Monday, December 23, 2019 T 1756/14 - Christmas is well-known

Might there be a new computer under this tree?

DeltaPatents wishes all the readers of this blog a very merry Christmas. Perhaps, you'll find a present under the Christmas 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)"

It turns out that our e-mail feed was not working for some time. I think I fixed it, so to all our e-mail readers, welcome back.  

Friday, November 22, 2019 T 1372/11 - Issuing a hardcopy cerificate is technical

Claim 1 of this application concerned an issuing machine for a hardcopy certificate which allowed a user to request a transaction of a security or fixed rate financing instrument. The claim did not have a happy reception at the Examining division. A declaration of no-search was issued, and the search opinion found the claims to be not-inventive starting from the 'general purpose networked computer system'. In the eventual decision to refuse, a single document D1 was cited.  

The board does not share the views of the Examining division, and concludes that the claim has sufficient technical elements that improve the security of the hardcopy certificate. The board finds that the claim before it, is inventive over D1.  

The board does not conclude with an order for further prosecution, as might be expected but introduces two new documents on its own motion and continues examination of the claim, in the end concluding that the claim is also novel and inventive over those documents. An order to grant is issued. 

Tuesday, September 03, 2019 T 1503/12 - On technical and non-technical features, technical considerations, business methods and THE problem-solution approach

In this appeal against the examining division's decision to refuse a European patent application for lack of inventive step (Article 56 EPC), the appellant submitted that "there was a divergence in how computer-implemented inventions were examined at the EPO. If the application happened to be classified as a business method, the EPO would use the Comvik approach and dismiss features of the invention as non-technical. If, on the other hand, the application was classified in the field of telecommunications, it would be assessed using the "normal" problem-solution approach, and, irrespective of the underlying aim, features relating to data transmission would be treated as a technical telecommunications protocol. Applicants wanted consistency and certainty, especially in the field of computer-implemented inventions, which had become increasingly important." Applicants submitted that "The correct approach, in all fields, was the problem-solution approach." The appellants tried to argue that the claimed invention had a number of technical effects, which provided a basis for inventive step. The Board agreed that the correct approach, in all fields, was the problem-solution approach, but the Board did not agree that there is such divergence: "Comvik is rather a special application of the problem-solution approach to inventions that contain a mix of technical and non-technical features". The Board then applied the problem-solution approach, using Comvik, and concluded that the claimed invention was not inventive. 

Thursday, April 12, 2018 T 2101/12 - Non-technical disclosures are prior art

In the appealed decision, D2 (a US patent application) was cited in a reasoning against novelty. One could therefore be led to believe that this document constitutes at least the most suitable starting point for the assessment of inventive step. The board is however of the opinion that such is not the case (r.6.1). The board also does not consider the document mentioned by the appellant, i.e. D3, or other documents cited in the search report, to be more suitable starting points. Instead, the board considers that the most suitable starting point is common general knowledge. The board considers it common general knowledge that documents, such as a will or a contract between parties, may be signed at a notary's office. In the present case, the board holds that the skilled person starts from this prior art method with zero technical features, the problem which consists in the automation of that method being solved entirely with technical means (r.7.15).
The appellant submitted that something can only be state of the art if it is related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03. The board agrees with the appellant that this opinion is not in line with Catchword 2 of T 172/03 (as also relied upon in the Guidelines for Examination G-VII, 2), unless one interprets the expression "technically relevant" in that Catchword in a trivial manner. The board however considers that the interpretation of Article 54(2) EPC given in T 172/03 is incorrect. 
The applicant also requested to refer to the Enlarged Board: In the assessment of the inventive step of subject matter presenting both technical and non-technical aspects, a problem-solution analysis using a publicly known entirely non-technical practice as "closest prior art", notwithstanding the existence of technical teachings in the same field? The Board did not consider this necessary (r.8)

Wednesday, May 10, 2017 T 1463/11 - Business person versus Skilled person

Is it technical to centralize a function?

