T 1402/06 (Constructing customized implementations/SUN MICROSYSTEMS) 29-01-2010

1. Admissibility

1.1 The appeal complies with the provisions of Articles 106 to 108 EPC 1973 which are applicable according to J 0010/07, point 1 (cf. Facts and Submissions, item III. above). Therefore it is admissible.

2. Non-attendance at oral proceedings

2.1 According to Article 116(1) EPC 1973, oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings. Oral proceedings provide an appellant with the opportunity to present its concluding comments on the outstanding issues (Article 113(1) EPC 1973) with the aim of ensuring that the case is ready for a decision at the end of the oral proceedings (Rule 111(1) EPC; see also Article 14(6) RPBA).

2.2 The need for procedural economy requires the board to reach its decision as quickly as possible while giving the appellant a fair chance to argue its case. In the present case the holding of oral proceedings was considered by the board to meet both these requirements. The appellant had also made a conditional request for oral proceedings. A summons was therefore issued.

2.3 In accordance with Article 15(3) RPBA the board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned who may then be treated as relying on its written case. The board considered that, despite the notification from the appellant's representative announcing his intention not to attend, the twin requirements of fairness and procedural economy were still best served by holding the oral proceedings as scheduled.

2.4 The appellant could reasonably have expected that during the oral proceedings the board would consider the objections and issues raised in the communication annexed to the summons to oral proceedings (cf. point V. above). In deciding not to attend the oral proceedings, the appellant chose not to avail itself of the opportunity to present its observations and counter-arguments orally but instead to rely on its written case.

2.5 The board considers that the reasons on which its decision are based do not constitute a departure from grounds or evidence previously put forward which would require that the appellant be given a further opportunity to comment.

2.6 In view of the foregoing, the board concludes that the appellant had an opportunity to present comments on the grounds and evidence on which the board's decision, arrived at during oral proceedings, is based. The right to be heard under Article 113(1) EPC 1973 has thus been satisfied despite the appellant's non-attendance at the oral proceedings.

Main Request

3. Claim 22

3.1 Claim 22 of the main request is directed towards a computer system including a framework for providing a cryptographic service to at least one computer program application. According to the disclosure, the Java Cryptography Extension to the Java Platform is an example of such a framework for providing a cryptographic service to at least one computer program application (cf. [0003]). In the board's judgement, said Java Cryptography Extension represents the closest prior art to the subject-matter of claim 22. In view of the fact that the application does not cite any documents relating to this prior art, the board considered it appropriate to make reference to a textbook extract, i.e. D6, in order to clarify what was generally known to the skilled person in this respect at the priority date of the application. D6 is a textbook extract relating to version 1.2 of the Java Cryptography Extension, hereinafter referred to as the JCE 1.2.

3.2 The "Cipher object class" referred to in [0016] of the present application is a known programming construct of the JCE 1.2 where it is used in a manner substantially identical to that disclosed in the present application to dynamically construct implementations (i.e. "instances") of requested cryptographic services via the associated GetInstance() method (see, for example, D6: sections entitled "Factory Methods" and "The Provider Architecture", p.31-37; section entitled "Getting a Cipher", p.129-130; section entitled "Class javax.crypto.Cipher", p.308-309).

The requesting application then proceeds to interact directly with the obtained Cipher instance which it initialises by invoking its Init() method (see, for example, D6: the section entitled "Initializing a Cipher", p.131-132).

The JCE 1.2 also supports the passing of initialisation parameters via the Init() method as referred to in [0028] of the application (see, for example, D6: the section entitled "Initializing a Cipher", p.131-132; the section entitled "Class javax.crypto.Cipher", p.308-309).

3.3 Computer systems including the JCE 1.2 were clearly known at the priority date of the present application as evidenced by D6. In the wording of claim 22, such a computer system is a computer system including a framework for providing cryptographic services to at least one computer program application wherein the framework comprises:

a mechanism for receiving a request from the computer program application for an implementation of a cryptographic service;

a mechanism for dynamically constructing said implementation; and

a mechanism for providing said implementation to the computer program application whereby said computer program application can thereafter directly invoke said implementation to perform said cryptographic service.

3.4 The "framework" of claim 22 differs from the JCE 1.2 in that it additionally determines a set of restrictions to be imposed upon the implementation and provides a "customized implementation" which incorporates these restrictions along with enforcement logic for their enforcement as recited in claim 22.

In the JCE 1.2, the cryptographic service implementation returned to the requesting application executes without any inherent restriction. For this reason, legal restrictions were imposed on the distribution of the JCE 1.2 (cf. D6: p.29, item "JCE").

3.5 The effect of the differences noted in 3.4 above is to provide the requesting applications with customised cryptographic service implementations that are compliant with the prescribed legal regulations governing the use of cryptography.

3.6 The objective technical problem may thus be formulated as how to modify the JCE 1.2 to ensure that it provides the requesting application with cryptographic service implementations which are compliant with the prescribed legal regulations governing the use of cryptography.

