T 0912/05 () of 15.4.2008

17th November 2017

http://www.epo.org/law-practice/case-law-appeals/recent/t050912eu1.html
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European Case Law Identifier:

ECLI:EP:BA:2008:T091205.20080415

Language of proceedings:

Distribution:

Download and more information:

Decision text in EN (PDF, 55.000K)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in:	EN
Versions:	Unpublished

Title of application:

Recipient elected messaging services

The assessment of the inventive step of a business-related method may be possible wihtout a preliminary clear-cut separation between business-related features and technical features.

Relevant legal provisions:

European Patent Convention Art 52(1)
European Patent Convention Art 52(2)(c)
European Patent Convention 1973 Art 56

Keywords:

Method involving technical means (yes)
Inventive step (no – all requests)
Treatment of non-technical aspects

–

Summary of Facts and Submissions

I. The appellant (applicant) appealed against the decision of the examining division refusing European application No. 02 006 679.1.

II. In the decision under appeal, the examining division held, inter alia, that the subject-matter of claim 1 according to the appellant’s main request and first and second auxiliary requests did not involve an inventive step within the meaning of Article 56 EPC. The following documents were cited:

D1: DE-A-197 45 641,

D2: WO-A-99/21330.

III. In reply to a communication from the Board accompanying the summons to oral proceedings, the respondent filed, with a letter dated 3 March 2008, two sets of claims by way of first and second auxiliary requests.

IV. Oral proceedings before the Board were held on 15 April 2008.

V. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 21 of the main request filed with letter dated 17 May 2005, or if that was not possible, on the basis of claims 1 to 21 of the first auxiliary request or of the second auxiliary request filed with letter dated 3 March 2008. Furthermore, the appellant indicated that he was prepared to cancel the method claims and thus to limit all requests to the respective system claim.

VI. Claim 1 according to the appellant’s main request reads as follows:

“A method for delivering mail to a recipient using a carrier that enables the recipient (35) to inform the carrier of the manner in which the recipient would like the mail delivered, said method comprising the steps of:

depositing with the carrier mail (11) containing the recipient’s name and physical address (13);

capturing the name and physical address of the recipient;

translating the name and physical address of the recipient into an e-mail address;

the carrier (27) notifying the recipient (35) of the availability of the deposited mail using said e-mail address;

in response to the notification from the carrier, the recipient (35) notifying the carrier of the manner in which the recipient would like the mail delivered; and delivering mail to the recipient (35) in the manner specified by the recipient to the carrier (27).”

Claims 2 to 20 are dependent on claim 1.

Claim 21 of the main request reads as follows:

“A mail delivery system for delivering mail to a recipient (35) having an e-mail address and associated with a recipient receiving device (36); said system comprising:

a carrier having scanning means (51) for scanning mail; and

a data center (34) having encoding means (53), a mail image database (57), a physical address database (54), an e-mail address database (55), management means (58), data center receiving means (61), and sending means (59);

wherein said scanning means (51) is adapted to scan mail so as to capture the name and physical address of the recipient;

said encoding means (53) is adapted to translate the name and physical address of the recipient into said e-mail address by reference to said physical address database (54), said image database (57) and said e-mail database (55);

said management means (58) is adapted to notify the recipient of the availability of the deposited mail by causing said sending means (59) to send an e-mail message to said recipient receiving device (36) by means of said e-mail address; and

said data center receiving means (61) is adapted to receive notification from the recipient (35) notifying the carrier of the manner in which the recipient (35) would like the mail delivered in response to the notification from the carrier, and to instruct said carrier to deliver said mail to the recipient (35) in the manner specified by the recipient to the carrier.”

Claim 1 of the appellant’s first auxiliary request differs from claim 1 of the main request only in that the steps of depositing and capturing read as follows:

“depositing with the carrier mail (11) containing the recipient’s name and physical address (13) and the sender’s name and address (12)”,

“capturing the name and physical address of the recipient and the sender”.

Claims 2 to 20 of the first auxiliary request are dependent on claim 1. Claim 21 is identical to claim 21 of the main request.

