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Guiding the user to a shop: non-technical

This decision relates to an European patent application for a shop terminal and an information processing server for guiding the user to a shop. Here are the practical takeaways from the decision T 0589/17 (Guiding the user to a shop/SONY) of 20.4.2021 of Technical Board of Appeal 3.5.01:

Key takeaways

Any effects compared to a hypothetical, alternative computer-implemented business method cannot be taken into account for the purpose of assessing inventive step in accordance with the problem and solution approach.

The invention

The invention concerns a system for sending customers (users) between shops in a franchise group. The system comprises a server (2) and a plurality of shop terminals (8), one in each shop (81). The basic idea is the following: when the user purchases something with his mobile phone in a first shop (e.g. Yamada Set Meals in Figure 1), he is “guided” to a second shop (e.g. Cacao Coffee Shop). If the user purchases something in the second shop, he receives a bonus in his mobile payment account.

Fig. 1 of EP2221759

Claim 1 of the main request is directed to the server (2) in Figure 1, here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

At the first instance, the examining division considered that features distinguishing the claimed invention from the prior art disclosure D1 (US 2006/144927) were either non-technical or obvious.

During the appeal, the appellant had tried to argue why some of the technical features had been overlooked:

D1 merely described using the IC chip for making an electronic payment, not using the IC chip as a means for tracking the user’s progress from a first shop to a second shop.

By using the IC chip to track the user, rather than requiring the user to present a coupon received from the first shop, any need for either the user or the shopkeeper in the second shop to perform any specific actions was avoided. Consequently, the time for processing the transaction in the second shop was reduced.

The business requirements provided by the notional business person did not specify that the processing of identification information should take place at a server rather than at the shop terminal. The same applied for the means for paying the bonus. Whether the bonus was provided to the customer by the second shop’s terminal or to the customer’s telephone by the server was a technical choice of the technically skilled person.

These arguments are however not so convincing.

The Board again adopted the well-known COMVIK approach to decide this case (i.e. by taking into account only the technical features in the assessment of inventive step. The non-technical features which make no technical contribution are instead considered as being part of the formulation of the technical problem to be solved in the framework of the problem and solution approach.):

D1 does not disclose that the server receives and processes identification information and guidance completion information as in claim 1.

In claim 1 of the main request, the identification information read from the IC chip included in the user’s phone is used to determine that the user has made a purchase in the second shop. D1 merely discloses the use of an IC chip for making payments and for providing identification.

Furthermore, D1 does not disclose that the server transmits monetary value changing information to the user’s phone.

In the communication accompanying the summons to oral proceedings, the Board considered that sending a customer from a first shop to a second shop and giving the customer a bonus when purchasing something in the second shop was a business idea. In the Board’s view, this idea already implied some form of checking whether the customer had made the purchase in the second shop, as well as paying out the bonus directly to the customer in monetary form rather than providing a discount in the second shop. The problem to be solved was thus considered as how to implement the business idea on the system of D1.

The relevant criterion for assessing technicality is whether the feature or features in question provide a technical effect over the prior art chosen as starting point. Any effects compared to a hypothetical, alternative computer-implemented business method cannot be taken into account for the purpose of assessing inventive step in accordance with the problem and solution approach.

While the business person cannot require the use of a server which is a technical feature, he can specify that a certain task be performed by a central administrative entity. In the present case, the use of a central entity for handling the bonus scheme is an organisational matter related to the franchising business model. This is in contrast to the server in T 1463/11 which centralised the management of plug-ins i.e. software components.

Starting from the disclosure of D1 and given the task of implementing the business idea defined above, the Board is of the view that the skilled person would have used the server or servers in D1 for comparing information received from the source POS and the destination POS in order to check whether the guidance had been completed. Although D1 does not disclose payments using a mobile phone, this was known at the priority date, and it is not presented in the present application as making an inventive contribution (see paragraphs [0009] to [0012]).

Furthermore, the skilled person would have considered using the same mobile payment system for paying out the bonus, and given the requirement of using a central entity for paying the bonus directly to the user, the skilled person would have used the server to transmit “monetary value changing information” to the user’s phone.

Even if the payment of the bonus by a central entity directly to the user’s account was not part of the business requirements, the Board considers this to be at least an obvious alternative to using the second shop terminal to top up the mobile payment account.

Therefore, claim 1 was considered not to involve an inventive step. Since none of the auxiliary requests could overcome this objection, the appeal is dismissed.

More information

You can read the whole decision here: T 0589/17 (Guiding the user to a shop/SONY)of 20.4.2021 of Technical Board of Appeal 3.5.01.

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Converting loyalty points based on a commonly used reference currency: non-technical

The application underlying this decision relates to payment cards, and more specifically to the conversion of loyalty points based on a commonly used reference currency, such as US Dollar. However, the EPO considered this non-technical. Here are the practical takeaways from the decision T 2534/17 (Payment module/RAKUTEN) of May 10, 2021 of Technical Board of Appeal 3.5.01:

Key takeaways

Features making no technical contribution to an invention can be legitimately incorporated into the formulation of the technical problem.

A technical effect has to be achieved over the entire scope of a claim.

If a technical effect is only a bonus effect, it cannot count towards inventive step.

The invention

The Board in charge summarized the subject-matter of the application underlying the present decision as follows:

1.1 The invention relates to a payment module, such as a smart card, storing pre-loaded electronic money which is used for purchasing goods or services (paragraph [0002] of the published application).

