Wednesday, 17 August 2011

T 1411/08 – Not Notorious

The present case concerns the refusal of a Euro-PCT application by the Examining Division (ED) for lack of inventive step. 

The EPO, acting as ISA, had found that no search was to be performed, because the claims related, essentially, to a method of doing business, and had issued a corresponding declaration, under Article 17(2)(a) PCT. The ED had not carried out an additional search.

Claim 1 of the sole request before the ED read :
A method comprising:

maintaining a database (106) of personal information relating to a consumer (102), the database (106) being a component of a system;

receiving a request initiated by a consumer (102) and transmitted over a global communication network to the system, wherein the system is associated with a plurality of domain names, wherein the request includes one of the plurality of domain names, and wherein each of the domain names includes a common domain name element, and an identification of a subject of the request without specifying a specific provider thereof;

identifying at least one provider (104a, 104b, 104c) of goods and/or services related to the subject matter of the request in response to the received request, based upon the received request and the personal information relating to the consumer (102) in the database (106);

forwarding information regarding the or each identified provider from the system to the consumer (102), wherein the consumer (102) is subsequently capable of choosing a provider from the or each identified provider (104a, 104b, 104c) to communicate therewith;

facilitating completion of a transaction between the consumer (102) and a provider selected from the or each identified provider; and

updating the personal information based on the completed transaction, wherein the updated personal information is accessible by the system (150) for use in connection with a subsequent request initiated by the consumer (102).
The Board finds the ED to have acted light-heartedly:

[1] The ED refused the application due to a lack of inventive step. No document was cited as evidence, but the decision identifies differences over the prior art in the following way […] :

In comparison with a normal http request-response sequence, the ED identified three differences:
1) When parsing a URL, it is usually the part that follows the actual resource which is parsed (a query, the content of a form), in this case it is the domain name that is parsed.

2) A central database containing information about the consumer.

3) The update of the information about the consumer based upon the transaction.
[2] The decision then goes on to discuss these three differences.
1) is said to result from a technically straightforward implementation of a business idea.

Of 2), it is said to be well known that websites store information about the user’s behaviour, and to do this using a central database is just one of two well-known alternatives, each with well-known advantages and disadvantages. The other alternative is to store the information in a cookie.

3) is, again, seen as a technically straightforward implementation of a business idea.
[3] The ED’s argument, then, relies on an understanding of the prior art. For the argument to work, it must be the case that the claimed invention actually does differ in the three points identified, and it must also be the case that there were websites which tracked the behaviour of users.

[4] In general, when a Search Division has found that no search is to be performed, it is not always necessary for the ED to carry out an “additional search” before raising an inventive step objection. T 1242/04 [9.2] explains it this way:
According to the established case law of the boards of appeal it is possible to raise an objection of lack of inventive step without documented prior art ? That should be allowable where the objection is based on “notorious knowledge” or indisputably forms part of the common general knowledge (CGK). Such cases, however, are exceptional, and a search is otherwise essential.
[4.1] Under the term “notorious”, the present Board understands, firstly, prior art which is so well known that its existence at the date of priority cannot be reasonably disputed. This is to be distinguished from the skilled person’s CGK, which is something that generally can be reasonably questioned.

[4.2] Further to that, the present Board understands “notorious” as implying that technical detail is not significant. The examination of a combination of features in relation to inventive step normally involves questions such as what advantages and disadvantages the combination is said to have, and in what technical areas it is used. This is the sort of information a search should uncover. On the other hand, a claim may be so drafted that such questions do not arise. It is prior art reflecting such generic features that the Board understands as “notorious”. Thus a “computer for sending a message” is notorious, whereas a “32-bit computer for sending a message” would not be, when, for example, questions of advantages and disadvantages of 32-bit computers arise.

[5] In the present case, the ED has not identified the prior art as “notorious” or an indisputable part of the skilled person’s CGK. In the Board’s understanding of those terms, neither the normal http request-response sequence, nor the websites which store information about the user’s behaviour falls within their meaning. The issue of what constituted the normal http request-response sequence at the priority date is certainly open to question, and it is certainly something towards which a search can be directed. The same goes for websites storing information on user behaviour.

[6] The Board, therefore, concludes that in the present case, the ED could and should have ensured that a search was performed before refusing the application for lack of inventive step.

[7] The Board considers that the failure to carry out an “additional search” constitutes a substantial procedural violation and that the reimbursement of the appeal fee must be ordered. The reasons are as follows.

[7.1] The consequence of the lack of search is that the decision is founded on prior art which cannot reasonably be assessed. It may be true that the invention defined in claim 1 differs from the normal http request-response sequence precisely as the ED states, but neither the appellant nor the Board can see whether that is the case. Nor can the appellant or the Board assess whether or not there were websites which stored information on user behaviour before the priority date. The appellant cannot prove that there were not, other than by providing all the previously published technical literature and saying that it cannot be found there. Such an assessment of the literature is what the search is supposed to provide.

[7.2] In T 1515/07 the Board found that the ED must be held to have committed a substantial procedural violation in the sense of R 103(1)(a) because it did not perform an additional search that was manifestly necessary.

[7.3] In the present case, the additional search was manifestly necessary since, as set out above, the invention claimed contained technical features which cannot be regarded as notorious. The Board, therefore, finds that a substantial procedural violation was committed. […]

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution, which should include an additional search.

3. The appeal fee is to be reimbursed.

Should you wish to download the whole decision, click here.

The file wrapper can be found here.

NB: There is a post on this decision on Laurent Teyssèdre’s blog.


Myshkin said...

Hmmm, after having taken a look at the first instance decision I have the impression that the ED only asserted certain things to be part of the common general knowledge, not that they were "notorious". In my view an ED may certainly assert that something is common general knowledge without providing documentary evidence, as long as the applicant has not contested this.

In the present case the applicant does not seem to have contested anything, at least not in the statement of grounds. The minutes of the OP do not show that any asserted common general knowledge was contested, either.

It could even be said that the statement of grounds does not attempt to explain why the decision of the ED was wrong. However, the applicant did amend the claims so I guess the appeal should be found admissible. But does the fact that he amended even the main request not indicate that he did not disagree with the assessment of the Division?

All in all I don't really see why not carrying out a search amounts to a substantial procedural violation in this case. The Board may find the reasoning incorrect, but that's something else.