media segment and a protected segment, i.e. to specify which gating media segment (e.g. an advert) needs to be accessed before access to a protected segment (e.g. a segment that is desired by a user) is provided.

4.6 This effect is not technical but business-related. The aim is to implement a business strategy which defines which advert has to be watched to unlock specific media content.

4.7 Therefore, this aim may legitimately appear in the formulation of the objective technical problem (see Case Law, I.D.9.2.6).

4.8 The objective technical problem related to distinguishing feature a) may thus be formulated as how to implement an association between a gating media segment and an associated protected segment.

4.9 The board finds that implementing this aim in the form of providing a "timeline profile", i.e. data indicating which gating media segment is associated with which protected segment, is trivial.

4.10 The appellant argued that a timeline as defined in claim 1 which inherently also required a temporal order of protected segments would have contradicted the aim of a media player according to document D1 to let a user arbitrarily choose from their library when to listen to which piece of music (see point XII.(b) above).

The board is not convinced by this argument because the "timeline profile" defined in claim 1 only specifies a temporal ordering between a gating media segment and its associated protected segment of a media content, i.e. that the gating media segment precedes its associated protected segment. The "timeline profile" defined in claim 1 does not specify a temporal ordering of the protected media segments. Furthermore, a situation in which gating media segments are interleaved or interspersed with protected media segments is disclosed in document D1, page 8, lines 8 and 9.

4.11 The technical effect of distinguishing feature b) is to provide a graphical user interface indicating a temporal progression along the media segments and allowing a user to access a particular media segment.

Hence, the objective technical problem related to distinguishing feature b) may be formulated as to provide a graphical user interface allowing a user to access a particular media segment.

4.12 Faced with this problem, the person skilled in the art would have applied a known timeline with a slider as a graphical user interface.

Such sliders on a timeline of media content were commonly known and applied as graphical user interfaces for media content before the priority date of the current application. This was not contested by the appellant.

4.13 The appellant argued that the timeline defined in claim 1 was not standard because it indicated both the gating media segments and the protected segments (see point XII.(c) above).

The board is not convinced by this argument because on the timeline, gating media segments and protected segments are just a series of segments.

4.14 In view of the above, the board finds that the subject-matter of claim 1 of the first auxiliary request does not involve an inventive step within the meaning of Article 56 EPC.

5. Revision of the objection raised against the second auxiliary request (Rule 137(5) EPC)

5.1 According to the decision under appeal, the second auxiliary request (which at the time was the main request) was not admitted into the proceedings under Rule 137(5) EPC (see decision under appeal, point 14.4).

This board endorses the view expressed in T 2431/19, points 2.2 and 2.3 that Rule 137(5) EPC does not provide a legal basis for the exercise of discretion, i.e. for not admitting the amended set of claims into the proceedings.

5.2 Moreover, the examining division based its objection on the fact that amended claim 1 added the feature of displaying a timeline (see decision under appeal, point 14.3). This board endorses the view taken in T 1866/15, points 3.8 and 3.13 that there cannot be a lack of unity between two claims where one limits the subject-matter of the other.

Hence, if claim 1 of the second auxiliary request had been present in the set of claims on file at the time of the search, no objection of lack of unity would have been raised.

5.3 Therefore, the board finds that the decision of the examining division not to admit the second auxiliary request under Rule 137(5) EPC was not justified.

6. Second auxiliary request, discretion to examine inventive step (Article 111(1) EPC)

Article 111(1), second sentence, EPC gives the board

the discretion to decide on the case itself or remit it

to the first-instance department for further

prosecution. Parties have no absolute right to have each and every matter examined in both first-instance and appeal proceedings. Which of the above two options a board chooses depends on the facts of the case before it and is a matter for its discretion. In choosing what to do, the board must consider the circumstances of the individual case, also bearing in mind other factors such as the need for procedural economy (see Case Law, V.A.9.2.1).

In the current case, the board is able to assess inventive step for claim 1 of the second auxiliary request on the basis of the objection raised by the examining division against claim 1 of the third auxiliary request (see decision under appeal, section 15) and the appellant's comments on the patentability of the second auxiliary request (see section II.C of the statement of grounds of appeal).

7. Second auxiliary request - inventive step (Article 56 EPC)

7.1 Claim 1 of the second auxiliary request differs from claim 1 of the first auxiliary request in that the former does not contain the following features:

"rendering a presentation on a display by ... wherein the timeline shows a linear scale to represent a temporal progression of the presentation being rendered on the display, and wherein an indicator is further shown moving the timeline toward the end of the presentation and indicating where within the temporal progression the presentation is currently being rendered, and, in response to the indicator being clicked on and dragged along the timeline commencing playing media content at a point in a temporal position as indicated by the position of the moved indicator relative to the timeline"

7.2 Hence, the subject-matter of claim 1 of the second auxiliary request differs from the disclosure of document D1 by the following distinguishing features (see point 4.3 above):

(a) providing a timeline profile indicating a temporal ordering for interleaving each one of a plurality of gating media segments with an associated one of protected segments of a media content and selectively providing access to the user to protected segments accordingly

(b) if a user is a non-premium user: displaying a timeline on a display showing the temporal ordering of interleaving of the plurality of gating media segments with the protected segments of the media content

7.3 Distinguishing feature b) merely defines a presentation of information.

A feature defining a presentation of information may produce a technical effect if it credibly assists the user in performing a technical task by means of a continued and/or guided human-machine interaction process (see Case Law, I.D.9.2.10 b)).