The appeal concerns a centralized merchant authentication processing system. The Examining division rejected the application as a "straight-forward implementation of an administrative (outsourced payment) scheme using a notorious distributed information". Initially, also the Board did much like the invention. In the summons, the Board considered the invention to be a "straightforward implementation, on a standard computer network, of non-technical measures (business measures and programming measures)".

Something must have happened after that because the appeal resulted in an order to grant. The reasons provide a detailed discussion of the 'business person' versus the 'skilled person'. 

Friday, January 27, 2017 T 1379/11 - Combinations of technical and non-technical features

In this appeal against a decision of the Examining Division the claims have a combination of technical and non-technical features and this plays an important role in the inventive step reasoning of the Board. The question is whether the applicant has really added something technical or that the claimed method is an obvious implementation of business requirements in a know technical system. In this case there are also some interesting paragraphs about the selection of the closest prior art - the Board writes "The Examining Division made an attempt to apply both criteria... but failed to do so in a convincing manner.".

Tuesday, August 30, 2016 T 779/11 - In the dark after the search stage

Acting in its capacity of ISA, the EPO issued a declaration under Art.17(2)(a) PCT to the effect that no international search report would be established because no meaningful search was possible. The declaration explained that "[t]he claims relate to subject matter excluded from patentability under Art. 52(2) and (3) EPC [sic]". The declaration further mentioned that a search might be carried out during examination before the EPO should the problems which led to the declaration be overcome. However, the Examining Division refused the application without carrying out a search. It decided on a main request and two auxiliary requests, refusing the main request and auxiliary request 1 for lack of inventive step and not admitting auxiliary request 2 into the proceedings. The applicant appealed and argued, in particular, that the Examining Division's decision not to perform a prior-art search at all was against the established case law of the boards of appeal.
The Board made a clear distinction between the EPO as ISA, and the EPO in the regional phase: acts of the EPO as ISA are not subject to review by the Board. The Board then continued to review whether the claimed subject-matter related to notorious knowledge, which would/could justify to not perform a search and not cite any prior art document. 

Tuesday, May 10, 2016 T 1145/10 - Notoriously known, but still to be identified

In this examination appeal, the Board considers that, depending on the case at hand, that it may be acceptable to start the inventive-step assessment of a particular invention including a mix of technical and non-technical features from a "general-purpose computer system" or a "standard computerised system" as known at the effective filing date, without citing documentary evidence.

As such, the Board confirms the established practice of the BoA (e.g., T 1242/04 citing T 939/92) in which notorious general technical knowledge does not require documentary evidence. 

However, in the present case, the Examining Division failed to identify which features were exactly considered to be anticipated by that well-known prior art. 

Moreover, the Board considers that where specific technical features or functionality of the standard computerised system are required to implement the non-technical features, those specific well-known technical features and functionality should be clearly identified.

However, rather than further considering the inventive step over a standard computerised system, the Board proceeds with selecting a D2 document as CPA while considering the distinguishing features as non-technical administrative constraints which would be obvious for the skilled person.

As such, the Board avoids a potentially tricky subject. Namely, one can imagine that, without having any documentary evidence as a basis for discussion, it may not always be trivial to clearly determine which features of a computer implemented invention are exactly anticipated by that well-known prior art, and which non-technical features may be implemented thereby...

Tuesday, April 26, 2016 T 651/12 - To display information in an ergonomically improved manner is a technical purpose

The Examining Division considered the subject-matter of claim 1 according to the main request to lack an inventive step and refused an application. The Examining Division reasoned that the claim was made up of technical and non-technical features, the technical features merely defining a commonplace map display apparatus and the non-technical features defining a method defining an abstract calculation on the basis of modelled map data. The applicant appealed, arguing that the claim features were technical as was the problem solved.
According to the Board's opinion, a map display apparatus and method explicitly comprising, after the calculation of the three-dimensional bird's eye view map, displaying this map on the screen, would provide a more realistic view of the road to the user and support the user in better orienting himself. This would be considered to be a technical solution to a technical problem: the outcome of the calculation is used for a technical purpose, namely to display information in an ergonomically improved manner (r.3.2). Also the calculation as such has in the board's judgement clear technical aspects (r 3.3).

