Author Archive

Novelty w/ Patrick Heckeler

Of course, an invention needs to be “novel” to be patentable. But does any difference over the prior art do the trick? Or does there have to be a technically relevant difference? In this podcast, Bastian Best sat down with Patrick Heckeler to discuss a recent EPO decision involving that question.

Network-controlled SIM OTA Enabler: non-technical

This decision concerns the way how applications can be installed on a mobile phone’s SIM. One might not expect big surprises concerning the technical character in this field, but the board took a stricter view in this case. Here are the practical takeaways from the decision T 1310/17 (Anwendungen auf SIM-Karten/TELEKOM) of 11.11.2020 of Technical Board of Appeal 3.5.03:

Key takeaways

Providing the SIM OTA Enabler as a server system in the network provider’s network relates to administrative processes or administrative considerations rather than technical considerations.

The invention

This is an opposition appeal. The European patent concerns the way how applications are loaded onto the SIM card in a mobile phone (so-called “provisioning”). In the prior art, the provisioning is done either locally via the SIM card’s contacts and a card reader, or remotely via GSM/UMTS or a similar wireless interface (so-called “over the air” or “OTA” provisioning).

According to the patent, a drawback of the prior art is that the (OTA) provisioning is controlled by the network operator, so that third parties have only limited capabilities of equipping a SIM card with application software. It is therefore the problem addressed by the patent to open up the internal process of the network provider such that third parties can install their apps on the SIM cards of the network provider’s customers.

Fig. 1 of EP 2 451 135
Fig. 1 of EP 2 451 135

Here is how the invention was defined in claim 1:

  • Claim 1 in amended form (English translation by the author of this article)

Is it patentable?

In this opposition case, the opposition division had maintained the patent only in amended for according to auxiliary request 1. An appeal was filed by the opponent only.

On the opposition appeal stage, the board based its inventive-step analysis on a prior art document that already disclosed the concept of individualized application provision by a SIM OTA Enabler.

In its analysis of the differences of the claimed method over the prior art, the board first discussed whether the prior art anticipates the “forwarding” of messages to the SIM. Interestingly, the board took quite a broad interpretation of what it means to “forward” a message, which seems to rely of the board’s general understanding of the subject-matter without reference to the patent or the common general knowledge of the skilled person (all citations are translations of the German decision):

According to point 10.3 of the grounds of the appealed decision, the opposition division took the view that the “TSM” in D7 would not forward messages but would rather generate own “Perso commands” from the “Perso Data”. The forwarding of the messages would mean that the message “Ack (Perso Data)” of block 7 would have to be provided unchangedly to the SIM of the mobile terminal. Instead, the TSM of D7 unpacks the data “Perso Data” of the “Ack” message and generates different commands based on the data, which commands are then provided to the SIM of the mobile terminal. Thus, feature b4) was not disclosed in D7.

This cannot be followed. The expression “message” in claim 1 does not imply a specific limitation with regards to the underlying data packet formats or transport protocols. As explained by the appellant on page 9 of the grounds of appeal, Fig. 11 of D7 shows a forwarding by way of a bent arrow, which is the case despite a possible reformatting of the “Perso Data”.

As a result, according to the board the only difference over the closest prior art was that the SIM OTA Enabler is provided by the network provider as a server system in the network of the network provider (feature b), and that the application request is sent to the SIM OTA Enabler by a user of a SIM card (feature b2).

On the one hand, the board acknowledged that the effects of these features are expressly explained in par. [0021] of the patent. There, it is explained that the invention has “the following advantages over existing solutions”:

  1. The OTA provisioning of Javacard applications is opened to third-party providers – without having to rely on an intermediary in the sense of a Trusted Service Manager.
  2. The customer can trigger the provisioning of SIM-based Java applications him/herself.
  3. The solution can be integrated seamlessly in existing enabler platforms of the network provider.

However, the board took the view that these effects were not technical effects, but rather administrative ones:

These advantages, however, relate to administrative processes or administrative considerations rather than technical considerations. Since the distinguishing features thus do not affect technical aspects, they are taken as requirements to be fulfilled in the formulation of the objective technical problem (see T 641/00, OJ 2003, 352, Headnote II).