3.7 In the board's judgement, the specification of regulations governing the use of cryptography is an inherently non-technical activity. Once such regulations have been specified, the technical task facing the skilled person in the present case reduces to modifying the framework so that the supplied implementations only provide the requested cryptographic services in accordance with the applicable regulations.

3.8 Given that, in principle, cryptographic services can be classified into two basic categories, i.e. restricted and non-restricted services, the solution of providing a basic set of non-restricted services as a built-in module and an additional set of restricted services as an extension module (or "framework") is reasonable and such an approach is used in the case of the Java Cryptography Extension referred to in [0003] of the application (cf. D6: p.29, item "JCE").

The present application is, however, concerned with a more complex legal situation, where the regulations governing the use of cryptographic services may vary from country to country and from one type of application to another. To supply a different extension for each country would clearly be very inconvenient and, moreover, would not solve the problem of different categories of application being subject to different legal restrictions. In the light of these considerations, the board judges that it would be obvious to the skilled person to supply a single extension which could respond to the varying circumstances.

3.9 The disclosed solution is based on modifying the functionality of existing JCE 1.2 programming constructs using conventional object-oriented programming techniques which, in the board's judgement, lie within the routine competence of the skilled person. In this regard, it is further noted that the description states in respect of the "limitations" associated with the cryptographic service implementations that "any desired form may be used" (cf. col.11 l.38-44). This is understood as an indication that the implementational details of the "limitations" in technical terms, as distinct from the cognitive information content thereof, are not of any particular significance for the purposes of putting the claimed invention into practice.

3.10 In the communication accompanying the summons to oral proceedings the board gave its preliminary opinion that the prior art referred to in 3.1 above, viz. the Java Cryptography Extension to the Java Platform acknowledged in [0003] of the application and as reflected by the textbook extract D6, was prejudicial to the inventive step of the claimed invention for reasons substantially the same as those set forth above (cf. communication: item 6.). The appellant did not submit any rebuttal in response to the board's preliminary opinion in this regard but merely requested remittal of the case to the department of the first instance for further consideration.

3.11 In view of the foregoing, the board sees no reason to deviate from the aforementioned preliminary opinion and concludes that a computer system including a framework as defined in claim 22 does not involve an inventive step over the prior art referred to in 3.1 above. Observations relating to the applicant's request for a remittal are given under 15. below.

4. Claims 1 and 43

4.1 The above finding in respect of claim 22 of the main request applies, mutatis mutandis, to claim 1 of the request. It also applies, in principle, to claim 43 of the request which is directed towards "a computer program for a system comprising at least one application".

4.2 Under the given circumstances, the board judges that with respect to claim 43 it is not necessary to give further consideration to the issue of exclusion under the provisions of Article 52(2) and (3) EPC, i.e. whether or not claim 43 relates to a computer program as such.

5. In view of the foregoing, the board concludes that the main request is not allowable.

First auxiliary request

6. The first auxiliary request comprises a set of claims 1-42 which are identical to claims 1-42 of the main request.

7. The above finding in respect of claims 22 of the main request (cf. point 3.11 above) thus applies to claim 22 of the first auxiliary request and likewise to claim 1 thereof (cf. point 4.1 above).

8. In view of the foregoing, the board concludes that the first auxiliary request is not allowable.

Second auxiliary request

9. The claims of the second auxiliary request correspond to the claims of the first auxiliary request filed with the letter dated 17 August 2009, i.e. the statement of the grounds of appeal (cf. statement of grounds: item 14.).

10. Claim 1 of the second auxiliary request differs from claim 1 of the main request in that it specifies receiving a request for a customized implementation of a cryptographic service whereas claim 1 of the main request specifies that the request is for an implementation of a cryptographic service.

11. Claim 22 of the second auxiliary request differs from claim 22 of the main request in that it is directed towards a framework for providing a cryptographic service to at least one computer program application rather than towards a computer system including such a framework and in that it specifies receiving a request for a customized implementation of a cryptographic service as opposed to receiving a request for an implementation of a cryptographic service.

12. Article 84 EPC 1973

12.1 Claims 1, 22 and 43 of the present request specify that the computer program application requests a "customized implementation" of a cryptographic service. However, according to the description, the computer program application merely requests an implementation of a particular cryptographic service. The framework responds to this request by supplying a customized implementation of the cryptographic service to the application (cf. application: [0010], [0016],[0020]).

12.2 It is noted in this regard that the aforementioned inconsistency between the claims and the description was brought to the appellant's attention in the communication accompanying the summons to oral proceedings and that the appellant amended the wording of claims 1, 22 and 43 of the main request in response thereto.

12.3 The board finds that the specification in claims 1, 22 and 43 to the effect that the computer program application requests a customized implementation of a cryptographic service is not supported by the description contrary to the requirements of Article 84 EPC. In view of this deficiency, the second auxiliary request is not allowable.

13. The board further notes that even if the deficiency noted under 12.3 above were to be remedied by appropriate amendment to the wording of claims 1, 22 and 43 of the present request, said claims would still recite substantially the same subject-matter as the corresponding claims of the main request and, thus, the objections detailed under 3. and 4. above in respect of the main request would also apply mutatis mutandis in the case of the present request.