1.2 Known cards subtract a payment amount from the amount of electronic money stored on the card. If the stored amount is below the required amount, the payment fails. Even smart cards, storing electronic money of different currency types, such as Euro, Dollar, or Yen, cannot compensate a shortage of one of the currencies with the other currencies stored on the card ([0004]).

The invention seeks to solve this problem by using the total amount of electronic money of all available currencies on the card ([0005]).

1.3 The solution involves using a reference currency (“utility electronic value” in the claims). If payment in one currency (“electronic value”) is required, e.g. Euro, and the Euro balance on the card is insufficient, the deficit is taken from the reference currency. If, however, the balance of the reference currency is also insufficient, the reference currency is replenished from one or more of the remaining currencies (“electronic values”, Figure 9B and [0086] to [0096]).

1.4 This idea is implemented by a plurality of applications (or “apps”) on the card; one for each of the electronic values, and one for the utility electronic value.

Fig. 4 of WO2012/147969 A1

Here is how the invention was defined in claim 1 according to the sixth auxiliary request:

  • Claim 1 (sixth auxiliary request; numbering added by the Board)

Is it patentable?

In the first instance, the Examination Division refused the application due to lack of inventive step and added subject-matter. To overcome these objections, the appellant filed seven auxiliary requests at the appeal stage.

Concerning the sixth auxiliary request, the appellant argued as follows:

The appellant argued that while the payment module of claim 1 was motivated by the business idea to use the total amount of money on a card for payment, it provided a non-obvious technical implementation of this idea. Contrary to the examining division’s view, the utility electronic value and the utility electronic value app achieved technical effects and, therefore, were not part of the business method, but of the technical solution that had to be examined for inventive step.

First of all, the Board in charge expressed that it considers the embodiment of Fig. 17 of prior art document D3 as the closest prior art to the claimed subject-matter:

3.4 However, D3 discloses a multi-electronic money card for different currencies, which can be used for payment (Figure 17, [0312], [0325]) and means for converting between them ([0320]). The Board considers this more specific teaching to be a good starting point for assessing inventive step.

Afterwards, the Board identified two distinguishing features:

3.8 Claim 1 therefore essentially differs in that:

i) the conversions between different electronic values are carried out via a utility electronic value, whose balance is stored in and updated by the utility value app UA (feature 2, and implementation in features 3 to 7);

ii) the app storage areas are encrypted using the same keys as those employed for the authentication (features 10 and 12).

Concerning difference ii), the Board considered the distinguishing feature to be an obvious measure applied by the skilled person:

3.14 Concerning difference ii), the Board is of the opinion that encrypting the apps’ storage areas does not achieve any surprising or advantageous technical effect, but merely serves its well-known purpose of protecting the stored data. The Board further considers that in view of the public key encryption scheme for mutually authenticating the apps suggested by D3 ([0115], [0186]), it would have been an obvious choice for the skilled person to use the already available public keys of the applications to also encrypt the data in their respective storage areas.

Therefore, difference ii) does not involve an inventive step.

With respect to difference i), the Board arrived at the conclusion that this feature lacks a technical character:

3.9 Concerning difference i), the Board agrees with the examining division that the idea of using a utility value for converting between currencies may arise purely from non-technical business-related considerations and cannot recognise any technical problem which might be solved by this feature. …

To counter this argument, the appellant explained that the claimed subject-matter would lead to a reduced amount of memory:

3.10 The appellant argued that the utility electronic value was conceived with the aim to reduce memory usage. When implementing the business idea of the invention, i.e. using the total amount of electronic money for payment, the straightforward solution would be to allow each app to replenish its account by directly communicating with the other apps. In this setting, each app would have to store the encryption keys of all other apps, which would result in a total of N(N-1) stored keys. By using the utility electronic value app, the invention needed to store only N keys.

3.11 The appellant also argued that the invention needed less memory for storing the exchange rates: it had to store only N exchange rates (between the utility electronic value and each of the electronic values), whereas D3 had to store exchange rates for all pairs of currencies.

However, the Board in charge did not follow these arguments and outlined that the claimed invention is only motivated by non-technical considerations. Notably, the Board further argued that any reduction in memory usage is merely a bonus effect, which does not count towards inventive step. Finally, the Board outlined that the alleged technical effect is not achieved over the entire scope of the claim:

As reasoned above (point 3.9), the Board does not consider that the idea of the utility electronic value is motivated by technical considerations. It follows that the necessary exchange rates between this value and the other currencies also do not contribute to the technical character of the invention. Any reduction in memory usage resulting from the exchange rates is merely a bonus effect, which does not count towards inventive step.

The Board also notes that this effect is not achieved over the entire scope of the claim. In the case of two currencies (i.e. N = 2), for instance, D3 would need to store a single exchange rate between the two currencies, whereas the invention would need to store two rates for exchanging between each of the two currencies and the utility electronic value.

Against this background, the Board concluded that the non-technical feature according to consideration i) could be used for formulating the technical problem. The solution to this problem would then have been obvious to the skilled person:

3.12 According to the COMVIK approach (T 641/00), features making no technical contribution to the invention can be legitimately incorporated into the formulation of the technical problem. In the present case the problem therefore is to implement the concept of the utility electronic value and use it for converting between electronic values within the payment module of D3.

The Board judges that it would have been an obvious choice for the skilled person to implement the utility value and the required exchanges within the data exchange application of D3 as this application already mediates currency exchanges. The skilled person would thereby have arrived at an arrangement falling within the scope of the utility electronic value app UA of claim 1 in a straightforward manner. The calculations involving the first and second reload amounts are a direct implementation of the non-technical decision about the policy for replenishing the various balances of the currencies. Therefore, difference i) does not involve an inventive step.

