Tuesday, 27 November 2012

T 905/09 – Barbie Is Lonely, Buy Me A Ken

Sometimes you get the impression that the members of the Board must have had a good laugh ...

The appeal was filed after the Examining Division had refused the application under consideration.

Claim 1 of the main request before the Board read:
An electronic mail communication method performed by a transmission control apparatus (30), the method comprising the steps of:
receiving a signal from a mobile telephone defining an ID code assigned to an anthropomorphized object comprising a stuffed animal toy and an electronic mail address for an owner of the anthropomorphized object, the ID code having been input by the owner via a display of the mobile telephone; and
electronically generating a mail text related to said ID code and sending said mail text as an electronic mail purporting to be from the stuffed animal toy to the owner, wherein the mail text comprises a conversational text expressing feelings including characters, signs, graphics, voices or sounds.
The Board found this claim to lack inventive step:

[1] The invention is concerned with generating and sending an electronic mail (email) to the owner of a so-called “anthropomorphized” object, especially a stuffed animal toy, so that the email is perceived as having been sent by the object. To enable this the user enters - via a mobile telephone - an ID code “associated with” and thereby identifying the object of interest and an email address to which the email should be sent. According to the main request, the email “purport[s] to be from the stuffed animal toy”, is “related to said ID code” and comprises “conversational text expressing feelings”. According to the auxiliary request, the email is generated based on “attribute information” for the object and for its owner, stored in respective tables, on predefined texts also stored in a table, and on grammar rules. […]

Inventive step

[4] It is undisputed that the claimed invention consists of a mixture of so-called technical and non-technical features but has, as a whole, technical character, for instance by virtue of requiring an email to be sent. For this situation, it is established jurisprudence of the boards of appeal that inventive step has to be assessed by taking account of all those, but only those features which contribute to the technical character of the invention, and that an aim in a non-technical field which the claimed invention aims to achieve may appear in the formulation of the technical problem to be solved according to the problem-solution-approach (see esp. T 641/00 [headnotes]).

[5] Therefore, before the inventive merit of the claimed invention can be assessed, it must be determined in which technical field the invention makes a contribution and which technical problem the claimed invention solves.

Technical field

[6] The appellant argues that the invention belongs to the field of stuffed animal toys or dolls. In this field, “talking dolls” are known which exhibit enhanced anthropomorphism over normal dolls by communicating electronically with their owners. Assessment of the inventive step of the invention should, so the appellant, start from such a doll and appreciate that the invention enhances its anthropomorphism further with technical means, and with a limited increase in development and production cost […]. To solve this problem, the skilled person in this field would modify the sound clips the doll is able to play back, for example by recording new sentences which purport to express the doll’s feelings. However, it would not be obvious for the skilled person to switch to an entirely different communication medium such as email.

[7] The board does not follow this argument.

[7.1] The invention relates to the stuffed animal toy only by way of the ID code identifying it and the content of the generated email which “purport[s] to be from” the toy and to express its “feelings”.

[7.2] According to the claims, the ID code is “assigned to” the toy in an unspecified way. The description discloses that the ID code may be printed on the back of the price tag […]. Otherwise, the toy need not be modified at all to enable the claimed invention: The registration of the ID code is done by the owner, the email is generated in the “transmission control apparatus”, and the illusion that the email is from the toy is created in the mind of the receiver of the email […].

[7.3] The board agrees with the appellant that talking dolls create an illusion, too, and that the owner of such a doll must also be willing to accept the sound clips as being spoken by the doll (or, in the case of small children, unable to notice that they are not). However, a talking doll requires the provision of constructional elements such as a recording device, a loudspeaker, batteries, and, possibly, sensors or timers.

[7.4] In contrast, the claimed invention applies to any given stuffed animal toy alike and it does not change the toy’s design or production at all. The development and production departments need not even be aware of the claimed registration or the sent emails.

[7.5] The board therefore rejects the appellant’s assertion that the invention makes a contribution in the field of physical toys and dolls.

Technical and non-technical features

[8] In the board’s view, the following features do not constitute or imply any technical limitations of the claimed subject matter.

[8.1] It is of no technical relevance for the invention whether the email address belongs to the owner of the toy or any other person.

[8.2] The ID code serves to select and/or generate the text to be sent to the user. Beyond that, it does not have any impact on the claimed invention that the ID code is “assigned to” a specific stuffed animal toy. As already argued above, the invention does not depend on the nature of the object. Hence, it is not a technical feature of the claim that the ID code is “assigned to” a physical toy.

[8.3] If the alleged effect of enhanced anthropomorphism is actually achieved by the invention, then due to the fact that the generated email “purports to be from the stuffed animal toy”, is held in a conversation tone and expresses “feelings”. The extent to which this effect is achieved depends, on the one hand, on the receiver’s mental disposition to accept the illusion and, on the other hand, on the specific content of the email, i.e. which words are used. A complete loss of content may render the communication meaningless for the receiver but does not affect the technical working of the claimed invention. Thus, the content of the email constitutes mere “cognitive data” in the terms of T 1194/97 [3.3] and therefore does not contribute to the technical character of the claimed invention.

