T 1158/02 (Vehicle web access/ICO SERVICES) 07-02-2006

Reasons for the Decision

1. Admissibility of the appeal.

The appeal complies with the requirements referred to in Rule 65(1) EPC and is therefore admissible.

2. The respondent's requests

The different versions of independent claim 12 according to the respondent's three requests vary essentially only in the definition of the last feature, the "input connection". According to the second auxiliary request, the input connection is a wired link, a limitation not contained in the preceding requests. Since the Board has come to the conclusion that even with this limitation the invention according to claim 12 does not involve an inventive step, the present decision will only deal with the respondent's second auxiliary request.

3. Claim 12 of the second auxiliary request: Inventive step

3.1 Novelty not being in dispute, the Board will turn directly to the issue of inventive step.

3.2 The decision under appeal presents two lines of argumentation, one based on E12-WP and one based on E24. Both documents are relevant, but E24 appears to have the largest number of features in common with claim 12 of the second auxiliary request. This document will therefore be taken as starting point.

3.3 E24 discloses a passenger vehicle having the following features:

- access to the Internet (see p. 16, l. 21),

- a central computer 40 having the function of an Internet server for e-mail (see figure 4; p. 10, l. 25; p. 16, l. 21),

- a local network (e.g. figure 4, "Datenbus 54"; p. 1, l. 21-25) within the vehicle to provide access to the central computer for passengers in the vehicle,

- a transceiver for providing a first, wireless link (figure 4, "Funkmodem 48") from the central computer to the Internet for use whilst the vehicle is in motion (p. 16, l. 22 "während einer Zugfahrt"), and

- an input connection (implicit, since a disk drive is required for the floppy disk 44; p. 16, l. 6-10) to permit the downloading into the central computer through a second, wired link (the floppy disk drive being a wired connection to the central server 40; this interpretation was not contested by the respondent, see point XIII above) prior to a journey (e.g. p. 11, l. 34), of pre-selected information for access by the passengers during the journey in the vehicle (e.g. p. 10, l. 35 onwards "Informationen über bestimmte Sehenswürdigkeiten").

3.4 The subject-matter of claim 12 is distinguished from the vehicle disclosed in E24 in that:

(a) the Internet connection provides access to a web,

(b) the central computer is a proxy server,

(c) the pre-selected information is in the form of web pages and downloaded into the proxy server.

3.5 The objective technical problem underlying these distinguishing features can be regarded as to improve the functionalities of the Internet connection whilst minimising the use of the (expensive) wireless capacity. These are general aims which the skilled person must be expected to pursue even without any express hints.

3.6 E24 mentions that the passengers can access the Internet for e-mail communication and the like (see p. 16, l. 21,22: "... Zugriff zum Internet, damit elektronische Post usw. vom Fahrsitz 1 aus während einer Zugfahrt erledigt werden kann"). It was well known to the person skilled in information technology before the filing date that the World Wide Web was a major feature of the Internet. This is mentioned in the patent-in-suit (e.g. in paragraph [0002]) and is also clear from E12-WP (stressing that "/t/he Internet is becoming more and more a part of our daily lives..." and "/w/e 'surf' the net just for fun", and referring to a "communications revolution", p. 2) as well as other documents cited in the proceedings. The passage in E24 cited above, and in particular the term "usw." meaning "and the like", would therefore have strongly suggested a web connection to the skilled person.

The Opposition Division held that "at least once should the word 'Web' appear in the disclosure to hint the skilled person at loading Web-Pages" (decision, p. 7). The Board disagrees. The skilled person, being "aware of what /is/ common general knowledge in the art" ("Guidelines for Examination in the European Patent Office" C-IV, 9.3), needs no reminder of trends within his field of technology, and even less of "revolutions".

Thus, it was obvious for the skilled person to provide feature (a) above.

3.7 From the formulation of the technical problem above (point 3.5) it follows that the skilled person would have sought to adapt the system shown in E24 so that it provided a cost-effective connection to the World Wide Web. In paragraph [0004] of the description of the patent-in-suit it is acknowledged that proxy servers "have been developed for local area networks to provide a common gateway from the network to the Internet... which caches all the pages that have been accessed by the users on the network". Thus, using a proxy server as central computer in E24 did not require an inventive activity of the skilled person.

