T 0428/18 (Predictive search results II/Google) 04-11-2020

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Application

2. The application concerns providing search query suggestions and search results related to the search query suggestions (see page 2, lines 11 and 12 of the international publication). According to the description on page 1, line 28, to page 2, line 9, prior-art query suggestion systems require multiple inputs from the user. Some search systems also provide predicted search results with query suggestions but send many search results that do not satisfy the user's information need and use excessive bandwidth.

2.1 In the method proposed in the application, a client device generates a search interface that includes a query input field (page 9, lines 13 to 22; Figure 1). The query input field receives query characters from a user and provides each input to a search engine in the form of a query suggestion request. In response to the query suggestion request, the search engine identifies and ranks query suggestions, and provides them to the client device. The query suggestions may be based on search history data. Ranking may be based on the probability of selection by the user. The client device presents the query suggestions to the user in ranking order (page 9, line 23 to page 10, line 11; Figure 1; Figure 6, page 34, lines 17 to 32).

2.2 In the embodiment of Figures 2 and 3, after a first query suggestion request, the system determines a highest-ranked query suggestion "bank" from among first query suggestions, identifies the corresponding search results SRbank, and starts a timer (page 14, lines 21 to 27). If a second query suggestion request "ba" is received, second query suggestions QSba are generated. Then the system checks whether the second query suggestions QSba include the query suggestion "bank" with the highest probability of being selected by a user. If so, the search results SRbank are provided together with the query suggestions QSba before the timer expires (page 15, line 30, to page 16, line 6).

Amended main request

3. Admission into the proceedings

3.1 The amended main request was filed during the oral proceedings before the Board and hence in a late phase of the already advanced stage referred to in Article 13(2) RPBA 2020. In accordance with this provision, it shall in principle not be admitted into the appeal proceedings unless there are exceptional circumstances which have been justified with cogent reasons by the appellant.

3.2 The request was filed after a discussion of the Board's objections under Article 123(2) EPC with regard to claim 1 of all the requests.

In this discussion, the Board explained that the requests submitted with the letter of reply did not overcome the Board's objection under Article 123(2) EPC raised against the features specifying the steps of "determining [...]" and "in response to a positive determination, receiving [...]" of the requests considered in the Board's preliminary opinion (see points 7.4 and 11.1 of the Board's communication).

The appellant argued that the amended main request, which attempted to overcome this objection, should be admitted because the appellant had understood the objection only at the oral proceedings before the Board.

3.3 The Board disagrees that in the present case these circumstances are exceptional within the meaning of Article 13(2) RPBA 2020.

In its communication, the Board described in some detail the embodiment described on page 15, line 26, to page 16, line 6 with reference to Figure 3, which the appellant had given as the basis for features introduced into the claims, taking into account the context of the related embodiment of Figure 2. The Board then raised objections for added subject-matter. One of these objections was that the original application did not disclose the determination "whether the first search results responsive to a query suggestion that is first in the first order are also responsive to a query suggestions that is first in the second order of query suggestions", as specified in claim 1 of the then main request. In particular, the determination of whether the second query suggestion request "can be interpreted as a confirmation that the search results SRbank are of interest to the user" (as stated on page 16, lines 1 to 3) did not appear to mean directly and unambiguously that the search results SRbank were responsive to the first ranked query suggestion in the second query suggestions.

3.4 In the Board's view, this indication in the Board's communication was sufficient to inform the appellant of the Board's concern. It was then up to the appellant to consider, at the earliest opportunity, whether it was necessary to amend the application to overcome the new objection and to carefully examine whether any such amendment found a basis in the application as filed (Article 123(2) EPC). In the case of the main request filed with its letter of reply, the appellant chose not to address the objection by amendment but by arguing that the objected-to features in fact did have a basis in the application as filed.

