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".

Tuesday, February 19, 2019 T 1358/09 - Technical considerations in text classification (AI, ML)

This blog post is a first one of a series of blog posts in which we discuss past and recent decisions which are relevant to the field of artificial intelligence (AI) and machine learning (ML). We start with discussing older decisions which form the basis for the EPO's current approach to assessing the patentability of artificial intelligence and machine learning-based inventions.

While the revised GL G-II, 3.3.1 generally refers for guidance for the patentability of AI/ML-based inventions to mathematical models, a few areas are explicitly identified in which AI/ML is considered to make a technical contribution, such as using a neural network to identify irregular heartbeats, and classification of digital images, videos, audio or speech signals based on low-level features.

The following decision, however, is cited as an example of where machine learning does not serve a technical purpose, namely in the classification of text documents in respect of their textual content.

In particular, the Board considers the following not to make a technical contribution per se:

• Determining whether text documents belong to the same class of documents in respect of their textual content, as the Board considers this a cognitive rather than technical consideration.
• Providing an improved textual classification over manual classification by using precise computation steps which no human being would ever perform when classifying documents; the Board considers a comparison with what a human being would do not to be a suitable basis for distinguishing between technical and non-technical steps.
• Providing a faster classification than prior art classification methods; the Board considers the algorithm not to go beyond a particular mathematical formulation of the task of classifying documents, and in particular, the design of the algorithm not to be motivated by technical considerations of the internal functioning of the computer to make it 'faster'.
• Providing a reliable and objective result, as the Board considers this an inherent property of deterministic algorithms and not to make a technical contribution on its own.

Tuesday, March 20, 2018 T 660/14 - an undisclosed disclaimer after G 1/16

In this appeal, the proprietor gave as a basis for the subject-matter of claim 1 of auxiliary request 4 meeting the requirement of Article 123(2) EPC that the subject-matter of claim 1 includes an undisclosed disclaimer. The undisclosed disclaimer was not of the most common type of disclaiming a Art.54(3) EPC prior right disclosure. The proprietor considered the alleged undisclosed features as either one or two undisclosed disclaimers. The proprietor submitted that the disclaimed feature/features provided no technical contribution to the claimed device, and had no real meaning apart from excluding an incorrect interpretation of claim 1, such that the requirements for disclaimers to be allowed under Article 123(2) EPC as mentioned in G1/16 were fulfilled. The Board of Appeal disagreed: according to the Enlarged Board of Appeal decision G1/16 (see e.g. Headnote), to be allowable under Article 123(2) EPC, the introduction of an undisclosed disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular it may not become relevant for the assessment of inventive step (G 1/16 Reasons, point 49.1). 

Tuesday, March 14, 2017 T 0625/11 - How technical is determining a threshold value?

In this appeal from the Examining Division the main question is whether the claimed method of determining a threshold value of an operational parameter of a nuclear reactor, based upon a simulation of the functioning of the reactor, is technical. The Examining Division recognised that the use of a computer made the claimed invention technical in the sense of Art. 52 EPC, but denied inventive step. Discussing the case law, including T 0641/00 (Comvik) and T 1227/05 (Infineon), the Board distinguishes two different approaches. The first approach requires including the functioning of the nuclear reactor to state the technical effect in the claim. The second approach, which is in line with T 1227/05, does not require stating the technical problem in the claim. The Board chooses the second approach and concludes that determining the value of a parameter gives the claim a technical character going beyond the simple interaction between the numerical interaction algorithm and the computer.

Friday, October 14, 2016 T 497/11: Revert an amendment after 9 years

In this opposition appeal admissibility is initially an important subject of the discussion. About one month before the oral proceedings (2016) the Appellants filed amended claims which would, according to the Board, "effectively revert to the method claims they had filed in 2007". The amendment comprises the deletion of "by using a computer".
When reading also the inventive step discussion of one of the requests, it seems that the Appellants would like to delete this features from the claims to enforce the choice of the closest prior art into another direction. The selected closest prior art was generic prior art in the field of air traffic control: "A system including a processor, memory, display and input device, for an aviation system, the system further comprising means (e.g. radio) for communicating to said aircraft."
If this amendment is accepted, the board had to start a discussion of the technicality of the claims. One of the arguments of the Appellants was that the recently filed claims were filed because the representation of the Appellants changed. Is that argument enough to get the amendments into the procedure?

