T 1756/14 - Christmas is well-known
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| Might there be a new computer under this tree? |
If you're lucky it might contain a new computer. This Examiner asks you to imagine this scenario, "a family unpacking a new computer at Christmas". According to the Examiner in this case, that is a well known occurrence, including the head ache of installing new software on it.
The applicant countered in appeal that the 'Christmas example' is fictitious, without substance and not
justified. Naturally, the Board cannot share this point of view: "The board agrees with the contested decision that the situation is one that commonly arises and which arose before the priority date in the present case (not only at Christmas)"
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Summary of Facts and Submissions
V. Claim 1 of the main request reads as follows:
"Method for synchronizing one or more software programs from a first device (D100) to a second device (D200), comprising the steps of
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Reasons for the Decision
Article 11 RPBA
1. The examining division refused the invention as the "straightforward implementation of a known non-technical method on top of known hardware" (see page 7, esp. paragraphs 3 and 7), using the so-called "COMVIK approach" (based inter alia on T 641/00) for the examination of inventions comprising technical and non-technical features.
1.1 The appellant argued that the examining division did not correctly assess inventive step, because it
(a) "mixe[d] up absolute and relative" patentability requirements, i.e. the assessment of whether the claimed subject-matter constituted an invention with that of whether it was novel and inventive (see grounds of appeal, section 4, page 4, paragraph 3, to page 6, paragraph 2),
(b) failed to state in the decision "which concrete features [were] to be evaluated as technical and which as non-technical" (see page 6, last paragraph, to page 7, paragraph 1),
(c) did not "assess [inventive step] solely on the basis of proven prior art" (see point 5.1, e.g. page 7 of the grounds of appeal, paragraph 3),
(d) used assumptions about inventive step in the context of computer-implemented inventions which had no basis in the EPC (see page 8, paragraphs 5 and 6), and
(e) contradicted itself because it considered the method of claim 1 to be non-technical as a whole and, at the same time, to comprise technical features (page 14, section 5.5).
The appellant also criticised the COMVIK approach in more general terms, stating that it had "its limits" where "ambiguous non-technical features" or "potential technical features" were concerned (see page 13, paragraphs 4-6), and because its reliance on "fictitious considerations [...] le[d] to a discrepancy in the manner how CII-inventions [...] and inventions in the field of physics, engineering [etc.] [were] examined" (grounds of appeal, page 8, paragraphs 3 and 7) and produced absurd results (page 8, paragraph 8).
1.2 The appellant's assertion that a substantial procedural violation had occurred is primarily based on its opinion that the reasoning in the decision was inconsistent (see point (e) above, and the grounds of appeal, section 5.5).
1.3 The board disagrees. The contested decision states that "the entire non-technical method is considered to be part of the formulation of the problem" and that "implementation would be [...] straightforward" for the skilled person (see page 6, paragraphs 3 and 5). A distinction is therefore made between the "method" and its "implementation". Other passages of the decision make the same distinction (see page 4, bottom, points (a) to (c), and page 7, paragraph 4).
1.4 Hence the board does not consider the passages cited by the appellant to be contradictory, and so the appellant's view that the decision is deficient is unfounded.
1.5 As regards the other points, the board takes the view that the decision applied the COMVIK-based approach of assessing inventive step in good faith and gave its reasons in sufficiently clear terms. It is immaterial whether or to what extent the board agrees with the decision in substance.
1.6 The board therefore does not consider the first-instance proceedings to have suffered from a fundamental deficiency which would have justified immediate remittal under Article 11 RPBA.
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Inventive step, main request
5. The examining division found that claim 1 of the main request "define[d] the implementation of a known non-technical method on top of known hardware" (see page 7, section "Conclusion").
5.1 The examining division thus considered that the method being implemented was both known and non-technical. The board notes that if an invention solves the problem of automating a known method, whether it involves an inventive step does not depend on whether that method is also non-technical, in part or as a whole.
5.2 The examining division started from a hypothetical situation in which a user wanted to install on a new, second computer the software installed on an old, first computer. The situation was imagined to arise "at Christmas", when the second computer was received as a gift, and was hence referred to as the "Christmas example" (see the decision, page 5, paragraph 1).
5.3 The appellant challenged "the Christmas [e]xample [as] an assertion without substance" (see grounds of appeal, page 7, paragraph 3, and page 8, penultimate paragraph, and point 3(c) above). The appellant did not explain which feature of the example it considered not to have been known before the priority date.
