Autonomy Corporation Ltd v The Comptroller General of Patents, Trade Marks & Designs

UK Patent Application No. GB0402946.7 entitled “Automatic Searching For Relevant Information” was filed on 11 February 2004 and published as GB2411014 on 17 August 2005. The applicant is Autonomy Corporation Ltd. The application relates to a method for generating links related to the content of an active window displayed on a computer screen and for embedding an icon representing these links within, for example, the title bar of the window. The application also discloses how a summary of one of these links is displayed when a cursor is moved over it, and how more than one icon representing different categories of links may be embedded into the active window. The aim of the invention is to provide an improved interface between a user and a computer.

On examination, the examiner found that the claimed invention is excluded from patentability under section 1(2) of the Patents Act 1977, both as a program for a computer and as presentation of information. Despite revision of the claims, the objections were maintained, and Autonomy requested a hearing. A hearing took place on 26 September 2007 before Mr Jones acting for the Comptroller. By this time the claims had been amended in the light of the examiner’s report; and it is the amended claims that were considered at the hearing. Although the Hearing Officer accepted Autonomy’s arguments in relation to the objection based on the invention consisting of the presentation of information, he upheld the examiner’s objections based on the invention consisting of a program for a computer. Autonomy now appeal against the rejection of the application; and the Comptroller, by way of a Respondent’s Notice, says that the Hearing Officer ought also to have upheld the examiner’s conclusion that the application was excluded from patentability on the ground that it was simply the presentation of information.

The claimed inventive concept of the patent application is summarised in the following terms:

“Various methods and apparatus are described to generate a list of one or more links related to the content in an active window without a user having to request the query. According to the present invention, there is provided, a method, comprising analysing text from content in an active window, executing a query on the content in the active window without a user having to request the query, embedding a first icon that represents a category of links related to the content in the active window, generating a list of links related to the content in the active window, displaying the generated list of links on a display that is also displaying the active window in response to activation of the icon, and displaying a summary about a first link related to content when a user moves a cursor over the first link.”

Thus the claimed invention analyses a file or document in an open window of a computer. Having analysed the content of the file or document, it will then search the user’s computer for files with similar or relevant content and will also search other sources (e.g. the Internet) for files with similar or relevant content. Having located such files it will then create a link to those files, and display the link on the user’s computer.

The claims with which I am principally concerned are claims 1 to 4 which, in their amended form, read as follows:

“1.

A method, comprising:

analysing text from content in an active window;

executing a query on the content in the active window without a user having to request the query;

embedding a first icon that represents a category of links related to the content in the active window;

generating a list of links related to the content in the active window

displaying the generated list of links on a display that is also displaying the active window in response to activation of the first embedded icon; and

displaying a summary about a first link related to content when the user moves a cursor over the first link.

2.

The method of claim 1, wherein the first icon is embedded in an unobtrusive display area of an application operating in the active window.

3.

The method of claim 1, further comprising:

embedding two or more icons including the first icon in a title bar of an application operating in the active window, wherein each icon represents a different category of links related to the content.

4.

The method of claim 1, further comprising:

highlighting the first icon if one or more of the links related to the content exceeds a minimum threshold relevance rating to the content in the active window.”

It will be noted that the subsidiary claims are all dependent on claim 1. They are not dependent on other preceding claims. Thus, for example, the requirement that the display area be unobtrusive is only a requirement of claim 2. It is not a requirement of claims 1, 3 or 4.

There is also an apparatus claim (claim 22); but it was common ground that its fate depended on the validity of claims 1 to 4.

Computer programs and the presentation of information are excluded from patentability by section 1 (2) of the Patents Act 1977. However, in Aerotel v. Telco; Macrossan’s Application [2007] RPC 7 (“Aerotel”) the Court of Appeal told us to ignore the Patents Act and go straight to Article 52 of the European Patent Convention, to which s 1 (2) is intended to correspond. Article 52 says:

“(1)

European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

(2)

The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

…

(c)

schemes, rules or methods for performing mental acts, playing games or doing business, and programs for computers;

(d)

presentations of information.