Therefore, the objective technical problem can be formulated … as the “implementation of a SIM/SE platform which is easier to employ on the market, i.e. the implementation of an “open ecosystem” within the network of D7, so that the network provider can provide and bill for additional services by means of the increased control over the customer. A motivation based on purely technical considerations cannot be seen.

In the end, the claimed solution was considered obvious. In the absence of additional requests on file, the patent was revoked in its entirety.

More information

You can read the whole decision here: T 1310/17 (Anwendungen auf SIM-Karten/TELEKOM) of 11.11.2020

Join us live on Clubhouse to discuss the case:

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Patenting database technology: EPO guidelines update

What types of inventions in database technology are patentable in Europe? The Guidelines for Examination in the European Patent Office will be updated on 1 March 2021 with a new section specifically on database management systems and information retrieval.In this episode, Bastian will walk you through the final draft of the new section to see how clear the guidance is.

Zoom bounce-back effect on a touchscreen: technical

This case is interesting for UX designers. The basic question was whether a particular type of touch gesture to control the device is technical. The decision is one of the rarer cases where a “continued and/or guided human-machine interaction” was acknowledged. 

Here are the practical takeaways from the decision T 2004/17 (Zooming on touch screen/APPLE) of 10.12.2020 of Technical Board of Appeal 3.5.05:

Key takeaways

Providing continuous feedback to the user, in that there is an uninterrupted response to the user’s continued touch, and indicating an internal state of the device to the user, namely that it has reached the maximum zoom-in level for persistent display, is a technical effect.

The invention

This European patent application concerns touch gestures for scaling documents on a touchscreen.

According to the description, as portable electronic devices become more compact it has become challenging to design a user interface that allows users to easily interact with a multifunction device, especially devices with smaller screens.

For example, frequently only a portion of an electronic document can be displayed on the screen at a given time, and users have to scale (i.e. magnify or de-magnify) the displayed document. But according to the application, the limitations of conventional user interfaces can cause these actions to be awkward to perform.

The aim of the claimed invention was hence to provide for easy and intuitive scaling of electronic documents on a device with a touchscreen display.

Fig. 13B of EP 2 402 851
Fig. 13B of EP 2 402 851

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The first-instance examining division had refused the patent application for lack of inventive step of the main request. The applicant pursued the same main request on the appeal.

On the appeal stage, the board considered the difference of claim 1 over the closest prior art to be that a respective portion of the electronic document is displayed at a predefined magnification if, upon detecting termination of the gesture, the magnification exceeds the predefined magnification.

The board interpreted this difference as follows:

In other words, the zoom-in level reached during the user’s gesture does not persist, upon termination of the user’s gesture, if this zoom-in level exceeds a threshold value; instead, the document is then displayed at a zoom-in level equal to this threshold value.

This was different from how this situation was handled in the prior art:

In contrast, D3 implements a hard stop, wherein if a maximum zoom-in level is reached during the gesture, the zooming-in action is stopped during the gesture and the document is persistently displayed at this maximum zoom-in level even if the user’s gesture is continued.

The question was then, of course, whether this difference was a technical one. The board took the position that it was:

The technical effect of this distinguishing feature is that feedback is provided continuously to the user, in that there is an uninterrupted response to the user’s continued touch, and that an internal state of the device, namely that it has reached the maximum zoom-in level for persistent display, is indicated to the user by providing the zoom bounce-back effect. In contrast, the device of D3 does not respond to the user’s gesture when the hard stop is reached, and the user does not know whether the fact that zooming has stopped is due to a malfunction of the device or not.

The objective technical problem can thus be formulated as how to indicate to the user that the maximum allowable persistent zoom-in level has been reached while providing continuous visual feedback to indicate that the device is responding to the user’s gesture.

Being a technical feature, the remaining question was then whether it would have been obvious for the skilled person to provide the claimed zoom bounce-back feature:

Nothing in D3 itself prompts the skilled person to provide an over-zooming feature and a zoom bounce-back feature as defined in claim 1.

Nor would the skilled person be prompted to look at D2, since this document does not disclose a touch-screen display wherein continuous zooming in a document is performed by a user’s continuous gesture. There is thus no disclosure in D2 of over-zooming and zoom bounce-back in response to a user’s gesture.