As a result, the appeal was dismissed.

You can read the whole decision here: T 2534/17 (Payment module/RAKUTEN) of May 10, 2021.

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Using file prevalence to inform aggressiveness of behavioral heuristics: non-technical

This decision relates to an European patent application for a method for adjusting an aggressiveness level to use in behavior based heuristics malware detection. Here are the practical takeaways from the decision T 2386/16 (MALWARE DETECTION USING FILE PREVALENCE TO INFORM AGRESSIVENESS OF … of 27.4.2021 of Technical Board of Appeal 3.5.01:

Key takeaways

A mere heuristic approach cannot reliably provide a technical effect.

The invention

The invention concerns behavior based heuristics malware detection. Instead of using a static approach, the invention suggests to have varying dynamic measures to be applied to a file dependent on how likely the file is considered to be infected. The more likely a file is to contain malware, the stronger will be the measures. The “aggressiveness level” of the malware detection is dynamically adjusted based on the “prevalence rate” of a file such that lower prevalence files are treated more aggressively than higher prevalence files.

Fig. 3 of EP2494446

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

D7 (US 2007/0079379 A1) was discussed as the closest prior art for claim 1.

Since the expressions “prevalence rate” and “aggressiveness level” do not have a specific technical meaning in the art and the claim does not provide its own definition, the Board has a broader interpretation of these expressions than argued by the appellant. Regarding the expression “prevalence rate”:

During oral proceedings the appellant further argued that in contrast to the claimed invention D7 did not disclose an adjustment of the analysis of the file based on the prevalence rate. The Board does not agree, because D7 discloses the use of stricter scanning rules at later times of the outbreak (see last paragraph of point 2 above). D7 explicitly discloses a re-scanning step of messages with an adapted set of rules for a virus outbreak that are initially broad and of which the scope is later narrowed down (see paragraph 248 of D7). As a result, messages that matched the earlier rule set may not match the revised rules, and become known false positives. The approach in D7 attempts to release known false positives automatically in response to a rule update, without intervention. This corresponds to the present invention as described in paragraphs 25 and 26 of the description, which is covered by claim 1.

Regarding the expression “aggressiveness level”:

D7 suggests varying measures for isolating files or stopping the execution of files such that they can be further analysed. The Board regards this as an aggressiveness level to be used in a behaviour based heuristics malware detection.

D7 discloses that when the virus score value is greater than or equal to a specified threshold, the message is stored in a quarantine queue without immediately delivering it to the recipient account (see [0045]). In addition, a variable quarantine time is suggested (see [0229]). A minimum quarantine delay is applied to messages that are less likely to contain a virus. Thus, the quarantine time is coupled to the probability that a message contains a virus. The Board considers this to be at least equivalent to the aggressiveness level in the context of claim 1.

At the end, the discussion was focused on the distinguishing feature “singleton files”:

Claim 1 further specifies “singleton files”, which have not been seen by the computer before and have the lowest prevalence rate. Those singleton files are treated with the highest aggressiveness level.

Such “singleton files” are not explicitly disclosed in D7. The Board is however not convinced that treating files having the lowest prevalence rate (singleton files) more aggressively involves an inventive step. In the Board’s view, this does not necessarily improve the virus detection over D7, which already suggests that the aggressiveness level is coupled to the probability that a message contains a virus.

Defining singleton files as the files most likely to contain malware is considered to be a mere heuristic, which does not reliably provide a technical effect. Also D7 uses heuristics. Depending on probabilities and subjective experiences, the skilled person would consider many heuristic approaches to define such files within the general idea of applying the highest aggressiveness for files most likely to contain malware.

In view of this the Board considers the feature of treating singleton files the most aggressively to be an obvious choice for the skilled person.

Therefore, claim 1 was considered not to involve an inventive step. Since none of the auxiliary requests could overcome this objection, the appeal is dismissed.

More information

You can read the whole decision here: T 2386/16 (MALWARE DETECTION USING FILE PREVALENCE TO INFORM AGRESSIVENESS OF … of 27.4.2021 of Technical Board of Appeal 3.5.01.

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Predicting future acquisitions: non-technical

This decision is interesting for shop operators and concerns predicting future acquisitions. However, the EPO considered this non-technical. Here are the practical takeaways from the decision T 0977/17 (Storing electronic receipts/OTTO GROUP SOLUTION PROVIDER) of June 17, 2021 of Technical Board of Appeal 3.5.01:

Key takeaways

A technical problem must be derivable from the claim wording.

Business research activities are excluded per se from patentability.

The invention

The Board in charge summarized the subject-matter of the application underlying the present decision as follows:

The invention concerns a method for systematic storing and analysing of electronic and printed payment certificates documenting purchases made by a user (see originally filed application, page 1, paragraph 1; page 7, paragraph 2).

A corresponding system according to Fig. 2 includes a central database 140 connected to a computer 110, such as a shop cash register equipped with a bar code scanner (page 10, lines 10 to 28). In a preparatory phase, the database registers the user and creates an account (page 2, lines 23 to 26). After the registration, the user is provided with an identification card comprising a unique bar code 120 (paragraph bridging pages 2 and 3).