(3)

The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”

In Aerotel the Court of Appeal laid down the following four step test to decide whether a claimed invention is patentable:

The first step is plainly an exercise in claim construction and will be tailored to the patent or application in suit. No general point of principle arises. In Aerotel Jacob LJ described the second step as follows:

“How do you assess the contribution? Mr Birss submits that the test is workable – it is an exercise in judgment probably involving the problem to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.”

He described the third step as follows:

“The third step – is the contribution solely of excluded matter? – is merely an expression of the "as such" qualification of Art.52(3). During the course of argument Mr Birss accepted a re-formulation of the third step: Ask whether the contribution thus identified consists of excluded subject matter as such? We think either formulation will do – they mean the same thing.”

In deciding whether the contribution is solely of excluded matter the Court of Appeal held that the correct approach was what it described as “the technical effect approach with the rider”. This was summarised earlier in the judgment as being:

“Ask whether the invention as defined in the claim makes a technical contribution to the known art - if no, Art. 52(2) applies. A possible clarification (at least by way of exclusion) of this approach is to add the rider that novel or inventive purely excluded matter does not count as a "technical contribution.”

The principal reason that led the Court of Appeal to adopt this test was that it was bound by previous decisions of its own: Merrill Lynch's Application [1989] RPC 561; Gale's Application [1991] RPC 191 and Fujitsu’s Application [1997] RPC 608. It is at the third step that one must consider whether the claimed contribution is solely excluded matter. It is clear from Merrill Lynch that more than one exclusion can be in play in relation to the same application. This was confirmed by Kitchin J in Raytheon’s Application [2008] RPC 3. In Merrill Lynch itself the two exclusions were computer programs and methods of doing business. In Raytheon there were three exclusions in play: computer program, methods of doing business and presentation of information. In the present case the Comptroller relies on two exclusions.

The first of the relevant exclusions is “programs for computers … as such”. Given the ubiquity of computers in modern life it is not surprising that the precise limitations of this exclusion have given rise to difficulty. In Aerotel the Court of Appeal quoted with approval part of the reasoning of the late Pumfrey J in shoppalotto.com's appn. [2006] RPC 293:

“There has been a tendency, especially in the earlier decisions of the Technical Boards of Appeal, to consider that the exclusions have in common a lack of 'technical effect'. While this may be true of many members of the list, it is not necessarily the case. A programmed computer provides an obvious example. Suppose a program written for a computer that enables an existing computer to process data in a new way and so produce a beneficial effect, such as increased speed, or more rapid display of information, or a new type of display of information. It is difficult to say that these are not technical effects, and, indeed, that the programmed computer, itself a machine that ex hypothesi has never existed before, is itself a technical article and so in principle the subject of patent protection. The real question is whether this is a relevant technical effect, or, more crudely, whether there is enough technical effect: is there a technical effect over and above that to be expected from the mere loading of a program into a computer? From this sort of consideration there has developed an approach that I consider to be well established on the authorities, which is to take the claimed programmed computer, and ask what it contributes to the art over and above the fact that it covers a programmed computer. If there is a contribution outside the list of excluded matter, then the invention is patentable, but if the only contribution to the art lies in excluded subject matter, it is not patentable.”

The clarity of analysis demonstrates what a loss to the law has been caused by his premature death. In the Aerotel case itself the Court of Appeal said of computer programs:

“Before you get to the "as such" qualification, you must make up your mind as to the meaning of the category which is excluded. Computer programs call for particular consideration here. There are, in principle, two views about what is meant by "computer program" in Art.52. A narrow view is that it means just the set of instructions as an abstract thing albeit they could be written down on a piece of paper. A wider view is that the term covers also the instructions on some form of media (floppy disk, CD or hard drive for instance) which causes a computer to execute the program – a program which works. This court and the earlier Board of Appeal decisions clearly take the latter view, as for instance in Gale and Vicom. The trio take the narrow view, working on the premise that all the exclusions are limited to the abstract. We are bound to say that we consider that wrong: so to limit the meaning of "computer program" would be to render the exclusion without real content. We think the framers of the EPC really meant to exclude computer programs in a practical and operable form. They meant to exclude real computer programs, not just an abstract series of instructions.”

