Case Law Review – T 2090/08



Claimed Subject Matter:

Method and system for transferring or returning unused digital rights.

The independent claims of the main request differ from the disclosure of the prior art (D1) by the following features:

    1. The procedure according to D1 requires manual user intervention to store the licence on a floppy disk and to install it on the second device, whereas the transfer procedure according to the claimed invention is automatic and runs under the control of the server. More specifically, the claimed procedure involves a request message from the first terminal to the server, identifying inter alia the second machine to which the rights object is to be transferred, and a response message from the server to the first terminal after succesful transfer of the rights object.
    2. The system of D1 does not provide the first device with selection options when the transfer fails.
    3. D1 does not disclose that a revoked license, i.e. the rights object, is deleted from the first terminal, let alone in response to a response message indicating successful transfer of the license.


In the board’s judgment, differences 1)-3) solve the following problems:

    1. Difference 1) makes the relicensing procedure of D1 more convenient for the end user by avoiding the need for a manual transfer of the license.
    2. Difference 2) handles the possible failure of the relicensing procedure at the second terminal.
    3. Difference 3) saves storage on the first machine by deleting a revoked license. The board considers that these problems arise naturally in the context of D1.

The board considers it obvious to provide a protocol according to which the first end user’s machine and the license clearing house, i.e. the server, communicate using a “request message” which, inter alia, identifies the “second machine” to the license clearing house, and wherein a “response message” is used which acknowledges this request to the first machine and confirms successful receipt of the license.

The problem to contain, control or reduce storage consumption is one that, in the board’s view, a person skilled in software development is always aware of. The board therefore deems obvious the idea that any unused data object – such as, in D1, a revoked license – should, at some point, be deleted from the end user’s machine. It is also obvious for the skilled person that the unused data object can be deleted as soon as possible or at later point in time. In order to choose between these alternatives the skilled person would have to assess the circumstances and weigh the requirements against each other, including, e.g., whether storage consumption is critical and whether it is likely that a deleted object may be needed again later (see point 5 above). In the board’s view, the skilled person would make this assessment and choice as a matter of routine and with out exercising an inventive step.

Case Law Review – T 0702/08



Claimed Subject Matter:

Process Monitoring.

The claim referred generally to “process objects” and “task objects”.


On the facts the Board considered the term “object” to have a broad meaning encompassing the general concept of a “goal” or “objective” at an administrative management level; there was no unambiguous correlation between the described (business and process) “objects” and object-oriented programming. This suggests that a specific technical mapping between abstract concepts and their technical implementation needs to be set out in any description.

Case Law Review – T 1866/08



Claimed Subject Matter:

Approach for tracking data (Yahoo! Inc.)

A method for operating an intermediary computer to track data requested by a user from a source server over a network, wherein the source server is arranged to communicate with the intermediary computer via a first network communications link, and the intermediary computer is arranged to communicate with the user via a second network communications link, the method comprising the computer-implemented steps of:

    • receiving (206), at the intermediary computer (104), the requested data from the source server (102); and
    • supplying (212), via the second network communications link, the requested data from the intermediary computer to the user (106);

characterised in that the method comprises the intermediary computer performing the steps of:

    • determining (208) whether the requested data includes rights data that indicates an owner of rights to the requested data; and
    • if the data includes the rights data:
      • (a) determining whether the source is associated with the owner of rights to the data; and
      • (b) if the source is not associated with the owner of rights to the requested data, then the intermediary computer not allowing the requested data to be supplied to the user; and
      • (c) if the source is associated with the owner of rights to the requested data, then the intermediary computer supplying the data to the user and recording (210) that the requested data was supplied.


The examination decision under appeal states that the difference between the claimed invention and the cited art  “merely” represents “the steps per formed by a data tracking and transmission system that implements rules about what to do with the traffic and registers th[ese] activities” and that the “task of tracking data traffic is a mere administrative task”.

In passing it is argued that these rules and tasks were well-known, for example from the “activity of a librarian registering incoming and outgoing books of the library”. The only technical features of claim 1 were merely “data transmission and data recording” and these were known from the prior art. The remaining features did not, so the argument, solve a technical problem but an administrative one, namely to “control the distribution of unauthorised data” which would belong to the non-technical “domain of the administration of property”. This difference, especially within the context of D1 which is already adapted to “[implement] rules driven by a detect ion event” (see again reasons 2.2), would amount to a mere automation of this administrative task, and if its performance were improved by the automation then only to the extent that any computer automation would cause such improvement, without any further technical effect. This difference could thus not establish an inventive step.

The board in the present appeal case takes a difference perspective on the invention.

The board concedes that the claimed invention has administrative aspects but considers that these cannot be stripped from the technical context in which they occur. The claimed invention relates to the “tracking” and delivery control of “data requested by a user from a source server over a network” in view of that source server. The board fails to see how this would be analogous to, let alone known from, the activity of a librarian “registering incoming and outgoing books of the library”, or why the skilled person trying to improve the system of D1, would turn to the activities of a librarian for help. The board also considers that the claimed invention goes beyond the mere implementation of a non-technical administrative task without any effect beyond the benefits of any computer automation (see decision under appeal, reasons 2.3, last sentence). Rather, in the board’s view, the effect of the invention over D1 is tied to a specifically technical situation, namely the request and download of data by a user over a network from a server, as is now clearly claimed. In this respect, the board agrees with the appellant in considering an automated, network-based mechanism to control and authorize the delivery of data as solving a technical problem (see grounds of appeal, point 3.16).

Case was remitted for further search as it was doubted whether the feature of delivery control was exhaustively searched:

    • Due to the fact that this feature was substantially less prominent in the claims of the originally examined application.
    • because the preamble of all claims by referring to “tracking data” rather than delivery control may have further detracted from the importance attached to this feature, and
    • because the examining division considered it to be of no technical relevance.