Friday, January 22, 2016 T 2191/13 - Recognition doesn't confer novelty

In this opposition appeal, the proprietor argues that the prior art does not disclose a particular claim feature, namely a selection of a component of a glue-system being made in dependence on knowledge of the substrate and processing condition under which the glue-system is to be used.

The Board considers this difference as follows:

Orientierungssatz:
Ein rein auf gedanklicher Ebene bestehender, nämlich sich ausschließlich auf das Vorhandensein einer Erkenntnis gründender Unterschied zum Stand der Technik kann, ohne dass dieser einen Niederschlag in den technischen Merkmalen des Anspruchsgegenstandes findet, die Neuheit nicht begründen (Punkte 12.3 und 12.4 der Entscheidungsgründe)

Headnote (translated and paraphrased)

A difference with respect to the state of the art which exists solely in an abstract recognition, without there being a manifestation of the abstract recognition in the technical measures of the claimed object, does not confer novelty (points 12.3 and 12.4 of the Reasons)

Of further interest is point 12.4 in which the Board hypothesises that if such a difference were to confer novelty, this would imply that in order to demonstrate infringement, it would have to be proven that such knowledge (on the substrate and processing conditions) would have been in the mind of an infringer when performing the selection, which according to the Board demonstrates the invalidity of this hypothesis.

Tuesday, September 29, 2015 T 1461/12 - Inventive step for "mixed inventions"

After a refusal of an application for lack of inventive step based on the approach of T 641/00 (COMVIK), the applicant criticized tat approach in appeal. Assessment of claims involving technical as well as non-technical features, inclusion of non-technical aims as constraints to be met in the problem statement, and earlier case law are addressed in detail in the decision.

Friday, February 13, 2015 T 2249/13 - Refund after declaration of no search?

No documents were cited

A Claim that is seen to lack technical features can have a hard time at the EPO. The applicant was refused a patent with the following claim:

1. A mobile communication device comprising:
     a transmitter configured to transmit data, messages, and commands;
     a receiver configured to receive data transmissions and information, including via one or more live data feeds;
     one or more input devices for receiving user inputs;
     a display screen; and
     a processor executing software that causes said communication device to generate and display a first interactive graphical user interface (GUI) on said display screen,
     said first interactive GUI simultaneously displaying live market data and information received via at least one of said live data feeds in the form of:
     a dynamic market window displaying user-selected multimedia content,
live market statistics, and
     at least one execution icon that when selected, invokes said communicating device to generate and transmit a transaction execution command."

The applicant had received a no search, and no invitation under R.63(1) to indicating the subject-matter to be searched. Neither the search division nor the examining division cited any prior art document.The applicant is asking the Board to refund the search fee, as no search has actually been performed.

The applicant was refused as not being inventive over a notorious smart phone. The applicant tries to argues that the Claim nevertheless requires technical considerations and cannot be refused in this manner. How can one show that a claim feature implies a technical consideration?


Reasons for the Decision
(...)
Main request Article 56 EPC - Inventive step

2. The Board sets out from close prior art represented by a mobile communication device in the form of a notorious smart phone comprising an interactive graphical user interface (touch screen), as acknowledged in the application (A1, column 1, lines 26 to 31).

3. In the light of Article 52(1)(2)(3) EPC, Article 56 EPC requires a non-obvious technical contribution (see e.g. T 641/00-Two identities/COMVIK, Headnote 1, OJ EPO 2003, 352; T 1784/06-Classification method/COMPTEL).