Moreover, the appellant argued persuasively that in D3 the absence of feedback when the hard stop is reached may confuse the user, who may then repeatedly attempt to perform the zoom-in gesture without receiving any response before understanding that the document cannot be viewed at a greater zoom level. In contrast, the zoom bounce-back in claim 1 definitely provides clear feedback that the maximum zoom level has been reached and that no additional input is required.

Therefore, the board held that claim 1 involved an inventive step.

The appealed decision was set aside and the case was remitted to the first instance with the order to grant a patent.

More information

You can read the whole decision here: T 2004/17 (Zooming on touch screen/APPLE) of 10.12.2020

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Centralized vs. distributed gaming system: technical (but obvious)

In this case, the Board of Appeal had to decide whether the shifting from a distributed gaming system to a more centralised architecture involves an inventive step. Here are the practical takeaways from the decision T 0683/17 of 3.12.2020 of Technical Board of Appeal 3.4.03:

Key takeaways

The skilled person (a computer programming expert in gaming/betting systems) is aware of the advantages and disadvantages of a particular distribution of known functionalities in a centralised computer system as part of their common general knowledge.

The invention

This European patent application concerns a roulette betting system and a method for playing a modified version of roulette.

The betting system includes a central server system which comunicates over the Internet with one or more electronic roulette gaming areas. The central server system includes a series of servers carrying out various operations (a draw server with a random number generator to “spin” the electronic roulette, a database server, a bet acceptance server, an authentication server and a table management server.

The electronic roulette gaming area includes a central table including an electronic representation of a roulette wheel and electronic user interfaces (clients) for each player, such that the players can place their bets and follow the game. An embodiment is shown in Fig. 4:

Fig. 4 of EP 2 811 472
Fig. 4 of EP 2 811 472

The modified roulette game consists in a series of roulette spins. After each spin the drawn number is removed from the game and replaced by a randomly selected number among the remaining numbers. After each round the odds of the game are calculated anew before the players can place bets.

But the roulette modification is less important in this case because the apparatus claims of the main request refer only to a central server system without any details about the actual modified roulette game.

More precisely, here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The first-instance examining division had refused the patent application based on a lack of inventive step of the main request.

On the appeal, the board started its inventive-step assessment from a document (D5) which describes a roulette betting system comprising a remote central server and a table with an electronic display of a roulette wheel.

According to the board, the only difference between this system and the claimed one was the distribution of the various components:

3.3 Comparing the claimed system to the one in D5, the only differences relate to the distributed system architecture. In claim 1 of the Main Request a series of servers (database server, draw server, etc.) are defined, which are implemented within the central server system and carry out the various functionalities of the claimed betting system. In D5, the same functionalities are distributed between the central controller and the table(s). In addition, in D5 there is no mention of separate servers as in the claimed system, but rather of controllers and programs (instructions) executed in the central controller.

3.4 The claimed system has, thus, a more centralised architecture, since the various functionalities are implemented at the central server system and none of them locally, at the gaming table(s) or areas.

The question whether this difference contributes to the technical character of the invention was not even raised by the board. The board thus immediately spend thoughts on whether the shift in architecture was obvious:

3.4 […] The board considers such an architecture of a centralised computer system generally known in the art. Its advantages and disadvantages with respect to a distributed architecture are also commonly known. It is known, for example, that a system whose operation is controlled centrally can be more flexible in that additional peripherals (gaming areas in the present context) can be added more easily, since all the necessary functionalities are controlled/carried out by/at the central server. Costs can be also saved in that the peripherals do not need to have the necessary resources to carry out functionalities which are executed by/at the central server. A centralised server can also control better the security of the whole network. On the other hand, it is also known that in a distributed implementation, with various functionalities carried out at/by (some of) the peripheral devices, technical problems (malfunctions) can be treated locally at the device (peripheral) where they occur without risking the operation of the whole system. Hence, when, for example, the “spinning” of the virtual wheel does not operate correctly at a table, only the table manager of the specific table has to be repaired, while the other tables can continue playing normally.

