This decision concerns an invention related to controlling the playback of a recording. The first instance considered it was obvious as the driving force behind the invention was the display of information implemented by notorious server with a database, means to input information, and implementation of how to get the required playback information.

The Board noted that the “driving force” behind the invention does not matter for assessing the inventive step and agreed with the applicant that the claim includes technical features going beyond the mere display of information and thus should not be ignored when assessing the inventive step. Therefore, the Board remitted it back to the first instance for proper examination using the problem-solution approach after considering the technical character of the features.

Here are the practical takeaways from the decision T 1621/21 of May 25, 2023, of the Technical Board of Appeal 3.4.02.

Key takeaways

What the so-called “driving force behind the subject-matter of claim” is, does not matter for assessing inventive step. The assessment of inventive step has to be based on the concrete features of the claim and not on a vague “driving force”.

Even if the implementation of method steps of the claim are “within the reach of the skilled man”, this does not necessarily mean that the subject-matter of the claim is obvious. In order to render obvious the subject-matter of the claim, the skilled person must have a clear incentive for carrying out the claimed method steps. 

In the absence of an incentive for users, the mere fact that the skilled person would know the general technology how to carry out the method steps defined in features does not render them obvious.

While the use of the problem-solution approach is not mandatory because it is not always reasonably applicable, if it is not used, the examining division should explain the reasons for not using it.

The invention

The invention was summarised by the applicant as follows:

It is desirable to provide a mechanism to create, use, and/or share different playbacks of television programs and other sensory works. For example, it is desirable to provide an individual who has recorded the Super Bowl only to watch the commercials with the ability to playback his recording of the Super Bowl on his PVR such that only the commercials are shown. Similarly, an individual who has recorded the Super Bowl only for the football may desire to only see each football play during playback.

This disclosure discusses techniques and systems that may be used to create metadata or the like that controls or varies the playback of a sensory work, such as, a television program.

  • Claim 1 of the Main Request- Feature list (F1 to F7) added by the board

Is it patentable ?

In the decision under appeal, the examining division held that the subject-matter of claim 1 lacked inventive step. In particular, the Examining Division argued that the invention was obvious as it merely relates to a server with a database in a network like the Internet, means to input information, and implement how to get the required playback information.

The Board disagreed with the generalized reasoning of the Examining Division and addressed each of them.

Firstly, regarding the reasoning that system merely relates to a server with a database in a network like the Internet, the board noted as follows:

1.1.3 It follows that the examining division’s reasons for denying that the subject-matter of claim 1 involved an inventive step could be supposed to be found in the second chapter titled “2 Main Request”.

(a) According to point 2.2 of the grounds for the decision, “[w]hat is claimed is a server with a database in a network like the Internet. That much is held to be notorious […] in particular since it is also depicted in figure 1 of D1”.

The board acknowledges that such an unspecific server is known in the art. However, claim 1 does not define an unspecific server but a server fulfilling specific functions, namely receiving and recording playback information generated by users of the playback devices and transmitting this playback information to a playback device. Such a specific server does not appear to be notorious or at least the examining division did not provide any evidence for its general assertion that such a server is notorious.

Next, regarding the reasoning that the features are mere means for users to input data, the Board again disagreed and noted as follows:

(b) According to point 2.3 of the grounds for the decision, features F3 and F4 of claim 1 are “means for the user to input information about what should be displayed”.

The board cannot follow the examining division’s view. In particular, feature F3 does not define what should be displayed, but actually defines a method step for receiving and recording information at the server about how to vary the playback of associated sensory work. Feature F3 has the following technical content:

(i) The playback of the sensory work is to be modified on the basis of certain information.

(ii) The information about how to vary the playback is sent to a specifically identified device, namely to the server.

(iii) The information about how to vary the playback is recorded at a specifically identified device, namely at the server.

(iv) The information about how to vary the playback is generated by users of the playback devices.

c) Furthermore, in point 2.3 of the grounds for the decision, the examining division, while broadly referring to technology disclosed in paragraph [0019] of D1, asserts that features F3 and F4 relate “to no more than the implementation of how to get the required playback information to the server, and the sensory work back to the user”, using technology known to the skilled man.

