T 1384/21 (Predictive search/GOOGLE LLC) of 20.3.2024

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division to refuse European patent application No. 13812330.2.

II. The following documents were cited in the decision under appeal:

D1: T. Hunter: "Vehicle Navigation and Fleet Management using Differential GPS", Vehicle Navigation and Information Systems Conference, Toronto, Ont., Canada, 11 to 13 September 1989, IEEE, US, page 366;

D2: "Honda in-car navigation system for the U.S.", Automotive Engineering, Society of Automotive Engineers, Warrendale, US, vol. 104, no. 6, June 1996, pages 82 to 84;

D3: M. Okabe et al.: "A Car Navigation System Utilizing a GPS Receiver", IEEE 1993 International Conference on Consumer Electronics, Digest of Technical Papers, 1993, pages 278 and 279;

D4: Yuan-Cheng Lai et al.: "A GPS Navigation System with QR Code Decoding and Friend Positioning in Smart Phones", 2nd International Conference on Education Technology and Computer (ICETC), IEEE, Piscataway, NJ, USA, 22 June 2010, pages V5-66 to V5-70.

III. The patent application was refused for lack of inventive step of the subject-matter of all the claims of the main request and claim 1 of the auxiliary request over prior-art document D4.

IV. 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 the auxiliary request.

V. In a communication accompanying a summons to oral proceedings, the board found that the main request and the auxiliary request did not fulfil the requirements of Article 84 EPC. The board further expressed the preliminary opinion that the inventive-step reasoning of the decision under appeal was not convincing and that document D4 was not a suitable starting point for assessing inventive step.

VI. With a letter of reply the appellant amended both the main request and the auxiliary request.

VII. Oral proceedings were held as scheduled. During the oral proceedings the appellant replaced its requests with a new main request and a new first auxiliary request. At the end of the oral proceedings, the Chair announced the board's decision.

VIII. The appellant's final requests were that the contested decision be set aside and that the case be remitted to the examining division for further prosecution on the basis of the new main request and new auxiliary request filed in the oral proceedings before the board.

IX. Claim 1 of the new main request reads as follows:

"A method comprising:

storing a plurality of whitelisted locations, and associating one or more search types with each whitelisted location, wherein the one or more search types comprise a visual search type corresponding to one or more of a barcode scanning capability, a quick response code scanning capability, an image recognizer capability, and an optical character recognition capability;

determining (180), by a mobile computing device (2), a geographic location of the mobile computing device;

determining that the geographic location of the mobile computing device matches one of the whitelisted locations;

obtaining (184) the one or more search types associated with the matched whitelisted location;

responsive to obtaining the one or more search types, outputting (186), by the mobile computing device and for display, a graphical user interface (14) comprising an indication for each of the one or more search types associated with the matched whitelisted location;

responsive to receiving user input selecting an indication of one of the one or more search types, obtaining (190), by the mobile computing device, a search input for the one of the one or more search types associated with the matched whitelisted location, and transmitting the search input to a networked device via a network, the one of the one or more search types comprising the visual search type; and

receiving one or more search results from the networked device and outputting the search results for display."

X. In view of the outcome of these appeal proceedings, the claims of the new auxiliary request are not relevant for the present decision.

Reasons for the Decision

Application

1. The invention concerns predictively presenting, in the graphical user interface (GUI) of a computing device, specific "search capabilities" depending on the current location.

1.1 In the invention, different "whitelisted locations" may offer different search capabilities for users to obtain information. For example, in a museum the user may use the smartphone camera to recognise artwork, whereas in a shop the user may scan a barcode for "comparison shopping" (see paragraphs [0013], [0014], [0016] and [0030] of the published application). A search capability, also named "search type" in the application, may be a "visual search type" that uses optical sensor(s) to obtain image(s). For example, visual search types may be based on barcode scanning, image recognition or optical character recognition. Other search types may include audio and textual search types (paragraph [0031]).

1.2 After determining that the current location matches a whitelisted location in a stored list of whitelisted locations, the computing device obtains the search types which are associated with the matched whitelisted location. The computing device then provides, in the GUI, a selectable GUI element, referred to as "indication", for each of the obtained search types. When the user selects one of these indications, a search is performed based on the selected search type (paragraphs [0033],[0034] and [0041]).

