T 0594/11 28-06-2013

1. The appeal is admissible.

2. Added subject matter, Article 123(2) EPC (all requests)

2.1 According to established jurisprudence, see the Case Law of the Boards of Appeal, 6th edition, 2010 (herein CLBA), III.A.7, and the decisions cited therein, the relevant question for deciding whether an amendment adds subject matter extending beyond the content of the application as filed is whether the proposed amendment is directly and unambiguously derivable from the application as filed.

Furthermore, according to CLBA, III.A.2, and the decisions cited therein, it is normally not admissible under Article 123(2) EPC to extract isolated features from a set of features originally disclosed only in combination in a specific embodiment. An amendment of this nature would only be justified in the absence of any clearly recognisable functional or structural relationship between said features.

2.2 In its communication of 28 March 2013, the Board raised objections of added subject matter with respect to the feature: "an attribute related to telephone call usage" in claims 1, 15 and 27 of the first and second auxiliary requests, to which the appellant has not responded. The Board has not found any reason to change its opinion.

2.2.1 Applying the approach outlined in point 2.1, the Board first notes that the feature itself is not literally disclosed. There is disclosure of generic call usage data being used to adjust parameters of a game, see for example the application as filed, page 2, lines 10 to 12, which reads "The game parameters can be adjusted based on for example...call usage on the mobile station...". However, the Board considers "call usage" to be more specific than an "attribute related to call usage" as is claimed. Furthermore the adjustment of parameters on the basis of call usage data is only disclosed in the specific context of a "game" rather than that of a more general "service" as claimed in claim 1 of these requests. Since the call usage adjusts the game parameters the two features are functionally related.

The Board therefore holds that claims 1, 15 and 27 according to the appellant's first and second auxiliary requests contain subject matter extending beyond the application as filed.

2.3 In its communication of 28 March 2013, the Board also raised objections of added subject matter with respect to the feature of a mobile station/phone being configured to adapt a service/game state present in independent claims to a mobile station/phone and to a system according to all requests, see for example claims 15 and 27 of the main request. The appellant has not provided any counter arguments, nor has the Board found any reason to change its opinion.

2.3.1 The Board notes that, in the application as filed, the only entity disclosed as adapting a service or game state to a user profile is a server, separate from the mobile station/phone. See for example figure 14 and page 18, lines 7 to 25, where it is disclosed that a "virtual world" game played on a user mobile station 102 has different states which are updated by an interactive fiction engine 1414 running on a game server 1412 connected to the mobile station via a mobile network 1408. Likewise on page 22, lines 20 to 23 it is stated that "in order to incorporate user profile information in a game, user profile information retrieved from the memory 1504 in the mobile station 102 is sent to the the server 1412. The server 1412 incorporates this profile information into the game service 1414." Similarly on page 23, lines 11 to 12, "The game server 1412...updates the game state...then issues a command to the mobile station 102 to update the game context being presented on the mobile station 102".

The claims as originally filed, for example claim 29, likewise specifies that a server in communication with a mobile station, rather than the mobile station itself, is configured to change a [service] application state.

2.3.2 The Board does not dispute that the application as filed discloses that data relating to the mobile station, such as how the mobile station is used (page 21, lines 12 to 13) or the clock time of the mobile station (page 21, lines 15 to 16) can affect the game state. However the mobile station/phone itself is not disclosed as being configured to adapt the service or game state. This feature is, in the Board's estimation, not directly and unambiguously derivable from the application as filed. The Board concludes that claims 15 and 27 of the main request, first and second auxiliary requests and claims 14 and 25 of the third auxiliary request comprise subject matter extending beyond the application as filed.

3. Novelty, Article 54 EPC (main and first auxiliary requests)

3.1 In its communication of 28 March 2013, sections 2, 2.1 to 2.3, the Board stated its provisional opinion that "[section 2][the] basic idea of using user or usage profile data to customise services on a mobile station appears to be known from either D3, W098/47295 or D4, US5544321.

2.1. In the telecommunications system of D3, see abstract; page 23, Lines 11-18; page 24, line 5-12, a shortlist of information on a users terminal which may be a mobile phone (see Fig. 1) is updated based on its sensed location.

