T 0483/11 - Technical inheritance fallacy

EPO Headnote 

A feature does not automatically inherit 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 (technical inheritance fallacy - see points 2.7 and 2.8 of the reasons).

Key points

The EPO Headnot (not the decisioni itself) adds another fallacy under the Comvik approach: the "technical inheritance fallacy" .

T 0483/11 - link

Reasons for the Decision

1. The invention

1.1 At the date of the invention, mobile data connections were slow and mobile devices had limited processing and display capabilities. At the same time, electronic documents (word processor, worksheet, and spreadsheet documents) were large and contained "rich" content. Therefore, there was a need for a smaller, summary version of electronic documents for use by mobile communication devices.

1.2 According to the invention, the summary is generated by a server (figure 1, reference numeral 100) in response to a request from a mobile communication device (106) and is transmitted to the mobile device (page 4, lines 15 to 20). The user of the mobile device 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 (page 4, line 21 to page 5, line 3), at least initially.

1.3 The server generates the summary by selecting content from the electronic document. It does this using one of three processes (figure 3).

If the document has what the application calls "content structure", e.g. high-level descriptive information such as a table of contents, this information is used as a summary (page 5, lines 9 to 18). That is the "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. This "unstructured document summarization process" operates on the assumption that section identifiers are formatted differently from the text body, e.g. using a larger font size (page 6, line 28 to page 7, line 7).

If the document contains neither "predetermined content structure" nor text or paragraph formatting information, or if all the text is formatted identically, the "unformatted document summarization process" it used. This 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 (page 7, lines 23 to 30).

2. Main request, inventive step

2.1 The Board considers D1 to be an appropriate starting point for assessing the inventive step of claim 1 according to the main request. D1 has, like the invention, the aim of making the content of an electronic document accessible on a mobile device (page 1, line 18 to page 2, line 7). In D1, the client (12) submits a document to the server (10) for processing. The server processes the document to extract sections of document content and a table of contents (page 8, lines 3 to 7; page 13, lines 18 and 19). If there is no table of contents available, the server creates one by analysing the document. The content excerpts and table of contents are transmitted to the mobile device (12), on request (figure 12; page 27, lines 5 to 7; page 30, lines 18 and 19; claim 7). The table of contents can be used as navigational information to request the content (claim 8).

2.2 In the statement of grounds, the appellant argued that D1 did not disclose the generation of a summary, but at oral proceedings before the Board it was common ground that the table of contents (TOC) in D1 represented a summary in the sense of the invention as claimed and described in the application. It was also common ground that D1 disclosed the structured summarization and the unstructured summarization based on differences in text formatting, as defined in claim 1 of the main request.

At oral proceedings, the appellant identified the following differences of the invention over D1:

(i) "unstructured document summarization" based on differences in paragraph formatting;

(ii) "unformatted document summarization" based on differences in paragraph size.

2.3 The Board notes that summarization based on differences in paragraph formatting is defined in claim 1 alongside an alternative to summarization based on text formatting. It is enough for any one of these to belong to the prior art. Furthermore, the Board does not agree with the appellant that "paragraph formatting" is limited to paragraph alignment or indentation, but considers that this broad term covers text formatting for whole paragraphs in D1 (page 20, lines 14 and 15; figure 15). That notwithstanding, the Board sees the TAB character in D1 (page 20, line 25 to page 21 line 3) as a disclosure of paragraph indentation. The TAB character in D1 is used as a section identifier when constructing a table of contents in the unstructured summarization process.

2.4 Thus, the Board agrees with the Examining Division that the only difference between the method of claim 1 and D1 is the "unformatted document summarization process" for extracting summary information based on differences in paragraph size.

2.5 The appellant argued that the document summarization in claim 1 was technical since it was part of a technical context, namely a mobile communication system. Moreover, the summarization was provided in order 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.

2.6 The Board does not dispute that the claimed method appears in a technical context. The method is performed by technical means (one or more servers of a network), and, therefore, has technical character. This is relevant to the question of whether the invention is an invention in the sense of Article 52(1) EPC (T 258/03 "Auction method/HITACHI", OJ EPO 2004, 575).

However, the question of inventive step, requires an assessment of whether the invention makes a technical contribution over the prior art. Features which do not make such a contribution cannot support the presence of an inventive step (T 641/00 "Two identities/COMVIK", Headnote I, OJ EPO 2003, 352).

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.

2.9 For these reasons, the Board takes the view that the "unformatted document summarization process" does not make a technical contribution over D1. Furthermore, the Board considers that the implementation of this functionality would have been straightforward, using routine programming methods.

2.10 Therefore, the Board concludes that the invention as defined in claim 1 according to the main request lacks inventive step (Article 56 EPC).