Claim 1 according to the second auxiliary request reads as follows:

depositing with the carrier mail (11) containing the recipient’s name and physical address (13);

capturing an image of the face of said mail, and encoding therefrom the name and physical address of the recipient;

translating the name and physical address of the recipient into an e-mail address;

transmitting said image to said e-mail address;

in response to the notification from the carrier, the recipient (35) notifying the carrier of the manner in which the recipient would like the mail delivered; and

delivering mail to the recipient (35) in the manner specified by the recipient to the carrier (27).”

Claim 2 to 20 are dependent on claim 1.

Claim 21 according to the second auxiliary request differs from claim 21 of the main request only in that it further specifies that:

the “scanning means (51) is adapted to scan the face of the mail so as to capture the name and physical address of the recipient as an image” and

the “management means (58) is adapted to notify the recipient of the availability of the deposited mail by causing said sending means (59) to send said captured image to said recipient receiving device (36) by means of said e-mail address.”

VII. The appellant’s arguments relevant to the present decision may be summarised as follows:

As to the question of whether the present application related to a method for doing business, it was evident that mail delivery was an activity which happened in the real world and implied a number of steps, such as scanning, sorting, physically distributing and transporting mail pieces, which involved technical considerations and solutions.

Although mail delivery provided a paid service which was highly relevant to business, it was not a method of doing business excluded from patentability under Article 52 (2) (c) EPC. Indeed, there were many activities, such as printing, photocopying and luggage handling, which, although providing commercial opportunities, were evidently technical and thus not excluded from patentability.

Having acknowledged that the present invention was not excluded from patentability under Article 52 (2)(c) EPC, the examining division held in the contested decision that the closest prior art could be seen as the normal method of delivering physical mail adopted in most countries. According to this method, when the postman found that the recipient of a specific mail piece was not at his physical address, he left a note in the recipient’s mailbox notifying the recipient that the mail piece could be picked up at the post office later. The present invention, as recited in claim 1 of the main request, comprised, in the opinion of the examining division, a group of features which related to mere business choices with the goal of improving the known mail service for the customers. These specifications would be made by the marketing department in a company and given for implementation to a technically skilled person. The remaining features were then regarded as a trivial implementation of the business-related specifications.

There was, however, no legal basis for splitting a method claim into two distinct groups of allegedly non-technical and technical features. As the method was essentially technical in the sense that it related to a technical field, all the features were technical and should be taken into account when assessing the inventive step of the claimed invention. In the real world, it was a prerogative of the technically qualified people to explore the possibilities that technological advances offered for the improvement of mail delivery and it was left to such skilled technicians to inform the business people as to how the service offered to customers could be improved. For instance, in the case of the present invention, the decision to notify the recipient about deposited mail could not be taken without considering the practicality of so doing. Hence, questions relating to the possibility of notifying each recipient, the manner of notification and the choice of available technical means involved technical considerations which had to be addressed by the skilled technician. In fact, even the features which the examining division had considered as representing mere business choices presupposed an intimate technical knowledge of and familiarity with the mail delivery process and could not be separated from the allegedly technical features.

In order to perform a proper analysis according to the problem and solution approach, it was first necessary to consider the technical problem which was to be overcome and the way in which it was overcome by means of the invention.

According to the application the recipients of letters and packages liked to know what letters and packages they were going to receive before such mail pieces were actually delivered. They might also want to delay delivery of a particular letter or package until their return from a trip. The various disadvantages of a standard method of mail delivery listed in the description of the present application were overcome by providing a method which enabled a recipient to obtain notification of the letters, flats or packages that the recipient was going to receive prior to delivery of the mail.

An essential component of the inventive solution was that prior art steps of delivering physical mail pieces to the physical address of the recipient were replaced by other novel steps which consisted in notifying the recipient of the availability of a deposited mail piece, in the recipient notifying the carrier on how the mail should be delivered and in delivering the mail piece as specified by the recipient. The non-obviousness of these steps, which the examining division regarded as business-related should be taken into account in the assessment of the overall subject-matter of claim 1. In fact, if the subject-matter of claim 1 were considered in its entirety, there would be a “synergistic effect” in the sense that there was a group of features which was both non-obvious and also technical. Even if it were true that the non-obviousness arose from allegedly non-technical features and technical features were obvious implementations of the non-technical features, the overall effect of the combination both involved an inventive step and was technical.

