T 1866/08 – Doubts et al

This decision on an examination appeal is the first decision taken in 2013 that I report on this blog. 

The application filed by Yahoo! Inc. concerned the problem of locating illegal copies of digital works in computer networks such as the Internet. The Examining Division (ED) had refused the application for lack of inventive step over document D1.

Claim 1 before the Board read:

A method for operating an intermediary computer to track data requested by a user from a source server over a network, wherein the source server is arranged to communicate with the intermediary computer via a first network communications link, and the intermediary computer is arranged to communicate with the user via a second network communications link, the method comprising the computer-implemented steps of:

receiving (206), at the intermediary computer (104), the requested data from the source server (102); and

supplying (212), via the second network communications link, the requested data from the intermediary computer to the user (106);

characterised in that the method comprises the intermediary computer performing the steps of:

determining (208) whether the requested data includes rights data that indicates an owner of rights to the requested data; and

if the data includes the rights data:

(a) determining whether the source is associated with the owner of rights to the data; and

(b) if the source is not associated with the owner of rights to the requested data, then the intermediary computer not allowing the requested data to be supplied to the user; and

(c) if the source is associated with the owner of rights to the requested data, then the intermediary computer supplying the data to the user and recording (210) that the requested data was supplied.

Independent claims 17 and 20 were directed at a computer system for tracking data and a computer-readable medium carrying sequences of instructions for tacking data, respectively.

The decision contains several interesting passages:

A 84 EPC 1973 and claim construction

[…]

[4] The independent claims specify that the data should “include rights data that indicates an owner of rights in the ... data”, for instance copyright […].

[4.1] The appellant argues that the term “owner of rights” is a “term of art” which the person skilled in the pertinent field of technology would understand […], thereby suggesting it to be a term of the technical arts. The appellant further argues that the skilled person would never consider this term to “in clude a person to whom a content manager has dis tri bu ted some content”.

[4.2] The board disagrees. In the board’s judgment it is primarily a legal issue what the terms “right”, “copy right” and right “ownership” mean and what they possibly exclude or under what conditions. While the board concedes that they are also used by persons skilled in fields of technology, e.g. in the context of what is known as digital rights management, the board rejects the idea that this makes them terms of technical arts with a clear technical meaning. Furthermore, the board notes that rights such as copyright may be transferred - partly or as a whole, and depending on jurisdiction – so that the user requesting and receiving data cannot a priori be excluded as “an owner of rights” in the content. For instance, the board deems it typical that the user receiving the content will also receive the right to use (e.g. display) it, possibly under certain limitations, and thus at least temporarily “own” these rights.

[4.3] According to the claims it is determined whether the source server is “associated with” the rights owner without specifying how this association is expressed or how it would be determined. The board considers that the skilled person knows ways of practising this feature: In the simplest case, one could require that the source server is explicitly mentioned as the owner so as to be “associated with” it. Alternatively, some data structure such as a table could be employed to express a mapping from rights owners to source servers (or vice versa). Or, the data itself might express the association by mentioning both the rights owner and the source server. The board thus accepts this feature as clear, if broad.

[4.4] Accordingly, the board construes the independent claims of the main request as follows: Data in transit from a source server to the user may or may not be flagged for delivery control at an intermediary computer –  by containing rights data or not –, but if it is, data is supplied to the user if and only if the data contains a direct or indirect reference to the source server. This interpretation had been presented in the summons to oral proceedings (OPs) […] and was not challenged by the appellant.

Inventive step

[5] The decision under appeal starts from D1 and makes reference to passages on pages 1, 4 and 9.

[5.1] On page 1, D1 introduces the problem of protecting ownership of digital data on the Internet. Within the solution proposed by D1, however, pages 4 and 9 relate to different specific situations. [… I]t is disclosed that a network client enforces the imprinting of an ID on the requested data before it is made available to the user. The network client is not disclosed as inspecting the data for imprints, let alone to prevent use of the data depending on this inspection. [… T]he description turns to methods for “reading imprinted ID information” as opposed to “methods for imprinting ID information”. In this context, “detector” devices are described […] and it is disclosed that a “proxy server” may be equipped with such a detector. This implies the inspection of data in transit through the network.

[5.2] Accordingly the board agrees with the appellant, that the appropriate starting point within D1 for the analysis is the disclosure on page 9 […]: D1 discloses that a proxy server intercepts data in transit from a source to a user and determines whether data contains an imprinted ID. The board agrees with the ED that the imprinted ID expresses “an owner of rights”, at least on a broad interpretation of that term as justified above.

[5.3] D1 discloses that the proxy server might detect an illegal action […] and suggests that this might be achieved by detecting an imprinted ID […]. The board agrees with the appellant that the detection of an imprinted ID does not, according to D1, imply illegal distribution of content […]. Rather, the skilled person would understand D1 as disclosing that the proxy server of D1 merely checks for likely illegal actions.

[5.4] Moreover, D1 does not disclose the proxy server as interrupting the transmission by not supplying the data to the user. Rather, the skilled person would assume from D1 that the proxy server passes on the data as usual even if an imprinted ID was detected. In the board’s judgment this is implied by the fact that the proxy server, on the one hand, does not prove a copy to be illegal and, on the other hand, should not block a legal da ta transmission. Starting from D1 and trying to improve the capability of the system to trace illegal co pies, the board considers it obvious to impose the stricter rule that any data with an imprinted ID should be deemed illegal anywhere on the network outside the user device associated with the ID. Data with an imprinted ID detected at the proxy server would thus be illegal by definition. In this case, blocking further trans mission of the illegal copy would obviously be an “appropriate measure” which D1 discloses should be taken […].

