Friday, 30 May 2014

T 631/08 - (too?) many non-technical features (to be) ignored?

Photo by Xuan Che obtained via Flickr.

This is an appeal lodged by the applicant against the decision of the examining division late 2007. Oral proceedings were held on 7 March 2014. On 7 March 2014, the Board of Appeal dismissed the appeal, as the Board considered the claims to lack inventive step. 

The Board seems to consider a plurality of differences with the prior art to be non-technical, for different reasons, and did not acknowledge any contribution to inventive step from any of the distinguishing features. In my opinion, the decision shows in particular how difficult such analysis is - and in my opinion, the decision could easily have been different.

Before presenting the decision and the background of the case, let me cite some paragraphs of the Guidelines, as not all readers may be familiar with examination of claims comprising a mix of technical and non-technical features and/or computer-implemented inventions, and also because the Guidelines were considerably redrafted as to this topic in the 2013 edition.

GL G-II, 2: Examination practice
In considering whether the subject-matter of an application is an invention within the meaning ofArt. 52(1), there are two general points the examiner must bear in mind. Firstly, any exclusion from patentability under Art. 52(2) applies only to the extent to which the application relates to the excluded subject-matter as such (Art. 52(3)). Secondly, the subject-matter of the claim should be considered as a whole, in order to decide whether the claimed subject-matter has a technical character. If it does not, there is no invention within the meaning of Art. 52(1).
It must also be borne in mind that the basic test of whether there is an invention within the meaning ofArt. 52(1) is separate and distinct from the questions whether the subject-matter is susceptible of industrial application, is new and involves an inventive step. Technical character should be assessed without regard to the prior art (see T 1173/97, confirmed by G 3/08).

It should be noted that the assessment of technical character should not stop as soon as it has been established that the claim as a whole is not excluded from patentability under Art. 52(2) and (3)In claims comprising technical and non-technical aspects, each aspect has to be evaluated to see if it contributes to the technical character of the claimed subject-matter, since this is relevant for assessing inventive step (see G-VII, 5.4).

GL G-VII, 5.4: Claims comprising technical and non-technical aspects 
It is legitimate to have a mix of technical and "non-technical" features appearing in a claim, and the non-technical features may even form a major part of the claimed subject-matter.

Inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non
-technical features, to the extent that they do not interact with the technical subject-matter of the claim for so
lving a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing inventive step.
In applying the problem-solution approach to this type of claim, in particular for computer-implemented inventions, the steps below should be followed:
  1. The non-technical aspects of the claim(s) are identified; a requirements specification (see G-VII, 5.4.1) is derived from the non-technical aspect(s) set out in the claims and the description so that the person skilled in the art of a technical field (e.g. an expert in computer science) is informed of the non-technical concept.
  2. The closest technical prior art is selected on the basis of the technical aspects of the claimed subject-matter and the related description.
  3. The differences from the closest prior art are identified.
    1. If there are none (not even non-technical differences), an objection under Art. 54 is raised.
    2. If the differences are not technical, an objection under Art. 56 is raised. The reasoning for the objection should be that the subject-matter of a claim cannot be inventive if there is no technical contribution to the art, i.e. if there is no technical problem solved by the claimed subject-matter vis-vis the closest prior art.
    3. If the differences include technical aspects, the following applies: firstly, the objective technical problem is formulated, taking into account the requirements specification as under point (i) above; the solution of the objective technical problem must comprise the technical aspects of the identified differences; secondly, if the solution of the technical problem is obvious to the person skilled in the art, an objection under Art. 56 is raised.
GL G-II, 3.5: Schemes, rules and methods for performing mental acts, playing games or doing business
However, if the claimed subject-matter specifies an apparatus or a technical process for carrying out at least some part of the scheme, that scheme and the apparatus or process have to be examined as a whole. In particular, if the claim specifies computers, computer networks or other conventional programmable apparatus, a program therefor, or a storage medium carrying the program, for executing at least some steps of a scheme, it may comprise a mix of technical and non-technical features, with the technical features directed to a computer or a comparable programmed device. In these cases, the claim is to be examined as a "computer-implemented invention" (see below).