When a user makes a purchase, the cash register creates a payment certificate and stores it locally (page 2, lines 14 to 18; page 9, lines 22 to 25). Then, the user is authenticated by scanning the bar code (page 9, lines 26 to 28) and if the authentication is successful, the cash register transmits the stored payment certificate to the central database over the Internet (page 10, lines 4 to 9). The database then stores the received payment certificate in association with the user’s account (page 2, lines 4 and 5).

In addition to collecting the electronic payment certificates, the invention enables information extracted from printed payment certificates to be input into the database. To this end, the invention uses a scanning device and optical character recognition (OCR) methods (page 7, lines 9 to 18).

The database includes a statistical application analysing data extracted from payment certificates assigned to the user’s account (page 5, lines 25 to 32) in order to predict future purchasing behaviour of the user (page 6, lines 26 to 32). This might include for example predicting the probability that the user will want to purchase a certain product or a price he will be willing to pay for it (paragraph bridging pages 6 and 7).

Fig. 2 of WO 2013/068378 A1

Here is how the invention was defined in claim 1 according to the main request:

  • Claim 1 (main request)

Is it patentable?

In the first instance, the Examination Division refused the application due to lack of inventive step in view of prior art document D1.

According to the Board, claim 1 includes the following two distinguishing features:

2.1 … It is common ground that claim 1 differs from D1 by:

A) Predicting future acquisitions by a user and/or parameters of future acquisitions by a user based on previous acquisitions by the user and/or parameters of previous acquisitions by the user.

B) A scanning device adapted to scan a printed payment certificate and extract information from the printed payment certificate for further processing of the information in the database.

However, the Board in charge arrived at the conclusion that both features lack a technical character.

Concerning feature A, the Board reformulated the technical problem and argued that this problem is of non-technical nature:

2.2 Concerning feature A, the appellant argued that it solved the objective technical problem of how to select a product to be presented to a user and to adjust the timing and location of the presentation of the product to the user. The examining division formulated a similar problem.

However, the Board considers that this problem formulation is not correct. Firstly, it is not derivable from the claim, which does not mention presenting products to the user. Secondly, even assuming for the sake of argument that the claimed method predicts time and location at which a user is likely to make future purchases, this is in the Board’s view not a (further) technical effect counting towards an inventive step. Rather, using statistical methods to predict future purchases based on previous ones is a business research activity excluded per se from patentability under Article 52(2)(c) and (3) EPC (cf. decision T 154/04, points 19 and 20 of the reasons).

Using the COMVIK approach (see decision T 641/00) this non-technical functionality cannot contribute to an inventive step and is instead given to the skilled person within the framework of the objective technical problem. Accordingly, the Board considers that the skilled person faces the objective technical problem of implementing feature A in the system of D1.

…

Concerning feature B, the Board once more arrived at the conclusion that no technical character is present since the feature would merely relate to considerations concerning cognitive business content:

2.4 However, the Board considers that none of the purported effects qualifies as a further technical effect counting towards an inventive step.

Firstly, the advantages of increased data accuracy and ease of analysis are not derivable from the original application which does not explain why paper certificates are used. The application does not mention the format and content of printed certificates.

Secondly, even assuming that using the printed certificates indeed provided the alleged advantages, the decision to use these certificates would be based on considerations concerning their cognitive business content. These are purely business considerations.

Hence, the Board judges that at the claimed level of detail the requirement to use printed certificates does not involve any technical considerations and constitutes non-technical business matter.

To defend claim 1, the appellant argued that the distinguishing features A and B would produce a synergistic technical effect based on technical considerations:

2.8 The appellant argued further that features A and B were functionally interdependent and it was not correct to analyse them separately. More specifically, inputting into prediction algorithms more accurate and complete data facilitated these algorithms’ operations. As a result, it was possible to use less sophisticated prediction software. This was a synergistic technical effect.

However, the Board in charge was not convinced and maintained its position as outlined above:

2.8 … However, the Board considers that the distinguishing features do not interact synergistically. Firstly, the alleged synergistic effect is not derivable from the original application (cf. point 2.4. above). Secondly, the claim covers the case in which electronic payment certificates make up a vast majority of all analysed certificates and the Board cannot see how using few printed certificates (say, one printed certificate versus one million electronic ones) could allow simplifying the prediction software. Thirdly, as set out above, predicting future acquisitions is a non-technical business activity. Improving this activity by basing the predictions on more accurate business data does not give rise to a technical effect which could provide a basis for the alleged synergy.

As a result, the appeal was dismissed due to lack of inventive step.

You can read the whole decision here:T 0977/17 (Storing electronic receipts/OTTO GROUP SOLUTION PROVIDER) of June 17, 2021.

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Projection surface with built-in track pad: technical

This decision relates to an European patent application for an interactive food and/or drink ordering system and method. Here are the practical takeaways from the decision T 2251/13 (Projection surface with built-in track pad/ORDAMO) of 13.4.2021 of Technical Board of Appeal 3.5.01:

Key takeaways

The fact that the problem is formulated as “how to provide an alternative” does not automatically mean that the solution is obvious.

The invention

The invention concerns an interactive food and/or drink ordering system in a restaurant. The main idea is to project a menu onto the restaurant table (Figure 1). The table has a built-in track pad allowing the guest to select and order food and/or drinks from the menu.

Fig. 1 of EP2102801

The system comprises a projector that is mounted above the table and connected to a computer (Figure 15). Also the track pad is connected to the computer via a short range wireless network such as Bluetooth.

Fig. 15 of EP2102801

Here is how the invention was defined in claim 1 in the final request during the oral proceedings:

  • Claim 1 (main request)

Is it patentable?