3.5 Therefore, the Board does not deem the circumstances mentioned by the appellant to be exceptional so as to justify admitting the amended main request submitted at the oral proceedings. The Board cannot for that matter see any other circumstances which would qualify as exceptional. In view of this, the Board, in accordance with Article 13(2) RPBA, does not admit the amended main request into the appeal proceedings.

First, second and third auxiliary requests

4. Admission into the proceedings

The first, second and third auxiliary requests were filed in response to the Board's communication accompanying the summons to oral proceedings. That communication raised new objections under Articles 84 and 123(2) EPC. The requests reflect legitimate attempts by the appellant to overcome those objections, were filed at the earliest opportunity, and were accompanied by arguments explaining why the appellant considered them to overcome the new objections. In exercising its discretion under Article 13(1) and (2) RPBA 2020, the Board therefore acknowledges the presence of exceptional circumstances which justify admitting these requests. Consequently, the Board admits the first, second and third auxiliary requests into the appeal proceedings.

5. Added subject-matter - claim 1

5.1 Claim 1 of the first auxiliary request specifies the following steps:

(i) determining whether the first search results (SRbank) responsive to the query suggestion that is ranked first in the first query suggestions (QSb) are also responsive to a query suggestion that is ranked first in the second query suggestions (QSbr); and

(ii) in response to a positive determination and before or on expiry of the timer (T1), retrieving, from the local cache, the first search results (SRbank) responsive to the query suggestions that are ranked first in the first and second query suggestions (QSb, QSba).

Claim 1 of the second auxiliary request includes step (ii) and replaces step (i) with the following step:

(i.2) determining whether the first search results (SRbank) responsive to the query suggestion that is ranked first in the first query suggestions (QSb) are of interest to the user.

Claim 1 of both the first and the second auxiliary request concerns a "client-based version" of the system in which the steps of starting the timer, and steps (i)/(i.2) and (ii) are performed at the client using a local cache.

Claim 1 of the third auxiliary request does not mention a local cache and specifies a "server-based" system in which the steps of starting the timer and steps corresponding to steps (i) and (ii) are performed at the server.

5.2 Steps (i) and (ii) and the corresponding steps of the second and third auxiliary requests are not specified in the original claims. In particular, the original claims refer to results responsive to either a first or a second query but do not specify that "first search results (SRbank) responsive to the query suggestions that are ranked first in the first and second query suggestions" are retrieved as a result of a determination as specified in steps (i) and (ii) of claim 1 of the first auxiliary request and in the corresponding features of the second and third auxiliary requests.

5.3 The appellant argued that features (i) and (ii) were disclosed on page 4, lines 21 to 29, and on page 15, line 33, to page 16, line 6. According to the appellant, when the two passages were read in conjunction, the skilled person would understand that the "query suggestion 'bank' with the highest probability of being selected by a user" was the first ranked query suggestion in the second set of query suggestions.

5.4 However, the Board notes that the cited passage on page 4 refers to search results associated with one highest-ranked query suggestion only, not with two highest-ranked query suggestions, one associated with a first set of query suggestions and the other associated with a second set of query suggestions.

5.5 The passage bridging pages 15 and 16 describes further steps of the process described starting on page 14 with reference to Figure 2. According to that example, after identifying the first query suggestions QSb in response to a first request ("b"), the search service determines the highest-ranked query suggestion, in this case "bank", and the respective search results SRbank. It provides the first set of query suggestions to the client at time t1 and initialises and starts a timer T1 associated with the search results SRbank (page 14, lines 21 to 30).

The description from page 15, line 30, onwards then explains that when "ba" is received as the second query suggestion request, this "can be interpreted as a confirmation that the search results SRbank are of interest to the user". If that is the case, at time t3 before the timer T1 expires, the search service sends the search results SRbank together with the query suggestions QSba to the client.

In view of the passage as a whole, the skilled person understands that this is so because the highest-ranked first query suggestion ("bank") corresponding to the first query suggestion request ("b") is still a valid query suggestion for the second query suggestion request ("ba"). However, step (i) refers not to a determination whether the highest-ranked first query suggestion is also a valid query suggestion for the second query suggestion request but to a determination whether the first search results are also valid for ("responsive to") a highest-ranked query suggestion in the set of query suggestions for the second query suggestion request.

