Should a non-technical feature being the sole difference over the prior art be dealt with under novelty or inventive step?
The Board in the present case takes both approaches, namely arguing a lack of novelty due to the difference feature being a subjective feature and therefore not having a limiting effect on the claim. With this lack of novelty reasoning, the Board appears to follow T 553/02 which states in reason 1.3 that "(...) nontechnical features providing no technical contribution to the claimed product (...) do not limit in any way the scope of such a claim".
The Board subsidiarily argues that even if the difference feature were to limit the claim, the claim would lack inventive step based on the difference feature failing to provide a technical solution to a problem. Here, the Board appears to directly follow the approach set out in GL G-VII 5.4.
Summary of Facts and Submissions
I. This is an appeal against the decision of the Examining Division to refuse the European patent application No. 98957085.8. The application concerns the masking of network delay in a networked, user-interactive software application.
II. The Examining Division refused the application according to the state of the file essentially because the idea of masking the delay using a cinematographic technique was not new in view of Capps M. and Stotts D.: "Research Issues in Developing Networked Virtual Realities: Working Group Report on Distributed System Aspects of Sharing a Virtual Reality", Sixth IEEE Workshop on Enabling Technologies: Infrastructure for Collaborative Enterprises, Cambridge, MA, USA, 18-20 June 1997, pages 205-211 (D6).
(...)
IV. In the communication accompanying the summons to oral proceedings, the Board expressed doubts whether, even with the new amendments, claim 1 was novel over D6. Furthermore, the Board considered that, even if the feature of distracting a user with a cinematographic effect were considered to be a difference, this appeared to be a matter of human perception and therefore subjective and not technical. In a reply, the appellant informed the Board that it would not be attending the oral proceedings.
(...)
VI. Claim 1 reads as follows:
"A software agent (114, 116, 118) for local use at a user in a user-interactive software application (112) for running in a distributed system (100) with multiple data processing machines (102, 104, 106) connected via a data network (110), the software agent (114, 116, 118) comprising
an input (203) for receiving information about a delay in the network (110), and
an effector (224) for locally at the user masking the delay by selectively creating an effect dependent on the delay,
the effector being arranged for creating the effect and diverting the user from parts of the application (112) affected by the delay using a cinematographic technique to manipulate an image displayed to the user, sounds supplied to the user or tactile feedback to the user."
Reasons for the Decision
1. The invention
1.1 The invention concerns a networked, user-interactive software application, such as a virtual environment or a multiplayer video game (page 1, lines 2 to 4 of the published application). Such software applications are generally sensitive to delay caused by network latency. In a networked video game, where multiple users are interacting in real time, the network delay may spoil the interactivity of the game (page 1, lines 8 to 12).
1.2 The software agent of the invention seeks to mask the delay by creating a distracting effect that diverts the user from the parts of the application affected by the delay (page 2, lines 3 to 6, 13 and 14). The effect is created using a "cinematographic technique" to manipulate an image displayed to the user, sounds supplied to the user, or tactile feedback to the user (page 2, lines 10 to 14). The cinematographic technique may be, for example: zooming in or zooming out; a dummy object blocking the view; an "interlude"; or switching to another scene (page 2, lines 17 to 24).
1.3 Figure 3 shows an example of a networked video game according to the invention, involving two avatars engaged in hand-to-hand combat. Each avatar is controlled by respective users at networked machines (Figure 1: 102 and 104). When either machine detects an unacceptable network delay, it switches to a close-up (zoomed in) representation of the avatars showing their facial expressions but not the blows that are affected by the delay (page 6, lines 21 to 31). This results in the claimed effect of "diverting the user from parts of the application affected by the delay".
(...)
3. Novelty - claim 1
3.1 The appellant argued that in the invention the delay and the adverse effects were accepted as they were and the cinematographic technique was used to divert the user from these adverse effects. In contrast, the aim of the temporal warping in D6 was to compensate for the delay such that the end of the ball's trajectory was reached without delay. Thus, the temporal warping in D6 was not "diverting the user from parts of the application affected by the delay".
3.2 However, in the Board's view, whether or not a cinematographic technique has the effect of diverting the user from parts of the application affected by the delay is a matter of human perception. The effect will depend on the user's visual system and state of mind, and is, therefore, also subjective. For example, the warping of the ball in D6 might serve to distract some users from other parts of the application, such as the throwing and catching at each end of the event. Other users might not be so distracted and might still notice the delay in all parts of the application. In the Board's view, such a difference cannot have a limiting effect on the claim.
3.3 Accordingly, claim 1 is not novel (Article 54(1) and (2) EPC).
4. Inventive step - claim 1
4.1 Even if the feature of diverting the user from parts of the application affected by the delay had been considered to distinguish the invention, the Board judges that it would not have involved an inventive step.
4.2 It is established jurisprudence of the boards of appeal that an allowable invention must be a technical solution to a technical problem. The appellant stated that the technical problem was how to deal with network delay. The technical solution was to divert the user with the effect. However, since as discussed above, this solution is a matter of human perception, it follows that it would be non-technical. Furthermore, it also follows that it would be unpredictable whether such a subjective feature would actually solve the technical problem. In this respect, the invention is somewhat analogous to showing a video clip to somebody waiting for a lift to arrive, which is also using a cinematographic technique to deal with a delay. Thus, there would be no technical solution to the problem.
Order
For these reasons it is decided that:
The appeal is dismissed.
This decision has European Case Law Identifier: ECLI:EP:BA:2014:T125908.20140506. The whole decision can be found
here. The file wrapper can be found
here. Photo from European patent application No. 98957085.8
