T 1929/12 (Remotely determining a computer configuration/SONY) 14-07-2015

Reasons for the Decision

The alleged procedural violations, Article 11 RPBA

1. According to Article 11 RPBA, the board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance procee­dings, unless special reasons present themselves for doing otherwise.

2. The appellant argued that the decision had to be set aside because it was not reasoned and thus did not com­ply with Rule 111(2) EPC. In particular, the appellant argued as follows.

2.1 Section II of the material annexed to the decision was entitled "Provisional Opinion of the Examining Division" which, by definition of "provisional", could not contain the reasons for the decision. Section III, en­titled "Additional Comments", did not relate to Ar­ticle 123(2) EPC under which the application was re­fused, and thus could not represent the rea­sons for the deci­sion either. Since, therefore, the de­cision did not provide reasons for refusing the application, the decision had to be overturned (see the grounds of appeal, points 2 to 2.2).

2.2 The "Provisional Opinion of the Examining Division" did not refer "to the actual wording (and hence subject-matter) of the claims" and thus failed to "identify any particular claim wording that is considered to represent added subject matter" (see the grounds of appeal, points 3.2 and 3.3; appellant's emphasis).

2.3 The decision made it "extremely difficult for the Appli­cant to properly respond to the objec­tion" because, so the argument, "it is not realis­tic [...] for the Appli­cant to detail support for every one of the very large number of combinations of [added] claim fea­tures" (see the grounds of appeal, points 3.4 and 3.5; appellant's emphasis).

3. It was further noted that section I, entitled "Summary of Facts and Submissions", made no mention of the oral procee­dings, and that section II of the decision did not explicitly address the appli­cant's submissions.

4. The board takes the following position on the circum­stan­ces referred to.

4.1 While the material annexed to the decision does not men­tion the oral proceedings, the summons to oral procee­dings and the applicant's reply to the summons are men­tioned (see section I, points 9 and 10), and the oral proceedings them­selves are referred to on the front sheet of the decision (Form 2007).

4.2 That the decision contains a section entitled "Provi­sional Opinion" rather than one entitled, say, "Reasons" appears to suggest that the examining division based its final decision on text copied from its summons to oral proceedings ("cut and paste") and failed to edit the copied text sufficiently. The board disagrees with the appellant who argued that copying and pasting from the provisional opinion is in itself to be criticised in that it prejudged any argument made at the oral pro­cee­dings (letter of 8 June 2015, section 3, point 6). More­over, the board considers that the wrong section title, undesirable as it may be, does not imply that the de­cision can - let alone must - be considered to contain no reasons at all. Rather, in the context of the deci­sion as a whole and the pro­ce­dural context in which it was issued it is evident that the examining division meant the "Provi­sio­nal Opinion" to contain the reasons for the decision.

4.3 While the decision does not explicitly address and re­fute the appellant's arguments in the decision under appeal, it is further evident from the minutes that these argu­ments were heard, understood and exhaustively discussed during the oral proceedings. This establishes to the board's satisfaction that the examining division took its de­ci­sion in knowledge and appreciation of the appellant's arguments.

4.4 The board agrees with the appellant that an ob­jection under Article 123(2) EPC requires an indication of which particular feature or combination of features of the claim in question goes beyond the content of the appli­cation as originally filed.

4.4.1 The decision under appeal accepts that "all features de­fined in claim 1 seem to have a basis in the appli­ca­tion as originally filed" but states that "their combination goes [...] be­yond the application as originally filed" (p. 5, 3rd para.). It then explains why it was found "hard to determine what is the sequence of method steps defined in Figures 3A-3D" and that hence "clear and unambiguous basis for the amendments of claim 1" was lacking (see p. 5, 4th para. to p. 6, 4th para.). More­over, it is stated that "[c]laim 1 seems to combine fea­tures from [two different] embodiments" disclosed in the application and thus seemed to "creat[e] a comple­tely new embodiment" which was "not directly and unambigu­ous­ly disclosed in the present application" (p. 6, 5th para.).