The board further noted that D5 provided some indication about a possible centralised implementation of the system, where the description stated explicitly that “[t]he controller 108 may be programmed to perform any or all of the functions described herein …” and “[i]t is particularly contemplated that the table 34 may be a thin client controlled by the controller 108 …”.

3.8 In the board’s view, such hints would be sufficient for the skilled person to contemplate a centralised implementation of the described system in D5, where the various functionalities are carried out by the central controller. Moreover, the board considers that the skilled person (a computer programming expert in gaming/betting systems) would be aware of the advantages and disadvantages of a particular distribution of known functionalities in a centralised computer system as part of their common general knowledge (see point 3.4 above).

3.9 The board is, therefore, convinced that the skilled person would select between a centralised and a distributed implementation of the various functionalities of the gaming system in an obvious manner, based on the circumstances and using only common general knowledge.

Accordingly, the board concluded that claim 1 of the main request did not involve an inventive step. Since the auxiliary requests were not admitted, the appeal was dismissed.

More information

You can read the whole decision here: T 0683/17 of 3.12.2020

On 26 January 2021 at 20:00 CET we will host an event on Clubhouse👋 where we can casually discuss the decision. Feel invited to stop by!

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Patenting AI in the EPO guidelines

In this (very first!) episode of the Best Practice podcast, Bastian walks you through the section on AI and machine learning in the EPO’s patent examination guidelines. He makes the point that they are too restrictive when it comes to patenting AI innovations.

Illustrations on a scale carrying cognitive content: technical

In this decision, the board of appeal assessed whether “illustrations”, in the context of a claim for a system, imply the presence of a concrete physical medium carrying the illustrations. Here are the practical takeaways from the decision T 0670/19 of 20.11.2020 of Technical Board of Appeal 3.2.01:

Key takeaways

The implicit presence of a physical medium does thus confer technical character to at least part of the subject-matter of the independent claim and this regardless of a possibly non-technical nature of the cognitive content of the illustrations carried by or displayed on the physical medium “per se”.

The invention

This European patent application concerns scales for performing clinical assessment of an individual, in particular to effectively rate lip fullness or the severity of perioral lines or oral commissures.

According to the application, such scales would be useful in both clinical practice and clinical trial research. Particularly, in clinical trial research, objective quantification is critical to measure the efficacy of an investigational treatment by comparing the severity of a condition before treatment to that measured after treatment. For a new treatment to achieve regulatory approval for marketing, its efficacy must be documented in clinical trials. Valid and reliable outcome measures are also important in evidence-based medicine to provide comparisons among similarly designed trials in the literature.

Fig. 3 of EP 2 369 956
Fig. 3 of EP 2 369 956

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The first-instance examining division had refused the patent application based on the conclusion that claim 1 related to abstract subject-matter excluded from patentability under Articles 52(2) and (3) EPC.

On appeal, the board did not agree that claim 1 is excluded from patentability and concured with the appellant that the invention as claimed does not relate to purely abstract subject-matter in the meaning of Articles 52(2) and (3) EPC. Instead, the board confirmed that claim 1 does have a technical character:

Claim 1 relates to a system comprising a plurality of scales each of them being associated with one specific characteristic of the mouth area, wherein each scale comprises in turn a plurality of illustrations representing different severity levels of the respective characteristic. The Board is convinced by the argument of the appellant that the feature “illustration”, in the context of a claim for a system, does imply the presence of a concrete physical medium carrying said illustrations and from which they can be viewed or displayed, for example a sheet of paper, a board, a display or the screen of a computer or tablet. The implicit presence of a physical medium does thus confer technical character to at least part of the subject-matter of the independent claim and this regardless of a possibly non-technical nature of the cognitive content of the illustrations carried by or displayed on the physical medium “per se”. Therefore, unlike the assessment of the examining division, the Board agrees with the appellant that the subject-matter of claim 1 is an invention within the the meaning of Article 52(1) EPC as it does not fall under the exceptions to patentability presented in Article 52(2) and (3) EPC.

Accordingly, the appeal was set aside and the board remitted the case to the examining division for further prosecution.