[5.5] However, the imprinted ID according to D1 does not re pre sent the source server from which data was requested, but the requesting user […]. D1 thus does not disclose that the detector, e.g. in the proxy server, makes reference to the source server when assessing legality of the intercepted transmission, let alone that it forwards intercepted data or not depending on the source server. In the board’s judgment, D1 also does not suggest taking into account the source server to improve its capability of tracing illegal copies or when taking “appropriate measures” if an illegal action is determined.

[6] The decision under appeal […] determines as the difference between more general earlier claim 1 and D1 that “claim 1 determines if the source of the data is associated with the owner and a decision is taken based on that to provide or not the data”.

[7] The decision goes on to state […] that this difference “merely” represents “the steps per formed by a data tracking and transmission system that implements rules about what to do with the traffic and registers th[ese] activities” and that the “task of tracking data traffic is a mere administrative task”. In passing it is argued that these rules and tasks were well-known, for example from the “activity of a librarian registering incoming and outgoing books of the library”. The only technical features of claim 1 were merely “data trans mission and data recording” and these were known from the prior art. The remaining features did not, so the argument, solve a technical problem but an administrative one, namely to “control the distribution of un authorised data” which would belong to the non-technical “domain of the administration of property”. This difference, especially within the context of D1 which is already adapted to “[implement] rules driven by a detect ion event” […], would amount to a mere automation of this administrative task, and if its performance were improved by the automation then only to the extent that any computer automation would cause such improvement, without any further technical effect. This difference could thus not establish an inventive step.

[7.1] The board takes a difference perspective on the invention. The board concedes that the claimed invention has administrative aspects but considers that these cannot be stripped from the technical context in which they occur. The claimed invention relates to the “tracking” and delivery control of “data requested by a user from a source server over a network” in view of that source server. The board fails to see how this would be analogous to, let alone known from, the activity of a librarian “registering incoming and outgoing books of the library”, or why the skilled person trying to improve the system of D1, would turn to the activities of a librarian for help. The board also considers that the claimed invention goes beyond the mere implementation of a non-technical administrative task without any effect beyond the benefits of any computer automation […]. Rather, in the board’s view, the effect of the invention over D1 is tied to a specifically technical situation, namely the request and download of data by a user over a network from a server, as is now clearly claimed. In this respect, the board agrees with the appellant in considering an automated, network-based mechanism to control and authorize the delivery of data as solving a technical problem […].

                      

[7.2] Therefore, the board concludes that in view of the amended claims the decision under appeal has to be set aside. Moreover, since D1 does not disclose or suggest data delivery depending on the source server […], the board concludes that claim 1 is inventive over D1.

Scope of the search

[8] The application had been filed as a divisional application of European application no. 01991123.9, based on the description and the drawings of the latter, parent application but with a new set of claims 1-53 […]. The European search report however merely refers to claims 1-37. In fact, the European search report issued for the present application is substantially identical to the search report issued for the parent application which contained 37 claims. It would therefore seem possible that the present search relied on the results of the search in the parent application.

[9] The board’s conclusion as to inventive step crucially depends on the finding that the source-sensitive automated delivery control of data across a network solves a technical problem.

[9.1] The board notes that the great majority of claims of the parent application, and thus of those which appear to have been searched in the present application, lack the feature of source-sensitive delivery control. Only claims 16, 17, 36 and 37 of the parent application contain this feature. In contrast, all of claims 1-53 originally filed with the present divisional application contain it (esp. independent claims 1, 18 and 37).

[9.2] The board has its doubts whether the feature of delivery control was exhaustively searched for three reasons:

• Due to the fact that this feature was substantially less prominent in the claims of the parent application than in those of the present divisional application, and that the claims of the parent may have been the basis of the search for the divisional.
• because the preamble of all claims - both of the parent and the divisional application - by referring to “tracking data” rather than delivery control may have further detracted from the importance attached to this feature, and
• because the ED considered it to be of no technical relevance anyway […].

[9.3] The board has no basis for determining whether these doubts are in fact justified, in which case a further search should be carried out, or not. Therefore, the board is not in a position to order the grant of a patent based on the present main request and thus exercises its discretion under A 111(1) to remit the case for further prosecution to the ED.

[9.4] In response to the board’s indication that it intended to remit the case, the appellant submitted that a further search was neither necessary nor equitable at this point of the procedure […]. However, when the board decides to remit the case, it is a matter for the ED to determine whether or not to carry out an further search, a determination in which the board cannot interfere. The appellant’s concerns about an additional search will thus have to be directed to the ED, too.

Request for OPs before the ED

[10] According to the principles developed by the boards of appeal (see, for example, G 8/91 [7]; and T 34/90 [headnotes]), the appeal procedure is separate from the examination procedure. It follows that a request for OPs to be held before the ED cannot validly be made during the appeal proceedings. As a consequence, the appellant will have to file a new request for OPs after the procedure will have been resumed by the ED.  

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The file wrapper can be found here.