As to the prior art cited in the contested decision, a person skilled in the art would have been most unlikely to derive the subject-matter of the present invention from the disclosure of D1, as this document did not provide a clear and coherent teaching. D1 was in effect little more than a loose collection of discrete features from which the person skilled in the art would not necessarily select the specific combination of claim 1 without making an invention himself. Accordingly, without the use of impermissible ex post facto analysis, it was not the case that a person skilled in the art would have arrived at the concept of claim 1 simply on the basis of D1.

Document D2 was essentially based on a letter server where the content of a mail piece was stored in electronic form and did not disclose a mail delivery method that enabled the recipient to inform the carrier of the manner in which the recipient would like the mail to be delivered.

In summary, the method for mail delivery according to claim 1 of the main request involved an inventive step within the meaning of Article 56 EPC.

Claim 1 according to the first auxiliary request differed from that of the main request by the inclusion of the expression “and the sender’s name and address”. Otherwise this request was identical to the main request and the above arguments in respect of the main request therefore applied equally to the first auxiliary request.

As far as the second auxiliary request was concerned, claim 1 added to the subject-matter of the main request the feature that an image of the mail was captured before encoding the name and physical address of the recipient and that said image was sent to the e-mail address of the recipient. An advantage of this feature, which allowed the recipient to view a facsimile image of the mail envelope, was that the recipient could identify in an efficient manner the mail piece to be delivered before choosing the manner of delivery.

D2, which taught e-mailing the content of a letter and not the mail envelope as a facsimile image to the recipient, had no relevance in the present case.

Accordingly, at least the subject-matter of the second auxiliary request should be regarded as patentable.

Reasons for the Decision

1. The appeal is admissible.

2. The present application relates “to the field of mail delivery systems and more, [sic] particularly, to systems that may deliver mail by physical and/or electronic means” (published application, column 1, lines 3 to 4).

A problem identified with conventional mail delivery systems is that “it takes the post three to five days to deliver letters and/or packages to a recipient. Sometimes recipients of letters and packages like to know what letters and packages they are going to receive before they receive them…. Someone may also want to receive a package before they go on a trip so that they may take the contents of the package on the trip. The recipient may also want to delay delivery of a particular letter or package until they return from their trip” (ibid. column 1, lines 33 to 46).

The present “invention overcomes the disadvantages of the prior art by providing a method that enables a receiver … to obtain notification of the letters, flats and/or packages (mail) that the recipient is going to receive prior to the delivery of the mail. The recipient is then able to inform a post or courier… of the manner in which the recipient would like the mail delivered” (ibid. column 1, lines 50 to 58).

Thus, the gist of the present invention consists essentially in providing a mail delivery service which informs the recipient of the availability of mail and delivers it according to the recipient’s instructions.

3. Article 52(2)(c) EPC

3.1 According to the appellant, mail delivery, though relevant to business, was essentially a technical process and thus not excluded from patentability under Article 52 (2)(c) EPC. In fact, a method of mail delivery involved steps which implied technical considerations and necessarily relied on technical means for their implementation.

3.2 Mail delivery within the meaning of the present application relates to the transport of tangible objects, such as letters and packages, from a sender to a recipient (application as published, paragraphs [0001] to [0004]).

Its general aim is to provide a service for conveying mail pieces according to the customers’ instructions.

In the opinion of the Board, the provision of a mail delivery service of the kind envisaged in the present application is essentially a commercial activity which per se need not directly involve any field of technology. In the past, for instance, mail delivery was ensured “by messengers from a location in which the sender of the writing was present to another location where the receiver was present” (see published application, paragraph [0002]).

Thus, the mere fact that a method is directed to delivering mail does not necessarily imply that it is an “invention” within the meaning of Article 52 (1) EPC. On the contrary, methods of mail delivery may or may not qualify as inventions pursuant to Articles 52 (1) and 52 (2)(c) EPC, depending on whether they involve “technical means” (see T 0258/03 (OJ 2004, 575), paragraph 4.7 of the reasons).