4.4.2 The board notes that even if it were indeed difficult or even impossible to establish in complete detail how the me­thods depicted in figures 3A to 3D interacted with each other, that is insufficient to warrant the fin­ding that the specific claims on file did not comply with Article 123(2) EPC. The failure of a description to dis­close a particular combination of features such as a se­quence of steps is only relevant for the claims at stake if such a combination of features was actually claimed.

4.4.3 The decision under appeal does not identify specific fea­tures of then claim 1 which were considered, indi­vi­dually or in combination, to go beyond the application as originally filed. In this regard, the board therefore agrees with the appellant that the decision is insuffi­ciently reasoned, Rule 111(2) EPC. This constitutes a fundamental deficiency within the meaning of Article 11 RPBA.

5. However, it is clear from the minutes (points 1.2.1 and 1.2.2) that the appli­cant argued that the amended claim found basis in the combined features of the methods de­picted in figures 3A to 3D and that it identified, in com­bining these methods, step 331 in figure 3A with step 371 in figure 3B.

5.1 In the decision under appeal the examining division argues why, in its opinion, the original application did not disclose that, and how, the methods of figure 3A and figures 3B to 3D were to be combined and makes clear that the objection under Article 123(2) EPC rests on the com­bination of features from figure 3A and figures 3C to 3D, respectively (see p. 6, 5th para.). While no parti­cu­lar fea­tures were mentioned the board accepts as evi­dent that then claim 1 constitutes such a combination, for instance the step of "sending a player detection code" relating to figure 3A, the step of "send[ing ...] the user's computer to a Detection URL" to figure 3B and the remaining steps to figure 3D. Again, this corres­ponds to the minuted in­dication of original disclosure given by the applicant (see minutes, point 1.2.1).

5.2 Although the board agrees with the appellant that the mi­nutes reporting the discussion of contentious points between the examining division and the applicant cannot replace the decision (see appellant's letter of 8 June 2015, section 3, point 7), the minutes enabled the board to under­stand the reasons for the decision suffi­ciently well for it to deal with it.

5.3 The board also disagrees with the appellant's alle­gation that the deficiencies in the reasons given in the deci­sion were "prejudicial to its ability to contest the de­cision under appeal in an effective manner during the appeal procedure" (see grounds of appeal, point 3.5). Firstly, the appellant, when drafting its appeal, had at its disposal ­the minutes which contain a detailed expo­sition of the arguments exchanged before the decision was taken during the oral proceedings. And secondly, the onus of proof that amendments conform with Article 123(2) EPC is on the applicant. Therefore it must be required of the applicant - and cannot be con­si­dered unrealistic - to provide a basis in the application as originally filed for the amended claims as a whole. The board also cannot see a combina­to­rial problem here: starting from the minuted basis for the amendments (see minutes, point 1.2.1), all that is required of the appellant appears to be an indi­cation why and in what way the methods depicted in figures 3A-3D combine with each other to provide disclosure for the sequence of method steps according to then claim 1.

6. In summary, even though the board agrees with the appellant that the decision under appeal suffers from a fundamental deficiency within the meaning of Article 11 RPBA, no purpose would be served by remitting the case to the examining division, which would most likely have stood by its opinion and eventually issued another, better reasoned decision to the same effect. This con­si­deration, combined with the fact that both the board and the appellant were able to deal with the de­ci­sion under appeal in view of the minutes, constituted, in the board's view, special reasons for not remitting the case under Article 11 RPBA.

The invention

7. The application relates to the distribution of multi­media content to users. As users may have different de­vi­ces or device configurations they will need the con­tent in different formats. It was known that content pro­viders pre-formatted the content according to several common user configurations and that users were required to make their selection manually. Accordingly, it could happen that the format desired by a user had not been made available by the provider or that the user did not know enough technical details to make the required choice. The invention is thus meant to minimise the necessary user input and to relieve the content provider from having to anticipate all possible (or all supported) con­fi­gurations (see p. 2, last para. to p. 3, 2nd para.).

7.1 As a solution, support is proposed to determine the user's computer configuration automatically (see e.g. p. 3, last para.).