More information

You can read the whole decision here: T 0670/19 of 20.11.2020

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Distributing rewards by assigning users to partial areas of an advertisement banner: technical

In this decision, the board of appeal once more used the concept of the notional business person to draw the line between technical and non-technical features. Here are the practical takeaways from the decision T 2314/16 (Distributing rewards by assigning users to partial advertisement display areas/RAKUTEN) of 7.9.2020 of Technical Board of Appeal 3.5.01:

Catchword

The specification of the business method ended with how to determine the reward distribution ratio. The features of dividing the advertisement display area into partial areas and allocating each partial area to a user such that when the partial area is clicked on the user gets a reward, were based on technical considerations of the web page system. It was not motivated by any business considerations. … In order to come up with this idea, one needs to understand how a web site is built, and in particular how an image map works. Thus, this feature cannot be part of the non-technical requirements. Instead it is part of the solution that has to be evaluated for obviousness. (See point 2.10 of the reasons)

The invention

This European patent application concerns the distribution of rewards to participants in an affiliate marketing scheme. Affiliate marketing is an advertising model in which an influencer receives a reward for advertising a product or service, e.g. by including a link on a blog or endorsing a product on social media.

In the invention, the influencers are each allocated a portion of an advertisement banner displayed on a web site (Figures 5A and 5B). The areas are not visible to the visitor of the web site, but the visitor just sees an advertising banner. When the visitor clicks on the banner, the influencer whose portion was clicked on gets a reward. Over time, the rewards will be distributed according to the sizes of the image portions.

The idea was to allocate the partial areas such that the reward distribution rates match the degree of contribution of each user (influencer) to the advertising of the product or service.

Fig. 5B of EP 2 587 446
Fig. 5B of EP 2 587 446

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The first-instance examining division had refused the patent application based on lack of inventive step, the main argument being that the distinguishing features constituted an obvious implementation of a set of non-technical requirements.

On appeal, it was common ground that claim 1 contains a mixture of technical and non-technical features. The board noted that the information providing device is clearly a technical device, whereas the distribution of rewards to influencers is a business idea.

First of all, the board therefore gave a nice summary of the EPO’s approach to mixed-type inventions:

The established approach for dealing with such mixed-type inventions is the “Comvik approach” (T 641/00 – Two identities/COMVIK). In this approach, only the features which contribute to the technical character of the invention may be taken into account in the assessment of inventive step. Non-technical features which do not make such a contribution are instead treated as being part of the technical problem to be solved, which is often formulated as a set of requirements to implement. Thus, as the appellant argued, a crucial step in this approach is to distinguish between the technical features and the non-technical features.

The appellant is correct in that there is no positive definition of ‘technical’ in the EPC.

However, Article 52(2) EPC provides a non-exhaustive list of subject-matter that should not be regarded as technical inventions, for example “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers” (Article 52(2)(c) EPC).

Also, over the years, the case law has provided further guidance on the issue of technicality. In COMVIK, a technical feature was defined as a feature which contributed to the solution of a technical problem by providing a technical effect (reasons, point 6). Thus, features which are prima facie non-technical may interact with the technical subject matter of the claim so as to produce a technical effect (T 154/04 – Estimating sales activity/DUNS LICENSING ASSOCIATES, reasons points 13 and 15). The technical effect must be actually achieved by the feature in question, and it must not be a mere consequence of a modified business scheme (see T 258/03 – Auction method/HITACHI, which held that method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means could not contribute to the technical character of the subject-matter claimed).

In the field of computer-implemented methods, the technical effect of the invention is often its implementation on technical means. In such cases, it is not always straightforward to determine which features contribute to the implementation, and which features are part of the non-technical requirements to be implemented. Generally speaking, features which are based on technical considerations of the technical system on which the requirements are implemented have technical character and thus may contribute to inventive step (T 792/92 – General purpose management system). However, pure software concepts do not contribute to the technical implementation, because programs for computers are excluded matter under Article 52(2) EPC (T 1755/10 – Software structure/TRILOGY, reasons point 6, and G 3/08 – Programs for computers, point 13.5).

In T 1463/11 (Universal merchant platform/CardinalCommerce), the Board introduced the concept of the notional business person to help separate business considerations and technical considerations. The business person, who is just as fictional as the skilled person in Article 56 EPC, may formulate business requirements but will not include any technical matter. This approach ensures that, in line with the Comvik approach, all the technical matter, including known or even notorious matter, can contribute to inventive step and is therefore considered for obviousness.