3.3 In the present case, the independent method claims of all requests contain a step which relates to the transmission of information per e-mail. As this form of communication necessarily requires the use of technical means, such as computers, the methods for mail delivery as set out in claim 1 of all requests comprise at least one step involving technical means for their implementation. In accordance with the case law of the boards of appeal, these methods can thus be regarded as “inventions” within the meaning of Article 52(1) EPC (cf. T 258/03 (see supra)) and T 641/00 (OJ EPO 2003, 352)).

Main request

4. Claim 1

4.1 A mail delivery service typically delivers mail to its designated recipient according to a schedule determined by a post office close to the recipient’s address. As this was incontestably known to the public before the priority date of the present application, it forms part of the state of the art under Article 54(1) EPC.

Departing from this standard manner of delivering mail, the present application proposes a “method of delivering mail to a recipient using a carrier that enables the recipient (35) to inform the carrier of the manner in which the recipient would like the mail delivered” (see claim 1 of all requests).

Hence, the claimed method aims at improving the service provided by traditional mail delivery by offering recipients the possibility of determining when and where their mail should be delivered. The Board agrees with the appellant that the mere idea of letting mail recipients routinely decide how their mail should be delivered may indeed provide a valuable and innovative advance in the business of delivering mail. It cannot, however, per se be equated with a contribution to a field of technology in the sense that it does not provide a solution to a technical problem.

In other words, a contribution, in terms of an increased or improved range of services, to what is essentially a business activity cannot be considered as relevant for establishing whether a method for effecting such contribution involves an inventive step. It is only the claimed combination of method steps and not its business-related, non-technical aim which, in the opinion of the Board, should to be taken into account when deciding whether an invention within the meaning of Article 51 EPC involves an inventive step pursuant to Article 56 EPC.

4.2 The non-technical contribution to a business-related field should therefore not be regarded as part of the features which may support the inventive step of the claimed subject-matter. As far as it relates to the object to be achieved, this contribution defines the problem assigned to the skilled person, whereas its implementation, which may comprise a combination of interacting technical and non-technical features, represents the skilled person’s solution to this problem and may indeed constitute patentable subject-matter. If the opposite were true, even trivial technical implementations of subject-matter or activities excluded from patentability under Article 52 (2) EPC could become patentable inventions.

Hence, in the present case, the question to be asked is whether a technically skilled person, who was assigned the task of developing a method for enabling the recipient of a mail piece to inform the carrier of the manner in which the recipient would like the mail delivered, would have arrived at the combination of steps recited in claim 1 of the main request (see T 641/00 (supra), headnote II).

4.3 The method of claim 1 comprises the following steps:

(a) depositing with the carrier mail containing the recipient’s name and physical address,

(b) capturing the name and physical address of the recipient,

(d) the carrier notifying the recipient of the availability of the deposited mail

(d’) using said e-mail address,

(e) in response to the notification from the carrier, the recipient notifying the carrier of the manner in which the recipient would like the mail delivered, and

(f) delivering mail to the recipient

(f’) in the manner specified by the recipient to the carrier.

4.4 According to the principles set out in decision T 641/00 and confirmed in T 258/03 an invention within the meaning of Article 52(1) EPC is to be assessed with respect to inventive step by taking account of only those features which contribute to its technical character whereas features making no such contribution cannot support the presence of inventive step.

4.5 In the appellant’s view, however, there was no legal basis for dividing the steps of the method of the present invention into business-related, i.e. non-technical, and technical features. The whole combination of steps recited in claim 1 should be considered for the purpose of assessing the inventive step of the claimed subject-matter.

4.6 Although the Board agrees with the case law referred to above, it finds that in the present case it is not necessary to seek to separate features that are essentially business-related, and thus not relevant for the solution of a technical problem, from those features that, as essentially technical, should be taken into account when assessing inventive step.

In view of the appellant’s objections against trying to make a clear-cut separation between technical features and business-related features and thus neglecting the overall effect of the combination, the Board considers that in the present case it is expedient to distinguish between steps (a) and (f) (see item 4.3 above), which are inherent in any mail delivery method independently of its implementation, and steps (c), (d), (d’), (e) and (f’), which are directed to achieving the object of the present invention, i. e. notifying the recipient of the availability of a mail piece and receiving instructions concerning its delivery. Feature (b) can also be assigned to the first group, if it is considered that “capturing the name and physical address of the recipient” covers any possible manner of detection of data which are essential for delivering a mail piece to its intended recipient, including “reading”.

