T 0654/10 (Searchable message storage system/J2 GLOBAL COMMUNICATIONS) 26-02-2013

1. Admissibility of the appeal

The appeal has been filed by the patentee and complies with the provisions of Article 106 to 108 EPC (see Facts and Submissions point II above). Therefore it is admissible.

The opponent and respondent to the appeal has withdrawn its opposition. According to the case law of the Boards of Appeal, it has thus ceased to be a party to the appeal proceedings as far as the substantive issues were concerned (see T 789/89). However the evidence submitted prior to the withdrawal, in the present case documents A16 to A19, can still be used in the appeal proceedings (see T 340/05).

2. Amendments

2.1 Admission of the request

The appellant has submitted the new main request during the oral proceedings. Independent claims 1 and 6 have been substantially amended with respect to the independent claims according to the requests on which the impugned decision was based by adding the following features:

1) a received user message is stored in a separate directory established for each user in a storage area;

2) a data entry comprising a plurality of fields for identifying the user message is stored for each received user message;

3) the system user request specifies data fields message information parameters for a desired search;

4) the search results are stored as a user named open search wherein the search is reactivated in response to a user request or as a user named closed search wherein the messages in a named search are limited to those existing at the time of the search.

The addition of these technical features aims at overcoming the objection under Article 56 EPC which was the basis for the revocation of the patent. The added features were present either in the granted claims or in the description. With respect to the features taken from the description, namely the features related to the storage of the search results as an open or closed search, the board notes that they were present in the requests submitted with the statement setting out the grounds of appeal and that the respondent filed related prior art documents A16 to A19 and arguments based thereupon in response to the introduction of said features in the claims.

The board thus considered that the amendments introduced by the appellant's request were occasioned by the ground for opposition under Article 100(a) EPC and that the issue of inventive step can be decided based on the prior art documents on file and the

late-filed documents A16 to A19. Taking into account the fact that the opponent was no longer party to the appeal procedure as far as the substantive issues were concerned, the board exercising its discretion under Article 13(1) RPBA decided in favour of admitting the appellant's latest request and, accordingly, documents A16 to A19 to the appeal proceedings.

2.2 Article 123 EPC

2.2.1 Article 123(2) EPC

The board is satisfied that the amendments to the claims do not extend the subject-matter of the patent beyond the content of the application as filed.

In that respect, the added features 1) to 4) (see point 2.1) are supported by the following passages of the application as originally filed (see the PCT published application WO 99/18716):

- feature 1): page 27, lines 6 to 8;

- feature 2): from page 37, line 27 to page 38, line 8; Figure 17; claim 10;

- feature 3): page 38, lines 8 to 10; page 41, lines 2 to 11;

- feature 4): page 42, lines 9 to 11; from page 42, line 18 to page 43, line 1.

2.2.2 Article 123(3) EPC

The claims have been amended with respect to the granted claims by adding the feature that the user request comprises a search query form and features 1) to 4) as defined in point 2.1.

The board is satisfied that these amendments to the claims specify further limitations and do not extend the protection conferred by the patent as granted.

3. Inventive step

3.1 Prior art

A1 is a patent application document filed by the appellant and comprising several description passages and drawings in common with the present application. It discloses an Internet-based message storage and delivery system adapted to receive user requests, including user mailbox number, message or page identifiers, and, in response, to provide the user with information indicating the total number of different messages with a number of anchors as links or references. A list of all the retrieved messages is displayed to the user which can select them for downloading their content via the internet.

A7 discloses a system for storing news articles as hypertext documents (HTML) with search attributes, created from e-mail messages sent by news providers. The e-mail messages are provided by a news source and have no particular destination other than the address of the server hosting the hypertext documents. A system user may request articles defined by search parameters by sending a search query form comprising these parameters to the server (see Figures 9 and 10).

A16 discloses the use of active queries, defined over past, present, and future in a database management system.

A17 is an excerpt of a textbook representing the common general knowledge in the query languages field. It relates to the use of automatic triggers which, upon modification of data in a database, initiates actions in the database itself.

A18 discloses an e-mail system, denominated the "Tapestry" system, comprising an e-mail database accessible by user's queries.

A19 relates to the "Tapestry" e-mail system. This document discloses the use of triggers for enabling queries to a database to be executed and for notifying users whenever data matches their queries.

3.2 It was common ground during the procedure before the opposition division and during the appeal procedure that A1 represented the closest prior art.

Features 1) to 4) (see point 2.1) have been added with respect to the claims on which the decision under appeal was based. Feature 1) however is already disclosed on page 35, lines 17 to 20 of A1. Features 2) and 3) are, in the board's judgement, implicitly disclosed in A1, page 16, lines 21 to 24. This passage teaches that the user request includes the user's mailbox number and the message identifier. These data represent data entries or parameters identifying the message in the storage area, as specified in features 2) and 3) of claim 1.

