T 0921/11 - Incomprehensible claims

Key points

• In this examination appeal with a Microsoft entity as applicant, Board 3.4.01 finds that "the terms of the claims are so vague that the claims definitions become virtually incomprehensible."
• Claim 1 for a " system"  is furthermore unclear because it is unclear whether it is a process or not.

Summary of Facts and Submissions

VII. Claim 1 of the main request reads:
"A system for the generation of a description for a flattened data structure which is a tabular listing, comprising:
a data structure (102) having a plurality of data nodes (104-108), wherein the data structure (102) is hierarchical;
characterized by
a valuation component (112) that assigns a valuation to one or more of the data nodes (104-108) in accordance with a predetermined metric wherein the predetermined metric is one of a plurality of metrics that are used for determining the valuation, which plurality of metrics include time created, that the node (108) was accessed, time the node (108) was accessed, that the node (108) was modified, when the node (108) was modified, that the node (108) was copied, an access frequency, and a number of unique users who have accessed the node (108); and
a description component (116) that generates a description that represents at least one of the one or more data nodes (104-108) that is selected according to the metric."

Reasons for the Decision

3. Main request - Article 84 EPC 1973

3.1 The claims are not clear as a whole.

Independent claim 11 refers to a "computer readable medium having stored thereon computer executable instructions for carrying out the system of claim 1".

The selected wording is confusing in that it suggests that the system "for the generation of a description for a flattened data structure" of claim 1 could possibly relate to a process.

No clear indication can be derived from the description as to the actual meaning associated to the term "system". In the contrary, the statement in paragraph [0012] of the application as published adds to the confusion since it specifies;|

 "As used in this application, the terms "component" and "system" are intended to refer to a computer-related entity, either hardware, a combination of hardware and software, software, or software in execution. For example, a component can be, but is not limited to being, a process running on a processor, a processor, an object, an executable, a thread of execution, a program, and/or a computer. By way of illustration, both an application running on a server and the server can be a component. One or more components can reside within a process and/or thread of execution, and a component can be localized on one computer and/or distributed between two or more computer."

Should the term "system" in claim 1 indeed be equated with a process, claim 11 would then be redundant with claim 23.

On the other hand, should the term "system" in claim 1 be equated with the term "software", as suggested in paragraph [0012] of the published description, the requirements of article 52(2)(c) EPC would not be met. In this case, the Board fails, namely, to identify any technical contribution in the mere evocation of the functions to be performed by the "system" of claim 1. A consequence of this finding would then be that claim 1 defines a computer program "as such", excluded from patentability under Article 52(3) EPC.

It is therefore considered that the claims as a whole, construed in the light of the description, are so unclear as to the meaning of the term "system" that the skilled reader is neither in a position to recognize the nature of the claimed subject-matter nor the category to which claim 1 belongs. This finding reflects itself in all the claims which refer, by way of dependency or mere reference, to claim 1.

3.2 The terms of the claims are so vague that the claims definitions become virtually incomprehensible.

The expressions "description for a flattened data structure" in claim 1 and "names of a data structure" in claim 13 are obscure, so that it is not clear what exactly the claimed system and method would generate, respectively.

Moreover, it is unclear from claim 1 what "data nodes" (claim 1, lines 3-4) of a "data structure" would be when the latter is in the form of a "tabular listing" (claim 1, lines 1-2). The appellant appears to suggest (page 8, first paragraph of the grounds of appeal) that claim 1 should be understood as referring to two separate "data structures", a "flattened" one in the form of a "tabular listing" being a transformation from another "data structure" which is "hierarchical". However, such an interpretation further increases confusion since the claim wording would imply that the two data structures coexist in parallel.

Likewise, the terms "valuation component" (claim 1) and "valuation" (claims 1 and 13) have no clear meaning. In particular, it is unclear which purpose a "valuation" would serve and how it is related to a "description" (claims 1, 6, 9 and 15), a "name" and "node metadata" (claim 13).

3.2.1 The definition in claim 1 "that assigns a valuation to one or more of the data nodes (104-108) in accordance with a predetermined metric wherein the predetermined metric is one of a plurality of metrics that are used for determining the valuation" and a corresponding definition in claim 13 are circular definitions and thus practically meaningless.

3.2.2 It is not clear from claims 1 and 13 what exactly is meant by the term "metric" and how, by which element of the claimed system and according to which criterion such a "metric" would be "predetermined".

Unclarity arises in particular from some of the options listed in claims 6 or 15 in combination with several of the metrics listed in claim 1 or 13, respectively. For instance, it is difficult to imagine what a "valuation" in the form of "image data" (claims 6 and 15) or a "coloration" (claim 6) would mean for a "metric" of the type "time created" or "time the node was accessed".

3.2.3 Claim 1 is contradictory in itself in that the claimed system is specified to serve "for the generation of a description for a flattened data structure", whereas a "description component" "generates a description that represents at least one of the one or more data nodes" (emphasis added).

The complement "that is selected according to the metric" is not understood in the context of said flattened data structure.

3.2.4 The nature and role of the "predetermined valuation limit" for "selecting one or more of the plurality of nodes" in independent claim 13 are obscure.

Likewise, it is not clear from where "node metadata" would be retrieved and how exactly retrieval of a name for a node "based on the respective node metadata" could be accomplished.

3.2.5 The expression "processed for viewing" and the term "one-dimensional view" given in claim 2, respectively, claims 3 and 14, in the context of a selection of data nodes have no readily recognizable meaning.

The additional features according to claim 10 are enigmatic because, in the given context, the terms "facilitates", "selected operations" and "inference" have no unambiguous meaning.

From claim 18 it is unclear according to which criterion or criteria "node metadata" would be qualified as being "unimportant".

The phrase "and one of the same and different" in claim 19 is not understood.

As regards claim 21, it is unclear from where a "folder name" and a "file name" would be known and how exactly these items would be used for generating "names".

3.3 For these reasons, the main request is not allowable.