In their review of the previous case law the Court of Appeal said:

“So what Gale decided is that the computer program exclusion extends not merely to the code constituting a program, but that code as embodied on a physical medium which causes a computer to operate in accordance with that code. More is needed before one is outside the exclusion – as for instance a change in the speed with which the computer works. A technical effect which is no more than the running of the program is not a relevant technical effect.”

Since Aerotel there have been other cases that have considered the scope of the computer program exclusion. The first is Cappellini’s Application; Bloomberg LLP’s Application [2007] FSR 26, another decision of Pumfrey J. In the Cappellini case Pumfrey J briefly discussed the role of computers in deciding whether a claimed invention fell within excluded matters. He said:

“I prefer to approach this problem from the direction indicated by the Court of Appeal in Aerotel: what is the claimed invention as a matter of substance? A claim to a programmed computer as a matter of substance is just a claim to the program on a kind of carrier. A program on a kind of carrier which, if run, performs a business method adds nothing to the art that does not lie in excluded subject matter.”

It is the Bloomberg case, however, that is more relevant for present purposes. Pumfrey J described the claimed invention as follows:

“The claim is to a method of distributing data in which the data transmitted to a user is mapped (using a record relating to the applications that that user has access to) to a form suitable for the application to be used by the user in question. As a matter of substance, such a method is to be performed in software only. The data is put into a form (“mapped”) that is suitable for the specific application which the particular user wishes or is authorised to use. The result is said to be improved interoperability, in the sense that the application at the user's terminal is not called upon further to map the raw data: rather, it is processed on the server side before transmission.”

He added:

“There is no question, I think, of matching the format of the transmitted data to any deficiency or advantageous feature of any item of hardware: it is purely to format the data so as to render it suitable to cooperate with particular software.”

Pumfrey J then turned to the question whether the contribution lay only in excluded matter. He said:

“Mr Davis submits that the invention reduces network burden. The claim, on the contrary, covers systems in which the amount of data actually transmitted may be raised. Thus it is clear that the whole thrust of the invention is to map the data, at the server end, to a form suitable for the users' software. Regardless of the passages in the descriptive part of the specification which suggest that format conversion can with equal efficacy be carried out at the client-side machine, I am inclined to the view that the claim is limited to server-side processing. Nevertheless, the Hearing Officer was right to draw attention to these passages, in paragraphs 22 to 24 of his decision, because they demonstrate the lack of importance that the physical aspects of the system have to the claimed invention. I entirely agree with the Hearing Officer that the advance made by the applicant is a computer program as such.”

What is of significance here is that the claimed invention required no new hardware or arrangement of hardware, did not fix any perceived technical shortcoming in the computer itself, and was purely concerned with the processing of data. This was done and done only by a computer program.

The second case is Oneida Indian Nation’s Application [2007] EWHC 954 (Pat), a decision of Mr Christopher Floyd QC. That case concerned a computerised method of gambling. In the course of his discussion Mr Floyd said:

“So, for example, the contribution of a programmed computer might be held to lie exclusively in excluded matter, and therefore fail at step three. It might be argued that the contribution was nevertheless technical in some sense. In one sense computer programs are “technical” but they are also excluded from being inventions.”

The reference to “step three” is a reference to the third step of the Aerotel test, and Mr Floyd went on to quote the passage from the judgment of Pumfrey J in shopalotto that I have already quoted.