Furthermore, the feature "that the search results SRbank are of interest to the user" in the paragraph bridging pages 15 and 16 cannot be isolated from the teaching that it is confirmed that the first highest-ranked query suggestion is also responsive to the second query suggestion request. Therefore, there is no basis for feature (i.2) in the context of claim 1 of the second auxiliary request.

Finally, comparing the query suggestion request "ba" with the highest-ranked first query suggestion "bank" and sending the search results SRbank to the client, as disclosed in the paragraph bridging pages 15 and 16, results in the retrieved results SRbank being (a) the first search results for the highest-ranked first query suggestion that are confirmed valid for the second query suggestion request, not (b) the "first search results (SRbank) responsive to the query suggestions that are ranked first in the first and second query suggestions" as specified in feature (ii) of claim 1 of the first and second auxiliary requests and in the corresponding feature of claim 1 of the third auxiliary request. Even assuming that a highest-ranked second query suggestion is determined in the embodiment described in the paragraphs bridging pages 15 and 16, which is not unambiguously derivable from the application as filed, if the search results of the highest-ranked first and second query suggestions are e.g. (x,y,z) and (x,y), respectively, the search results obtained in (a) are (x,y,z) and those according to a possible interpretation of (b) are (x,y). There is no basis in the application as filed for an embodiment corresponding to (b).

5.6 The Board's interpretation of the passage on page 15, line 30, to page 16, line 6, is confirmed by the passage on page 15, lines 5 to 11, which discloses that when "the second character in 'bank' is not 'r' so the user is not typing 'bank' into the query input field", it is determined "that the search results SRbank are not responsive to the second query suggestion request Rbr" (not to a highest-ranked second query suggestion). The skilled person understands that there is only a determination of whether the input into the query input field is satisfied by the highest-ranked first query suggestion. There is no direct determination of search results responsive to both the highest-ranked first query suggestion and a highest-ranked second query suggestion.

5.7 The other passages cited by the appellant are even less relevant for the question of added subject-matter of features (i), (i.2) and (ii). Therefore, claim 1 of the first auxiliary request, which includes features (i) and (ii), claim 1 of the second auxiliary request, which includes features (i.2) and (ii), and claim 1 of the third auxiliary request, which includes features corresponding to features (i) and (ii), add subject-matter beyond the content of the application as filed.

5.8 Therefore, none of the first to third auxiliary requests satisfies the requirements of Article 123(2) EPC.

Fourth auxiliary request

6. Admission into the proceedings

6.1 The fourth auxiliary request was filed during the oral proceedings and hence in a late phase of the already advanced stage referred to in Article 13(2) RPBA 2020.

6.2 The appellant argued that the request addressed the Board's objections and justified the late submission with the circumstance that the objections had become clear to the appellant only at the oral proceedings.

The Board disagrees with the appellant's justification, for the same reasons as given above for the amended main request.

6.3 Moreover, the Board notes that the subject-matter of claim 1 of the fourth auxiliary request is very different from that of the previous requests. It no longer concerns the use of first search results after a second query suggestion request has been provided to the search service and rather focuses for the first time on the prediction criterion being met "if the timer expires before another query suggestion request is provided".

The Board is thus of the opinion that the fourth auxiliary request represents an inadmissible shift of the subject of the appeal proceedings and amounts to a completely new case being presented to the Board for the first time at the oral proceedings. To admit such a request would be contrary to the primary object of the appeal proceedings of performing a judicial review of the decision under appeal (Article 12(2) RPBA 2020).

6.4 In view of this, the Board, in accordance with Article 13(2) RPBA, does not admit the fourth auxiliary request into the appeal proceedings.

Concluding remark

7. Since none of the requests admitted into the proceedings is allowable, the appeal is to be dismissed.