T 0390/21 (Document management/ALTIRNAO) 14-08-2023

Reasons for the Decision

1. The application relates to a document management system which stores the documents it manages in a public file sharing system.

2. The decision under appeal - main request

2.1 To come to a decision on the main request, the written decision first deals with claim 1 of the sixth auxiliary request (and of the fourth and fifth auxiliary requests), then with claim 1 of the third auxiliary request, which contains features not present in claim 1 of the sixth auxiliary request, and then concludes that the subject-matter of claim 1 of the main request (and of the first and second auxiliary requests) lacks inventive step because it is broader than the subject-matter of claim 1 of the third auxiliary request.

2.2 The examining division essentially argued that the subject-matter of claim 1 of the sixth auxiliary request amounted to a system comprising a prior-art company-external file sharing system, such as Google Drive, and a duplicate company-internal file sharing system (referred to as "document management system" in claim 1), wherein copies of some or all of the files stored in the company-internal file sharing system were also stored in the company-external file sharing system under a "document management system" account created for the company, which allows the document management system to manage the permissions of the files stored in the company-external file sharing system (see the decision, Reasons 2.3, 2.5 and 2.7).

The examining division further stated that it appeared to be common ground during the oral proceedings that known file sharing systems, such as Google Drive, already included all the "backend" functionality of the claimed document management system (Reasons 2.6).

The decision to arrange the company-external and company-internal file sharing/document management systems in the way claimed was essentially a non-technical, administrative decision whose implementation did not require inventive skill "as implicitly acknowledged by the paucity of technical detail as to the 'document management system' in the application itself and as highlighted by the fact that the implementation require[d] little more than the duplication of a known system" (Reasons 2.7 to 2.12).

2.3 The appellant contested, inter alia, that the document management system of claim 1 was a (company-internal) duplicate of the (company-external) file sharing system. It also disputed that known file sharing systems included all the "backend" functionality of the claimed document management system.

2.4 The board agrees with the appellant that the examining division's reasoning is not convincing.

Claim 1 of the sixth auxiliary request relates to a system comprising a file sharing system and a document management system, wherein the document management system uses the file sharing system for storing a set of managed document files. Indeed, claim 1 specifies that the document management system is "a user of the file sharing system for a plurality of managed files stored on the file sharing system" and that it controls "access to the managed files stored on the file sharing system". The backend of the document management system is configured to process requests by end users who "interact with the managed files", i.e. with the files stored on the file sharing system, and it performs "actions requested in the file sharing system".

If the claimed document management system were a "company-internal file sharing system" similar to Google Drive, it would manage access to files stored in that company-internal file sharing system, not to files stored externally. The examining division did not argue that Google Drive can be configured to manage access to files in another file sharing system, let alone provide evidence to support this.

2.5 As to the appellant's contestation of the examining division's assertion that known file sharing systems included all the "backend" functionality of the claimed document management system, the board notes that the appellant in principle could have raised this argument regarding alleged facts during the first-instance proceedings in response to the examining division's communication of 2 October 2020 (see point 3.5 below). Nevertheless, since that communication was issued only shortly before the oral proceedings and deviated from the examining division's earlier reasoning in a number of ways, the board considers it appropriate to admit this amendment of the appellant's case into the appeal proceedings (Article 12(4) RPBA 2020).

Since the examining division's reasoning is based on a contested factual assertion which is supported neither by evidence nor by cogent reasons, this is a further reason why the inventive-step reasoning for claim 1 of the sixth auxiliary request cannot stand (see decision T 2467/09, Reasons 8).

2.6 Since the inventive-step reasoning for the refusal of the sixth auxiliary request formed the basis for the refusal of the main request, the decision also has to be set aside in respect of the main request.

3. Alleged substantial procedural violation

3.1 In support of its request for reimbursement of the appeal fee, which it has now withdrawn, the appellant argued that the written decision was insufficiently reasoned within the meaning of Rule 111(2) EPC. Since, under Rule 103(1)(a) and (6) EPC, the board should consider ex officio whether the appeal is to be reimbursed (see decision J 3/14, Reasons 8), it is appropriate to comment on whether the written decision was sufficiently reasoned.

3.2 According to the appellant, the decision's reasoning was obscure. The examining division had not considered the wording of the claims and had failed to properly apply the problem-and-solution approach. The reference to the "paucity" of technical details appeared to be nothing but a value judgment, which did not reflect any of the conditions of the EPC.

3.3 Although the board agrees with the appellant that the decision's reasoning is not convincing, it considers that the decision does present a sufficiently logically coherent chain of reasoning (see the decision, Reasons 2.5 to 2.13, summarised in point 2.2 above, and Reasons 4.3 to 4.5).

Moreover, the written decision deals with the appellant's counter-arguments (Reasons 2.14 to 2.21 and 4.6 to 4.8).

3.4 It is true that the written reasons barely refer to the wording of the claims. However, claim 1 of each request defines a file system comprising a file sharing system and a document management system. There is no dispute that the file sharing system was part of the prior art, and the decision covers the features which define the backend of the document management system by stating that "it appeared to be common ground during the oral proceedings" that known file sharing systems included the functionality of the claimed backend.

3.5 In its statement of grounds of appeal, the appellant denied having acknowledged that the features defining the backend were disclosed by known file sharing systems, and the minutes of the oral proceedings do not confirm that there was such common ground.

However, the examining division's communication of 2 October 2020 contained, in point 5.4, the assertion that "the functionality provided by [the components of the claimed document management system] matches the functionality already provided by file sharing systems such as Google Drive". There is no evidence on file that the appellant specifically contested this assertion during the first-instance proceedings. The board is therefore inclined to read "it appeared to be common ground during the oral proceedings that" as "the appellant did not contest that".

In this context, the board observes that, in its statement of grounds of appeal, the appellant did not point out any feature of the claimed backend which, in the appellant's view, was not disclosed by a file sharing system such as Google Drive. The board does not consider the lack of a contestation to be an acknowledgement that a file sharing system does disclose the relevant features, but it arguably renders it acceptable that the examining division did not back up its factual assertion, which had previously been communicated to the appellant, with documentary evidence.

3.6 As to the examining division's reference to the "paucity of technical detail", these words were used in support of the finding that the skilled person would have been able to implement a system comprising a company-external file sharing system and a duplicate company-internal file sharing server-cum-document management system arranged in accordance with the examining division's interpretation of claim 1 (see the decision, Reasons 2.12).

Essentially, the examining division argued that its position that the skilled person would have been able to implement the functional features of the claim was supported by the absence of further technical detail of those features in the application. This argument therefore served a clear purpose in the context of the decision's reasoning.

3.7 Finally, an alleged failure to properly apply the problem-and-solution approach cannot be equated with a lack of reasoning.

3.8 In sum, the board is not convinced that the deficiencies of the contested decision amount to a substantial procedural violation. There is therefore no basis for ordering reimbursement of the appeal fee under Rule 103(1)(a) EPC.

4. Remittal for further prosecution

4.1 In view of point 2. above, the decision to refuse the application cannot be upheld.

4.2 Nevertheless, it still has to be assessed whether the subject-matter of claim 1 of the main request or of any of the first to sixth auxiliary requests involves an inventive step over the prior art and whether the other requirements of the EPC are met.

4.3 Since the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020), in the circumstances of the present case special reasons within the meaning of Article 11 RPBA present themselves for remitting the case for further prosecution (see decisions T 1966/16, Reasons 2.2; and T 731/17, Reasons 7.2 and 7.3).

The case is therefore to be remitted to the examining division for further prosecution on the basis of the main request (Article 111(1) EPC).

4.4 Since the appellant's request for oral proceedings is conditional on the board not setting aside the decision under appeal, this decision can be taken without holding oral proceedings.