Next in time was Raytheon’s Application [2008] RPC 3, a decision of Kitchin J. That case concerned a method of inventory management. It worked by creating a database of the layout of a storage facility (e.g. a warehouse) and a database of products to be stored. The products were represented by visual representations rather than by words. The user of the system could select a particular equipment rack and view a detailed representation of it. This was done by synthesising “building blocks” from each of the two databases. Kitchin J accepted (with some modifications) counsel’s description of the contribution as follows:

“First, it provides a method of stock control in which textual descriptions are replaced by visual representations. This is an advantage because items can be identified more easily by visual appearance than textual description so reducing labour costs and the risk of errors. Second, the representations are synthesised in real time from individual images of the components of the rack which are stored in digital form in the database, so reducing the usage of memory and the load on the processor. Third, the system is navigable by the user who starts with a high level interactive graphical representation and can "drill down" to the particular rack or component of interest by, for example, clicking a particular location on the screen.”

Having described the three elements of the contribution Kitchin J turned to consider whether they were excluded from patentability on the ground that they amounted to no more than a computer program. He said:

“[35] I turn then to consider whether the invention consists of a program for a computer as such. Mr Fernando submitted it does not because Raytheon has provided a new method and apparatus for managing and configuring facility layouts. All aspects of the contribution represent differences between what existed before and what is claimed. These are differences of substance and are not simply the result of computerisation. Moreover they have brought a technical advance, as the hearing officer himself recognised in paragraph [30] of his decision.

[36] I accept these submissions, to a point. It seems to me that the first aspect of the contribution is the provision of a method of managing inventories and stock control which involves the replacement of textual descriptions by visual representations. This method has a character which exists quite independently of whether it is implemented on a computer. Further, I can well imagine such a method might be easier to use, so reducing labour costs and the risk of errors. So this is not a case where Raytheon has simply sought to protect the implementation on a computer of what had been done before. Further, the objection does not apply just because the only practical way to implement the invention is to use a computer. For these reasons I do not believe that this aspect of the invention can be said to be a computer program as such and, in the end, I think Mr Birss was constrained to accept this was the case. The hearing officer did not address this part of the contribution in his decision and in my judgment he fell into error in failing to do so.

[37] However, I believe the second and third aspects of the contribution are different in nature. The second, and to my mind more important, aspect is the synthesis of representations of the rack from individual images of the components of the rack which are stored in digital form in the databases, so reducing the burden on the processor. Is this a computer program as such? It obviously must be carried out using a computer but, as I have explained, this does not determine the issue. Nor, as I have said, is it a case where Raytheon has simply sought to protect the implementation on a computer of what had been done before. Nevertheless, it seems to me that this aspect of the contribution is no more than a reflection of how the programmer has chosen to create the desired representation. Just as in Fujitsu the programmer had to devise a program to create a pictorial display which reproduced the effect of a model, so here the programmer had to devise a program to produce a visual representation of the rack and all it contains. The fact he has chosen to do it by synthesising the representation from a number of smaller images is simply a matter of program design. The result is not a new combination of hardware as in Aerotel. Nor is it an improved computer or an improved display as in Vicom. The result is a computer of a known type operating according to a new program, albeit one which reduces the load on the processor and makes an economical use of the computer memory. I agree with the Hearing Officer that this aspect of the contribution relates to a computer program as such.

[38] I can deal with the third and final aspect of the contribution quite shortly. In my judgment it falls into the same category as the second. The display of the image in response to the user clicking on an appropriate part of the screen is once again an element of the program design.”

The last of the cases on this topic is the recent decision of Kitchin J in Astron Clinica’s Application [2008] EWHC 85 (Pat). The case concerned five different applications in diverse fields of technology. In each case the examiner had found both method claims and apparatus claims to be allowable. The method claimed was a method performed by running a suitably programmed computer and the apparatus claimed was a computer programmed to carry out the method. What was in issue on appeal from the Comptroller was whether the computer program itself was patentable. Kitchin J traced the development of the law relating to the patentability of computer programs. Commenting on the decisions of the Court of Appeal before Aerotel he said:

“…these authorities gave rise to the adoption in this country of the technical contribution approach with the rider that inventive excluded matter could not count. However, for the purposes of the present appeal it is also important to note a number of further matters. First, they established that claims to computer related inventions must be considered as a matter of substance not form. A computer program as such is excluded from patentability irrespective of whether the claim is directed to the program on a carrier, a computer containing the program or a method performed using the programmed computer. Second, in each of these cases the court decided that the claimed invention did not make a relevant technical contribution. Consequently, … none of these cases decided the particular point which arises on this appeal, namely whether or not it is permissible to claim a computer program (as opposed to the programmed computer or a process performed using the computer) where the program, when run on a computer, produces a new technical effect.”

