T 2154/11 - Breadth does not diminish clarity

Key points

• The decision under appeal relieD on the finding that the claims of the main request did not comply with Article 84 EPC due to the "extreme breadth" of the claim wording. 
• "  It is established jurisprudence of the boards of appeal that the clarity of a claim is not diminished by the mere breadth of a term of art contained in it if the meaning of such term - either per se or in the light of the description - is unambiguous for a person skilled in the art ([CLBA] II.A.3.3)." 
• " Hence, the objections of the examining division that the expressions "metadata describing an event", "taking", "connecting" were broad and embraced well-known activities are not considered per se a valid reason for a lack of clarity." 
• " Similarly, the fact that some of these method steps may be understood to refer to "mental acts" or "normal human actions" is no valid reason for a finding of lack of clarity as long as these steps do not give rise to ambiguity, as in the case at hand. If a method step can be interpreted to refer to a normal human activity, then this assessment should be taken into account for novelty and inventive step."
• The Board accepts as technical effect of the distinguishing feature that " information about similar events in other episodes of the television program is retrieved from a website" . The Board does not expressly discuss why this feature is technical. 

Reasons for the Decision

1. The appeal is admissible.

2. The present application

The present application relates to a method and system for retrieving information about television programs.

The invention aims at providing more significant information about the program such as its history or background. Information about a particular character's role in the program, a description of a particular program in a series, a history of a series or a summary of other episodes may be retrieved using one or more tags that provide links to dedicated websites [].

In particular and as elucidated in an embodiment of the invention, the application aims at providing information about events in other episodes of a program which are similar to a specific event in a currently watched episode. In the limited domain of soap operas or sitcoms, events may be a limited number of activities such as break-up, get engaged, marry, divorce, fire, hire, etc. The identification of such events is accomplished using metadata specifying the event e.g. as a data tuple "(Person 1, Person 2, event)" defining the interaction between two persons. As an example, the metadata identifying Joey's and Dawson's second break-up would be (Joey, Dawson, break-up #2), which can then be used to search for related events in other episodes (see page 1, line 23 to page 2, line 2 and page 6, line 17 to page 7, line 5).

3. Main request and first auxiliary request: added subject-matter (Article 123(2) EPC)

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4. Second auxiliary request: clarity (Article 84 EPC 1973)

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5. Third auxiliary request

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5.2 The board also holds that these claims meet the requirements of Article 84 EPC 1973.

5.2.1 Claim 1 has been amended to include the additional step of "displaying the information about the television program along with the television program being watched (500)." This amendment overcomes the objection under Article 84 EPC 1973 against claim 1 of the second auxiliary request (see point 4 above). Similar arguments apply for independent claim 8.

5.2.2 The decision under appeal (see point 17) relies on the finding that the claims of the main request do not comply with Article 84 EPC due to the "extreme breadth" of the claim wording.

5.2.3 It is established jurisprudence of the boards of appeal that the clarity of a claim is not diminished by the mere breadth of a term of art contained in it if the meaning of such term - either per se or in the light of the description - is unambiguous for a person skilled in the art (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition, 2016, section II.A.3.3). 

Hence, the objections of the examining division that the expressions "metadata describing an event", "taking", "connecting" were broad and embraced well-known activities are not considered per se a valid reason for a lack of clarity. Similarly, the fact that some of these method steps may be understood to refer to "mental acts" or "normal human actions" is no valid reason for a finding of lack of clarity as long as these steps do not give rise to ambiguity, as in the case at hand. If a method step can be interpreted to refer to a normal human activity, then this assessment should be taken into account for novelty and inventive step.

Moreover, the fact that claim 1 of the third auxiliary request leaves it open by whom and where the steps of "connecting" and "watching" are carried out does not cause it to lack clarity. According to claim 1 the connecting, identifying and downloading steps all refer to the same website, which includes information that is identified, downloaded, processed and displayed. It follows that the method of retrieving information is essentially specified in terms of its information processing steps which work together to achieve the goal of providing information to a viewer. Hence, the board considers the claim features to be linked by the information that is retrieved in a sequence of steps. Where and by whom these steps are performed is not essential for achieving this goal and the examination division has not provided arguments to the contrary.

The reference to "the television program being watched" is also considered clear without an explicit specification of where and by whom the television program is being watched. Firstly, claim 1 now specifies that the information about the television program is displayed along with the television program being watched. Hence, it can be inferred that the information about the television program is displayed to the viewer watching it. Secondly, the board sees no need to restrict the claim to embodiments in which the information is displayed to a particular user or to a user at a specific place.

Hence, in their context the specification of these steps fulfils the requirement to define the subject-matter for which protection is sought.

The examining division also argued that these steps could be regarded as human activities or mental acts which were technically unlinked to any other aspect of the claim. As set out above, the board considers the claim features to be linked by the information that is retrieved in a sequence of steps. These steps also imply the use of technical means for accessing the website and are therefore not mere mental acts or normal human actions.