4. The cognitive meaning of information received, displayed and transmitted (multimedia content, market data, transaction execution command) does not have any non-obvious technical implication for the functioning of the communication device and its interactive graphical user interface (GUI). The appellant has argued that a "transaction execution command" implies an automatic (i.e. technical) compilation of a plurality of data items as a "transaction" presupposes information on at least two trading partners, the commodity to be traded, an accepted price and the like. However, the underlying technical operation is carried out by any conventional smartphone used for an online shopping transaction. (If that operation was non-obvious, the application would have to disclose it in enabling detail.)

5. The use of an icon as a means for inputting a command is another notorious GUI feature. Similarly, displaying various types of information simultaneously in one window ("dynamic market window") is anticipated by GUIs of conventional smart phones which display internal and external data and metadata.

6. The appellant's central argument with respect to inventive step was that the claimed communication device was arranged to receive live data feeds, i.e. real-time transmissions updated in "milliseconds" (A1, paragraph 0137), which were significantly more sophisticated than conventional, slower data transmissions. Prior mobile devices were unable to connect to multiple feeds (statement of grounds of appeal, bottom of page 4). Setting out from a conventional communication device, there was no hint for the skilled person to provide live data feeds for improving the mobile retrieval, display and/or interaction with critical market data.

7. The Board first notes that updating a transmission is primarily an operation of the transmitting device (e.g. a server) and may not require any modification of the receiving device (i.e. of the mobile communication device claimed). Once a conventional communication channel to a conventional communication device has been established, transmitted data may be updated by the sender as frequently as desired.

8. Moreover, while the application frequently mentions live data feeds, it does so essentially in the form of catchwords or desiderata without explaining any non-obvious technical background of such feeds. The appellant relied on a single feature in the description (A1, paragraph 0156: data compression) to show that the application provided some technical detail enabling live data feeds. However, that feature represents common general knowledge in data processing (zip files, for example), and it is up to the skilled person to weigh up its well-known advantage (reduced data volume) and disadvantages (compressing/decompressing steps). While a compressed data volume can be transmitted more quickly, the compression and decompression steps may eat up the time saving. This (conventional) compromise is confirmed by the application which states that data compression is used to "optimize" communications (A1, paragraph 0156) rather than to maximise the updating speed. In other words, no non-obvious approach is disclosed for providing the desired real-time market information.

9. As far as multiple real-time feeds to a mobile communication device are concerned, the Board again notes that this is not necessarily a feature of the claimed receiving device as the desired data may be aggregated by a sending server (A1, paragraphs 00010, 0012 etc), the server not being part of claim 1.

Moreover, no non-obvious technical implementation of multiple real-time feeds to a mobile communication device is detailed in the application. The Board accepts that such an implementation was available to the skilled person but pre-existing knowledge cannot be an inventive contribution.

10. The Board finally notes its disagreement with the argument that the skilled person had no obvious reason to enhance a mobile device by live data feeds. Real-time transmissions were demanded by market participants (A1, paragraph 0004), i.e. this user demand is the obvious task addressed by the skilled technical person.

11. Therefore, the Board judges that the mobile communication device according to claim 1 of the main request does not involve an inventive step.

(...)

Request for a (partial) refund of the fee for a European search
24. The appellant considers that the EPO has enriched itself unfairly by receiving the search fee without performing a search. According to the appellant, the no-search declaration of the search division cannot be deemed to be a European search report under Rule 63(2) EPC as the search division ignored Rule 63(1) EPC by failing to invite the appellant to file a statement indicating the subject-matter to be searched.

Even in the absence of a specific reimbursement provision in the EPC, the search fee should be reimbursed (partly) according to a pertinent principle of law (condictio ob rem) generally recognised in the Contracting States (Article 125 EPC).

Article 9 of the Rules Relating to Fees is said to reflect the principle of fairness as it grants a refund of the search fee if the European patent application is withdrawn or refused or deemed to be withdrawn at a time when the Office has not yet begun to draw up a search report. By way of analogy, the same principle should apply to cases where the EPO has deliberately chosen not to conduct a search, in particular where the choice is based on an unjustified discrimination of subject-matter according to the Notice from the European Patent Office dated 1 October 2007 concerning business methods (OJ EPO 2007, 592) which announced a no-search policy for claims pertaining to business methods. In similar fields (such as gaming machines), searches are provided even on minor technical features. In any event, the Notice concerning business "methods" is not applicable to the claims of the present application which relate to "devices" comprising technical features. Hence, there has never been any justification for omitting a search.