In paragraph [31] Kitchin J said:

“If a program makes a conventional computer operate in a new way so as to deliver a relevant technical contribution then it seems to me to be wholly artificial to say that the effect is delivered by the computer but not the program. If, as these cases decide, a conventional computer programmed with such a new program is patentable because it is no longer a computer program as such then, in my judgment, the same reasoning must apply to the program itself. It is in the program that the technical advance truly lies.”

Kitchin J then traced the development of the law in decisions of the EPO in further cases, leading up to the decision of the Court of Appeal in Aerotel. Having summarised that decision, he then took stock. He pointed out (paragraph [47]) that the Court of Appeal was not called upon to decide “what claims were permissible in the case of a computer related invention which made a contribution extending beyond excluded subject matter.” Second, he said (paragraph [48]) that the Court of Appeal had not held that all computer programs are necessarily excluded from patentability. Third, he emphasised the Court of Appeal’s decision that they were doing no more than restating the test derived from Merill Lynch and the cases that followed it, with the result that the application of the four stage test in Aerotel should produce the came result as the old approach. He expressed his ultimate conclusion as follows (paragraph [51]):

“In all these circumstances I have reached the conclusion that claims to computer programs are not necessarily excluded by Article 52. In a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable, then, in principle, a claim to the program itself should also be allowable. I say "in principle" because the claim must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run.”

Where does all this leave us? From these authorities I think that the following can be deduced:

The second of the relevant exclusions is “presentations of information.” In a case such as the present, if there is a contribution which is more than would be expected from the mere loading of a new program into a computer, one must then go on to ask: is the additional contribution more than the presentation of information? If it is not, then the contribution remains within an exclusion from patentability. The “presentation of information” includes both the provision of information and also methods of expressing the information: Townsend’s Application [2004] EWHC 482 (Pat).

In Raytheon Kitchin J held that the first aspect of the claimed contribution was not a computer program as such. He then went on to consider whether it was the presentation of information. He said:

“I must now consider whether the first aspect of the contribution falls within one of the other exclusions and, in particular, whether it is a method for doing business or the presentation of information as such. I will take them in turn. As the Court of Appeal made clear in Macrossan, it is not necessary for there to be something abstract about the method before the business method exclusion can apply. Nor is the exclusion limited to completed transactions. So is the idea of presenting inventory information in pictorial form a method of doing business? I think it is. It is a convenient way of displaying inventory information needed in the conduct of the business, just as it might be convenient on occasion to present it in numerical or text only form. For the same reason it seems to me to be no more than the presentation of information.”

In Crawford’s Application [2006] RPC 11 Kitchin J held that the selection of the nature of the information to be presented (information on buses) is also the presentation of information.

The fourth step laid down by Aerotel is: “check whether the actual or alleged contribution is actually technical in nature.” As Jacob LJ pointed out:

“The fourth step – check whether the contribution is "technical" – may not be necessary because the third step should have covered that. It is a necessary check however if one is to follow Merrill Lynch as we must.”

The fourth step is exclusionary. If a contribution has failed at the third step it will not be brought back in again at the fourth. That is because it will have already been decided that, technical or not, it is the wrong kind of contribution. As Mr Floyd pointed out in Oneida:

“It is clear, therefore, that the critical question is that asked by the third step: does the contribution lie solely in excluded matter? If the invention fails to overcome that test, then it is excluded. Identification of some technical advance as compared with earlier methods does not bring back into contention inventions excluded at the third step. If the invention has been excluded at step 3, any technical contribution must have been one of purely excluded matter. Inventive excluded matter cannot, as a consequence of the Merrill Lynch rider, count as a technical advance. The fourth step is intended merely to make sure that inventions that have passed at step 3 are technical in nature. So step 4 is exclusionary in nature.”

