Tuesday, May 10, 2016 T 1145/10 - Notoriously known, but still to be identified

In this examination appeal, the Board considers that, depending on the case at hand, that it may be acceptable to start the inventive-step assessment of a particular invention including a mix of technical and non-technical features from a "general-purpose computer system" or a "standard computerised system" as known at the effective filing date, without citing documentary evidence.

As such, the Board confirms the established practice of the BoA (e.g., T 1242/04 citing T 939/92) in which notorious general technical knowledge does not require documentary evidence. 

However, in the present case, the Examining Division failed to identify which features were exactly considered to be anticipated by that well-known prior art. 

Moreover, the Board considers that where specific technical features or functionality of the standard computerised system are required to implement the non-technical features, those specific well-known technical features and functionality should be clearly identified.

However, rather than further considering the inventive step over a standard computerised system, the Board proceeds with selecting a D2 document as CPA while considering the distinguishing features as non-technical administrative constraints which would be obvious for the skilled person.

As such, the Board avoids a potentially tricky subject. Namely, one can imagine that, without having any documentary evidence as a basis for discussion, it may not always be trivial to clearly determine which features of a computer implemented invention are exactly anticipated by that well-known prior art, and which non-technical features may be implemented thereby...

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

The invention

2. The invention is directed to a method for protecting regions within an electronic document in a word-processing application.

The word-processing application provides an administrative mode and an enforcement mode (see the description of the application as filed, page 3, lines 28 to 32).

In the administrative mode, a protection scheme may be defined for the entire document, for instance making the entire document read-only. Additionally, the user may select a region within the electronic document and identify users authorised to freely edit the region (page 2, line 17 to page 3, line 2, page 3, line 32 to page 4, line 2, page 9, line 26 to page 10, line 30).

In the enforcement mode, when a request to edit a region of the electronic document is received, the word-processing program of the invention determines whether the user making the request is authorised to edit the region. If the user is not authorised, the request is denied (page 3, lines 3 to 18, page 4, lines 3 to 7, page 10, line 31 to page 11, line 8).

Main request - inventive step

3. The main request corresponds to the third auxiliary request considered in the contested decision. The Board agrees with the Examining Division that the claims define a mix of technical and non-technical features. In particular, the invention of claim 1 implements an administrative method comprising

(a) defining the protection scheme for an entire document, where the protection is one of: read-only, only insertion of comments, editing only of form fields, or allowing tracked changes,

(b) defining regions within a document and identifying for each region one or more users authorised to freely edit the region,

(c) enforcing the protection scheme and authorisation settings of (a) and (b).

4. The Examining Division recognised that applying the protection scheme and denying editing of a (region of a) document were technical features (see section 1.8.2 of the decision). In the opinion of the Board, in the context of a computer implementation of the administrative method, those features, which essentially correspond to (c) above, indeed result in stored data being retrieved or changed, or in a user being denied write access to stored data. The Board considers those effects technical, in line with decision T 690/06 of 24 April 2007 (see reasons 7 and 8). Consequently, the Board finds that features (c) "interact with technical features to produce a technical effect", and contribute to the technical character of the invention (see T 154/04, OJ EPO 2008, 46, see reasons 5(F) and 13).

The Examining Division considered "a standard computerized system as it was generally known before the priority year of 2003", which did not require further evidence, to be the closest prior art with regard to the then main request and first and second auxiliary requests (see section 1.4 of the decision). The difference between the subject-matter of claim 1 of the then main request and the generally-known computer system was that the known technical means were used to carry out the administrative aspects. The objective problem solved by the claimed invention was therefore "how to implement the requirements specification on a generally known computer system". The implementation of such a method in a software application, even if considered technical, was a matter of common general knowledge of a skilled person, who in that case was a programmer with normal skills and the general knowledge at the priority date.

In the first-instance proceedings, claim 1 of the then third auxiliary request (see also section IX above) added to claim 1 of the preceding requests the features describing the administrative and enforcement modes of operation, the step of executing a word-processing application providing the two modes of operation and performing the steps of the method, including the step of receiving a selection of a protection scheme, and the step of

(d) dynamically displaying a message to the user depending on the location of the insertion point, wherein, if the insertion point is located within a region that may be freely edited by the user, the message indicates that the user may freely edit within the region, whereas, if the insertion point is within a region of the electronic document that the user is not authorised to freely edit, the message indicates that the user is not permitted to edit in the region.

In the inventive-step analysis for claim 1 of the then third auxiliary request, the Examining Division started from "a generally known computer system with a word processing application", which it considered to be notorious (sections 4.2 and 4.5). According to the decision, the applicant had agreed that an inventive step could only be based on feature (d) above. The Examining Division considered feature (d) to simply relate to an additional user requirement which was "the wish of the user to be notified by a message of whether or not a document region situated at or around the insertion point can be edited" (section 4.2). The objective problem underlying the distinguishing features could therefore only be seen as how to implement the requirements specification on "a generally known computer system within a word-processing application". The mere implementation of such a method, even if considered technical, was "a matter of common general knowledge of a skilled person" (section 4.3).

5. Depending on the case at hand, it may be acceptable to start the inventive-step assessment of a particular invention including a mix of technical and non-technical features from a "general-purpose computer system" or a "standard computerised system" as known at the effective filing date, without citing documentary evidence. However, the inventive-step reasoning should normally mention which features, especially which technical features of the invention, are anticipated by that well-known prior art. Moreover, where specific technical features or functionality of the standard computerised system are required to implement the non-technical features, those specific well-known technical features and functionality should be clearly identified.

In the present case, the Board finds that the implementation of the non-technical administrative process (a) to (c) requires technical functionality relating to control of access to parts of a document, user access rights, or support for multiple users. It is not clear whether the Examining Division considered such features to be part of the generally-known standard functionality of word-processing applications at the date of priority of the present application. The decision to add such essential technical functionality to a known standard system not supporting it, even if originally motivated by a non-technical requirement, involves technical considerations and might involve an inventive step.

The Examining Division did not explain in detail in the decision which functionality it considered standard or well-known functionality of the "notorious closest prior art which is a computer with a word processing application". The Board is aware that in previous communications the Examining Division had cited document D2, which discloses prior art originating from the former applicant. It relates to the version of 2002 of Microsoft Word, a well-known and widely used word-processor at the date of priority of the present application. However, this document was not cited in the decision to illustrate the generally-known functionality of a standard word-processor. Furthermore, even if in principle the functionality of such a well-known word-processor can be considered common knowledge for the skilled person, it is doubtful whether the advanced functionality derived from document D2 was notoriously known. The functionality described in it, e.g. control of access to parts of a document, was anyway neither discussed nor mentioned in the decision as being well-known from standard word-processing applications.

Consequently, the Board is not entirely persuaded by the reasoning of the contested decision with regard to inventive step, including that relating to the subject-matter of claim 1 of the then third auxiliary request, corresponding to the present main request.

6. Document D2 discloses a GUI-based word-processing application extended with some collaboration functionality for the editing or reviewing of a document by multiple users. It supports the insertion of comments to a document, and tracking of changes by multiple identified users (see title, pages 129 to 131, 135). Document D2 is hence an adequate starting point for discussing inventive step.

(Further discussion with D2 as CPA omitted)

Concluding remark

19. As none of the appellant's requests is allowable, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 1145/10 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T114510.20160226. The file wrapper can be found here. Photo "Zenith Z-19 Terminal" by ajmexico obtained via Flickr under CC BY 2.0 license (no changes made).