- In this examination appeal for a software-related invention, “the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.”
- The appeal fee is reimbursed.
- The Board remits the case. " It is therefore questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request. However, inventive step still has to be assessed with respect to documents D2 to D5."
EPO T 2012/17 - link
1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.
2. The invention
2.1 The application relates to "web applications" which are to be downloaded to user terminals such as mobile phones. According to paragraph [0018] of the published application, the term web application refers to "a set of information material from which web pages may be constructed". Examples of such information are "images, text, code segments in markup languages such as HTML and XHTML, stylesheets such as CSS, script languages such as JavaScript, video and audio, as well as various browser plug-in content such as Flash, Silverlight and Java Applet content".
2.2 The invention seeks to provide web applications customised to user-specific parameters and terminal-specific properties (paragraph [0006]). Essentially, this is achieved by providing, at an application server, a customisable web application template and, in response to requests specifying user-specific parameters and a user-terminal type, creating the customised web application on the basis of the template, the user-specific parameters and terminal-specific properties corresponding to the user-terminal type.
3. Right to be heard - Article 113(1) EPC
3.1 The right to be heard under Article 113(1) EPC encompasses the right of a party to have its comments considered in the written decision (see decision T 763/04 of 22 June 2007, reasons 4.3 and 4.4). Although a decision does not have to address each and every argument of a party in detail, it must comment on the crucial points of dispute to give the losing party a fair idea of why its arguments were not considered convincing (see decision T 1557/07 of 9 July 2008, reasons 2.6).
3.2 In this case, a crucial point of dispute was whether document D1 disclosed "web applications".
3.2.1 According to the European search opinion, document D1 disclosed a web application in the form of "application 122 to communicate with a web service" on page 5, lines 16 and 17. In its communication dated 1 July 2016 and its decision, the Examining Division additionally referred to page 18, lines 10 to 13.
3.2.2 Throughout the first-instance proceedings, the appellant repeatedly contested that document D1 disclosed web applications.
[...]
3.2.3 In the contested decision, the Examining Division did not mention the appellant's arguments with respect to the term "web application" but merely referred to the passages on page 5, lines 16 and 17, and page 18, lines 10 to 13, of document D1. The first passage states that "[t]he terminal 100 uses the applications 122 to access or otherwise communicate with a web service 110, or other schema-defined services such as but not limited to SQL databases". The second passage explains that "application generation and customization can be initiated by the user of the terminal 100 discovering the web service 110 using such as but not limited to: a device browser; an email attachment; or a dedicated web service discovery application". From neither passage is it evident whether the Examining Division considered that the applications 122 satisfied the definition of a "web service" as put forward by the appellant or whether (and why) it took the view that the definition proposed by the appellant, for which document D6 was cited as evidence, was considered too narrow.
[...]
3.4 Hence, the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.
3.5 The inventive-step objection being the only ground for the refusal, this procedural violation was causal for the appeal. Reimbursement of the appeal fee under Rule 103(1)(a) EPC is therefore equitable.
[...]
4. Remittal
4.1 Given that in document D1 an "application template" is customised by a developer/user (or "an independent customization provider 120") who may essentially freely rewrite the template with the help of a development environment (see page 5, lines 11 to 15; page 16, line 18, to page 18, line 8; Figure 6), the templates of document D1 appear to be unsuitable for automated customisation. It is therefore questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request.
4.2 However, inventive step still has to be assessed with respect to documents D2 to D5.
Moreover, the precise technical meaning of, inter alia, the term "web application" and the feature "wherein execution of the web application requires a respective copy of the web application at the user terminal and an application server" may need further investigation in light of the technical explanations and examples given in the application and the common general knowledge of the skilled person.
4.3 Hence, it is appropriate to remit the case to the Examining Division for further prosecution on the basis of the main request. In addition, the appeal fee is to be reimbursed.
Reasons for the Decision
1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.
2. The invention
2.1 The application relates to "web applications" which are to be downloaded to user terminals such as mobile phones. According to paragraph [0018] of the published application, the term web application refers to "a set of information material from which web pages may be constructed". Examples of such information are "images, text, code segments in markup languages such as HTML and XHTML, stylesheets such as CSS, script languages such as JavaScript, video and audio, as well as various browser plug-in content such as Flash, Silverlight and Java Applet content".
2.2 The invention seeks to provide web applications customised to user-specific parameters and terminal-specific properties (paragraph [0006]). Essentially, this is achieved by providing, at an application server, a customisable web application template and, in response to requests specifying user-specific parameters and a user-terminal type, creating the customised web application on the basis of the template, the user-specific parameters and terminal-specific properties corresponding to the user-terminal type.
3. Right to be heard - Article 113(1) EPC
3.1 The right to be heard under Article 113(1) EPC encompasses the right of a party to have its comments considered in the written decision (see decision T 763/04 of 22 June 2007, reasons 4.3 and 4.4). Although a decision does not have to address each and every argument of a party in detail, it must comment on the crucial points of dispute to give the losing party a fair idea of why its arguments were not considered convincing (see decision T 1557/07 of 9 July 2008, reasons 2.6).
3.2 In this case, a crucial point of dispute was whether document D1 disclosed "web applications".
3.2.1 According to the European search opinion, document D1 disclosed a web application in the form of "application 122 to communicate with a web service" on page 5, lines 16 and 17. In its communication dated 1 July 2016 and its decision, the Examining Division additionally referred to page 18, lines 10 to 13.
3.2.2 Throughout the first-instance proceedings, the appellant repeatedly contested that document D1 disclosed web applications.
[...]
3.2.3 In the contested decision, the Examining Division did not mention the appellant's arguments with respect to the term "web application" but merely referred to the passages on page 5, lines 16 and 17, and page 18, lines 10 to 13, of document D1. The first passage states that "[t]he terminal 100 uses the applications 122 to access or otherwise communicate with a web service 110, or other schema-defined services such as but not limited to SQL databases". The second passage explains that "application generation and customization can be initiated by the user of the terminal 100 discovering the web service 110 using such as but not limited to: a device browser; an email attachment; or a dedicated web service discovery application". From neither passage is it evident whether the Examining Division considered that the applications 122 satisfied the definition of a "web service" as put forward by the appellant or whether (and why) it took the view that the definition proposed by the appellant, for which document D6 was cited as evidence, was considered too narrow.
[...]
3.4 Hence, the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.
3.5 The inventive-step objection being the only ground for the refusal, this procedural violation was causal for the appeal. Reimbursement of the appeal fee under Rule 103(1)(a) EPC is therefore equitable.
[...]
4. Remittal
4.1 Given that in document D1 an "application template" is customised by a developer/user (or "an independent customization provider 120") who may essentially freely rewrite the template with the help of a development environment (see page 5, lines 11 to 15; page 16, line 18, to page 18, line 8; Figure 6), the templates of document D1 appear to be unsuitable for automated customisation. It is therefore questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request.
4.2 However, inventive step still has to be assessed with respect to documents D2 to D5.
Moreover, the precise technical meaning of, inter alia, the term "web application" and the feature "wherein execution of the web application requires a respective copy of the web application at the user terminal and an application server" may need further investigation in light of the technical explanations and examples given in the application and the common general knowledge of the skilled person.
4.3 Hence, it is appropriate to remit the case to the Examining Division for further prosecution on the basis of the main request. In addition, the appeal fee is to be reimbursed.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.
3. The appeal fee is to be reimbursed.
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