The board is not convinced by the examining division’s argument, because the playback information stored in the server of D1 corresponds to metadata (19) “inserted into channel signal (16) prior to broadcast (for example, during program creation and editing, or by a local system operator or station)” (D1, [0016]), i.e. the playback information stored in the server of D1 is not generated by individual users of the playback devices, independently from the generation of the initial video signal (12, 16) generated by the program provider itself. The playback information stored in the server of D1 is the same for all users of the playback devices. Nor does the examining division provide any reason why the skilled person would consider carrying out the method steps defined in features F3 and F4. In the absence of an incentive for users of the playback device to generate playback control records and send them to the server, the mere fact that the skilled person would know the general technology how to carry out the method steps defined in features F3 and F4 does not render them obvious.

Furthermore, the Board also disagreed that the features were obvious and within the reach of the skilled person:

(d) Point 2.4 of the grounds for the decision appears to deal with features F5 to F7 of claim 1. According to this paragraph of the decision, features F5 to F7 are “well within the reach of the skilled man”. As the only justification for this assertion, the examining division generally refers to “the findings of section 1.2.1”, i.e. the disclosure of a MPEG coding scheme in D1, [0019].

The board is not convinced by the examining division’s argument, because D1 does not disclose transmitting user-generated playback information from a server to a playback device. Nor does the examining division provide any reason why the skilled person would consider carrying out the method steps defined in features F5 to F7. The mere fact that the skilled person would know how to carry out the method steps defined in features F5 to F7 does not render them obvious.

Finally, the Board considered that the “driving force” behind the invention was immaterial.

(e) In point 2.5 of the grounds of the decision, the examining division concludes its reasoning for denying an inventive step by stating that “the driving force behind the subject-matter of claim 1 is the display of information (which cannot contribute to the technical character of the claim) and the implementation thereof being within the reach of the skilled man”.

The board is not convinced by the examining division’s argumentation. What the so-called “driving force behind the subject-matter of claim 1” is, does not matter for assessing inventive step. The assessment of inventive step has to be based on the concrete features of the claim and not on a vague “driving force”. Furthermore, even if the implementation of method steps of the claim are “within the reach of the skilled man”, this does not necessarily mean that the subject-matter of the claim is obvious. In order to render obvious the subject-matter of the claim, the skilled person must have a clear incentive for carrying out the claimed method steps. The examining division did not address this point.

The Board decided that the Examining Division did not properly assess the technical character:

1.1.4 It follows that the reasons of the appealed decision for showing that the subject-matter of claim 1 lacks an inventive step are not found convincing by the board.

At least the method steps defined in features F3 and F7 are technical features having a technical content going beyond the mere display of information. It is to be noted that the technical character of feature F4 may also have to be evaluated. Therefore, the technical content of these features may not be ignored when assessing the inventive step of the subject-matter of claim 1. Rather, the assessment of inventive step should be carried out on the basis of the problem-solution approach (see below, point 2.1), including the definition of an objective technical problem solved by the distinguishing technical features of claim 1.

The Board finally reminded the proper use of the problem-solution approach (using the COMVIK approach) when assessing inventive step:

2.1 The reasons given in the appealed decision for showing that the subject-matter of claim 1 lacks an inventive step are deficient and hardly comprehensible by the board.

As rightly objected by the applicant during the first-instance proceedings, the examining division did not clearly identify which features of claim 1 are technical features and which are not. The appealed decision merely states that “the Division will now give an example why it is difficult to separate the features in such a manner” (decision, page 7, fourth paragraph).

Moreover, the examining division’s finding that the subject-matter of claim 1 lacked an inventive step was not based on applying the problem-solution approach, comprising the steps of identifying the distinguishing features of claim 1 over the disclosure of the closest prior art, determining which distinguishing features are technical features and which are non-technical features, determining the technical effect of the distinguishing features which are technical, deducing therefrom the objective technical problem solved by the distinguishing features, looking for an incentive for the skilled person to solve the objective technical problem and analysing whether the solution as claimed was obvious in view of the available prior art.

While the use of the problem-solution approach is not mandatory because it is not always reasonably applicable, if it is not used, the examining division should have explained the reasons for not using it.

Despite the serious deficiencies in the examining division’s reasoning mentioned above, in the board’s view the decision cannot be considered as not reasoned for the purposes of Rule 111(2) EPC. The applicant did not rely on a lack of sufficient reasoning either.

2.2 As explained in point 2.1 above, the appealed decision is seriously flawed because the examining division neither made a clear division of the features of claim 1 into technical and non-technical features nor properly applied the problem-solution approach.

Therefore, the appealed decision must be set aside.

The Board then remitted the case back to the first instance for proper examination using the problem-solution approach after considering the technical character of the distinguishing features.

More information

You can read the full decision here: T 1621/21 of May 25, 2023, of the Technical Board of Appeal 3.4.02.

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