T 1272/20 (Search in internet and personal notes/EVERNOTE) of 1.6.2023

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division to refuse European patent application No. 17196808.4 for lack of inventive step of the subject-matter of the claims of a main request and an auxiliary request ("auxiliary request I").

The examining division was of the opinion that the claimed subject-matter related essentially to a non-technical computer program. In further remarks, the examining division considered that claim 1 of both requests was not inventive when taking the following document as the closest prior art:

D1: US 6 282 548 B1, published on 28 August 2001.

II. 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 main request or auxiliary request I, both considered in the appealed decision and annexed to the grounds of appeal.

III. In a communication accompanying a summons to oral proceedings, the board expressed the view that the subject-matter of claim 1 of the main request and auxiliary request I was not inventive taking into account either a notoriously known web browser for personal computers or the disclosure of document D1.

IV. With a letter of reply, the appellant submitted further arguments in favour of inventive step.

V. Oral proceedings were held as scheduled. During the oral proceedings, the appellant submitted a new set of claims pursuant to auxiliary request I'. At the end of the oral proceedings, the Chair announced the board's decision.

VI. The appellant's final requests were that the contested decision be set aside and that a patent be granted on the basis of one of the main request, auxiliary request I or auxiliary request I'.

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

"A computer-implemented method of searching personal information when a user performs an Internet search, comprising:

receiving a search query from a user;

extracting terms from the search query;

determining that one or more relevant notes exist within a personal database of the user by comparing the extracted terms to stored notes of the user within the personal database;

obtaining search results information by analyzing public search results for the search query;

determining that one or more additional relevant notes exist by comparing the search results information to the stored notes of the user within the personal database;

preparing note previews for the one or more relevant notes and the one or more additional relevant notes; and

presenting the prepared note previews to the user, including altering content of a search result page to provide links to the relevant notes with search result listings;

receiving a user selection of one of the presented note previews;

retrieving the stored note corresponding to the selected note preview from the personal database; and

presenting the stored note to the user."

VIII. Claim 1 of auxiliary request I differs from claim 1 of the main request in that the following text has been added before the text "obtaining search results information by analyzing public search results ...":

"wherein the stored notes of the user comprise at least one handwritten note of the user, wherein determining that a personal database of the user includes one or more relevant notes corresponding to the extracted terms includes utilizing natural handwriting recognition (NHR) on the handwritten note;"

IX. Claim 1 of auxiliary request I' differs from claim 1 of the main request in that, apart from the change of "a personal database" to "the personal database" and "analyzing public search results" to "analyzing the public search results", the first part of the claim up to "receiving a search query from a user;" has been replaced with the following text:

"A system for providing a personal database for storing personal information, wherein the personal database is maintained by a service to which a visitor of a website subscribes, said system being configured to facilitate the search for and presenting of relevant notes in connection with search results from a public database distinct from the personal database when a user performs an Internet search, the system comprising a memory storing executable code and at least one processor, where the executable code, when executed by the at least one processor causes the processor to perform the steps of:

receiving a search query from a user; wherein the search query is received via a user entry in a web browser;".

X. In the decision under appeal, the examining division stated, in reply to the applicant's reasoning based on decision T 1351/04, that it agreed with the applicant that retrieving given data, e.g. a file identified by a file name, within a technical system, by using information about the physical location, i.e. a memory address, of the stored data had technical character. However, the method of claim 1 was not about retrieving/accessing information in a physical system, except by using a database, but was essentially directed to selecting/searching information which could be relevant for the user. As the claimed method did not take into account any technical constraints of the underlying technical system, no technical considerations were apparent. While retrieving a file in a system could have technical character, this was not the case with searching information in a file. The examining division cited decision T 598/14 in support of its reasoning (see decision under appeal, point 14.1).

The inventive-step assessment of the decision under appeal followed two lines of reasoning. In the first line (points 20.1 to 20.3), the examining division analysed the features as to whether they were technical or non-technical when taken in isolation. The only technical features were "computer-implemented", "database" and "links". The database was considered technical only to the extent that a computer was involved in the search engine and the database. However, the search functionality of the search engine and the data, e.g. the personal data, stored in the search engine were considered non-technical. The claim related to a method carried out by a computer device involving the use of a database and links specified by a computer program. The computer program did not contribute to the technical character of the invention because it did not bring about a further technical effect and was not based on technical considerations.