Initially, the Board of Appeal agreed with the Examining Division that the subject-matter of (old) claim 1 lacked of inventive step (Article 56 EPC) in view of D1 (US 2005/273345) in combination with D3 (Ammer A: “Projector-Camera System for Flexible Interactive Projections”, 2005, Stockholm University, Stockholm, Sweden, XP002470986).

The appellant did a good job convincing the Board of Appeal and could submit a new main request with amended claim 1 during the oral proceeding.

New claim 1 submitted during the oral proceedings survived the COMVIK test:

3.1 The examining division assessed inventive step starting from D1 which relates to a food and drink ordering system comprising a computer terminal.

In the Board’s view, however, D3 is a better starting point because it is related to a projector-camera system for interactive projections, which is technically closer to the claimed invention. In other words, D3 requires fewer technical modifications to arrive at the subject-matter of the claims.

D3 explicitly mentions in paragraph 1.1 on page 2 that the projector-camera system may be used on a restaurant table to show the menu. However, even without this, D3 would be a good starting point, because the use of the projector-camera system in a restaurant to show the menu is a non-technical aim which does not contribute to inventive step under the “Comvik approach” (see T 641/00 – Two identities/COMVIK). Therefore, it is irrelevant whether or not this is disclosed in the prior art. What counts is the technical disclosure.

3.2 It is common ground that the invention in claim 1 differs from D3 by (i) the ordering of food and/or drinks from the menu, and (ii) a track pad that is “built into the [projection] surface”.

In D3, the user interacts with the system by using his fingers (paragraph 3.1 on page 8). The system makes use of a fingertip finding algorithm (paragraph 4.1) to identify the user’s interaction.

3.3 In its preliminary opinion, the Board considered that the ordering of food and drinks (i) constituted an obvious implementation of a non-technical requirement. The appellant did not contest this. Instead, the feature that was given patentable weight was the second one (ii), namely the built-in track pad.

3.4 The appellant argued that the built-in track pad provided a clearer projection surface, because the projected image was not obstructed by the user’s hand as in D3 (see Figure 7).

The Board is not convinced that the invention has this effect, because claim 1 does not exclude that the track pad covers parts of the projection area. Furthermore, a fingertip interface could be designed such that the user points at projected buttons or the like which do not contain any information. Therefore, the Board does not see that the built-in track pad has any technical effect beyond providing an alternative to the fingertip interface in D3.

3.5 The question that remains to be answered is whether this would have been an obvious alternative. The fact that the problem is formulated as “how to provide an alternative” does not automatically mean that the solution is obvious. Also the fact that the alternative, here a track pad, was well known per se is not enough. There has to be some hint or incentive, in the prior art, or in the skilled person’s common general knowledge, to provide the alternative.

3.6 In fact, the invention is not merely the use of a track pad as an input device. It involves building the track pad into a table top or a similar surface that is used as a projection surface. Although, as the examining division pointed out, there is no detailed implementation of this feature, the Board judges that “built into” implies at least that the device forms an integral part of the table top structure.

The examining division considered that this was a “straightforward constructional detail”. However, they did not refer to any prior art that disclosed such a built-in interface. Nor can this be said to be common knowledge.

3.7 At the oral proceedings it was discussed whether the idea of building something into a surface, e.g. to make it more permanent or less obtrusive, could be a routine design skill and part of the skilled person’s “mental furniture”, discussed for example in decision T 190/03 – Multiple subtitles/EDICO at point 16.

Although this seems plausible, in the end the Board judges that on balance this is not the case. The required amendment and design skill is in the field of mechanics. However, the skilled person in this case is a specialist in computer systems who would not necessarily have these routine design skills and would not have considered modifying a table top structure in order to provide an alternative input interface without a further hint.

Therefore, claim 1 was considered to involve an inventive step. At the end, the case was remitted to the Examining Board to grant a patent.

More information

You can read the whole decision here: T 2251/13 (Projection surface with built-in track pad/ORDAMO) of 13.4.2021 of Technical Board of Appeal 3.5.01.

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Dynamically enabling customized web content: non-technical

This decision concerns dynamically enabling customized web content which was considered non-technical. Here are the practical takeaways from the decision T 1632/18 (Dynamically enabling customized web content/LIVEPERSON) of May 21, 2021 of Technical Board of Appeal 3.5.07:

Key takeaways

A technical effect must be adequately supported by the claim wording.

The invention

The subject-matter of the European patent application underlying the present decision was summarized by the Board in charge as follows:

The invention

1. The application relates to generating customised web page content based on a visitor’s interactions with the web page, for example targeted advertising in web pages (description of the application as originally filed, paragraphs [0003], [0012], [0026], [0039], [0041], [0044], [0047]).

For example, a website provider of web page content can partner with a video company to incorporate video content such as advertisements into the website provider’s web pages without modifying the original Hypertext Markup Language (HTML) code of the web pages (description, paragraph [0043]). A web page visitor’s interactions with a website can be stored as a cookie (paragraphs [0045] to [0048]).

In one implementation, the content of a web page already includes a tag in HTML code that references (e.g. with a URL link) a JavaScript file (the “default tag code”) on a custom content server different from the website’s server (i.e. the general content server; paragraphs [0022], [0043]). The website provider can create rules that cause video content (i.e. the new content) to be downloaded from a custom content server and added into web page content using the tag. For example, the website provider can configure a rule so that (upon the occurrence of a condition) video code is uploaded to, and executed on, the visitor’s browser, resulting in the video content being integrated into web page content without the visitor having to navigate away from the web page (paragraph [0043]).