This decision is also interesting because a number of features of auxiliary requests are considered to be a mere automation of mental acts, for example, performed by a flight controller. Thus, although the claims are technical with the feature of "by using a computer", most features do not contribute to the inventiveness of the claims because they are not technical.

Tuesday, July 21, 2015 T 306/10 - Recommender systems not patentable

Can an improved recommender system be inventive? Claim 1 of the main request concerned a 'method of discovering relationships between items'. In response to a query item, user logs are found in which the query occurs. Based on the logs a result item is then identified. 

One problem with such recommenders is that best sellers tend to occur in many user logs. Thus, such an algorithm would tend to recommend best sellers in response to any query. The invention in this application solved this problem by identifying an item which is over-represented compared to all user logs. An auxiliary request also outputs the identified result item as a recommendation.

However, the board will have none of it. Improvement in the selection of an item for recommendation is regarded as subjective, and thus not technical, and thus not patentable. A lot of non-trivial research is done on recommender systems, however; much of it involving mathematics (see this example). Following this decision, none of it can be protected.

The decision uses the notorious general-purpose computer as closest prior art. Some other boards seem to dislike this and have held that notorious should be interpreted narrowly (T698/11; T690/06; T359/11). In this regard it would be interesting if the amendments suggested in an obiter dictum (R.4.8) were carried out, to see if that could at least have swayed the board to adopt a more realistic starting point for inventive step.

Tuesday, March 17, 2015 T 0117/10 - Tempus fugit

Calendar app

After two appeals and ten years of prosecution the applicant in this software case has now been awarded a grant (well, nearly..). 

The application concerns a calendar application with a novel cache function (a 'moving cache'). 

The application was refused for the first time in 2006. According to the (then) Examining division the implementation of a cache to 'represent one out of several straightforward possibilities from which a person skilled in the art would select, without the exercise of inventive skill, (...)'. In previous letters the cache management scheme was found 'to relate to pure business issues regarding the management of events, and the conflict notification functionality.' Though the latter consideration was not part of the decision.

With an appeal (T 1265/06) the applicant won a remittal on 15.04.2009. The board had found that 
'the examining division did not cite a single prior art document which was related to the use of a
cache in a handheld device' and that  the 'main request can thus be allowed on the condition that the
description is adapted accordingly.' The appeal decision did not include a order to grant though.

The Examining division cited new documents and in a decision on the file, rejected the application on 1.12.2009. In the new refusal, the Examining division argued that 'the application variables (located in the memory) which are loaded through a database fetch already are the cache. It is noted that such a database fetch is implicit to any database access.'


After the new appeal, part of which is reproduced below, the applicant has won a new remittal, this time with an order to grant.


Reasons for the Decision
1. The appeal is admissible and allowable since in the Board's judgement the decision under appeal does not prove to the necessary standard the lack of inventive step and there are no other objections against the application as it stands apparent from the file. This holds for the claims of the main request, the description as amended with the statement of grounds and the drawing as originally filed.

2. The Board agrees with the appellant that the new documents cited do not improve the relevance of the available prior art. In particular, the decision under appeal fails to substantiate the leading argument that use of a "moving cache" in a handheld computing device is prior art. In the preceding decision T 1265/06 (see point 5 of the reasons), the Board stated that "the examining division did not cite a single prior art document which was related to the use of a cache in a handheld device, let alone something like a 'moving cache' for implementing the calendar application on a handheld device". This factual situation has not substantially changed in spite of the efforts of the examining division to produce more relevant prior art.

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).