3.3 The differences between the subject-matter of claim 1 and the disclosure of A1 are thus feature 4) (see point 2.1 ), i.e. that:

- 4) the search results are stored as a user named open search wherein the search is reactivated in response to a user request or as a user named closed search wherein the messages in a named search are limited to those existing at the time of the search,

and the feature that:

- 5) the system user request comprises a search query form specifying at least one parameter for the search request.

3.4 Feature 5) provides the technical effect that the entry of the search parameters is standardized for all users and solves the technical problem of improving the search procedure, especially if the number of users and message identifying parameters are scaled up. The board judges that the skilled person would, in order to solve this problem, take into account the teaching of A7 (see Figures 9 and 10) with respect to searching for mark-up language documents stored on a server by using search forms. The skilled person would thus implement the use by every user of a search query form to be filled in with a plurality of search parameters, in order to both standardize the requests of all users and achieve a more detailed and scoped search in a user’s mailbox. Therefore feature 5) does not contribute to an inventive step of the subject-matter of claim 1.

3.5 Feature 4) provides the technical effects:

- that the messages corresponding to a previously performed search are retrievable at a later time,

and

- that, in case the search has been stored as an open search, the messages corresponding to a previously performed search are augmented, upon user request, by newly stored messages satisfying the search parameters.

In both cases, closed or open search, search time and resources are saved since previous results are re-used without having to be searched again.

The objective technical problem solved by feature 4) may thus be formulated as how to improve the performance and flexibility of the message storing and delivering method of A1 with respect to saving time and resources.

3.6 Documents A16 to A19 have been cited by the former opponent as a result of the introduction of features related to the storage of the search results as a closed or open search into the claims by the appellant. These documents are thus relevant for the assessment of the contribution of feature 4) to an inventive step of the subject-matter of claim 1.

A16 discloses a method for implementing open searches over databases, which are being continually updated. In particular, A16 describes in page 469, section 1, "Introduction", that the database management system actively monitors the arrival of desired information and provides it to the interested users as it becomes available. The open search disclosed in A16 is thus always active in the sense that results are returned to the user as soon as new information matching the search query arrives in the database. There is however no disclosure of storage of search results and of reactivation of a search in response to a user request, as defined in feature 4).

A17 discloses the use of triggers for initiating actions in a database upon modification of data. There is however no disclosure in A17 that these triggers could initiate the return of results of a search query to a user. Moreover, the disclosed triggers are automatic (see page 310, line 8) which implies that, even if they were used for returning results to a user, the user would have no influence on the reactivation of a search.

A18 discloses that the search queries in the "Tapestry" system are continuous (see page 66, middle column, lines 3 to 19). If a message database update results in new query matches, the new results are returned to the user. Therefore, the reactivation of the search query does not occur in response to a user request, as defined in feature 4), but automatically in response to a database update.

A19 discloses in further details the continuous queries of the "Tapestry" system. This document recognizes that a straightforward implementation of a continuous query by periodically executing the query may be inefficient in terms of cost (see page 322, left-hand column, first paragraph). To address this issue, A19 further discloses that a user query may, after a first execution, be transformed in a continuous incremental query, i.e. a query limited to the portion of the database that might newly match the query, and that the user may decide on the frequency of its running queries (see page 330, left-hand column, paragraph "Flexible scheduling"). This frequency is however determined by the user at the time of writing the continuous query in the specific query programming language. Therefore, reactivation of the search query is not performed in response to a user request, as defined in feature 4), but automatically at periodic predefined time intervals.

Therefore, even if the skilled person were to combine the teachings of any of A16, A17, A18, or A19, in order to solve the objective technical problem as formulated in point 3.5 above, it would at most arrive at designing a method wherein the open search is continuously reactivated at fixed time intervals predefined by the user at the time of programming the search request, but not at the solution of the patent in question.

The appellant plausibly argued in this regard that reactivation of the open search in accordance with feature 4), i.e. under the control of the user, results in improved efficiency of use and reduction of waste of resources. The board agrees in particular that it has to be considered that the storage capacity for personal computers was a critical issue at the priority date of the patent (year 1997) and that continuously sending search results to a user's computer, without any control by the user itself, would often have caused overflow of the memory portion dedicated to messages.

3.7 For the afore-mentioned reasons the board judges that feature 4) confers an inventive merit on the subject-matter of claim 1 (Article 56 EPC). For the same reasons, the corresponding independent system claim 6 also meets the requirements of Article 56 EPC. Since claims 2 to 5 refer to independent claim 1, they also meet the requirements of Article 56 EPC.