New main request

2. Admissibility

2.1 The new main request introduces minor amendments to the request submitted in response to the objections raised for the first time in the board's preliminary opinion. Since these minor amendments overcome all the objections raised, exceptional circumstances are present which justify admitting the request under Article 13(2) RPBA. The board thus admits the new main request into the appeal proceedings.

3. Clarity - claim 1

3.1 In the decision under appeal, the examining division did not raise any objections for lack of clarity. The objections raised by the board have been overcome by amendment, as explained in the following.

3.2 It is now clear from the text "outputting ... a graphical user interface (14) comprising an indication for each the one or more search types associated with the matched whitelisted location" of claim 1 that the indications displayed in the GUI correspond to the search types of the matched whitelisted locations which have been obtained in the preceding step of "obtaining (184) the one or more search types ...".

3.3 The text "responsive to receiving user input selecting an indication of one of the one or more search types,... the one of the one or more search types comprising the visual search type", restricts to a visual search type the search type selected by the user for performing a search.

3.4 It is clear from the description that the search input depends on the search type being used (see e.g. paragraph [0024]). Claim 1 has been accordingly amended to clarify that the search input is a "search input for the one of the one or more search types associated with the matched whitelisted location".

3.5 The board is thus satisfied that claim 1 meets the requirements of Article 84 EPC.

4. Added subject-matter - claim 1

4.1 Claim 1 combines the features of original claims 1 to 3 and 8 with features taken from the description of the application as filed.

4.2 The steps of storing the plurality of whitelisted locations and obtaining the search types are disclosed mainly in paragraph [0030], and also in paragraphs [0063] and [0102]. Furthermore, original claim 8 refers to "a set of geographic locations" used for determining the one or more search types.

4.3 The steps of receiving user input, transmitting the search input and receiving one or more search results are disclosed in paragraph [0016] and are specified in original claim 9 for the particular case of a visual search type.

4.4 As explained under point 3.4 above, the feature "a search input for the one of the one or more search types associated with the matched whitelisted location" can be directly and unambiguously derived from paragraph [0024] of the description.

4.5 Therefore, claim 1 satisfies the requirements of Article 123(2) EPC.

5. Inventive step - claim 1

5.1 The inventive-step reasoning of the decision under appeal is still relevant to the assessment of claim 1 of the main request, which has been amended mainly for clarity reasons.

5.1.1 In the decision under appeal, the examining division decided that the subject-matter of claim 1 of the then main request was not inventive. The claimed subject-matter differed from the disclosure of document D4 in that it included the following features:

"storing a plurality of whitelisted locations, and associating one or more search types with each whitelisted location

search types are associated with the matched whitelisted location,

determining that the geographic location of the mobile computing device matches one of the whitelisted locations;".

5.1.2 The examining division found that these features concerned administrative and personal constraints and resulted in a different search method being performed based on the location. This was not a technical effect because it related merely to presentation of information.

5.1.3 The appellant argued that, in addition to the distinguishing features identified in the decision under appeal, document D4 did not disclose the steps of obtaining the search types associated with the matched whitelisted location and outputting a graphical user interface with indications of obtained search type(s). The appellant contested the examining division's finding that the distinguishing features made no technical contribution. The distinguishing features provided a user interface which facilitated user selection of a search type.

5.2 Document D4 discloses a GPS navigation system for smart phones implemented on the Android platform (page V5-66, right column, second full paragraph; page V5-67, right-hand column, point III). The mobile navigation system of D4 includes four subsystems (page V5-67, right-hand column, point III, to page V5-68, left-hand column, point "A. UIMS"):

- a quick response (QR) Decoder Subsystem (QDS), which transforms a captured QR code into corresponding geographic information (Geocode);

- a GPS Navigation Subsystem (GNS), which provides the user's current position, nearby scenic spot searching, and route planning;

- a Contacts Application Subsystem (CAS), which uses instant GPS positioning to perceive the positions of friends and track their paths on the map; and

- a User Main Interface Subsystem (UMIS), which integrates all subsystems, displays a menu with options for user selection of the functions provided by the three subsystems and displays the results of executing those functions by the other subsystems.