GL G-II, 3.4: Aesthetic creations
Subject-matter relating to aesthetic creations will usually have both technical aspects, e.g. a 'substrate' such as a canvas or a cloth, and aesthetic aspects, the appreciation of which is essentially subjective, e.g. the form of the image on the canvas or the pattern on the cloth. If technical aspects are present in such an aesthetic creation, it is not an aesthetic creation ‘as such’ and it is not excluded from patentability.
A feature which might not reveal a technical aspect when taken by itself could have a technical character if it brings about a technical effect. For example, the pattern of a tyre tread may actually be a further technical feature of the tyre if, for example, it provides improved channelling of water. On the contrary, this would not be the case when a particular colour of the sidewall of the tyre serves only an aesthetic purpose.
The aesthetic effect itself is not patentable, neither in a product nor in a process claim.
For example, features relating solely to the aesthetic or artistic effect of the information content of a bookor to its layout or letterfont, would not be considered as technical features. Neither would features such as the aesthetic effect of the subject of a painting or the arrangement of its colours or its artistic (e.g. Impressionist) style be technicalNevertheless, if an aesthetic effect is obtained by a technical structure or other technical means, although the aesthetic effect itself is not of a technical character, the means of obtaining it may be. For example, a fabric may be provided with an attractive appearance by means of a layered structure not previously used for this purpose, in which case a fabric incorporating such structure might be patentable.
GL G-II, 3.6: Programs for computers
A further technical effect which lends technical character to a computer program may be found e.g. in the control of an industrial process or in the internal functioning of the computer itself or its interfaces under the influence of the program and could, for example, affect the efficiency or security of a process, the management of computer resources required or the rate of data transfer in a communication link.The processing of data which represents physical entities (such as an image stored as an electric signal), resulting in a change in those entities (208/84), also denotes a further technical effect.
GL G-II, 3.7: Presentations of information
feature relating to a presentation of information defined solely by the content of the information does not have a technical character. This applies whether the feature is claimed as a presentation of the information per se (e.g. by acoustical signals, spoken words, visual displays, books defined by their subject, gramophone records defined by the musical piece recorded, traffic signs defined by the warning thereon) or as relating to processes and apparatus for presenting information (e.g. features of indicators or recorders defined solely by the information indicated or recorded would not be technical features).
A feature which relates to the manner in which cognitive content is conveyed to the user on a screen normally does not contribute to a technical solution to a technical problem. An exception would be if the arrangement or manner of presentation can be shown to have a credible technical effect (T 1741/08,1143/06).
With this background, the reader is invited to develop and share his thoughts to the decision below. Did the examining division and the Boards follow the principles set out in the Guidelines, (where) did they deviate from it, why did they not refer to "presentation of information", is the claim inventive or not, is a better inventive step argumentation possible in support of inventive step? Please feel invited to post your comments to this blog!

The background of the case

The examining division refused the application pursued by the applicant on the basis of a main set of claims and a further limited auxiliary set of claims. According to the reasons for the decision given in writing and posted on 24 July 2007, neither the main set nor the auxiliary set of claims included subject matter inventive over prior art document D1 (WO 00/02389 A1 published in January 2000). The claimed invention, as argued in the decision, was distinguished from the prior art by "analysis means (76) for analysing a preference of a target user on the basis of the input information of a similar user" (claim 1 of the main request) and "the added feature of 'value added content'" (claim 1 of the auxiliary request). The invention was to be considered as an obvious computer implementation of non-technical business rules. Profiling data of similar users for determining preferences and giving recommendations on the basis of such information did not solve any technical problem. Speeding up the process of sending data to users, an advantage promoted by the applicant, was at best a side-effect of the implementation of the business rules.

In the oral proceedings before the Board of Appeal, held on 7 March 2014, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of this new main request.
Claim 1 reads as follows:
"An information processing apparatus for providing content data to a terminal device, said information processing apparatus comprising:
content data storage means (71) for storing a plurality of pieces of content data;
communication means (73) for transmitting the content data stored in said content data storage means to a plurality of terminal devices (1) and for receiving input information of each user for the transmitted content data; and
input information storage means (75) for storing said input information received by said communication means for each user;
the apparatus being characterised by:
analysis means (76) for analysing a preference of a target user on the basis of the input information of a similar user, which resembles the input information of said target user stored in said input information storage means; and
processing means (72) for processing content data itself to be transmitted to said terminal device into value-added content for said target user according to the analysis results by said analysis means, wherein said content data storage means (101) stores a plurality of pieces of image data, and said communication means (103) receives positional information within said image data indicated by each of said users, said positional information indicating the centre of an area of said image data comprising features which are of interest to each of said users, and said analysis means (106) comprises extraction means for extracting said positional information of said similar user, which shows that an image area comprising features resembling the features comprised within an image area indicated by said positional information of the target user, stored in said input information storage means (105), is indicated, and said processing means (102) improves the image quality of a part of the image data specified on the basis of said positional information of said similar user, extracted by said extraction means (106), more than the image quality of the other parts of the image data."
According to the appellant, the subject matter of claim 1 involved an inventive step over the prior art. The claimed invention provided an innovative way of choosing the parts of an image which were likely to be of most interest to a (target) user and for which the quality should be improved. These parts of the image were specified on the basis of the positional information of a similar user. The positional information of the similar user showed an image area comprising features resembling the features comprised within an image area indicated by the positional information of the target user. The positional information and features of interest were determined by the analysis means that analysed the click data from the target user as well as the click data from a similar user, i.e. from a user having the same preferences. Improving only specific parts of the image had the technical effect and advantage of allowing the amount of image data to be transmitted to be reduced whilst, at the same time, ensuring that features of the image data which were likely to be of interest to the target user were maintained in high-quality. This went above and beyond the common general technical knowledge related to image quality and data reduction and the teachings provided by the cited prior art. Document D1, cited as the closest prior art, was merely related to the transmission of individually targeted advertisements; it did not provide any form of image processing affecting the image quality, let alone the specific image quality processing arrangement of the present invention.