Fig. 1 of WO 2011/127049 A1

Here is how the invention was defined in claim 1:

  • Claim 1 (main request - itemisation added by the board)

Is it patentable?

The Board in charge identified three distinguishing features over the closest prior art document D1:

2.5 The claimed invention thus differs from the method of document D1 in the following distinguishing features:

DF1 The rules and the web page data are stored on different servers (custom content server and general content server), and the (client) computing device communicates with both servers.

DF2 The web page requested from the general content server contains a tag configured to facilitate communication between the computing device and the custom content server, the tag causing a request for the default tag code to be transmitted to the custom content server, which then receives that request.

DF3 The tag module is associated with an identifier to which the behaviour data (of the user’s interaction) is appended and which is used for selecting a rule from the set of rules stored on the custom content server.

In the statement of grounds of appeal, the appellant argued the technical effect and the objective technical problem to be solved as follows:

2.6 … the technical effect was that it was simpler to install and maintain customisation of web page content. Thus, an objective technical problem to be solved could be formulated as how to provide a method for dynamically customising web page content which is simpler to install and maintain.

However, in the written proceedings, the Board in charge did not agree and formulated the technical problem underlying the present application in a different way which is in accordance with what is described in the description:

1.6.1 … Consequently, the board finds that the claimed method solves the more specific problem (see paragraphs [0043] and [0044] of the description) of how to allow a third party company (such as an advertising company) to customise the behaviour of a website (as known from document D1) for each individual visitor by incorporating third party content into web page content of a website provider.

In the written reply to the Board’s communication, the appellant reformulated the technical problem and argued that the distinguishing features provide the technical effect of reducing the load of the general content server:

2.7 In its written reply to the board’s communication, the appellant argued that the distinguishing features provided the technical effect of reducing the load of the general content server.

Again, the Board did not agree due to the following two reasons:

2.8 In the circumstances of the present case, the board does not recognise the alleged effect of load reduction as a technical effect. Firstly, there is no disclosure in the application as filed regarding this effect. Secondly, the board does not consider that moving processing tasks from the general content server to the custom content server in order to bring a task under the administrative control of a third party which controls the custom content server, as in the present case, can be regarded as a technical consideration.

During the oral hearing, the appellant once more reformulated the technical problem:

2.10 The appellant then reformulated the problem, during the oral proceedings, as “how to implement a scalable computer system in which a content provider can incorporate customised web page content into general web page content of different web page providers”.

In the hearing, the Board expressed that a solution to this problem is not reflected by the claim wording:

2.10.1 As discussed at the oral proceedings, the board does not find any support for scalability with respect to customers in the wording of claim 1 …

As a result, the Board was not convinced that the distinguishing features contribute to a technical effect or are based on further technical considerations. Hence, the appeal was dismissed due to lack of inventive step in view of D1.

More information

You can read the whole decision here: T 1632/18 (Dynamically enabling customized web content/LIVEPERSON) of May 21, 2021

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Determining an analysis chronicle: non-technical

This decision relates to an European patent application for analyzing a set of information. However, the distinguishing features were considered non-technical by the Board of Appeal. 

Here are the practical takeaways from the decision T 1971/18 (Determining an analysis chronicle/NOKIA TECHNOLOGIES OY) of March 8, 2021 of Technical Board of Appeal 3.5.07:

Key takeaways

Presentation of information as such is excluded from patentability under Article 52(2)(d) and (3) EPC.

Reduction of user distraction or disruption by selectively presenting information to the user fulfils the cognitive interests or needs of the user, which is not a technical purpose or based on technical considerations.

A bonus effect which is at best incidental to a non-technical solution is not a technical effect on which an inventive step can be based.

The invention

The application relates to monitoring information sources for a user and presenting information to the user without superfluous content such as a similar news story from a plurality of information sources. The invention relies on “analysis criteria” to express rules for filtering information. The analysis criteria is represented by a graph (cf. Fig. 2A), in which each leaf node corresponds to a condition and each intermediate node corresponds to a “directive” associating the conditions to which it is connected.

Fig. 2A of EP2550611

In the method according to the invention, “analysis chronicles” are determined, where an analysis chronicle indicates which nodes of the analysis criteria are positively determined by a set of information. Further, the method determines whether a change occurred between two analysis chronicles. Change determination may be based, at least in part, on the presence of a significant difference between the analysis chronicles. If a change occurred, an operation is performed, e.g. providing indication of at least part of the analysis chronicle (cf. Fig. 3).

Fig. 3 of EP2550611

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The board finds it appropriate to assess inventive step starting from a well-known apparatus configured with such an aggregator which continuously receives sets of information from different information sources filtered according to the user’s informational preferences, and presents the filtered and aggregated information to the user (here based on D4).

According to the board:

2.2 The subject-matter of claim 1 differs from the well-known apparatus configured with an aggregator in that (using an itemisation corresponding to that used in the grounds of appeal):

(e to g) the analysis criteria comprises a root node and a plurality of nodes associated with the root node, the plurality of nodes comprising a plurality of nodes relating to a condition and one or more nodes relating to a directive that associates two or more of the nodes relating to a condition;

(h) a set of information is determined to comply with the analysis criteria at least by virtue of the root node of the analysis criteria being determined positively by the set of information;

(i) and (j) if the set of information complies with the analysis criteria, the analysis chronicle is determined as a record that indicates which nodes of the analysis criteria are positively determined by the set of information;

(k to n, o’) information is presented to the user if the analysis chronicle is determined to have changed by determining that a difference between the analysis chronicle and another analysis chronicle associated with a previously received set of information is significant, wherein the difference between the analysis chronicle and the another analysis chronicle is significant if it is within a particular number of nodes from the root node.