7.2 In response to a user's request to have a piece of con­tent delivered, the proposed solution works broadly as follows: A "delivery management server" (p. 9, last para.) sends the user a number of scripts which (try to) determine the relevant user confi­guration automati­cally and return this information so that the content can be formatted accordingly. If the information is in­suffi­cient (i.e. incomplete or possibly outdated; see p. 10, 2nd para.), a "preferences page" may open in which the user has to enter the missing information manually. This is referred to as "indirect query­ing" (see e.g. p. 24, last para.; fig. 1, steps 332 to 334). It is disclosed that, in an embodiment, "the preferences page includes a mechanism through which the connection speed of the user's computer can be deter­mined" (p. 10, 3rd. para.; p. 16, last para. to p. 17, 1st para).

7.3 It is further disclosed that "direct reporting" (or "di­rect query[ing]") "of client capabilities is gene­rally easier and more efficient than indirect query­ing" (see p. 23, 2nd para. to p. 25, 1st para.). In this context it is disclosed that the server sends a request to the cli­ent asking "for different information than the client either already has sent or is prepared to send based on a standard or previous request" (see p. 23, 3rd para.). In response, the client will return "in­formation that was not included in information pre­vious­ly received or that the client understood was desired by the server" (p. 23, lines 2 to 4 from the bottom). It is stated that this "permits the server to get all of the information desired" (p. 23, last line) and "can reduce the amount of data being sent, particularly when some of the data is not desired for processing at the server" (p. 24, lines 1 to 4).

7.4 Figure 3A discloses the overall procedure and, in par­ti­cular, the "indirect querying" method for obtaining missing information (steps 332 to 334). The "direct querying" method is depicted in figure 3D which branches off the flow chart according to figure 3C.

Article 123(2) EPC

8. Claim 1 as subject to the contested decision and claim 1 of the present main request combine steps which are disclosed, respectively, in figures 3A to 3D. Specifically, figure 3A discloses the steps of "sending player detection code" (no. 320), "receiving an HTTP request" (implicitly be­tween steps 330 and 331), and "determining" sufficiency (step 331), figure 3B discloses the step of conditio­nally "sending [of] the user's computer to a Detection URL" (step 313), figure 3C discloses the step of "recei­ving a Detection HTTP request" (steps 375 and 376) and fi­gure 3D discloses the steps of "sending" and "recei­ving" modified header information (steps 382 to 386). The steps of claim 1 of the 1st and 2nd auxiliary re­quests are disclosed in figures 3B-3D. The features de­picted in figure 3A were deleted (step 320) or modified, so that in their amended version they are originally disclosed in figure 3B (steps 371 and 372 rather than steps 330 and 331).

9. The decision under appeal argued that it was not clear from the application how the methods according to the flow charts in figures 3A to 3D interacted with each other and concluded that the claimed feature combination con­stituted a new method which was not directly and unambi­guously disclosed in the application as originally filed (see decision, p. 6, last para.).

9.1 In the summons to oral proceedings the board said it tended to agree with the examining division that the precise interaction between the flow charts - espe­cially between that of figure 3A with those of figures 3B to 3D - was not clearly disclosed.

9.2 The board has no such doubts regarding claim 1 according to the 1st or 2nd auxiliary request.

9.3 In view of this and the fact that claim 1 according to all requests shares another deficiency (see below), the board decided to leave open the question whether claim 1 of the main request complies with Article 123(2) EPC.

The prior art

10. D1, by the same applicant and inventor, discloses the general idea underlying the present application, namely the semi-automatic determination of the user's computer configuration via de­tection scripts or the "preferences page". In other words, it discloses what the present application refers to as the "indirect querying" method (see paras. 13 to 15 and 54 to 58; figs. 1 and 3). D1 also discloses that eventually the requested content is for­matted in view of the configuration information obtained (see para. 13).

11. Over D1, the present application is meant to contribute the idea of "direct querying", i.e. requesting missing information from the client computer directly rather than having the user input it manually­.

Article 84 EPC 1973

12. Claim 1 of all requests specifies that the server sends an "instruction" requesting the user's computer to send "different information" and that the user's computer returns "modified" configuration information.