It follows that distinguishing feature (b) above was also an obvious addition to E24.

3.8 As to distinguishing feature (c), i.e. providing the pre-selected information in form of web pages, it is noted that E24 discloses providing the passengers with information related to the journey (see p. 10, l. 36), this information being stored on a record carrier (illustrated as a floppy disk 44). The information is pre-selected and provided before the journey, i.e. when the train is stationary, via a link which the Board considers to be within the scope of the term "wired" (see point 3.3 above). It is immediately apparent that a disc drive connection, independent of the wireless link, is a cheap method of providing information.

E24 suggests providing information about places of interest along the rail line. Such information can be found in books and brochures, which may well be what the authors of E24 had in mind. But with the advent of Internet, web pages as a source of information started to gain importance. Since storing web pages is not more difficult than storing any other information formats, it was inevitable that the skilled person would have thought about the possibility of storing such information on the floppy disk in the format HTML (HyperText Mark-up Language) used for web-pages and downloading it into the central computer as HTML documents.

Thus, the addition of feature (c) above was also obvious.

3.9 Even if each one of the features (a), (b) and (c) is an obvious modification of the system in E24, it could be argued that a non-obvious interrelationship exists between them. Indeed, the respondent has pointed out (cf. letter dated 5 November 2003, p. 8) that the central computer described in E24, being at most an e-mail server, does not store web pages and therefore cannot perform the functions of a proxy server (i.e. caching retrieved web pages for further use). It would therefore not have been obvious to add a proxy server to E24.

The argument is thus that only the addition of the first feature opened up the possibility to add the second feature. It might be helpful to visualize the situation in the following way. The prior art document E24 is the starting point from which a path leads away. There are forks in the path, and only if the skilled person following the path takes the right turn in every fork will he arrive at the invention. Coming to the first fork he has to choose between providing a web access facility and not doing so. Without exercising inventive skill (see above) he takes the web access route. At a second crossroads he opts for a proxy server (again without exercising inventive skill). The point is now that if he had taken the wrong turn in the first fork he would not even have reached the second fork.

The Board recognizes that in some cases such a circumstance might render an invention non-obvious. If, for example, the addition of a first feature appears pointless or even disadvantageous in view of the closest prior art, and the feature's usefulness only becomes apparent in the light of a further added feature, then the interrelationship between these features is strong and the invention probably involves an inventive step. If, on the other hand, the first step is in itself clearly desirable, then further steps may well follow in a natural way. In the present case it has been established that the World Wide Web was well known at the filing date. It can be assumed that the train passengers envisaged in E24 would appreciate being able to surf the Web in addition to sending e-mails. Thus, the initial step of providing a Web access was as such obvious. In this situation the skilled person was in practice obliged to consider what kind of central computer was required and, as already demonstrated, the proxy server was a conventional choice. Thus, and continuing the path analogy above, the skilled person had no difficulty in arriving at the invention because the path from the first fork led him inevitably to the second fork. The Board considers in fact that the skilled person is normally capable of adding any number of features to the prior art as long as they are known in themselves and have an expected interrelationship (or none at all).

Finally, according to distinguishing feature (c), the web pages are downloaded into the proxy server. Again, although E24 does not disclose a proxy server, the skilled person was led to this feature because of the choices he had previously made along the path.

3.10 Thus, since all the new claim features are obvious additions to the teaching of E24 and there is no non-obvious interrelationship between features, the subject-matter of claim 12 according to the respondent's second auxiliary request lacks an inventive step (Article 56 EPC).

4. The respondent's main and first auxiliary requests

Claim 12 according to the main and the first auxiliary requests being broader than according to the second auxiliary request, the preceding argumentation applies to these claims mutatis mutandis. It follows that there is no need to consider the appellant's objection under Article 123(2) EPC with respect to the first auxiliary request (cf point XII above).