An experienced patent attorney would already recognize that these distinguishing features seem to be only a mathematical method.

The appellant tried to argue that there is a technical effect to reduce the operations being performed. However, the board considers that the alleged effect is only a bonus effect, which is not the purpose of the distinguishing features:

2.5 Only the purposive use of non-technical features in the context of a solution to a technical problem may contribute to the technical character of an invention (see T 49/99 of 5 March 2002, Reasons 7) and a bonus effect which is at best incidental to a non-technical solution is not a technical effect on which an inventive step can be based (T 1023/06, 7 December 2006, Reasons 3.7.2, T 2230/10 of 3 July 2015, Reasons 3.4 to 3.8). The purposive use can be established if technical considerations are present for the adoption of non-technical features with the view to achieve a technical effect or solve a technical problem (T 697/17 of 17 October 2019, Reasons 5.2.3 and 5.2.4, T 244/00 of 15 November 2001, Reasons 12 and 13).

In the prior-art aggregator, filter criteria (corresponding to the analysis criteria of the invention) are used and updates are presented to the user. Compared to that, the distinguishing features serve the purpose of presenting to the user information only if it significantly differs from previously displayed information. Within the context of the claimed apparatus, the distinguishing features are not concerned primarily with the reduction of operations, which only occurs if the information does not change significantly. Therefore, the purpose of the distinguishing features is not technical.

A technical contribution could reside on the implementation of the apparatus. The distinguishing features provide details of the software implementation, including the data model used to represent the analysis criteria and analysis chronicle as graphs, and details of how they are used to determine significant changes of an information set. However, these features are not based on technical considerations as they concern only the abstract data model and mathematical algorithms used, which are computer-program features as such excluded from patentability (Articles 52(2)(c) and (3) EPC).

2.6 Therefore, none of the distinguishing features contributes to solve a technical problem. Since such non-technical features cannot support the presence of an inventive step, the subject-matter of claim 1 of the main request is not inventive (Article 56 EPC).

Since none of the auxiliary requests can add contribution to solve a technical problem, the appeal was dismissed.

More information

You can read the whole decision here: T 1971/18 (Determining an analysis chronicle/NOKIA TECHNOLOGIES OY) of March 8, 2021 of Technical Board of Appeal 3.5.07.

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Simulation of weldments: non-technical

This decision concerns the simulation of weldments. However, the simulation was considered non-technical by the EPO, specifically in light of the decision G1/19 of the Enlarged Board of Appeal. Here are the practical takeaways from the decision T 2594/ 17 () of May 20, 2021 of Technical Board of Appeal 3.4.03:

Key takeaways

This is one of the first decisions referring to the Enlarged Board of Appeal decision G1/19 regarding computer-implemented simulations.

For the purposes of assessing inventive step of a computer-implemented simulation, it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.

The invention

The subject-matter of the European patent application underlying the present decision was summarized by the Board in charge as follows:

2. The claimed invention

The claimed invention relates to a system and a method for carrying out virtual (computer-simulated) testing and inspection of virtual (computer-simulated) weldments.

The claimed system renders 3D images of virtual weldments. The virtual weldments are generated using a virtual reality arc welding system, which is described in detail in the application.

The system carries out a series of computer-simulated tests on the rendered virtual weldments. These computer simulated tests correspond to tests carried out in “real-life” weldments in order to assess their quality and identify possible defects. The system renders animations of such tests and displays the virtual weldment after the test. The user can then inspect the tested virtual weldment by moving the image around in a display.

The system is conceived for a training context in which trainees generate virtual weldments, which are then tested and the result of the test can be used as criterion for passing or failing an examination.

Fig. 2 of WO 2012/137060 A1

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The Board in charge considered the claimed system to be a general purpose personal computer configured to execute virtual testing and inspection of virtual weldments. Hence, a common computer was considered as a suitable starting point for the assessment of inventive step:

3.1.3 The board concludes from the above that the claimed system is a general purpose personal computer configured to execute virtual testing and inspection of virtual weldments.

3.1.4 The board considers thus a notoriously well-known, general purpose, personal computer to be a suitable starting point for the skilled person.

On the differences over the closest prior art and on the underlying technical problem, the Board commented as follows:

3.2 Differences and technical problem

3.2.1 Compared to such a notoriously well-known personal computer, the claimed system differs in that it can (“is operable to”) execute coded instructions including a rendering engine configured to render a 3D virtual weldment and an analysis engine configured to perform simulated testing and inspection of the 3D virtual weldment for pass/fail conditions and/or defect/discontinuity characteristics. In addition, the display device can display the 3D images of the weldment and the user interface allows the user to move the displayed images around (“manipulating an orientation”).

In essence, the claimed system renders a 3D image, which can also be an animated 3D image (of a virtual weldment) and processes this image by simulating testing and inspection of the virtual 3D weldment. It then displays the processed image and allows the user to move it around.

Importantly, the Board in charge stated that the claimed subject-matter (as well as the application as a whole) only refers to the testing of virtual weldments and not to “real life” weldments:

3.2.2 As a first point the board notes that the claimed system carries out computer-simulated testing and inspection of a virtual weldment, i.e. of a computer-simulated weldment and not of a physical, i.e. “real life”, weldment.

