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.