25. The Board points out that it applies the EPC and associated provisions as they stand. The Rules Relating to Fees do not provide for a refund of the search fee in case of a no-search declaration under Rule 63 EPC. Rule 63(2) EPC states that such a no-search declaration shall be considered as the European search report.

26. The fact that the search division did not comply with Rule 63(1) EPC (failure to communicate with the appellant) does not alter the legal situation. The search division's actions are not open for review by the Board (Article 106(1) EPC) and, for the same reason, the search division's reliance on the Notice from the European Patent Office dated 1 October 2007 concerning business methods is neither.

27. The appellant referred also to Article 125 EPC to postulate a right to a (partial) reimbursement of the search fee when no prior art search has been carried out. Article 125 EPC reads:
"In the absence of procedural provisions in this Convention, the European Patent Office shall take into account the principles of procedural law generally recognised in the Contracting States."
What the appellant claims here is to apply an allegedly pertinent principle of law in the Contracting States, namely the law of unfair enrichment. However, the law of unfair enrichment is provided by substantial law, not procedural law. Thus, Article 125 EPC does not provide any basis for the appellant's claim to reimburse the search fee.

28. For the sake of completeness, the Board wishes to express its awareness of the appellant's fundamental right to judicial review but that does not mean that such a review has to be provided by the Boards of Appeal in all types of disputes between an appellant and the European Patent Office or Organisation.

In particular, the Board is not competent to decide on claims for compensation in respect of a loss or damage allegedly caused by the EPO in the course of patent grant proceedings, see e.g. J 14/87 (OJ EPO 1988, 295, point 13, referring to Article 9 EPC "Liability").

29. Therefore, the Board considers that the request for a (partial) refund of the search fee is inadmissible.

(...)

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T224913.20141017. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "reading in white" by 

Magdalena Roeseler obtained via 500px under CC BY 3.0 license (no changes were made).

Friday, September 19, 2014 T 1259/08 - Masking a delay technical?

Should a non-technical feature being the sole difference over the prior art be dealt with under novelty or inventive step?

The Board in the present case takes both approaches, namely arguing a lack of novelty due to the difference feature being a subjective feature and therefore not having a limiting effect on the claim. With this lack of novelty reasoning, the Board appears to follow T 553/02 which states in reason 1.3 that "(...) nontechnical features providing no technical contribution to the claimed product (...) do not limit in any way the scope of such a claim".

The Board subsidiarily argues that even if the difference feature were to limit the claim, the claim would lack inventive step based on the difference feature failing to provide a technical solution to a problem. Here, the Board appears to directly follow the approach set out in GL G-VII 5.4.

Summary of Facts and Submissions

I. This is an appeal against the decision of the Examining Division to refuse the European patent application No. 98957085.8. The application concerns the masking of network delay in a networked, user-interactive software application.

II. The Examining Division refused the application according to the state of the file essentially because the idea of masking the delay using a cinematographic technique was not new in view of Capps M. and Stotts D.: "Research Issues in Developing Networked Virtual Realities: Working Group Report on Distributed System Aspects of Sharing a Virtual Reality", Sixth IEEE Workshop on Enabling Technologies: Infrastructure for Collaborative Enterprises, Cambridge, MA, USA, 18-20 June 1997, pages 205-211 (D6).

(...)

IV. In the communication accompanying the summons to oral proceedings, the Board expressed doubts whether, even with the new amendments, claim 1 was novel over D6. Furthermore, the Board considered that, even if the feature of distracting a user with a cinematographic effect were considered to be a difference, this appeared to be a matter of human perception and therefore subjective and not technical. In a reply, the appellant informed the Board that it would not be attending the oral proceedings.

(...)