Both sides said that there was no difficulty in construing the claim. In a sense that is true, in that no specific dispute was identified. But there is I think a question to be answered, namely whether the claim relates to computers. Ms Edwards-Stuart said that the patent described a method which could be applied outside a computer; for example a TV viewer could be supplied with images relevant to what he was watching (e.g. action replays of a sports event) in the corner of the TV screen while continuing to watch his chosen programme. Although the claim does not explicitly mention computers, read in the context of the specification I think that it is plain that computing or the use of computers is what the claim is all about. The first integer of the claim refers to analysing content in an “active window”. An “active window” is a defined term. As the specification explains [0012]:

“Note, active window is a common term of art that means any window being displayed and that is selected to be receptive to inputs from a user. The active window may be being displayed on a Laptop, a Desktop, a hand held device etc. Typically, when multiple windows are being displayed on a monitor, merely one of those windows will be the active window ready to receive input commands and signals from the user.”

How the analysis is carried out is explained in [0022]. The analysis is carried out by a “search program” which, among other things, analyses “meta tags”. The execution of the query is also carried out by a “search program” as explained in [0023]. The search program also determines the relevance of answers to the queries as explained in [0024] to [0026]. Plainly this explanation is dealing only with computers. Likewise in describing the icons the specification explains [0013] that the icons may represent related material on “the local hard drive”, news articles “stored on a remote database such as a server on the Internet”, and other types of reference “that are stored on a remote server.” The source of the material is all computer-based. The very word “icon” is used nowadays with reference to computers.

In paragraph 13 of his decision the Hearing Officer recorded:

“Mr Kenrick agreed that the contribution made by the invention did indeed lie in an improved user interface in which the user is more conveniently able to obtain further relevant information. I note that the invention achieves this by conducting a background search of relevant documents on the basis of text contained in an active window, and presenting the results in a convenient manner to the user in the form of icons displayed on a computer screen. I also note that the only user interface disclosed in the application is a graphic user interface. Despite a detailed description of possible searching algorithms within the application, Mr Kenrick acknowledged that the contribution made by the invention lay in the manner in which the results were displayed to the user and not in the way that they were found in the first place.”

Ms Edwards-Stuart said that the apparent concession that Mr Kenrick appears to have made as recorded in the last sentence of the quotation had not in fact been made; and that this could be demonstrated by an examination of the transcript of the hearing. Mr Tappin very sensibly said that the Comptroller would not hold Autonomy to its concession (if indeed the concession had been made) but was content to proceed on the basis that it had not. The result of this is that the claimed contribution is more extensive than that which the Hearing Officer considered. For that reason some of the Hearing Officer’s reasoning is inapplicable to the changed circumstances. Ms Edwards-Stuart’s criticisms of it were largely based on the proposition that the Hearing Officer wrongly identified the contribution. Up to a point that criticism is justified; but the Hearing Officer identified the contribution in the light of a concession that he thought had been made. Now that the apparent concession plays no part in the appeal, the question must be examined afresh.

Mr Tappin said (and I did not understand Ms Edwards-Stuart to dispute) that the contribution of claim 1 could be summarised as follows:

In my judgment, as Mr Tappin submitted, automatic text analysis, comparison and results generation is a paradigm example of a case in which the contribution falls squarely within excluded matter, i.e. a program for a computer. The claimed contribution, so far as the first element is involved does not exist independently of whether it is implemented by a computer. On the contrary, it depends on a computer processing or displaying information in an active window, and on a search program to analyse it and to compare and generate results. Nor does it require new hardware or a new combination of hardware; and it does not result in a better computer. The only effect produced by the invention is an effect caused merely by the running of the program, which consists of the manipulation of data. It is in short a claim to a better search program.