However, the specified timeline neither includes a progress indicator nor is used as a graphical user interface to access a particular segment. Its sole function is to show the temporal ordering of interleaving of the plurality of gating media segments with the protected segments of the media content. Without knowing the current position on the timeline and without a means to access a particular point on the timeline, this timeline cannot be regarded as assisting a user in performing a continued and/or guided human-machine interaction process.

Therefore, distinguishing feature b) lacks technical character and thus cannot contribute to an inventive step.

The appellant did not provide counter-arguments in this respect.

7.4 For the reasons set out under points 4.4 to 4.10 above, the person skilled in the art would have arrived at distinguishing feature a) in a straightforward manner.

7.5 In view of the above, the board finds that the subject-matter of claim 1 of the second auxiliary request does not involve an inventive step within the meaning of Article 56 EPC.

8. Third auxiliary request - inventive step

8.1 Document D1 may be considered the closest prior art for the assessment of inventive step of the subject-matter of claim 1.

8.2 Document D1 discloses a method (see page 3, line 2: "method of distributing digital media content") for use by a media device in communication with an advertisement server (see page 3, line 4: "sending ... advertisements to a digital media player"), the method comprising:

if a user is a non-premium user (see page 3, lines 12 to 17 and 25 to 28; a user with a decryption key associated with an advertisement belongs to a first class of users and a user who purchased content and who has a key to permanently decrypt the content belongs to a second class of users):

selectively providing, by the media device, access to the user to each one of the protected segments in response to the user accessing each of the plurality of gating media segments preceding one of the protected segments (see page 3, lines 12 to 17: "decryption of stored media content, beyond the limited amount decrypted once a decryption key associated with a given advertisement has been received and processed, is possible only as long as subsequent advertisements are received at and played back by the player" and page 8, lines 8 and 9: "player then plays the content, interspersed with advertisements which are received from time to time and provide the necessary decryption key(s)"), wherein the selectively providing includes obtaining each of the plurality of gating media segments associated with the plurality of protected segments from the advertisement server (see page 4, lines 7 to 9: "The player could use wireless or wire-based connections...to connect to the remote server hosting the jazz tracks" and page 4, lines 16 to 18: "This source of advertisements can correspond to the source of that media content. Hence, the jazz music fan obtains his jazz tracks from a jazz channel that also broadcasts advertisements with decryption keys");

if the user is a premium user:

providing, by the media device, access to the user to each one of the protected segments without requiring the user accessing each of the plurality of gating media segments preceding its associated one of the protected segments (see page 3, lines 25 to 28: "End-users therefore have the flexibility to purchase content, allowing them to play it back without the need for advertisement interruptions")

8.3 The subject-matter of claim 1 differs from the disclosure of document D1 in that the former specifies the following distinguishing features:

obtaining, by the media device from the application server, a timeline profile indicating a temporal ordering for interleaving each one of a plurality of gating media segments with an associated one of protected segments of a media content and selectively providing access to the user to protected segments accordingly

8.4 The effects of these distinguishing features are:

(a) to obtain data specifying an association between a gating media segment and a protected segment, i.e. to specify which gating media segment (e.g. an advert) needs to be accessed before access to a protected segment (e.g. a segment that is desired by a user) is provided

(b) to get the most recent version of this data or, in other words, to allow the data to be adapted and dynamically changed

8.5 Effect a) is not technical but business-related and thus cannot contribute to an inventive step (see points 4.5 to 4.10 above).

8.6 In view of effect b), an objective technical problem may be formulated as how to obtain the most recent version of the data specifying an association between a gating media segment and a protected segment.

8.7 The person skilled in the art would have solved this problem on the basis of their common general knowledge by obtaining the data in question from a server.

Obtaining the most recent data from a server on a network, e.g. the internet, is common place. This was not contested by the appellant.

8.8 In view of the above, the board finds that the subject-matter of claim 1 of the third auxiliary request does not involve an inventive step within the meaning of Article 56 EPC.

9. Conclusion

The main request was not admitted into the appeal proceedings under Article 13(2) RPBA 2020. The first to third auxiliary requests are not allowable because the subject-matter of claim 1 of each of these requests does not involve an inventive step within the meaning of Article 56 EPC. Since none of the appellant's requests is allowable, the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.