The board essentially accepts the appellant's argument that the term "metadata" has a well-known meaning which is "data that describes other data." Metadata summarises basic information about data, which can make finding and working with specific data easier. For instance, the data tuple "(Person 1, Person 2, event)" is an example of metadata.

It follows that the "metadata describing an event in the television program being watched" in claim 1 summarises data about the event described, allowing information about this event to be found more easily. Hence, for the person skilled in the art claim 1 defines metadata as data which are descriptive for and summarise basic information about the event in the television program being watched, so that information about this event may be found more easily. An event in the television program being watched could be a break-up between persons in a series or the appearance of a market product in the television program being watched (see letter of 3 November 2016, points 2.1.1 and 2.1.4).

5.3 The subject-matter of independent claims 1 and 8 of the third auxiliary request is new and involves an inventive step in view of D5.

5.3.1 D5 relates to an interactive television system aiming at enhancing television viewing and Internet browsing "by providing a more intimate interface between the viewer's television and the Internet access apparatus". In order to achieve this goal an Internet address and descriptive information may be embedded in the VBI. A graphical icon is displayed to inform the user of the availability of Internet information providing more information about a displayed program. If the icon is selected, supplementary information concerning the television program may be retrieved from the Internet and may simultaneously be viewed in a picture-in-picture window. The supplementary information could be an Internet page with trivia about the show, merchandising and home shopping information or a link to a fan e-mail site. Internet information is retrieved by selecting an Internet site name or a link using a remote control (see D5, page 1, lines 13 to 15 and 32 to 36; page 4, line 36 to page 5, line 37; page 6, lines 10 to 25 and page 6, line 37 to page 7, line 11; page 8, lines 30 to 33; page 10, lines 7 to 20).

5.3.2 The examining division argued that a URL embedded in the VBI of a video signal corresponded to metadata describing an event. Even though the board agrees that a URL may be considered as metadata, this argument does not take into account the specific function of the metadata in the claim, according to which the metadata describe "an event in the television program being watched". Claim 1 also requires that the metadata are used to identify "information of similar events ... on the website, which includes metadata matching to the metadata describing the event in the television program being watched at the time of user input ...". D5 discloses URLs providing links to information about a television program, a commercial or a link to a fan email site (see D5, page 6, lines 13 to 18 and page 10, lines 7 to 14). The web pages may also provide further links "to other Internet addresses, which provide alternative or complementary data to that found in the originally displayed web page", see page 6, lines 37 and 38. The data on the websites are allocated to the program as a whole and not to an event in the program. This is illustrated by the fact that the icon signalling the availability of Internet information is displayed at the start of the program or in the course of its entire duration (see D5, page 5, lines 8 to 10). A matching operation of URLs relating to events in the television program is also not disclosed in D5. Instead, the website being addressed by the URL is downloaded and displayed. Due to the amendments to claim 1 of the third auxiliary request, claim 1 is further distinguished from D5 in that it relates to episodes.

5.3.3 It follows that D5 fails to disclose the second method step of claim 1 "according to a metadata ...". 

[ according to a metadata describing an event in the television program being watched at the time of a user input, identifying information of similar events of other episodes on the website, which includes metadata matching to the metadata describing the event in the television program being watched at the time of the user input;] 

Hence, the subject-matter of claim 1 is new over D5.

5.3.4 The technical effect of the distinguishing feature is that information about similar events in other episodes of the television program is retrieved from a website.

5.3.5 The corresponding technical problem is considered to be how to retrieve information about similar events in other episodes of a television program.

5.3.6 D5 neither discloses nor suggests using metadata describing an event in a television program. Nor does it hint at using metadata to identify similar events on a website which includes metadata matching to the metadata describing the event. The board also cannot see a convincing argument in the decision under appeal that these steps would be obvious for the skilled person.

5.3.7 As a result, the board concludes that the subject-matter of claim 1 is new and involves an inventive step over D5 (Articles 54(1) and (2) and 56 EPC 1973).

5.3.8 Analogous considerations apply to further independent claim 8, which specifies the corresponding video processing system.

5.4 At the end of the contested decision, the examining division added a chapter headed "Further remarks not forming part of the decision". This chapter contains short summaries of documents D1 to D5 and the statement that the general principle of the application "appears to have been well known or obvious based upon a skilled person's common general knowledge taken with any or all of the cited references: D1-D5". Without an appropriate indication of passages in the prior art that correspond to features of the independent claims, this statement fails to convince the board.

6. Remittal (Article 111(1) EPC 1973)

6.1 The decision under appeal was based on lack of clarity and novelty/inventive step, in view of D5, of the claims then on file. These grounds for refusal do not apply to the present claims and the decision under appeal must consequently be set aside. However, at this stage a patent cannot be granted without the application first being examined for compliance with the requirements of the Convention such as novelty and inventive step over the documents cited in the search report. The department of first instance has not yet carried out such an examination for the present set of claims.

7. Under these circumstances the board exercises its discretion under Article 111(1) EPC 1973 in remitting the case to the department of first instance for further prosecution.

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.