T 0140/18 (Mobile wireless advertising platform/SINGHAL) 11-10-2021

Reasons for the Decision

1. Procedural matters

In the statement of grounds of appeal, the appellant conditionally requested oral proceedings (Article 116 EPC) but subsequently requested a decision "based on the state of the file", i.e. that a decision be taken based on the case presented by the appellant hitherto in written proceedings. It follows logically that the appellant no longer wishes to present arguments to the board orally. The conditional request for oral proceedings is therefore treated as having been withdrawn. Consequently, the decision can be handed down in writing in compliance with Article 113(1) EPC (Article 12(8) RPBA 2020).

2. Main request - claim 1 - added subject-matter (Article 123(2) EPC) and clarity (Article 84 EPC)

2.1 The board agrees with the examining division that the following sub-feature of feature b of present claim 1 is not directly and unambiguously derivable from the application as filed (cf. point 16 of the impugned decision):

"... a message exposure function ... puts on hold the device function for a brief period of time, wherein the brief period of time is less than or equal to 3.5 seconds to avoid viewer irritability...".

2.2 In this respect, neither the term "brief" (in the context of time), nor the condition "less than or equal to 3.5 seconds", nor any mentioning of "viewer irritability" occur in the application documents as filed.

2.3 The appellant refers in section 3.1.1 of the statement of grounds of appeal to the passages of the original description on page 18, lines 11 to 13 and page 24, lines 11 to 21 as well as to Fig. 2A for support. However, none of these passages, explicitly or implicitly, discloses any of the aspects mentioned in point 2.2 above.

In this respect, on page 18, "a few seconds or even sub-second duration" is mentioned. On page 24, "longer than 3 to 9 seconds" is mentioned, and in Fig. 2A, examples are given of "5, 7 and 3 seconds". Even if these examples, for the sake of argument, were held to provide support for the general term "brief", there is no support for the specific value of "3.5 seconds", nor any mention of a period related to "viewer irritability".

Claim 1 therefore does not comply with Article 123(2) EPC. It is further not clear what technical limitation, if any, is implied by the term "... to avoid viewer irritability", also resulting in a lack of clarity (Article 84 EPC).

2.4 Consequently, claim 1 of the main request does not comply with Articles 123(2) and 84 EPC.

3. 1st, 2nd and 3rd auxiliary requests - claim 1 - inventive step (Articles 52(1) and 56 EPC)

3.1 Claim 1 of each of these auxiliary requests is identical and comprises the following limiting features (board's labelling A to J):

A: A wireless mobile advertising system working in

conjunction with a wireless communication network,

that delivers commercial messages to a wireless

device user,

B: the advertising system having a message server and

a handheld wireless mobile device, wherein the

mobile device comprises:

C: an inbound wireless data function with a storage

function in the mobile wireless device that receive

and store from the commercial message server a

message file that has a one or more of, audio,

text, image, and flash animation formatted

commercial messages,

D: wherein a part of each commercial message is a

preprogrammed criterion code;

E: a message exposure function that detects onset of a

device function,

F: wherein the device function includes categories of

functions including communication function, camera

function, and music function,

G: puts on hold the device function for a brief period

of time and

H: displays and/or plays a selected message from the

message file to the device user,

I: wherein the message is selected according to the

preprogrammed criterion code,

J: during the hold period."

3.2 The closest prior-art document is held to be D1.

In particular, D1 discloses features A to C, E, F and H:

A: cf. D1, paragraph [0055].

B: cf. D1, paragraphs [0040] and [0041].

C, H: cf. D1, paragraphs [0049] and [0053].

E, F: cf. D1, paragraph [0049], 3rd sentence.

3.3 The distinguishing features with respect to D1 are therefore features D, G, I and J.

Features D and I concern a "criterion code" transmitted with the commercial message on the basis of which the message is selected for display or play. Features G and J concern the holding of a device function for a brief period of time whilst the message is displayed or played.

3.4 The technical effect of features D and I is to provide information to the mobile device enabling the commercial message to be correctly processed. The technical effect of features G and J is that "a message can be played to the user without disrupting other device functions that are being executed" (cf. the impugned decision, point 14.3). These effects are independent of one another insofar as there is no requirement in claim 1 that the criterion code influences the holding period and thus there is no synergy. The respective pairs of distinguishing features D/I and G/J can therefore be assessed independently using the "partial problems" approach.

3.5 Re features D and I:

3.5.1 A "preprogrammed criterion code" as mentioned in features D and I is interpreted here as embracing any preprogrammed information (i.e. programmed before being received by the mobile device) used by the mobile device to select a message from the message file for display or play.

3.5.2 The appellant argued that the "criterion code" should be interpreted more narrowly. In this respect, the appellant submits the following:

"The criterion code may be used to identify different approaches or algorithms that may be used to expose different formats and types of messages to the user by the mobile device. The criterion code may be considered as a "header" of the message which is not part of the content and is not displayed to a user. The criterion code is used in connection with software of the mobile device. The software of the mobile device implements algorithms (which are already present in the software of the mobile device and does not have to be downloaded as part of a content of a message) according to the criterion code and selects the messages based on the criterion code. Thus, the criterion code is part of a high level control function" (cf. the statement of grounds of appeal, page 13, section 3.2.3, 3rd paragraph).

However, claim 1 does not specify that the "criterion code" must have any of these properties going beyond preprogrammed information used by the mobile device to select a message from the message file for display or play.