12.1 The board considers this language to be unclear for the follow­ing reasons:

a) The claims do not specify what the client does in response to the received instruction and in order to produce the modified information, and, in par­ti­cular, does not imply that the client operation is fully automatic.

b) The claims do not specify in what way the requested information is "different" from the information which the "user has already sent".

Both issues are relevant in order to assess the effect and the in­ven­tive merit of the present invention in view of and over the "indirect querying" method known from D1 (see fig. 3).

12.2 The appellant argues as follows:

a) The claimed me­thod has to be construed as a fully automatic procedure because it refers to an "in­struc­tion" sent to the "user's computer" and there­fore "does not require input from the user" (see letter of 8 June 2015, point 14.4., last para.), because it is referred to as the "direct que­ry­­ing" me­thod according to which the client software "di­rect­ly re­ports th[e] information", and because it is disclosed as being "easier and more efficient than in­di­rect query­ing" based on the pro­vision of a prefe­ren­ces page to the user (p. 24, last para. to p. 25, 1st para.).

b) The "different information" referred to any infor­mation the user's computer may not have sent be­fore, for instance because it was "not [...] un­der­­stood to be desired" or because "the client [was not] prepared to send" it before (p. 23, 2nd and 3rd paras.). Typically, according to the appellant, different information related to a specific parameter of the client computer (say its operating system or its browser) about which the server had no information yet.

As to the effects of the "indirect querying" method, the appellant argued that an automated querying avoided the need for user input, and the delayed request for "diffe­rent information" allowed the user to send less infor­ma­tion initially, which helped to reduce the bandwidth re­quirement and to enhance privacy (see p. 24, 1st para.).

12.3 The board is not convinced by these arguments.

a) The fact that the server sends an instruction and the client, in response, pro­du­ces "modified infor­ma­tion" does not exclude the possi­bility that the client involves the user in the process. Also nei­ther the qualification of the querying as "direct" nor the statement that the "di­rect repor­ting" is "easier and more efficient than indirect querying" implies that the retrieval of "modified" infor­ma­­tion is a fully automated procedure (apart from the fact that neither is contained in the claim language).

b) The term "different information than the user's computer has already sent" (main and 1st auxiliary request) does not allow any conclusion to be drawn as to the amount of infor­mation the user may have sent (in absolute terms or relative to what is re­quired), why the user may have not sent this in­for­mation before, or why the server may need it at the spe­cified point. As the appellant points out, the ser­ver may simply lack certain information, but it is also conceivable that the server needs "different information" because an attempt to for­mat the re­quested content based on the available in­formation failed, or because the server requests as "diffe­rent information" the client's confirma­tion that it has installed a player which the server might prefer, for technical or commercial reasons, as formatting target. The term used in the 2nd auxiliary re­quest, "different information than the user's com­puter understood was desired by the server", does not clarify this point, as nothing is claimed about the server's "desire". And the phrase added in the 3rd auxiliary request "which is necessary for the server to service a request for media from the user's computer" or what it is used for (see point X above) does not clarify the point either, because the servicing of a media request by formatting the requested content is the common ultimate purpose of all configuration information referred to in the claims (and the application as a whole).

Hence, the claim language allows no conclusion to be drawn as to whether the pertinent features contribute, in view of D1, to reducing the amount of user inter­action, to reducing the bandwidth requirement or to increasing privacy.

13. In summary, the board was unable establish that the alle­ged effects of "direct querying" could be attributed to the claimed features. To the extent that the appellant argued these effects to be constitutive for the matter for which protection is sought, this renders claim 1 of all requests unclear, Article 84 EPC 1973.

Article 56 EPC 1973

14. The appellant argued that, in general terms, the present application was meant to improve the method according to D1 by incorporating what the application refers to as "direct querying".

14.1 However, as argued above, the effects which the appellant alleged were achieved by direct querying cannot be attributed to the claimed features in the con­text of claim 1 according to any of the requests. No fur­ther effects than those discussed were put forward by the appellant, and nor are any apparent to the board.

14.2 Therefore, the appellant's argument as to why the claimed matter might show an inventive step over D1 also fails.

14.3 The board concludes that the claimed matter according to all requests lacks an inventive step over D1, Article 56 EPC 1973.