Friday, February 22, 2019 T 2050/07 - Distinguishing feature is mathematical but still inventive

If the entire contribution of your claim to the state of the art is contained in the mathematics can you be novel and inventive? In this case, the only relevant prior art was a 54(3) document, which did not disclose all of the mathematics but did disclose all of the rest. 

In this case the claim concerned "a method of analyzing a DNA sample that contains genetic material". The method contained technical steps such as amplifying a DNA sample, and producing a signal comprising signal peaks from each allele. However such steps where considered to be comprised in the Art. 54(3) prior art. 

The claim also contains a number of mathematical steps that result in a mathematical result: "a probability distribution of genotype likelihood or weight in the DNA sample". These were not disclosed in the prior art. 

The board muses that "The argument could be made that the distinguishing features described above are of non-technical nature as being a mathematical method or a method for performing mental activities, and that, in view of the established case law according to which features that do not contribute to the technical character of an invention and do not interact with the technical subject-matter of the claim for solving a technical problem, have to be ignored when assessing inventive step, such features should equally be ignored when assessing novelty. (...)". However, "the distinguishing features constitute a means for improving the confidence of the genotype estimate of the quantitative method analysis", and thus they "contribute to the technical character of the claimed invention".

Reasons for the Decision

(...)

Article 52(2) EPC

3. It is established case law that claimed subject-matter is not excluded from patentability as a non-invention under Article 52(2) EPC for the sole reason that it contains features which might be considered to be non-technical (see opinion G 3/08, OJ EPO 2011, 10, point 10.13 of the Reasons, and decision T 1658/06 of 14 January 2011, point 3 of the Reasons). In the present case, claim 1 as well as dependent claims 2 to 21 are directed to a method of analysing a DNA sample. This method comprises inter alia a step of amplifying the DNA sample, wherein the amplification product produces a signal comprising signal peaks (see step (a)), a step of detecting signal peak amounts and a step of quantifying the amounts using quantifying means that include a computing device to produce DNA length and concentration estimates (see step (b)). Already for the reason that both steps (a) and (b) are obviously performed using dedicated laboratory equipment and devices the claimed method cannot be considered as being devoid of technical character. The Board therefore reaches the conclusion that the subject-matter of none of the claims of the request is to be regarded as a non-invention pursuant to Article 52(2) EPC.

(...)

Article 54 EPC

6. In the decision of the examining division, novelty of claim 1 of the set of claims filed with the letter of 15 February 2007 was denied in view of document D6 which describes a method of analysing a DNA mixture sample that contains genetic material from at least two individuals.

7. Document D6 is a European patent application filed by the present appellant and published on 29 August 2001, i.e. after the priority date of the application at issue (2 February 2001). Furthermore, it has a priority date of 15 February 2000, the validity of which has not been challenged by the appellant. Therefore, its content is considered as comprised in the state of the art pursuant to Article 54(3) EPC.

8. Both the method according to claim 1 and the method of document D6 involve (i) an amplification step wherein as a result of the DNA amplification a signal is produced which comprises signal peaks, (ii) a step of detecting the peak amounts in the signal, (iii) a step of quantifying the amounts to produce DNA length and concentration estimates, and (iv) a resolution step which involves a mathematical method basically consisting in representing the estimates in a linear equation, deriving a solution from the linear equation, and resolving the DNA mixture into its components. The methods differ essentially in that in the method according to claim 1, (i) the linear matrix equation 'p = G x w' used in document D6 to represent the linear effect of the concentration estimates - where p is a column vector which describes the peak quantitation data of a DNA sample from the signal, G is a matrix that represents the genotypes in the DNA sample and w is a weight column vector that represents relative proportions of template DNA in the sample - has been amended to include an error vector which models measurement error (see paragraph [0186] of the published patent application) and reads 'd = G.w + e', and (ii) the solution includes calculation of data variance sigma**(2) from the linear model 'd = G.w + e' together with the global minimal solution 'Pd = Gw0'.

9. The argument could be made that the distinguishing features described above are of non-technical nature as being a mathematical method or a method for performing mental activities, and that, in view of the established case law according to which features that do not contribute to the technical character of an invention and do not interact with the technical subject-matter of the claim for solving a technical problem, have to be ignored when assessing inventive step, such features should equally be ignored when assessing novelty. The Board therefore examines whether or not the distinguishing features in the present case make a technical contribution.

10. Both the distinguishing features (i) and (ii) aim at ascertaining the reliability of the claimed method for analyzing DNA samples containing genetic material from two or more individuals and for determining the genotypes involved. By providing estimates of the error 'e', estimates of the variances and standard deviations can be computed from the data using the global minimal solution 'Pd = Gw0' and these values can be used to estimate probabilities. This results in a quantitative estimate of the quality of the solution (see paragraphs [0006] and [0194] of the published application). Thus, the distinguishing features constitute a means for improving the confidence of the genotype estimate of the quantitative method analysis of document D6 (see paragraphs [0044] and [0074] of the published application). The board therefore considers that the distinguishing features contribute to the technical character of the claimed invention.

11. In decision T 784/06 of 23 June 2010, the present Board in a different composition had to assess the inventive activity of a five-step method of determining the genotype of a locus within genetic material obtained from a biological sample. The method as claimed was regarded as a mix of technical features (step A) and non-technical features relying on the performance of mental activities based on the application of mathematical methods (steps B to E), the latter features being argued by the patentee to be core features of the invention. It was found that the disclosure of the invention was of such a general nature that it deprived the skilled person of the information he/she needed to understand how to proceed from the first reaction value collected in step A through steps B, C and D to the determination on a probabilistic basis of the genotype of step E. Thus, the Board came to the conclusion that the technical activity of step A did not interact with the mental activities of steps B to E to lead to a tangible technical result and therefore had to be ignored in the assessment of inventive step.

12. The Board considers that the present case clearly differs from the case underlying decision T 784/06. In contrast to the vagueness of the disclosure of the invention in appeal case T 784/06, the description of the present patent application makes it sufficiently clear how the distinguishing features (i) and (ii) of the method of claim 1 should be implemented and how they interact with the remaining steps of the claimed method in order to provide a common technical result, namely a genotype estimate with an improved confidence compared to the quantitative method analysis known from the prior art.

13. The above consideration leads the Board to consider that the distinguishing features have to be taken into account when assessing novelty of claim 1 and, therefore, it concludes that the method of claim 1 is new. As claims 2 to 21 are dependent on claim 1, the request as a whole complies with the requirements of Article 54 EPC.

Conclusion

14. As the requirements of Article 56 EPC have not yet been assessed by the examining division, the case is remitted to the first instance for further prosecution under the provisions of Article 111(1) EPC in accordance with the appellant's request.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of claims 1 to 21 of the request filed under cover of the letter of 31 August 2012.

This decision T 2050/07 (pdf) has European Case Law Identifier: ECLI:EP:BA:2013:T205007.20130219. The file wrapper can be found here. Photo by "Seanbatty" obtained via Pixabay under CC0 license (no changes made).