6. The board agrees with the contested decision that the situation is one that commonly arises and which arose before the priority date in the present case (not only at Christmas). The application itself (paragraph bridging pages 1 and 2) makes this assumption too, and the appellant did not challenge it.
6.1 The board therefore considers that common knowledge is a suitable starting point for the assessment of inventive step.
6.2 Furthermore, the board considers that the technical problem solved by the invention is to provide automated support for the installation on a second device of the software that happens to be installed on a first device. During oral proceedings, the appellant accepted this.
6.3 In the board's view, any solution to the given problem necessarily requires
(i) determining what software is installed on the first machine,
(ii) determining where and how that software may be obtained, and
(iii) installing it on the second machine.
6.4 The appellant contested this view, arguing that it was based on hindsight and that the inventive step assessment should, even at this point, pay greater attention to the structural and technical features of the claimed solution.
6.5 The board disagrees for the following reasons.
6.5.1 To decide whether or not a claimed invention involves an inventive step, it must be determined whether the claimed invention would have been obvious to a person skilled in the art (Article 56 EPC 1973). Since an invention is construed as being the solution to a technical problem (see esp. Rule 27(1)(c) EPC 1973), the problem-solution approach for the assessment of inventive step starts with the determination of a technical problem to be solved over a suitably chosen starting point (the "closest prior art"). Once both have been selected, the next step is to determine whether what the skilled person would have done without exercising inventive skill would have led him to the claimed invention. In assessing what the skilled person would have done, it is precisely in order to avoid the risk of hindsight that no regard is taken of the claimed invention.
6.5.2 Secondly, items (i) to (iii) merely paraphrase aspects of the technical problem specified in point 6.2. The board agrees with the appellant that it would be possible to copy the software direct from the memory of the first device to the second device. This is, however, not in contradiction of item (ii), because the skilled person would still have to determine "where and how [the] software may be obtained", namely in this case: from the memory of the first device ("where") and by direct copying ("how").
6.6 The board also notes that the existence of one obvious solution to a problem is insufficient to show that other solutions are non-obvious. That is to say, irrespective of whether the skilled person could or would have considered copying software from the first device to the second device, the board regards it as an obvious alternative to perform a new installation of the required software on the second device.
6.7 The appellant remarked that the installation of software from a server on the Internet (as opposed to from a CD or DVD) was not as common in 2004 as it is today, without, however, denying that such an installation method was already known before the filing date of the application. The board, by contrast, is convinced that it was not just known but already common in 2004. Even the application describes the "nodes from which [the ...] software programs can be obtained" (see e.g. page 3, lines 1-4, and table 1) as known infrastructure, and thus as part of the problem rather than as part of the solution. The board notes in passing that a major part of the structural, and undisputably technical, features of the claimed invention, namely the first and second devices and the "software program providing nodes", are thus either implied by the problem or identified as commonly known.
6.8 If the skilled person were to perform the installation on the second device manually, it would be obvious for him to assemble all the required information on a sheet of paper (which software, where to get it, what else to do). Likewise, when and since the skilled person is interested in an automated solution, it would be obvious to assemble that same information in a suitable data structure (an "application profile"). It would further be obvious to task a dedicated program (a "synchronization manager") with the management of the installation task.
6.9 The board accepts that there is no necessity for that data structure to contain the "nodes" from which the software can be obtained. The nodes might be left implicit, for instance if they can be derived from the identity of the program and its vendor, or be left for the user to input later on. Nonetheless, it would be obvious to inform the synchronisation manager explicitly about the nodes, for instance to simplify its task. The board notes that the claimed "identifying" step specifies no more than that the synchronisation manager accesses the information in the application profile. There is nothing in the claims or the application to support the appellant's assertion that "the step of identifying is a complex task" (see grounds of appeal, page 11, paragraph 5).
6.10 In summary, the board agrees with the examining division that claim 1 of the main request specifies an obvious way of automating the installation on a second machine of the software which happens to be installed on a first machine, and therefore lacks inventive step over common knowledge, Article 56 EPC 1973.
7. As already mentioned, the board's assessment does not rely on the assumption that the central idea of the claimed invention is a non-technical method. Therefore, the appellant's criticism of the "COMVIK approach" to assessing inventive step and its opinion on how the examining division should have presented its analysis are not pertinent. Hence, neither a response from the Enlarged Board of Appeal to the proposed question (see point II above) is required for a decision in the present case (cf. Article 112(1)(a) EPC 1973), nor a discussion of the board of appeal decisions cited by the appellant.
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The file wrapper can be found here. Image "decorating christmas tree santa" by Jill Wellington obtained under the Pixabay license
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