The appellant argued that the invention produced a technical effect which went beyond the mere implementation of a business method, namely reducing the processing load for calculating the reward rates. But the Board was not persuaded that this effect is actually achieved, for two reasons:

Firstly, the effect is not derivable based on a comparison between the claimed invention and the starting point in the prior art. In the problem and solution approach, the objective technical problem is formulated based on the difference between the claimed subject-matter and the prior art chosen as the starting point (the closest prior art). In the present case, the starting point is a server-side image map. The effect of reducing the computational load is based on a comparison between the claimed invention and another, hypothetical method of distributing rewards. Since the effect cannot be derived from the difference between the claimed invention and the server-side image map, it cannot form the basis of the technical problem. Thus, in the Board’s view, the technical problem vis-à-vis the server-side image map is merely the implementation of the reward calculation.

Secondly, even compared with a method of calculating rewards using division, the invention does not contain enough technical detail to credibly achieve the effect argued by the appellant. For there to be a reduction in processing load, the computational savings of avoiding division must outweigh the complexity introduced by processing image maps. Since the application does not contain any detailed embodiment of the server-side processing of coordinate information, it is not clear that there is a reduction in computation load, let alone a reduction over the whole scope claimed. This shows the importance of including an embodiment in support of the technical effects relied on, because this might enable them to be verified.

The technical problem was thus formulated as the implementation of the reward distribution. The remaining question was which features are part of the requirement specification and which features are part of the technical implementation:

The appellant argued that the specification of the business method ended with how to determine the reward distribution ratio. The features of dividing the advertisement display area into partial areas and allocating each partial area to a user such that when the partial area is clicked on the user gets a reward, were based on technical considerations of the web page system. It was not motivated by any business considerations.

The Board agrees with the appellant that the allocation of users to partial image areas is not within the domain of the business person. In order to come up with this idea, one needs to understand how a web site is built, and in particular how an image map works. Thus, this feature cannot be part of the non-technical requirements. Instead it is part of the solution that has to be evaluated for obviousness.

Starting from the HTML server-side image map and given the problem of implementing the business requirement of distributing rewards to a number of users according to certain reward distribution rates, the Board judges that it would not have been obvious to assign users to partial areas of an image as in claim 1. Although the means for implementing this was available in HTML, there was no motivation for the skilled person to do so.

Accordingly, claim 1 was found to involve an inventive step. The board thus remitted the case to the examining division with the order to grant a patent.

More information

You can read the whole decision here: T 2314/16 (Distributing rewards by assigning users to partial advertisement display areas/RAKUTEN) of 7.9.2020

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Determining ranges of identifiers for items packed in a container: non-technical

In this decision, the board of appeal once more uses the concept of the notional business person to draw the line between technical and non-technical features. Here are the practical takeaways from the decision T 0232/14 (Method and apparatus for identifying, authenticating, tracking and tracing manufactured items) of 6.10.2020 of Technical Board of Appeal 3.5.01:

Catchword

The Board judges that using ranges of unit identifiers to label a number of (consecutive) unit identifiers of manufactured items is, at the level of generality at which it is claimed, on the business side of the line between technical and non-technical subject-matter (see e.g. T 144/11 – Security rating System / SATO MICHIHIRO, points 2.1, and 3.6 to 3.9).(See point 2.5 of the reasons)

The ranges of unit identifiers do have a meaning for the business person. They correspond to batches of units produced on a production line. (See point 2.6 of the reasons)

Even if the “determining of ranges of unit identifiers” achieved a technical effect, such as reducing data storage and data bandwidth requirements, it is a matter of routine design for the skilled person, a software programmer or a database expert, based on common general knowledge to store the first and the last element of a list of items, instead of the whole list. (See point 2.9 of the reasons)

The invention

This European patent application concerns the identification of specially taxed or branded manufactured items (e.g. cigarette cartons) packaged into containers. Identification allows products to be authenticated as genuine, tracked and traced, which helps to detect contraband and counterfeit products. Conventional identification systems stored an individual record of the identifier for each item in the container together with its associated container identifier. According to the application, this requires a large amount of data storage.