4.7 Apart from the fact that steps (a), (f) and, in its broader interpretation, step (b) may be regarded as not implying any technical means because, in principle, they can be directly performed by the sender and the carrier’s staff without the help of technical means, these steps belong, as pointed out above, to any generally known method of mail delivery and, as such, cannot contribute to the inventive step of the subject-matter of claim 1.

As to the second group of steps, (d), (e) and (f’) merely specify in general terms activities which are directly related to the object to be achieved. If the recipient is to be given the opportunity to decide where his or her mail should be delivered, the carrier has to notify the recipient of the availability of deposited mail (step (d)), the recipient has to respond to such notification (step (e)) and the mail delivery has to follow the recipient’s instructions (step (f`)).

In other words, a method of mail delivery which enables the recipient to inform the carrier as to how mail should be delivered necessarily comprises the combination of features (a), (b), (d), (e), (f) and (f’). Thus, even if it were assumed that these steps involved some kind of technical means and should be taken into account when assessing inventive step, a person skilled in the art would have necessarily included this combination of steps in a method of mail delivery directed to achieving the non-technical object of the present invention.

4.8 Feature (d’) relates to the way in which the carrier notifies the recipient of the availability of mail.

Having regard to the fact that before the priority date of the present application e-mails were a generally known and commonly used means for exchanging information, the Board is of the opinion that it would have been obvious to a skilled person to consider notifying the recipient of the availability of deposited mail using the recipient’s e-mail address, all the more so as recipients, who might not be able to receive their mail, could access their e-mail accounts whenever and wherever a link to the Internet was provided.

4.9 Furthermore, the use of e-mail transmission in the context of a mail delivery service is, for instance, known from D2, which relates to a “system and method of document transfer in which a document is transferred from a sending location to a sanctioned or trusted way location for reproduction (physical or otherwise) and subsequent delivery to an intended recipient” (page 6, lines 2 to 5). In particular, D2 (page 29, lines 24 to 26) specifies that “the link between a sender and the letter server (as well as between the letter server and a recipient) may be a virtual communication link”, such as “e-mail transmission”.

Document D1 (page 5, lines 50 to 56) also teaches relying on a telephone, cell phone or other communication device in order to enable a recipient to communicate to the carrier at short notice an address to which the recipient’s mail should be diverted.

4.10 It is furthermore evident that the step of communicating with the recipient via e-mail implies the step of obtaining the recipient’s e-mail address and that this can be done using the recipient’s name and physical address (see feature (c)).

4.11 The Board thus considers that it would have been obvious to a skilled person, having the task of implementing a method for delivering mail which enabled the recipient to inform the carrier of the manner in which the recipient would like the mail to be delivered, to arrive at the claimed combination of steps. Hence, the subject-matter of claim 1 of the appellant’s main request does not involve an inventive step within the meaning of Article 56 EPC.

5. Claim 21

5.1 Claim 21 according to the main request is directed to a mail delivery system comprising means which are essentially directed to implementing the steps recited in claim 1.

In particular the system according to claim 21 comprises:

– a recipient receiving device;

– a carrier having scanning means for scanning mail; and

– a data center having:

– encoding means,

– a mail image database,

– a physical address database,

– an e-mail address database,

– management means,

– data center receiving means and

– sending means.

The operation of such means are specified in claim 1 as follows:

(i) the scanning means is adapted to scan mail so as to capture the name and physical address of the recipient;

(ii) the encoding means is adapted to translate the name and physical address of the recipient into said e-mail address by reference to said physical address database, said image database and said e-mail database;

(iii) said management means is adapted to notify the recipient of the availability of deposited mail by causing said sending means to send an e-mail message to said recipient receiving device by means of said e-mail address; and

(iv) said data center receiving means is adapted to receive notification from the recipient notifying the carrier of the manner in which the recipient would like the mail delivered in response to the notification from the carrier, and to instruct said carrier to deliver said mail to the recipient in the manner specified by the recipient to the carrier.