In the second line of reasoning (points 21 to 24), the examining division stated that query enhancement, producing different results for the same query and better search results were non-technical effects according to decision T 598/14. No further technical considerations were apparent from the claim. The examining division considered that document D1, as the closest prior art, disclosed the features contributing to the technical character of the invention: a computer, search engines, databases to store information to be displayed on a web page and the use of links to allow access to (related) information. The objective technical problem was to configure the system of D1 to carry out the method specified by the non-technical computer program. The claimed solution did not go beyond executing the non-technical computer program on the known computing device and was straightforward.

XI. In the grounds of appeal, the appellant disagreed with the examining division's identification of the features of claim 1 which had technical character. The examining division had equated features contributing to technical character with structural features and had excluded any non-structural features from the assessment of inventive step as being non-technical per se. This, however, was not the correct standard for establishing technical character. Furthermore, the examining division had not properly taken into account the technical considerations underlying the claimed invention.

The concept of supplementing information from one database with information from another was technical as it required a technical understanding of the underlying principles of how systems including multiple databases worked and how information from databases was processed.

The concept further provided a technical solution to a technical problem, namely the quick and efficient information collection from multiple databases. Contrary to the examining division's understanding, it could not be appreciated from decision T 598/14 that such a problem should be considered non-technical. According to the appellant, in T 598/14, Reasons 2.4, the board had found that the features distinguishing the claimed invention from the prior art related only to the non-technical semantic content of the retrieved data. The board had established that the concepts of "performing a better search" or "enhancing a query" within the meaning of the case dealt with in T 598/14 were subjective and non-technical.

According to the appellant, all steps of the computer-implemented method contributed to the technical character of the invention as they defined the way in which the computer performed the search. The non-technical aspects of the claims merely concerned the content of the data that was processed, namely whether the searched data concerned personal information and/or whether the entries in the database corresponded to notes, whether or not the databases were personal or public, etc.

Reasons for the Decision

Invention

1. The invention concerns searching for and presenting to a user relevant notes in connection with other website content as result of an internet search performed by the user. According to the description, "note" is a general name for a piece of information (see original description, page 1, lines 18 and 19).

Main request

2. Claim interpretation - claim 1

Claim 1 recites a computer-implemented method for searching personal information when the user performs an internet search. In a first step, the claimed method receives a search query. It then extracts terms from the received search query and uses them to determine "relevant notes" of the user in a "personal database", e.g. data stored locally. The method obtains "search results information" by analysing "public search results for the search query" and uses the search results information to determine "additional relevant notes".

Since the claim refers to an internet search, the "public search results" are results, for the search query, of an internet search performed by an internet search engine. This is also supported by the description (see e.g. page 7, line 30 to page 8, line 2; page 10, line 19 to page 11, line 8). Search results of the internet search are presented in "search result listings" on a "search result page".

In the method of claim 1, "note previews" of the relevant and additional relevant notes are prepared and presented to the user, including "altering content of [the] search result page to provide links to the relevant notes with search result listings". A user selection of one of (the links associated with) the prepared and presented note previews is received, and the corresponding stored note is retrieved and presented to the user.

3. Technical contribution and inventive step - claim 1

3.1 The appellant has - correctly - remarked that in decision T 598/14 the board did not consider that none of the claimed features was technical but rather that the features distinguishing the claimed subject-matter from the prior art did not make a technical contribution. The board further agrees with the appellant that T 598/14 did not express that any manner in which a computer performs a search is non-technical for the sole reason that the result is a "better search". As with all subject-matter excluded as such under Article 52(2) and (3) EPC, it has to be established whether the non-technical features, to the extent that they interact with the technical subject-matter of the claim for solving a technical problem, provide a technical contribution and should be taken into account in assessing inventive step (see also T 154/04, Reasons 5; T 697/17, Reasons 4.2; T 2573/16, Reasons 4.4).

