EP 3 107 004 A1 relates to a method of finding results by incremental search using a keypad having overloaded keys as the input device when the input contains orthographic and typographic errors.
Brief outline of the case
The application was refused by the ED as claim 1 of the MR lacked IS over D1 and that claim 1 of AR1-4 added subject-matter.
As obiter dictum the ED expressed the opinion that the subject-matter of the claims of the AR were not inventive.
The applicant appealed.
The board raised new objections under Art 84 and 123(2). The MR filed in reply was admitted under Art 13(2) RPBA.
The board queried the reasoning of the ED when denying IS.
The board only decided upon the IS starting from D1. The board did not decide on the questions of priority and patentability in view of D3.
The case was thus remitted for further prosecution.
The board’s decision
While it is sometimes stated that the proper question to be answered when assessing IS is not whether the skilled person “could” have modified the CPA to arrive at the claimed invention but whether it “would” have done so, cf. CLBA, 11th edition, 2025, I.D.5, the board noted that the “would” question in fact presupposes that the “could” question is answered in the affirmative and referred to T 667/91, Reasons 5.
For the board, it is often easier to establish that the skilled person could modify the CPA to arrive at the invention than to show that they would have done so.
For example, if the starting point for assessing IS is a general-purpose computer and the claimed invention essentially amounts to implementing a computer program as such, the “could” question requires little or no justification.
However, the “could” question cannot be ignored in cases where there is not self-evidently a realistic path or “workable route” from the starting point to the claimed invention.
That is the case if the distinguishing features cannot reasonably be combined with the CPA to obtain the claimed invention. In such a situation, the invention is not rendered obvious by that prior art and the question whether the distinguishing features achieve a technical effect over the CPA is essentially meaningless.
In the present case, the claimed invention accepts a “multiple prefix query string“, including at least two prefixes and encoding a number of ambiguous or “overloaded” keystrokes, and searches a database of descriptions of content items to determine the list of content items that most likely correspond to what the user is looking for.
The system of D1, on the other hand, accepts an ambiguous input string to search a dictionary of words and locate the word that most likely corresponds to the user’s intention.
Starting from D1 and equating the words in the dictionary with content items, described by themselves, i.e. the dictionary words are their own “descriptive term”, it would make no sense to look up a word using two prefixes, let alone look up a word using two separate prefixes and take the intersection of the matches.
Alternatively, starting from D1 and adding a step of querying a database of content items with descriptive terms, the skilled person would arrive at a system that allows the user to enter a text string using ambiguous input, maps the ambiguous input to the text string intended by the user, i.e. what the system of D1 already does, using the trie computed from the dictionary, and then uses this regular text string as a query.
But the mapping logic and intersection logic of claim 1 instead perform the disambiguation directly on the descriptive terms using a trie pre-computed from the descriptive terms of the database.
Hence, the board did not see how the skilled person could modify the system disclosed in D1 to arrive at the claimed invention without fundamentally departing from the essential teaching of D1, i.e. there does not appear to be a realistic path from document D1 to the invention. And the contested decision is silent on this point.
Therefore, the subject-matter of claim 1 is not rendered obvious by D1.
Comments
In other words, if the skilled person has to entirely redesign the document used as CPA, then the “could” becomes determining, and the document cannot really be used as CPA.
Comments
Leave a comment