5.2 It is evident that the means recited in claim 21 are required to perform automatically steps (b), (c), (d), (d’) and (e) of the method according to claim 1, and that these means should be adapted to operate as specified in (i) to (iv). In other words, there is a direct correspondence between the steps of claim 1 and the means recited in claim 21. For the same reasons given above, it would have been obvious to a person skilled in the art, wishing to provide a mail delivery system for achieving the object of the present application, to arrive at the combination of features specified in claim 21 of the main request. Hence, the subject-matter of this claim does not involve an inventive step within the meaning of Article 56 EPC.

First Auxiliary Request

6. Claim 1

6.1 The first auxiliary request differs from the main request in that, according to claim 1 of the former, the mail deposited with the carrier contains “the sender’s name and address” which is captured together with the name and physical address of the recipient.

6.2 Apart from the fact that it is generally known that the sender’s name can be written on the envelope of a mail piece, the only purpose of the requirement that mail pieces include the sender’s address is to give the carrier additional information concerning the mail to be delivered . This, however, does not provide any technical contribution to the problem of delivering mail and thus it cannot be relevant for assessing inventive step.

6.3 Hence, the subject-matter of claim 1 according to the first auxiliary request does not comply with Article 56 EPC.

6.4 Claim 21 of the first auxiliary request is identical to claim 21 of the main request and its subject-matter thus does not involve an inventive step (see points 5.1 and 5.2 above).

Second Auxiliary Request

7. Claim 1

7.1 Claim 1 of this request differs from that of the main request in that it further comprises the following steps:

– “capturing an image of the face of said mail, and encoding therefrom the name and physical address of the recipient”,

– “transmitting said image to said e-mail address”,

whereby the latter feature replaces the step of notifying the recipient of the availability of the deposited mail.

Thus, according to claim 1 of the second auxiliary request, notification to the recipient of the availability of mail is performed by sending an image of the mail piece.

7.2 The feature that distinguishes the second auxiliary request from the main request relates to the kind of information sent by the carrier in order to notify the recipient. In claim 1 of the main request, it could be some standardized message, whereas the second auxiliary request specifies that an image is sent. This feature appears to provide a further improvement to the implementation of the object to be achieved by the claimed method, in the sense that the recipient, who may be able to estimate the content and/or importance of a mail piece from its appearance, can now make an informed choice as to the manner of delivery of the deposited mail.

In other words, the object of the method according to claim 1 of the second auxiliary request differs from the object of the main request in that the carrier provides the recipient with additional information concerning the deposited mail, so that the recipient may identify the deposited mail prior to informing the carrier of the manner in which the mail should be delivered.

7.3 In the opinion of the Board, the additional service provided by a carrier by means of the method of the second auxiliary request is essentially an improvement concerning a business activity. As such, it is not relevant to the question of inventive step.

7.4 As to the steps which distinguish claim 1 of the second auxiliary request from claim 1 of the main request, it is noted that before the priority date of the present application, 27 March 2001, it was standard practice among Internet users to exchange image files. In view of the high information content of images, it would have been obvious to a person skilled in the art, wishing to offer the recipient a more accurate identification of deposited mail, to present information relating to a mail piece in image form. As the face of the mail had to be scanned in order to identify the recipient automatically, it was an obvious option to send the scanned image of the face of the mail.

7.5 Thus, the steps recited in claim 1 represent a straightforward implementation of the object to be achieved and therefore do not go beyond what the skilled person wishing to develop a method for fulfilling such object would arrive at without exercising any inventive activity.

8. Claim 21

8.1 Claim 21 of the second auxiliary request differs from claim 21 of the main request in that the scanning means is adapted to scan the face of the mail “so as to capture the name and physical address of the recipient as an image”, and the management means is adapted to notify the recipient by sending the “captured image to the recipient”.

As found in the case of the main request, the system according to the second auxiliary request is also a straightforward implementation of an obvious method of mail delivery, and, as such, does not require any inventive activity on the part of the skilled person.

8.2 Hence, the subject-matter of claim 21 according to the second auxiliary request does not involve an inventive step within the meaning of Article 56 EPC.

9. As neither the appellant’s requests nor any of the system claims on file relate to patentable subject-matter, the application has to be refused.

ORDER

For these reasons it is decided that:

The appeal is dismissed.