VI. Claim 1 reads as follows:

"A software agent (114, 116, 118) for local use at a user in a user-interactive software application (112) for running in a distributed system (100) with multiple data processing machines (102, 104, 106) connected via a data network (110), the software agent (114, 116, 118) comprising

an input (203) for receiving information about a delay in the network (110), and

an effector (224) for locally at the user masking the delay by selectively creating an effect dependent on the delay,

the effector being arranged for creating the effect and diverting the user from parts of the application (112) affected by the delay using a cinematographic technique to manipulate an image displayed to the user, sounds supplied to the user or tactile feedback to the user."

Reasons for the Decision

1. The invention

1.1 The invention concerns a networked, user-interactive software application, such as a virtual environment or a multiplayer video game (page 1, lines 2 to 4 of the published application). Such software applications are generally sensitive to delay caused by network latency. In a networked video game, where multiple users are interacting in real time, the network delay may spoil the interactivity of the game (page 1, lines 8 to 12).

1.2 The software agent of the invention seeks to mask the delay by creating a distracting effect that diverts the user from the parts of the application affected by the delay (page 2, lines 3 to 6, 13 and 14). The effect is created using a "cinematographic technique" to manipulate an image displayed to the user, sounds supplied to the user, or tactile feedback to the user (page 2, lines 10 to 14). The cinematographic technique may be, for example: zooming in or zooming out; a dummy object blocking the view; an "interlude"; or switching to another scene (page 2, lines 17 to 24).

1.3 Figure 3 shows an example of a networked video game according to the invention, involving two avatars engaged in hand-to-hand combat. Each avatar is controlled by respective users at networked machines (Figure 1: 102 and 104). When either machine detects an unacceptable network delay, it switches to a close-up (zoomed in) representation of the avatars showing their facial expressions but not the blows that are affected by the delay (page 6, lines 21 to 31). This results in the claimed effect of "diverting the user from parts of the application affected by the delay".

(...)

3. Novelty - claim 1

3.1 The appellant argued that in the invention the delay and the adverse effects were accepted as they were and the cinematographic technique was used to divert the user from these adverse effects. In contrast, the aim of the temporal warping in D6 was to compensate for the delay such that the end of the ball's trajectory was reached without delay. Thus, the temporal warping in D6 was not "diverting the user from parts of the application affected by the delay".

3.2 However, in the Board's view, whether or not a cinematographic technique has the effect of diverting the user from parts of the application affected by the delay is a matter of human perception. The effect will depend on the user's visual system and state of mind, and is, therefore, also subjective. For example, the warping of the ball in D6 might serve to distract some users from other parts of the application, such as the throwing and catching at each end of the event. Other users might not be so distracted and might still notice the delay in all parts of the application. In the Board's view, such a difference cannot have a limiting effect on the claim.

3.3 Accordingly, claim 1 is not novel (Article 54(1) and (2) EPC).

4. Inventive step - claim 1

4.1 Even if the feature of diverting the user from parts of the application affected by the delay had been considered to distinguish the invention, the Board judges that it would not have involved an inventive step.

4.2 It is established jurisprudence of the boards of appeal that an allowable invention must be a technical solution to a technical problem. The appellant stated that the technical problem was how to deal with network delay. The technical solution was to divert the user with the effect. However, since as discussed above, this solution is a matter of human perception, it follows that it would be non-technical. Furthermore, it also follows that it would be unpredictable whether such a subjective feature would actually solve the technical problem. In this respect, the invention is somewhat analogous to showing a video clip to somebody waiting for a lift to arrive, which is also using a cinematographic technique to deal with a delay. Thus, there would be no technical solution to the problem.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T125908.20140506. The whole decision can be found here. The file wrapper can be found here. Photo from European patent application No. 98957085.8

Friday, May 30, 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 solving 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-à-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 book, or 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 technical. Nevertheless, 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 (T 208/84), also denotes a further technical effect.

GL G-II, 3.7: Presentations of information

A 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,T 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.

Order

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.