14. Under the given circumstances, the board judges that it is not necessary to give further consideration to the issues raised in its communication relating to the question of exclusion under the provisions of Article 52(2) and (3) EPC, in particular in relation to claim 22 directed towards a framework and claim 43 directed towards a computer program.

15. Request for remittal

15.1 The appellant made an auxiliary request for the board to remit the application in the form of the main request to the department of the first instance for further consideration (cf. letter dated 29 December 2009: item 5.4). According to the appellant, the inventive step objection raised by the board was so significantly different from that given in the decision under appeal, that a remittal of the case was appropriate in order to safeguard the appellant's rights to have two levels of review.

15.2 More specifically, the appellant submitted that the decision under appeal argued that all the claim features (apart from cryptographic services per se) did not make a technical contribution and hence were to be disregarded for the purposes of considering inventive step whereas the objection raised by the board was based on a newly cited document, viz. D6, and suggested that all the claim features were known or obvious from the prior art.

15.3 The board does not concur with the appellant's submissions to the effect that the differences between the inventive step objection which the board has raised and that set forth in the decision under appeal are sufficiently significant to justify a remittal of the case to the department of first instance.

15.4 The objection raised by the examining division starts from the premise that cryptographic services are known per se. This effectively implies an underlying assumption that cryptographic services represent a technical aspect of the claimed invention but one which is a matter of general knowledge. It is implicit in the examining division's argumentation that this undocumented general knowledge constitutes the closest prior art to the subject-matter of claim 1. On this basis, the examining division proceeded to argue that none of the other claim features made a technical contribution to the claimed subject-matter and hence were to be disregarded for the purposes of considering inventive step.

However, the board notes that in an obiter dictum to its decision the examining division further indicated that it was of the opinion that even if features which it had discounted as not making a technical contribution were to be considered as technical features this still would not lead it to acknowledge an inventive step in respect of the subject-matter of claim 1 (cf. item II of the Facts and Submissions of the present decision).

15.5 The inventive step objection raised by the board is based on the premise that the prior art referred to in 3.1 above, viz. the Java Cryptography Extension to the Java Platform acknowledged in [0003] of the description and reflected in the disclosure of D6, represents the closest prior art to the subject-matter of the independent claims.

15.6 The prior art referred to in 3.1 above is not at variance with the undocumented prior art underlying the examining division's objection inasmuch as it relates to a framework for providing cryptographic services and thereby confirms the examining division's assertion that cryptographic services were generally known per se.

In addition, as may be inferred from 3.3 above, the textbook extract D6 provides evidence that further features of the claimed invention were known from this prior art at the relevant priority date. These further features are features which the examining division had discounted as not making a technical contribution. However, irrespective of whether these further features are treated as making a technical contribution or not, they are clearly known from the prior art referred to in 3.1 above and this has not been disputed by the appellant.

The issue which the examining division would have to decide upon in the case of a remittal effectively reduces to the question as to whether the distinguishing features of the claimed invention as identified in 3.4 above involve an inventive step.

15.7 The board notes that the appellant has not submitted any argumentation as to why the aforementioned distinguishing features should be considered to involve an inventive step. In the absence of any relevant submissions in this respect there are no identifiable grounds for supposing that the examining division would be inclined to deviate from its original finding of a lack of inventive step merely due to taking the aforementioned prior art as the starting point for its assessment, in particular, when due account is taken of the obiter dictum referred to in 15.4 above.

15.8 In view of the foregoing, the board judges that the arguments advanced by the appellant in support of its request for remittal are not compelling and that, under the given circumstances, a remittal would not be justified. This request is therefore rejected.

16. Request to defer making a substantive decision

16.1 The appellant also made a conditional request for the board to defer making a substantive decision until the outcome of the referral G 03/08 to the Enlarged Board of Appeal be known in the case that the board intended to place any reliance upon the decision T 0204/93 (cf. letter dated 29 December 2009: item 4.5).

16.2 The decision T 0204/93 was referred to in the board's communication in the context of observations relating to the question of exclusion under Article 52(2) and (3) EPC (cf. communication: item 5.4). The appellant submitted that G 03/08 placed the validity of this decision into doubt and could lead to it being overruled.

16.3 The board notes that in its communication it referred to decision T 0204/93 solely in the context of its observations relating to the question of exclusion under Article 52(2) and (3) EPC. Neither in said communication nor in the present decision has decision T 0204/93 been relied on or invoked in relation to the issue of inventive step. Thus the conditions under which the board would be required to consider this request do not apply.

17. Conclusion

17.1 Referring in particular to points 5., 8. and 12.3 above, the board judges that in the absence of an allowable request, the appeal is to be dismissed.

18. Request for reimbursement of appeal fee

18.1 An essential precondition for the reimbursement of the appeal fee under Rule 67 EPC 1973 is that the appeal be deemed allowable. Given that the board does not deem the present appeal to be allowable, the request for the reimbursement of the appeal fee cannot be granted.

18.2 In view of the foregoing, it is not necessary for the board to give further consideration to the allegations of substantial procedural violations raised by the appellant in relation to the proceedings before the department of first instance.