In assessing a claim, it is therefore important to take into account the effect of the features in the claimed invention. An assessment based on an isolated analysis of the individual features of the claim without regard for possible interactions with the other claimed features may lead to ignoring features which make a technical contribution (see also T 731/17, Reasons 6.2 and 6.4; T 697/17, Reasons 4.2).

An invention with an overall purpose which is non-technical may nevertheless be a patentable solution to the problem of finding a technical implementation for achieving the non-technical purpose (T 1784/06, Reasons 2.3). The board does not find any basis either for considering that only hardware features are technical. In decision G 1/19, the Enlarged Board was of the opinion that while a direct link with physical reality is in most cases sufficient to establish technicality, it cannot be a necessary condition (see Reasons 62, 88, 101 and 139).

The board further notes that a technical feature does not lose its technical nature because it is too generic or "functionally defined" (G 3/08, Reasons 10.8.7).

3.2 Applying these case-law principles to the current case, the board does not agree with the examining division that only the "physical features" of the claim, or that only the features "computer-implemented", "database" and "links", make a technical contribution within the context of claim 1. The claim specifies a computer-implemented method for searching personal information when a user performs an internet search. The claimed method involves retrieving data from the internet and from a separate database, the "personal database", and presenting to the user search results and links to access some of those search results. It also includes steps describing a user interaction with the computer system: receiving a user selection of one of the links and retrieving the respective data. Therefore, these features contribute to the technical effect of retrieving data in a computer system. One technical constraint is that the notes are stored in a personal database which cannot be searched by the search engine. Even though, as explained below, the decision to present only previews of the notes, instead of the full notes, is not technical, technical considerations are involved, for example when deciding which user interaction means (e.g. links) to use for supporting user access to the data in the notes. Links were considered technical in the decision under appeal (see e.g. point 20.1). The mere fact that at least some of these technical features might be notoriously known or generically specified, or that some technical aspects might be implicit from the claim, does not mean that the corresponding subject-matter cannot make any technical contribution. Relevant is whether the criteria developed by the case law are fulfilled.

3.3 In order to correctly assess inventive step of an invention such as the current one, in which the non-technical aspects are tightly intermingled with the technical features, the board finds it preferable, if not necessary, to assess inventive step from a starting point closer to the invention than a general purpose computer.

3.4 At the date of priority of the current application (in 2010), web browsers for personal computers and web search engines were notoriously known. When such a web browser and search engine are used to perform a search query, a computer-implemented method is performed for searching information which comprises receiving a search query from a user, extracting terms from the search query and obtaining relevant search results (corresponding to "search results information" in claim 1) by "analyzing public search results for the search query". A search results page is then created with links to the relevant search results, where the list of links to the relevant search results corresponds to "search result listings".

When a user selects a link in the search results page, the method includes further steps of receiving a user selection of one of the links, retrieving the selected search result corresponding to the selected link from the web and presenting the selected search result to the user.

The board further notes that each personal computer stores personal data which constitutes "notes within a personal database of the user".

3.5 The method of claim 1 differs from this notoriously known method using a web browser in that it further includes the steps of:

(i) determining relevant notes within the personal database by comparing the extracted terms to stored notes;

(ii) determining additional relevant notes by comparing the search results information to the stored notes;

(iii) preparing note previews for the relevant notes and the additional relevant notes;

(iv) altering the content of the search results page to provide links to the relevant notes with the search result listings;

(v) receiving a selection of one of the presented note previews, retrieving the stored note corresponding to the selected note preview from the personal database and presenting the respective note to the user.

3.6 The appellant argued that even if the ultimate goal of the claimed invention was to serve the informational needs of the user, the technical teaching of the invention was how to provide such content. Usually, it was not possible to search a personal database with a web browser. The concept of using a search query provided to a web engine, as well as the public search results, for searching a personal database did not "serve the informational needs of the user" but was a teaching on how to jointly provide information from two databases to, subsequently, add relevant information to one of the two databases. The term "relevant" related to the search query; it did not pertain to what the user found relevant. The purpose was to find notes relevant to the search query. If anything, only the last step (i.e. adding relevant notes) could be considered as (also) serving an informational need. However, even then, using search results from one database to obtain search results from another in a second round was a technical teaching in terms of "how to combine content from two parallel databases" (see the appellant's letter of reply of 2 May 2023, page 6).