Reasons for the Decision

1. The appeal, although admissible, is not allowable for lack of inventive step in the subject matter of claim 1, in particular, as already decided by the examining division in the first instance proceedings.
2. Claim 1 defines an information-processing apparatus for providing content data to a terminal device, i.e. essentially a content server. Its functions encompass, in a first stage, the storage of features of image data which are of interest to certain users connected via a terminal device to the content server, including an exemplary "target user" and a "similar user" as defined in the claim. Subsequently, this information is used to improve the image quality of a part of an image transmitted to the target user. The improved image part comprises features which resemble those that have been found to be of interest to the similar user, and which can thus be assumed to be of interest to the target user. The improvement is relative, namely "more than" the image quality of the other parts of the image data. Hence, according to the appellant, a reduction of the amount of the image data to be transmitted to the target user is achieved since only the areas of interest have to be transmitted in high-quality.
3. Document D1 is undisputedly an appropriate starting point for assessing inventive step. It discloses an information processing apparatus (e.g. D1, figure 5: master server 1 in a content and data processing centre and D1, claim 1) that comprises a content data storage means (e.g. D1, claim 1, feature (a)), an input information storage means (e.g. claim 23, feature (b)), and a communication means (D1, figure 5, communication lines 15, T1, DS3 etc). According to a variant disclosed in D1, the content data provided to the terminal devices (D1: receiver equipped with an interactive receptor) are image data like graphics or slow motion video (see D1, page 5, line 18). The prior art system allows to insert information (text, entertainment material, etc) that is of specific interest for a user into the content data transmitted to the user (see e.g. D1, page 2, lines 1 to 8 and 15 to 18, and page 8, line 17 f. "the content server ... process [sic] the insertion material, be it ... information content as requested by users").
4. Present claim 1 defines, as differences to the prior art, a specific profiling of user preferences and a processing step for improving image quality. The preferences of the target user for particular features of image data are determined by analysing the input information delivered from a similar user, i.e. by analysing and storing the input of another user who has similar interests as the target user regarding the features extracted from the image data.
5. Determining and storing user profiles is typically done for promotion and marketing purposes and does per se not involve the use of technical means or any other technical aspects. Compilation and analysis of data concerning human behaviour and interests are activities closely related to business methods which are excluded from patentability. The Board considers that such activities as profiling of human behaviour for promotion or other business purposes lack technical character and are as such not able to contribute to inventive step even if carried out as a computer implemented process. The appellant has argued that the invention provides an innovative way of choosing the parts of an image that are likely to be of interest to a user. The Board cannot accept this argument since the claimed process performs the same steps a human being might choose [note from Roel: thus, the Board seems to consider it -in part- a mental act] to take in the same circumstances, viz. collect information about users' interests (non-technical), group the users accordingly (non-technical), and present information to a target user on the assumption of similarities of personal interests (non-technical). Merely automating this process involved no inventive step.
6. There remains in claim 1 the step of improving the image quality. Unlike profiling, the improvement of image quality (resolution etc) is possibly, but not necessarily, a technical process. An improvement of image quality for aesthetic purposes, for example, would normally not contribute to the technical solution of a technical problem and thus not qualify as technical in terms of a patentable invention. Present claim 1 defines that the image quality of the image parts likely to be of interest according to the target user's preferences is improved "more than the image quality of the other parts of the image data" (see the claim wording). Hence, the improvement is only a relative improvement between parts of the image, and can in fact be achieved by decreasing the quality of other parts of the image without any improvement of image quality at all (see eg dependent claim 8). Hence, the claimed processing means does not necessarily improve the technical image transmission and rendering process but is simply employed to attract the user's attention to certain information contents, i.e. a kind of "value-added content" as referred to in claim 1. The image improvement as defined in claim 1 is thus not a technical function or feature of the invention and does consequently not contribute to inventive step.
7. For these reasons, the technical contribution provided by the claimed invention to the prior art system of document D1 does not go beyond the normal computer implementation of a non-technical concept of user profiling and content presentation. The requirement of inventive step is thus not fulfilled.
For these reasons it is decided that:
The appeal is dismissed.
Please share your thoughts about the decision by posting your comments.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T063108.20140307. The whole decision can be found here. The file wrapper can be found here.

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