2.2. In D4, see abstract and figures 3 and 4 with col. 9, 1ine 64 to col. 10, line 45, a user software on a possibly mobile device, col. 7, lines 36-40, manages user information and uses it to customise applications. As an example, col. 12, lines 45-54, the system issues reminder messages if a user is near another specified user, implying location tracking.

2.3. Both D3 and D4 appear to anticipate the general idea expressed in the independent claims of the main and first auxiliary requests."

3.2 More particularly, and by way of example, D3 discloses the idea of providing an information service to users of mobile devices communicating in a (telecommunication) network, see D3 abstract and additionally page 1, lines 1 to 5. Locations of the users in the system are tracked, corresponding to the collection of "user profile data [that] relates to... location information" as in claim 1, main request which (for tracking) is naturally current location (first auxiliary request). This data is stored and used to generate a short list of information sources, which is transmitted to the user for selection, corresponding to the claimed features of "communicating a service state" and "receiving a command in response to the service state". This information is adapted to reflect the user's location, see page 24 lines 5 to 12 and additionally page 5, lines 12 to 15, corresponding to the final feature of claim 1. D3 thus discloses all the features of claim 1 according to the main and first auxiliary requests.

3.3 The appellant has provided no argument as to why the subject matter of these claims is new with respect to either document D3 or D4, nor has the Board found any reason to change its provisional opinion. It thus concludes that the subject matter of claim 1 of the main request and first auxiliary request lack novelty.

4. Inventive Step, Article 56 EPC (second and third auxiliary requests)

4.1 In the communication of 28 March 2013, section 2.4, the Board stated its provisional opinion that "[the] second and third auxiliary requests apply the broad idea [of using user or usage profile data to customise services on a mobile station] to the narrower context of gaming on mobile stations. Mobile phones with gaming software were notoriously known at the priority date of the application. The idea of customising or adapting a game to phone usage specifics itself lies in the domain of methods and rules for playing games and is per se excluded from patentability under Art. 52(2) c EPC, and cannot therefore contribute to inventive step following established case law, as explained in Tl543/06 in reference to T641/00. Decisive for inventive step in the technical sense of Art. 56 EPC is the question of how the idea has been technically implemented in the mobile station/phone, its method of operation, or as part of a larger (cellular) network with a base station. The idea of using profile data for automation of services is known as discussed above, see also D5, WO97/26O6l, pages 54 and 55 for example."

4.2 The sole issue that remains to be decided in assessing inventive step thus concerns the particular manner of realisation of this game idea as defined in claim 1 of these requests, and in particular whether the claimed mode of realisation would be obvious to the skilled person. The appellant has not put forward any arguments in this regard and it is therefore incumbent on the Board to consider this question.

4.3 The Board observes that it is indisputed that user profile data, such as call destination data, was routinely collected by mobile phones at the relevant date of the application. In realising a mobile phone with gaming software in which the game is adapted to phone usage it would therefore be obvious for the skilled person, a game system developer, to use such routinely collected relevant profile data. Other than specifying the use of this data claim 1 of the second and third auxiliary requests offers no details as to how the above rule of adapting game play to phone usage is implemented. Indeed that feature is merely a statement that the rule is implemented by the method claimed. As stated above the rule itself cannot contribute to inventive step, nor the mere fact that it is implemented. The only concrete feature of its implementation - collecting and storing profile data - is well-known in mobile phones, and the skilled person would immediately consider such collection and storage when asked to implement a game on a mobile phone that is adapted to phone usage. For this reason the Board concludes that the manner of implementation of this game rule or concept as claimed in claim 1 of the second auxiliary request does not involve an inventive step, so that the subject-matter of that claim fails to meet the requirement of Article 52(1) in combination with Article 56 EPC.

4.4 The fact that the user profile data includes information, such as call frequency, average call duration, countries called most frequently by the phone etc. (third auxiliary request), further defines the generic game rule identified above, rather than defining its technical implementation. However novel or ingenious the selection of these particular pieces of information may be, the Board considers that they form part of the non-technical aspects of the game which would be presented to the game system developer for technical implementation. Thus the Board holds that the subject matter of claim 1 according to the third auxiliary requests also lacks inventive step.

5. As none of the requests is allowable, the appeal must fail.