The menu displayed by the UMIS subsystem includes the options "Scanner", "Driving directions" and "Friends" corresponding to the functionality of the QDS, GNS and CAS (page V5-68, left-hand column, point "A. UIMS").

5.3 Document D4 therefore discloses a navigation system in a mobile device, which also reads QR codes, searches nearby scenic spots and positions friends. The user can scan a QR code to obtain the coordinate of a scenic spot and then choose to go to that spot (page V5-69).

5.4 As acknowledged in the decision under appeal, document D4 does not disclose a list of locations and specific search types associated to each location in the list (see point 5.1 above).

In the decision under appeal, the examining division found that the claimed steps of "obtaining the one or more search types associated with the geographic location" and "outputting ... at least an indication of the one or more search types associated with the location" were disclosed on page V5-68 of document D4. The examining division cited the following passage:

"When the user inquires an address by using position searching interface, position searching module will match the address with the database. When the user further searches nearby scenic spots, scenic spots searching module works".

The board does not agree that page V5-68 discloses the two steps as argued by the examining division. The two claimed steps provide a predictive GUI that allows the user to select a search type from the list of "search types" applicable to the current (whitelisted) location. In the example of the first sentence of the cited passage, however, the position search interface may have been activated by the user. In the second example, no interface is explicitly mentioned. Page V5-68 of D4 cited in the decision under appeal does not disclose the GUI of D4 predictively displaying an interface for a particular search, such as a position search or a scenic spot search of D4, let alone a specific interface based on a location.

The board thus agrees with the appellant that document D4 does not disclose the steps of obtaining the search types and outputting the respective indications, both steps depending on there being search types associated with whitelisted locations.

5.5 In view of the above, the method of claim 1 differs from the disclosure of document D4 at least in that it includes the following two groups of steps (the first group corresponding to the distinguishing features identified in the decision under appeal, see point 5.1.1 above):

- storing a plurality of whitelisted locations, associating one or more search types with each whitelisted location and determining that the geographic location of the mobile computing device matches one of the whitelisted locations;

- obtaining the search types associated with the matched whitelisted location and responsive to obtaining the one or more search types, outputting a GUI comprising an indication for each of the search types associated with the matched whitelisted location.

5.6 The "indication" for a search type is an interactive element of the GUI which offers a specific search function and is a technical feature (see also T 2028/11, Reasons 3.6). The board does not agree with the assessment of the decision under appeal that the distinguishing features, even those of the first group identified in the contested decision, relate only to presentation of information as such and that "[i]t is irrelevant from a technical standpoint which searches or search types are offered by a technical system, only the personal requirements of a user dictate such choices". Since the functionality of the system is determined by the interactive GUI elements displayed, it is technically relevant that specific interactive elements are displayed.

Moreover, the distinguishing features mentioned above are not determined by the subjective wishes of the user but result in the GUI being automatically adapted to the location of the mobile device in that the GUI provides the search functionality which is applicable to the location. This is a technical difference. The board agrees with the appellant that these distinguishing features facilitate the selection of a visual search type associated with the location of the mobile phone.

5.7 None of the prior-art documents D1 to D3 cited in the proceedings discloses the distinguishing features.

5.8 Furthermore, since none of the cited documents describes or suggests the starting concept of the invention, i.e. that there are specific search types, such as QR code scanning, associated with certain locations and that in order to perform a search at a location the user selects a search type associated with the location, the board considers that no combination of the cited prior art can render the subject-matter of claim 1 obvious.

5.9 Therefore, the subject-matter of claim 1 of the new main request is inventive over the cited prior art.

Concluding remarks

6. Claim 1 of the new main request overcomes all the objections raised in the proceedings and is allowable taking into account the prior-art evidence on file. However, the other claims and the description may still have to be adapted to claim 1. In view of this, the case is to be remitted to the examining division for further prosecution on the basis of the new main request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution.