This decision relates to a European patent application that deals with online stores and online shopping. Here are practical takeaways from the decision T 2745/18 (Providing a digital asset to two user devices/APPLE) of 24.11.2022 of Technical Board of Appeal 3.5.01:

Key takeaways

The mere fact that the distinguishing features relate to the second device is not a synergetic effect.

The invention

The invention relates to improved acquisition and delivery of digital assets. Claim 1 of the main request concerns an online store system providing a purchased digital asset to multiple user devices. While not claimed, the asset might include a song, movie or textual content.

Figure 1 of EP2673742

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Looking at Figure 1, the system comprises a server 102, hosting the online store, and multiple user devices to which the digital assets are downloaded, such as a portable electronic device 106 and a desktop computer 110. These user devices are associated with the user’s account at the online store.

When the user accesses the online store and purchases an asset using one of those devices (“an acquisition device” in claim 1), the asset is provided to this device and to a second electronic device based “on a previous indication by the second electronic device to the online store” (cf. third claimed feature). While not claimed, but disclosed in the application, the indication might for instance specify that the second electronic device should receive only certain media types.

The server delivers the asset to the second device and the acquisition device in different formats, based on the devices. The description does not provide any examples of formats used and does not explain how and based on what criteria it is determined which format should be used for each of the devices.

Is it patentable?

According to the decision, D1 is considered closest prior art. It was held that claim 1 differed from D1 in that:

a) The formats in which the asset is delivered to the acquisition device and to the second device are different and determined based on the devices, whereas D1 does not mention using formats at all.

b) The indication to the online store server for automatically receiving acquired digital assets is provided by the second electronic device.

c) The asset is provided to the acquisition device and to the second user device, whereas in D1 the asset is provided to either the acquisition device or to one or more second user devices.

no synergistic technical effect

2.1.4 The Board disagrees with the appellant that the distinguishing features interact synergistically. The appellant’s arguments in this respect are not convincing.

Firstly, the mere fact that the distinguishing features relate, or as the appellant put it are linked, to the second device is not a synergetic effect.

Secondly, synchronising devices with respect to a digital asset cannot constitute a synergistic technical effect, because it is not derivable based on a comparison between the claimed invention and D1. The system of D1 already provides the same asset to more than one registered user device, albeit not to the acquisition device and a further device (cf. decision, page 10, second paragraph). Accordingly, the actual effect of feature (c) lies in the alternative choice of the receiving devices. The Board cannot see that features (a) and (b) interact synergistically with this choice.

feature (a)

2.2 Concerning feature (a), the Board judges that, at the level of generality at which it is specified, this feature does not contribute to any (further) technical effect. As set out above, the description says that the “digital asset” includes textual content (cf. [27], line 6) and, when used with respect to texts, formatting covers using different fonts or text styles. This, however, relates to presentation of information and lacks technical character. The claimed formulation “based on the device” does not necessarily imply that any technical criteria are applied for selecting formats.

2.3 Incidentally, the Board judges that feature (a) is obvious even if it is narrowly interpreted as meaning that songs are provided to the claimed devices in different audio formats selected based on those devices’ rendering capabilities. The Board considers that the skilled person faced with the problem of ensuring that the devices can optimally render and store received audio assets would have readily considered using different audio formats, such as WAV and MP3. …

feature (b)

2.5 The Board judges that, starting from this embodiment it is obvious to specify the asset types to be accepted by the second device, such as the desktop computer, on the device itself. Interpreted in line with the appellant’s argument as meaning that the indication from the second device is based on the capabilities of this device (which is not claimed), the feature is even more obvious. The easiest way of indicating the second device’s capabilities to the server is to upload this device’s settings to the server.

feature (c)

2.6 Turning to feature (c), the Board judges that providing the asset to the acquisition device and a second device, follows from a business requirement.

In an ancillary line of reasoning the contested decision referred to decision T 2423/10 which concerned an online store, essentially identical to the claimed one, which provided a purchased asset to one device chosen from multiple suitable devices. T 2423/10 stated at point 6 of the reasons that “the range of devices suitable for receiving the “digital asset” is broad, but there are commercial reasons for limiting delivery to one device. The seller might, for example, want to charge the customer a fee for each device to which the “digital asset” is sent”.

The Board takes the view that this finding applies equally to the claimed choice of receiving devices. More particularly, the Board considers that, like the choice discussed in T 2423/10, the claimed choice is also based on business considerations, presumably on the applied fee scheme, and lacks technical character. Hence, applying the COMVIK approach, the business requirement to deliver the asset to the acquisition device and the second device is given to the technically skilled person within the framework of the technical problem.

2.7 Contrary to the appellant’s view, the technically skilled person is constrained by this requirement specification and would implement it, even if this runs against D1’s teaching.

2.8 The Board judges that adapting the system of D1 to provide the asset to the claimed choice of receiving devices does not pose any technical difficulty. As stated in the contested decision (see point 2.1.1, penultimate paragraph), D1 discloses all the necessary means for providing an asset to any subset of available devices (see paragraphs [21] and [40]).

Consequently, the Board finds that claim 1 lacks an inventive step (Article 56 EPC).

Further, the Board judges that none of the auxiliary requests add anything inventive. Accordingly, none of the requests fulfils the requirements of the EPC.

More information

You can read the whole decision here: T 2745/18 (Providing a digital asset to two user devices/APPLE) of 24.11.2022.

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