The appellant cited decision T 844/09, Reasons 5.3, and argued that combining data in the method of claim 1 required technical knowledge of the technical system. In accordance with decision T 643/00, the mere fact that a tool assisted the user in performing a mental task did not exclude the tool from patentability. The efficient search and retrieval of information stored in a database was governed by technical considerations.

According to the appellant, the distinguishing features did not relate to mere presentation of information. Instead, they had the technical effect of providing access to and effective and accurate search in two databases. The relevant notes applied to supplement the public search results were more thorough and accurate compared to when only a search query was used to search both the personal and public databases (see the letter of reply, page 7).

At the oral proceedings, the appellant argued that the technical problem solved could be regarded as how to search personal information using an internet search and how to make this search more thorough and accurate.

3.7 The board is, however, of the opinion that the idea of obtaining relevant notes and additional relevant notes reflects the interest of the user in receiving, in addition to the public search results, related information from the user's personal notes. Meeting the informational needs of a user is not per se a technical effect (T 306/10, Reasons 5.2; T 598/14, Reasons 2.4; T 1971/18, Reasons 2.4).

The appellant's argument that relevance is a technical aspect as it concerns the search query and not the user's interest is not persuasive. In this case, there is no objectively defined set of data which constitutes the correct result for the search query. What is relevant has to be determined based on non-technical linguistic aspects and subjective user preferences (see also T 1924/17, Reasons 12).

The distinguishing features essentially serve the informational need of the user to obtain, in addition to the results of the web search, information from the prior-art user's personal database which is related to search terms of the search query (relevant notes) and to the results of the search (additional relevant notes). These are merely non-technical aspects of how the public data is to be supplemented by personal notes.

In the claimed method, the decision to present the relevant and additional relevant notes as "note previews", instead of e.g. presenting the full content of the notes in the search result page, does not serve any technical purpose. It is a layout choice and/or a user's preference. It therefore concerns the presentation of information as such, which is excluded from patentability under Article 52(2)(d) EPC.

Following the COMVIK approach (T 641/00), these non-technical aspects may legitimately appear in the formulation of the problem as part of the framework of the technical problem to be solved, in particular as a constraint to be met.

The presentation of links to the relevant notes of feature (iv) facilitates user access to the relevant notes.

3.8 The board is thus of the view that the distinguishing features solve, over the notoriously known method, the technical problem of facilitating, when a search query is performed, user access to personal notes related to search terms of the search query (relevant notes) and to the results of the search (additional relevant notes), where the notes should be presented in the form of "note previews".

3.9 The user's personal database with stored notes is already known from the prior art (see point 3.4 above). Features (i), (ii) and (iii) are directly mapped from the formulated problem. The board notes that these features do not describe any (inventive) technical details of the implementation of the non-technical constraints.

3.10 Links were notoriously known and already used in the search result page of the prior-art web browser for facilitating user access to web pages related to the public search results independently of their storage locations in a computer or computer network. It would thus have been obvious for the skilled person seeking to facilitate access to the full notes corresponding to the note previews, which are also search results, to additionally include, for each note preview on the search results page, a link to the note, as in feature (iv). The skilled person would thus also arrive at feature (v), which merely describes the notoriously known way a link works when a user selects it. The distinguishing features entail no inventive technical elements of the implementation.

3.10.1 The appellant argued that there was no teaching or suggestion in the prior art that the web browser could provide a link to local data. A web browser had no access rights to access personal data. For security reasons, the skilled person would not have provided links to the personal notes in the way claimed. At the priority date of the application in 2010 web browsers were not as advanced as today. At that time it would not have been obvious to add personal search results in the claimed manner. Even if a solution appeared relatively straightforward, the board should consider whether the skilled person would have been motivated to arrive at the solution (the appellant cited decision T 157/10, reasons 3.5).