3.5.3 In the reply to the board's communication under Rule 100(2) EPC dated 13 September 2021 (cf. page 2, last two paragraphs), the appellant further submitted that claims were to be interpreted in the light of the description and "cannot be read in isolation, devoid of meaning and context of the claim elements and claim terms as in the specification ... Therefore a claim term or a phrase cannot be read out of the context in which it is used in the claim and the specification, and then compared to or equated to terms that may be found elsewhere in the prior art out of context ..., because terms devoid of the context in which they are used in the invention become a veritable jungle of meaningless ideas. A classic example of context is the term 'virus', which may mean both a pathogen and a computer harming malware (a piece of code)".

3.5.4 In accordance with case law, a claim should be interpreted on its own merits, but by giving its wording the broadest technically sensible meaning by the skilled person within the context of the application (see e.g. T 223/05, Reasons 3.5; T 2764/19, Reasons 3.1.1).

In the present case, the board's broad interpretation of "criterion code" makes technical sense in the context of the application, and the board sees no parallel at all with the appellant's "virus" example.

It is furthermore well-established case law that, for the purposes of judging novelty and inventive step, the scope of a claim resulting from its literal wording cannot be altered by reading into it further limiting features which appear only in the description. This would amount to amending the claims, and not to interpreting them (cf. T 1646/12, Reasons 2.1). It would also deprive the claims from their intended function (cf. e.g. T 881/01, Reasons 2.1), which is to define the subject-matter for which protection is sought (Article 84 EPC).

3.5.5 As stated above, the technical effect of features D

and I is to provide information to the mobile device enabling the commercial message to be correctly processed.

3.5.6 In this respect, in accordance with D1, content application 412 of the mobile device may configure received content to be automatically displayed or audibly played when certain events take place (cf. paragraph [0049]). Two of the many examples given are a "ring tone" that is played on reception of an incoming call (cf. paragraph [0051], last two sentences) and displaying "advertisement content" (i.e. commercial content) when the mobile device is flipped open (cf. page 6, left-hand column, lines 9-12). However, it is not stated in D1 how the content application 412 knows how to configure which message to display or play when a particular event occurs.

3.5.7 Starting out from D1, the objective technical problem associated with features D and I can therefore be seen as how to enable the content application to correctly process the received messages stored in the mobile device in order to display or play a commercial message when a particular event occurs.

3.5.8 A way to solve this problem at least hinted at by D1 is to include a script with the content (cf. page 4,

right-hand column, 4th line from bottom to page 5,

left-hand column, line 4), i.e. instruction logic indicating how the content should be used. Thus, referring to the examples mentioned above, the skilled person would be led to include with the message a script containing instructions resulting in a ring tone being played on an incoming call or displaying an advertisement message on flipping open the display. Such a script would then fall within the scope of a "criterion code" within the meaning of present claim 1.

3.5.9 The appellant argues that the "script" suggested in D1 is part of the content and does not provide any control function on a higher level, e.g. it is not part of a header and is not involved in delivery or selecting a message.

However, claim 1 does not specify that the "criterion code" may not be part of the content or define that it should provide control on "a higher level" (whatever that means). Furthermore, following the board's argumentation above (cf. point 3.5.8), the script would contain information used by the mobile device when "exposing" the message. Thus, the script would indeed be involved in delivering and selecting a message. Consequently, the appellant's argument is not convincing.

3.5.10 The board concludes that features D and I do not contribute to inventive step.

3.6 Re features G and J:

The appellant has not argued at all that this pair of features contributes to inventive step. The board therefore has no reason to re-consider the assessment of the examining division that this aspect is obvious in the light of the combination of documents D1 and D3 (cf. points 14.1 to 14.4 of the impugned decision).

3.7 Consequently, the subject-matter of claim 1 of respectively the 1st, 2nd and 3rd auxiliary requests does not involve an inventive step (Articles 52(1) and 56 EPC).

4. 4th auxiliary request - claim 1 - inventive step

4.1 Claim 1 of the 4th auxiliary request differs from claim 1 of the 2nd auxiliary request in that it includes the features that

K: the preprogrammed criterion code identifies

algorithms used to expose the message to a user of

the mobile wireless device;

L: the message is exposed to the user according to the

preprogrammed criterion code.

4.2 These additional features make no difference to the assessment of inventive step since it is obvious that if a script were received instructing how a message is to be "exposed" (cf. point 3.5.9 above), then the content application of D1 would operate in conjunction with the script enabling the instruction to be carried out. In so doing, "algorithms" in the mobile device would need to be identified and invoked, e.g. those software routines involved with reproducing audio

and/or activating a display.

5. The appellant's response to the board's communication pursuant to Rule 100(2) EPC

5.1 In the submission dated 13 September 2021, the appellant made comments with respect to claim interpretation, the technical character of the invention and inventive step, without directing these arguments specifically to the claims of any request.

5.2 As regards claim interpretation, this matter has been discussed above (cf. points 3.5.1 to 3.5.5). Furthermore, the technical character of the claimed subject-matter within the meaning of Article 52 EPC, at least as regards the subject-matter of claim 1 of the 1st to 4th auxiliary requests, has been assumed. There is therefore no need to comment on this matter.

5.3 With respect to inventive step, the appellant identifies four features, labelled features A. to D., in respect of claims directed to the "message server" and three (different) features A. to C. (NB: these features should not be confused with those identified by the board's feature labelling set out in point 3.1 above) in respect of claims directed to the "handheld mobile device" as being allegedly "not taught by any prior art singly and/or in combination" (cf. pages 5 and 6 of the above submission).

5.4 The board however points out that features A., B. and D. allegedly comprised in the "message server" are not included in claim 1 respectively of the 1st to 4th auxiliary requests and therefore not relevant to inventive step. As regards feature C. of the "message server" and features A. to C. of the "handheld mobile device", these features have been taken into account in the above discussion of inventive step (cf. point 3.5 above, "Re features D and I").

6. As there is no allowable request, the appeal must be dismissed.