In this decision, the board of appeal made clear that a non-technical feature in a claim does not automatically inherit the technical character of the context in which it occurs.
Here are the practical takeaways from the decision T 0483/11 (Document summary/ARIZAN CORPORATION) of 13.10.2015 of Technical Board of Appeal 3.5.01:
At the date of the invention, mobile data connections were slow and mobile devices had limited processing and display capabilities. But at the same time, electronic documents were large and contained “rich” content. The core of the invention was thus to create a smaller summary version for an electronic document.
The summary is generated by a server in response to a request from a mobile communication device and is transmitted to the mobile device. The user can use the summary to navigate the electronic document and request content corresponding to the summary entries from the server. This precludes the need to send the entire document to the mobile device, at least initially.
The server generates the summary by selecting content from the electronic document. It does this using one of three processes:
- If the document has so-called “content structure”, e.g. a table of contents, this information is used as a summary (“structured document summarization process”).
- If the document does not contain such information, any text formatting or paragraph formatting is analysed in order to find “section identifiers” (headers and titles) in the document which are used as summary entries (“unstructured document summarization process”).
- If the document contains neither “predetermined content structure” nor text or paragraph formatting information, or if all the text is formatted identically, the process operates on the basis of differences in paragraph size: shorter paragraphs (those having few characters) are more likely to be section identifiers than longer paragraphs (“unformatted document summarization process”).
Here is how the invention was defined in claim 1:
Claim 1 (main request)A method of generating summary information for an electronic document (400, 500, 600) for use by a mobile communication device (106), the method being performed by one or more servers of a network and comprising:
analyzing a content structure or properties within an electronic document(400, 500, 600), wherein the content structure comprises a table of contents, pages, slides, and/or worksheets;
generating document summary information which includes an assemblage of a plurality of summary entries comprising sections of the electronic document without sending the entire electronic document, wherein the summary entries are selected from the contents of the electronic document based on the analysis of the content structure or properties, wherein
if the electronic document has a predetermined content structure then using a structured document summarization process (300) for selecting the plurality of summary entries from the electronic document based on the predetermined content structure,
if the electronic document has no predetermined content structure but has differences in text formatting and/or paragraph formatting then using an unstructured document summarization process (302) for selecting the plurality of summary entries from the electronic document based on the differences in text formatting and/or paragraph formatting, and otherwise
if the electronic document has no predetermined content structure and no differences in text formatting and/or paragraph formatting then using an unformatted document summarization process (304) for selecting the plurality of summary entries from the electronic document based on differences in paragraph size; and providing the document summary information for a mobile communication device.
Is it patentable?
The first-instance examining division had refused the application for lack of inventive step based on the argument that claim 1 essentially related to a computer-implementation of a non-technical method.
On the appeal stage, the Board took the view that the only difference between claim 1 and the closest prior art was the “unformatted document summarization process” for extracting summary information based on differences in paragraph size.
The patent applicant had argued that the claimed document summarization was technical, because it was part of a technical context, i.e. a mobile communication system. Secondly, the summarization was provided to overcome the technical limitations of such a system. The “unformatted document summarization process”, in particular, was technical for those same reasons. It allowed a larger class of documents to be summarized and used in the context of the mobile communication system.
The board acknowledged that the invention had technical character as a whole, but doubted that the document summarization process provided a technical contribution that would be relevant for inventive step under the COMVIK approach:
2.7 In the present case, the contribution of the invention does not lie in the use of document summarization in a mobile communication system. That is already in the prior art. The contribution lies rather in the algorithm for extracting summary information from the electronic document, more specifically in the manner in which section identifiers are assumed in a text that has no differences in formatting. In the Board’s view, this is not technical. It is a mental act, such as would be performed by a human when reading a text.
2.8 Put in the technical context of the mobile communication system, the unformatted document summarization has the consequence that a larger class of documents can be summarized. However, the Board does not consider this to be a technical effect. The Board does not share the appellant’s view that a feature automatically inherits the technical character of the context in which it occurs. The feature must, itself, make a contribution to the technical context, or the technical aspects of the invention.
Therefore, the board took the view that the “unformatted document summarization process” did not make a technical contribution over the prior art. The board further considered that the implementation of this functionality would have been straightforward, using routine programming methods. Thus, the board concluded that claim 1 did not involve an inventive step, and dismissed the appeal.
You can read the whole decision here: T 0483/11 (Document summary/ARIZAN CORPORATION) of 13.10.2015
Patrick is a European patent attorney at BARDEHLE PAGENBERG. He specializes in software patents in Europe both from a prosecution and litigation point of view.