Case Law Review – T 0823/07


T 0823/07

Claimed Subject Matter:

Searching apparatus and a method of searching.

Novel Features:

(A) the images stored by the image storage means identify or are associated with commercial suppliers;

(B) the linking means links such images, i.e. images which identify or which are associated with commercial suppliers, with the corresponding text item to form listings (stored results entries) to display each text item and corresponding graphical image simultaneously;

(C) so that when the listings are displayed the user is enabled to readily identify a desired commercial supplier from the graphical image.


The novel features, however, derive in a straightforward manner from an underlying concept which lacks technical character and does thus not provide a technical contribution to the prior art.

In fact, displaying logos of commercial suppliers in combination with information concerning products, services etc provided by such suppliers is a presentation of information which exclusively addresses the mental and cognitive activities of users. There is no direct causal relationship to the technical solution of a technical problem. Even if it is true that presenting information according to this concept enables the user to identify the desired supplier and the associated listings more easily and quickly than with the prior art system, this result would be entirely subjective depending on the mental furniture of the user.

As follows from decision T 1143/06, the manner how cognitive content is presented to the user may only contribute to the technical solution of a technical problem if the manner of presentation (exceptionally) shows a credible technical effect (see 5.4 of the Reasons of the decision). Non-technical features and aspects of an invention should not be given any weight in assessing inventive step. If they belong to the general framework in which the invention evolves, they may be used in formulating the relevant technical problem (see decision T 641/00 – Two identities/COMVIK, OJ EPO 2003, 352).

 There has been no proof of any such technical effect of the present concept of presenting information, beyond the alleged advantages which concern the mental and cognitive activities of the user. The only credible technical effects result from the computer implementation of this concept.

This circumstance distinguishes the case from the decisions cited by the appellant in support of its arguments (see X. above). In all these decisions, the board concluded on the existence of a technical contribution over the prior art. The technical contribution resulted from overcoming physical limitations of the size and resolution of computer screens (T 643/00, T 928/03) and from the functions of a “new input device” conferring technical character (T 333/95). Neither one of the decisions derives the technical character of a feature or activity from the mental effort required or any similar effect; these are only secondary considerations. Moreover, in the context of inventive step, caution is required in applying old decisions concerning non-technical subject-matter like decision T 333/95 since the relevant case law has experienced some important development as explained in decision T 154/04 – Estimating sales activity/DUNS LICENSING ASSOCIATES, OJ EPO 2008, 46.

In the present case, the only relevant technical aspects of the invention are standard programming features for implementing the idea of displaying search results in connection with supplier logos on a computer system. The programming and implementation of this idea is obvious in the light of the prior art.

A Searchable CIPA Journal Archive

The CIPA Journal – the august publication of the UK’s Chartered Institute of Patent Attorneys – contains a veritable treasure trove of articles for the discerning Patent Attorney. It’s a shame then that, after an initial read, most editions find themselves in a forlorn pile in a distance corner of the average Patent Attorney’s office…

CIPA Journal

…Until now. With a few simple steps, you can breath life into those old editions and be the envy of your Attorney colleagues. Here’s how to do it:

  1. Goto the CIPA Website: .
  2. Log in as a member (“Members” link on left-hand side).
  3. Once logged in, click “Journal Archive” on the right-hand side.
  4. Download the available issues into a directory, such as “CIPA Journals”.

This gets you a nice collection of CIPA Journals in PDF format. You can use Adobe Acrobats “Find” feature:

to search in individual editions. However, to be of real use we need to be able to search the whole directory. There are two ways to do this:

Using Acrobat Portfolios

Adobe Acrobat 9 has a “Portfolio” feature. Click on “File” > “Create PDF Portfolio” to create one:


When the Portfolio screen loads up click “Add Existing Folder”:

Add Existing Folder

Choose your “CIPA Journals” folder. After Acrobat has worked its magic, save the Portfolio using “File” > “Save Portfolio As…”. You can now search through the Journals in the Portfolio using the “Search” box in the top right corner:

Search Portfolio

Using Windows Search

Updated / modern versions of Windows come with a “Windows Search” tool. You can find this by looking for the magnifying glass in the system toolbar. You can also display a search box by right clicking the Windows toolbar, selecting Toolbars, then selecting Windows Search Deskbar:

Windows Search

If the “CIPA Journals” folder is in your “My Documents” folder you should be able to search within the PDFs straight away by entering the search term in the Deskbar.

If that does not work you may have to check your search options. Right click the magnifying glass in the toolbar and select “Windows Search Options”. When the optiosn screen appears click modify to add your “CIPA Journals” folder to the list of indexed locations. Also click on “Advanced” and go to the “File Types” tab. Check “pdf” is an option and that the second radio box is active: “Index Properties and File Contents”. If the radio options are greyed out you will need to install the PDF iFilter, available as a free download from Acrobat (see here).

One downside to the Windows Search is I have not yet been able to show the highlighted text within each PDF. Hence, for each of your search results you will need to search within the PDF in the usual way to find the specific paragraphs. There are other 3rd party tools that can be used to search PDFs: see this post for details.