Search in internet and personal notes: non-technical

This decision concerns an European patent application relating to a method for presenting information on a website. Here are the practical takeaways from the decision T 1272/20 (Search in internet and personal notes/EVERNOTE) of the Technical Board of Appeal 3.5.07.

Key takeaways

The invention

The invention concerns searching for and presenting to a user relevant notes in connection with other website content as result of an internet search performed by the user. According to the description, “note” is a general name for a piece of information.

Figure 1 of EP3299973

Here is how the invention was defined in claim 1:

Is it patentable?

In the grounds of appeal, the appellant disagreed with the examining division’s identification of the features of claim 1 which had technical character. The examining division had equated features contributing to technical character with structural features and had excluded any non-structural features from the assessment of inventive step as being non-technical per se.

The appeal board shared the appellant’s view:

3.1 The appellant has – correctly – remarked that in decision T 598/14 the board did not consider that none of the claimed features was technical but rather that the features distinguishing the claimed subject-matter from the prior art did not make a technical contribution. The board further agrees with the appellant that T 598/14 did not express that any manner in which a computer performs a search is non-technical for the sole reason that the result is a “better search”. As with all subject-matter excluded as such under Article 52(2) and (3) EPC, it has to be established whether the non-technical features, to the extent that they interact with the technical subject-matter of the claim for solving a technical problem, provide a technical contribution and should be taken into account in assessing inventive step (see also T 154/04, Reasons 5; T 697/17, Reasons 4.2; T 2573/16, Reasons 4.4).

In assessing a claim, it is therefore important to take into account the effect of the features in the claimed invention. An assessment based on an isolated analysis of the individual features of the claim without regard for possible interactions with the other claimed features may lead to ignoring features which make a technical contribution (see also T 731/17, Reasons 6.2 and 6.4; T 697/17, Reasons 4.2).

An invention with an overall purpose which is non-technical may nevertheless be a patentable solution to the problem of finding a technical implementation for achieving the non-technical purpose (T 1784/06, Reasons 2.3). The board does not find any basis either for considering that only hardware features are technical. In decision G 1/19, the Enlarged Board was of the opinion that while a direct link with physical reality is in most cases sufficient to establish technicality, it cannot be a necessary condition (see Reasons 62, 88, 101 and 139).

The board further notes that a technical feature does not lose its technical nature because it is too generic or “functionally defined” (G 3/08, Reasons 10.8.7).

Below is how the appeal board examined the inventive step of claim 1:

3.3 In order to correctly assess inventive step of an invention such as the current one, in which the non-technical aspects are tightly intermingled with the technical features, the board finds it preferable, if not necessary, to assess inventive step from a starting point closer to the invention than a general purpose computer.

3.4 At the date of priority of the current application (in 2010), web browsers for personal computers and web search engines were notoriously known.

…

3.5 The method of claim 1 differs from this notoriously known method using a web browser in that it further includes the steps of:

(i) determining relevant notes within the personal database by comparing the extracted terms to stored notes;

(ii) determining additional relevant notes by comparing the search results information to the stored notes;

(iii) preparing note previews for the relevant notes and the additional relevant notes;

(iv) altering the content of the search results page to provide links to the relevant notes with the search result listings;

(v) receiving a selection of one of the presented note previews, retrieving the stored note corresponding to the selected note preview from the personal database and presenting the respective note to the user.

According to the appellant, the distinguishing features did not relate to mere presentation of information

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3.7 The board is, however, of the opinion that the idea of obtaining relevant notes and additional relevant notes reflects the interest of the user in receiving, in addition to the public search results, related information from the user’s personal notes. Meeting the informational needs of a user is not per se a technical effect (T 306/10, Reasons 5.2; T 598/14, Reasons 2.4; T 1971/18, Reasons 2.4).

The appellant’s argument that relevance is a technical aspect as it concerns the search query and not the user’s interest is not persuasive. In this case, there is no objectively defined set of data which constitutes the correct result for the search query. What is relevant has to be determined based on non-technical linguistic aspects and subjective user preferences (see also T 1924/17, Reasons 12).

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3.8 The board is thus of the view that the distinguishing features solve, over the notoriously known method, the technical problem of facilitating, when a search query is performed, user access to personal notes related to search terms of the search query (relevant notes) and to the results of the search (additional relevant notes), where the notes should be presented in the form of “note previews”.

3.9 The user’s personal database with stored notes is already known from the prior art (see point 3.4 above). Features (i), (ii) and (iii) are directly mapped from the formulated problem. The board notes that these features do not describe any (inventive) technical details of the implementation of the non-technical constraints.

3.10 Links were notoriously known and already used in the search result page of the prior-art web browser for facilitating user access to web pages related to the public search results independently of their storage locations in a computer or computer network. It would thus have been obvious for the skilled person seeking to facilitate access to the full notes corresponding to the note previews, which are also search results, to additionally include, for each note preview on the search results page, a link to the note, as in feature (iv). The skilled person would thus also arrive at feature (v), which merely describes the notoriously known way a link works when a user selects it. The distinguishing features entail no inventive technical elements of the implementation.

3.10.1 The appellant argued that there was no teaching or suggestion in the prior art that the web browser could provide a link to local data.

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3.10.2 These arguments are not persuasive. The distinguishing features do not solve any security problem of accessing personal data from a web browser. The description discloses embodiments based on web browsers (see e.g. page 5, line 28 to page 6, line 18), but is silent about any security problems and corresponding solutions.

3.11 Therefore, claim 1 of the main request does not meet the requirements of Article 56 EPC for lack of inventive step.

The auxiliary requests were not helpful in this case. Finally, the Board refused the European patent application.

More information

You can read the whole decision here: decision T 1272/20 (Search in internet and personal notes/EVERNOTE) of the Technical Board of Appeal 3.5.07.

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