3.10.2 These arguments are not persuasive. The distinguishing features do not solve any security problem of accessing personal data from a web browser. The description discloses embodiments based on web browsers (see e.g. page 5, line 28 to page 6, line 18), but is silent about any security problems and corresponding solutions.

3.11 Therefore, claim 1 of the main request does not meet the requirements of Article 56 EPC for lack of inventive step.

Auxiliary request I

4. Claim 1 of auxiliary request I differs from claim 1 of the main request in that it additionally specifies (see point VIII. above) that

(vi) the stored notes of the user comprise at least one handwritten note of the user, wherein determining that a personal database of the user includes one or more relevant notes corresponding to the extracted terms includes utilising natural handwriting recognition (NHR) on the handwritten note.

5. Inventive step - claim 1

5.1 The appellant argued that while NHR was known at the priority date of the current application, the concept of using handwriting recognition in a combined personal and public database search could not be considered obvious. When searching the internet, handwritten documents were rarely present as text documents.

5.2 The board does not find this reasoning convincing. Claim 1 is not about searching handwritten documents on the internet. The claim refers only to searching handwritten notes in the personal database. The additional feature of claim 1 of auxiliary request I fulfils the user requirement of taking into account handwritten notes and does not include any detail, or at least any inventive detail, of the implementation of this user requirement. Handwritten input of text and NHR were well known at the priority date of the current application. Furthermore, these features were known from the prior art acknowledged in the description (page 1, lines 17 to 19 and page 10, lines 14 to 17).

5.3 Therefore, claim 1 of auxiliary request I is not inventive (Article 56 EPC).

Auxiliary request I'

6. Claim 1 of auxiliary request I' is directed to a system and, compared to claim 1 of the main request, adds new features including the following (see point IX. above):

"the personal database is maintained by a service to which a visitor of a website subscribes, said system being configured to facilitate the search for and presenting of relevant notes in connection with search results from a public database distinct from the personal database when a user performs an Internet search" and "the search query is received via a user entry in a web browser".

7. Admissibility

7.1 Since auxiliary request I' was filed during the oral proceedings, its admissibility is subject to Article 13(2) RPBA 2020.

7.2 Pursuant to Article 13(2) RPBA 2020, any amendment to a party's appeal case made after the expiry of a period specified by the board after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances justified with cogent reasons by the party concerned.

7.3 The appellant argued that auxiliary request I' was submitted in response to the board's arguments mentioned for the first time at the oral proceedings that it was unclear whether claim 1 of the main request related to a tool and excluded that the personal database was part of the internet, i.e was also public.

7.4 However, the board did not insist on these comments and its assessment of inventive step, which is explained above, does not rely on either of the allegations. Therefore, the two comments do not constitute an exceptional circumstance in accordance with Article 13(2) RPBA 2020.

7.5 With regard to the appellant's argument that oral proceedings are inconsequential if the appellant is not allowed to react to the focus of the discussion at the oral proceedings, the board refers to Article 13(2) RPBA 2020, in line with which claims submitted at the oral proceedings are admissible only under exceptional circumstances, and to the general principles deriving from the EPC that no further amendments at this late stage can be made without the consent of the board (Case Law of the Boards of Appeal, 10th edn., 2022, V.A.4.1.1).

7.6 The board does not recognise any exceptional circumstances in the current case. At the oral proceedings, the board did not introduce any relevant changes to the inventive-step reasoning provided in its communication pursuant to Article 15(1) RPBA 2020. Claim 1 of auxiliary request I' adds new features which were not the subject of the board's assessment in its communication. The board used a different starting point for assessing inventive step than the examining division. However, in the case at hand, this cannot be considered an exceptional circumstance justifying admitting the claims filed at the oral proceedings. The claims according to auxiliary request I' could have been submitted earlier, for example with the appellant's reply to the board's communication in which the board presented a complete inventive-step assessment of the claimed invention on the basis of the new starting point.

7.7 Taking the above into account, the board does not admit auxiliary request I' into the proceedings (Article 13(2) RPBA 2020).

Concluding remark

8. Since none of the admitted requests is allowable, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.