The second element of the claimed contribution is also, in my judgment, a computer program as such. What the second element of the claimed contribution does is to provide an icon on a graphical user interface which represents a category of links which can be revealed (as can a contents summary). This is done by embedding the icon, displaying the links when the icon is activated, and displaying the contents summary when the cursor is placed on the link. This element of the claimed contribution lies in program design, i.e. the inventor has chosen to denote the output from its text analysis and comparison exercise by means of a nested series of representations (icon, link, contents summary). As Mr Tappin submitted, when one considers how this is provided, there can be no doubt that this part of the contribution relates to a computer program as such. A computer program has been designed to embed an icon, display the links and display the contents summary on appropriate mouse / cursor actions.

Again the claimed contribution does not exist independently of the computer. It is described in terms that envisage the display of an icon on a computer screen and the underlying links being accessible via the icon. It does not require new hardware or a combination of hardware; and it does not result in a better computer. Again the only effect is produced by running the computer program, which so far as this element of the contribution is concerned, consists of the display of information. In my judgment the Hearing Officer was right to conclude that the claimed invention is a computer program as such.

In her submissions Ms Edwards-Stuart laid emphasis on the assertion that the retrieved information is ranked and categorised; and that this is done in a visually unobtrusive manner. However, I do not consider that this combined effect is claimed. The requirement that the display be unobtrusive forms no part of claim 1. It is part of claim 2, but it is not part of claims 3 or 4. The categorisation of links (where there is more than one category) forms part of claim 3. But according to claim 3 (which is dependent only on claim 1) the display of the categories need not be unobtrusive. Claim 3 does not require the ranking of links at all. Claim 4 requires highlighting the first icon if one or more of the links exceeds a minimum threshold relevance rating. But since it too is dependent only on claim 1, it does not require the icon to be unobtrusive; nor does it require the classification required by claim 3.

Although the Hearing Officer held that the second element of the contribution was excluded as being a computer program as such, he would not have excluded it on the ground that it was the provision of information. He said:

“Whilst it is not strictly necessary for me to consider whether the invention also relates to the presentation of information, I do consider Mr Kenrick’s arguments to be persuasive in this regard, i.e. that the addition of an icon conveniently positioned for accessing relevant documents extends beyond the nature of the information displayed or the manner in which it is presented.”

Although expressed generally, the point about convenience appears to me to relate only to claim 2 (which is the only claim to require the display to be unobtrusive). The Comptroller challenges this conclusion. Dealing first with claim 1 Mr Tappin submits that this part of the contribution relates to the presentation of information as such. The inventor has presented to the user the information: (1) that there are documents linked to that in the active window – this is done by using an icon; (2) the identities of those documents – this is done by means of the links; and (3) a summary of the contents of those documents. Thus far I agree. The Hearing Officer seems to have been persuaded that the claimed contribution was not excluded because the information was provided in a convenient place. I cannot see that this makes any difference. Choosing where and how to display information is, in my judgment, still the presentation of information. It is part of the decision how to present the information. In my judgment the Hearing Officer ought to have held that the second element of the contribution was excluded because it related to the presentation of information. Claim 2 explicitly requires the icon to be embedded in an unobtrusive place. I cannot see that this makes any difference. It is still choosing where to display the information. That is also the presentation of information.

As foreshadowed in Aerotel and Oneida since the claim fails at step 3, there is no need to consider step 4.

I have already held that the additional integer in claim 2 is no more than the presentation of information. Mr Tappin also submitted that it was simply a question of program design: that is, where to place the icon, and hence was part of a computer program as such. I agree.

The additional feature of claim 3 is the use of two or more icons, each representing a different category of links. This too, in my judgment, is the presentation of information: namely by presenting it category by category. It is also a matter of program design, so that this element of the claimed contribution also falls within the exclusion of a computer program as such.

The additional feature of claim 4 is that the computer program determines whether or not the content exceeds a threshold relevance and, if so, displays that fact by means of a highlight on the icon. The determination of threshold relevance is, in my judgment, a function of the computer program as such, and the display is either part of the same program or is the presentation of information or both.

The appeal is dismissed.