The invention essentially replaces the individual records with ones representing any contiguous ranges of identifiers for items packed in a container. Since items are generally packed as they are produced, there are fewer ranges than items and thus fewer records in the database.

Fig. 1 of EP 2 272 038
Fig. 1 of EP 2 272 038

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The first-instance examining division had refused the patent application based on lack of inventive step.

On appeal, there was common ground that claim 1 differed from the closest prior art by the last two features of claim 1:

  • “for each container, determining one or more ranges of unit identifiers of the two or more units allocated to the container”
  • “storing, in a database, a container identifier for each container, each container identifier being coupled, in the database, to the one or more ranges of unit identifiers of the two or more units allocated to the container”

One of the central questions was whether the determination of ranges of unit identifiers is technical or not. The examining division had taken the view that this feature was part of the requirement specification of an administrative scheme for the identification of manufactured items in containers.

The appellant, on the other hand, argued that ranges of unit identifiers did not have a meaning for the business person because they did not exist in the business area. They would be used in combination with production details and only for saving storage space, which was a technical contribution. This further enabled an authentication process to be implemented for products which were produced in very high numbers using standard data processing equipment. Hence, the requirement specification could only be formulated along the lines of “we need an identification and authentication system like we have for products that are shipped in containers, but which can be implemented practically and economically for very high volume units, such as cigarette packs”.

However, the board disagreed:

The Board however agrees with the examining division that this feature belongs to the business specification. The Board judges that using ranges of unit identifiers to label a number of (consecutive) unit identifiers of manufactured items is, at the level of generality at which it is claimed, on the business side of the line between technical and non-technical subject-matter (see e.g. T 144/11 – Security rating System / SATO MICHIHIRO, points 2.1, and 3.6 to 3.9).

The ranges of unit identifiers do have a meaning for the business person. They correspond to batches of units produced on a production line. This is apparent from Table 2 of the application, where a first batch is produced at 10:11 and a second batch at 10:12. In Example 1 on page 14 of the application, ranges of counter values correspond to cartons which were produced in the same time period. In Example 3 on page 15, the ranges correspond to cartons produced in batches of different production lines. In Example 2 on page 15, the ranges correspond to as many individual cartons as are packed together into one shipping case. The ranges of unit identifiers in all examples are not different from the general understanding of what a batch is in production, see, for example, D1, paragraph [0023]. Therefore the determination of ranges of unit identifiers is rather linked to the number of possible ways of organising items of a group of items based on how they are produced, that is, the number of batches, than to the way in which data can be stored.

The Board agrees with the examining division that the use of an (electronic) database for the storage of data, that is, the ranges of unit identifiers, was a straight-forward consequence of the requirement specification when implementing it on a data processing system, such as the one cited in the prior art. An (electronic) database was known in the prior art, for example, from WO 2006/038114, page 7, lines 5 to 11, and D1, paragraphs [0031] to [0032], where a checking center 30 receives and centralises product data, and has access to database 31, page 15, lines 13 to 15, and D1, paragraph [0065]. The person skilled in the art when implementing the business requirements would straight-forwardly store in the database a container identifier for each container, each being coupled, in the database, to the one or more ranges of unit identifiers allocated to the container. The saving in storage space is a mere “bonus effect”.

Therefore, the board concluded that claim 1 of the main request lacks an inventive step.

The board also noted that the case was no different even if the “determining of ranges of unit identifiers” achieved a technical effect, such as reducing data storage and data bandwidth requirements:

It is a matter of routine design for the skilled person, a software programmer or a database expert, based on common general knowledge to store the first and the last element of a list of items, instead of the whole list. If a list comprised non-consecutive numbers with numbers missing, then the skilled person would recognise without requiring inventive skills that several ranges can be defined to exclude the missing numbers. In an example of a list of items ranging from 1 to 50 with missing numbers 11, 12, 33, 34 and 35, the skilled person would store three ranges from 1 to 10, 13 to 32 and 36 to 50.

As a result, the board dismissed the appeal.

More information

You can read the whole decision here: T 0232/14 (Method and apparatus for identifying, authenticating, tracking and tracing manufactured items) of 6.10.2020

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