Technical problem

[9] Accordingly, the board considers as the objective technical problem solved by the claimed invention how to communicate to the owner of a given stuffed animal toy customized information purporting to come from the toy and express its feelings. It is to be noted that this is not a problem of improving a toy in any way, so that the relevant skilled person is not a toy designer. Rather he or she is a communication engineer.

[9.1] In the board’s view, the motivation for addressing this problem may be a marketing idea for affective advertising (“Your cuddly bear is cold, get me a jacket.” or “Barbie is lonely, buy me a Ken.”). The description in fact discloses the option of using the invention for delivering news or advertisements to the users who, due to the conversational and emotional tone of the text, “can accept” them “without feeling any mental resistance” […].

[9.2] The appellant argues that this perspective takes a distorted view on the invention because it must already have been made before the marketing department can “hijack” it for targeted advertising.

[9.3] The board disagrees with this argument.

[9.3.1] First, marketing is to a large degree a matter of psychology so that marketing experts can realistically be assumed to be familiar with affective concepts. Moreover, the idea of using conversational tone and emotionalised content for targeted advertisement, for which customers may have to register, is a rather well-known marketing scheme (imagine, say, a car dealer offering a new set of summer tyres at the first signs of spring). Considering the invention as the implementation of a given marketing concept is thus, in the board’s view, a realistic perspective, beyond the fact that it is consistent with the description.

[9.3.2] Second, and more importantly, the reference to marketing only serves to illustrate that the above objective technical problem is not a contrived one but can reasonably be assumed to arise. The board concedes that different perspectives could be taken on the invention, for example as a means for parents trying to increase the emotional bonds between their child and its teddy bear, but holds that the technical problem solved by the invention would remain the same.

Main request

[10] The skilled person, in order to solve the above problem by implementing the given communication task, would have to choose a means of communication with the owners. A priori, several options exist, such as telephone, telefax, WWW, or email. All of them were well-established at the priority date so that the skilled person would have made his choice according to circumstances and after weighing the well-known advantages and disadvantages of these communication means against each other. Specifically, the choice of email was obvious at the time.

[10.1] Evidently, for email communication to be possible the email address of an owner must be made available to the information provider. Likewise, it appears to be a matter of necessity that the object of interest – the stuffed animal toy – must be identified to the information provider so that the information can be customized to the object.

[10.2] The skilled person would also have to decide how that information should be made available. Again various alternatives exist, including the ones mentioned above, all of which were equally well-established and thus equally obvious.

[10.3] The board considers that it was commonly known at the priority date that Internet users would register their interest to receive information – such as electronic newsletters – via a web browser. Document D1 reports that by its filing date in June 1999 it was known to use the wireless application protocol WAP to browse the Internet with a mobile phone […]. In the board’s view the desire to access the Internet via a mobile phone was common at the priority date of the present application and that also the use of WAP to achieve it was commonly known at the time. The use of a mobile telephone to register the relevant data would thus be an option that the skilled person would consider as a matter of course.

[10.4] Finally, the skilled person would have to obtain the message text to be sent. It follows directly from the problem that the text should relate to the registered toy and it would be obvious, for instance, to select the appropriate text for a given toy, identified by its ID code, from a list of predefined such texts, thereby “electronically generating a mail text” according to claims 1 and 4 of the main request.

[10.5] In summary, the board concludes that the skilled person would have to make only routine choices – selecting technical means for the user to register the relevant data and for the information provider to obtain and communicate the information of interest – so as to arrive at the subject matter of claims 1 and 4 of the main request which, hence, lacks an inventive step over common knowledge in the art, A 56 EPC 1973.

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

The file wrapper can be found here.


Roufousse T. Fairfly said...

The decision seems to be (almost) entirely based on the skilled person's general knowledge, with D1 only mentioned in passing: On request by the applicant, the examining division had later introduced a document, D1=GB2349551, but only, as it argued, to illustrate what was considered notoriously known in the art [...]. Consistent with this position, the decision under appeal does not rely on D1 in its reasons.

If D1 hadn't been introduced, I think that the board would have sent the file back to the division.

Myshkin said...

As long as the ED only relies on notorious knowledge (or on common general knowledge not contested by the applicant), I see no reason why the Board would send it back.

Roufousse T. Fairfly said...

In my corner of the EPO-Battleship I never managed to send out a Search Report with a "No search" declaration, regardless how hopeless the application was.

The message from the director (who signed out search files) was that issuing a "No search" declaration was much more trouble than it was worth, as the boards often considered it a right for the applicant to be apprised of the relevant prior art. Better cite something which you believed went in the general direction of the nonsense (e.g.: perpetual motion) you were looking at; this wouldn't hinder you in being scathing in your notification, and concentrate on 83, 84, 57, 53, 52(2), etc., issues.

A Teddy Bear with a phone number. What will they think of next?