3.2.3 Moreover, the claimed system does not simulate such tests carried out on a “real life” weldment. In other words, there is no particular “real life” weldment that needs to be tested (and inspected) and instead of carrying out “real life” tests on it, computer-simulated tests are carried out on a computer-simulated virtual representation of that particular “real life” weldment. As the application describes, only a virtual weldment is generated, mainly for training purposes, and without any link to a particular “real life” weldment.

As such, the  the claimed system would only refer to image processing which is a non-technical task as conformed by a plurality of decisions of the EPO’s Boards of Appeal:

3.2.5 In the board’s opinion, therefore, the claimed system carries out image processing. Images of weldments are rendered, manipulated and displayed. That the images represent weldments or that the manipulations represent testing and/or inspection of those weldments is, in the general manner claimed and described in the application, the result of the cognitive content (information) of the displayed images. It is the user who perceives the images as weldments and the manipulation of those images as testing and/or inspection. Such cognitive information (“what” is displayed) is not related to any technical problem or technical constraints. This applies also to the type of tests (e.g. destructive or non-destructive) the system is able to simulate.

It is established case law that the cognitive content of a displayed image (“what” is displayed) is in principle not a technical feature (Case Law of the Boards of Appeal of the EPO, 9th Edition, July 2019, I.A.2.6).

Against these finding, the appellant argued inter alia as follows:

Making reference to paragraph [0043] of the application, the appellant pointed out that simulated weldments generated using the VRAW system could be used beyond training. Such a simulated weldment could be integrated in a simulated bridge and the testing could involve simulations of the bridge over time in order to estimate whether the quality of the weldment would influence the life time of the bridge. In analogy to the reasoning of the decision T 625/11, where the deciding board had concluded that a simulation of a nuclear reactor was technical, the features relating to the simulation of the testing of the weldment were also to be seen as technical.

However, according to the Board in charge, the appellant’s arguments would not be in line with the decision G1/19 of the Enlarged Board of Appeal:

3.2.10 Secondly, regarding the technical character of the simulation, the board notes that the decision referred to by the appellant was cited in decision G1/19 of the Enlarged Board of Appeal (EBoA)(see point 109 of the reasons), which relates to computer-implemented simulations. In G1/19 the EBoA concluded that, for the purposes of assessing inventive step of a computer-implemented simulation, it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process (see e.g. points 1 and 2 of the Headnote).

Hence, even if the computer-simulated testing of the virtual weldment were to be carried out within a computer-simulated simulation of a bridge (the bridge having incontestably sufficient technical character), this would not have any influence on the board’s assessment of inventive step of the features of the claimed invention. Moreover, the board points out that in the system of claim 1 of the Main Request there is no mention of nor any suggestion to such a type of testing at all but only of testing used for training purposes, as the reference to the determination of a pass/fail condition indicates.

Hence, the Board considered the distinguishing features as not technical:

3.2.11 Summarising, the claimed system differs from a notoriously well-known general purpose computer in that it is configured to display images of virtual weldments, of virtual testing of those virtual weldments, and of the results of the virtual testing on those virtual weldments. It can also determine a pass/fail condition based on those results.

These differences relate only to the cognitive content of the images and the board does not consider them to be technical features (see point 3.2.5 above).

As a result, the Board ignored the distinguishing features for assessing inventive step and thus considered the claimed subject-matter to be rendered-obvious. Hence, the appeal was dismissed.

More information

You can read the whole decision here: T 2594/ 17 () of May 20, 2021

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Three-dimensional motion graphic user interface (MGUI): non-technical

This decision relates to an European patent application for a three-dimensional motion graphic user interface (MGUI). However, the distinguishing feature was considered non-technical by the Board of Appeal. While this is a short decision, there are still some interesting aspects to learn about patenting GUIs. 

Here are the practical takeaways from the decision T 1677/18 (Polyhedron components 2/SAMSUNG) of May 3, 2021 of Technical Board of Appeal 3.5.05:

Key takeaways

Reducing screen clutter and presenting the user with more details in a GUI are not technical requirements.

Modifying the presentation of a GUI does not produce a technical effect.

The invention

The European application aims to provide an improved three-dimensional motion graphic user interface (3D MGUI). According to one aspect, the 3D MGUI comprises a first polyhedron component that is formed of a plurality of faces. At least one of the plurality of faces that are subordinate to the first polyhedron component has predetermined attributes and displays information according to the attributes. The first polyhedron component is separated into a plurality of second polyhedron components according to a user’s action with respect to the faces. A hierarchy of menus and sub-menus is assigned to specific faces of these polyhedron components.

Fig. 3A and 3B of EP1624368

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The appeal was withdrawn after the Board had issued its preliminary opinion. The decision merely confirmed the preliminary opinion that the distinguishing features of the application were non-technical:

3. The appellant thus seems to have suggested that the second polyhedron components in claim 1 of the main request may display sub-menus on more than one face and that these sub-menus have some form of relationship with the menu on the selected face of the first polyhedron component. In its preliminary opinion, however, the board informed the appellant that whether the sub-cubes displayed sub-menus on one face or on a plurality of faces and the relationship between these menus/sub-menus were non-technical differences in GUI design in which the board could not discern any technical effect.

4. In the statement setting out the grounds of appeal, the appellant referred to T 928/03, arguing that “facilitating a continued human-machine interaction by resolving conflicting technical requirements [was] a possible technical purpose”. It submitted that the distinguishing features of claim 1 of the main request resolved conflicting “technical requirements” of this kind, namely giving the user easy access to all kinds of details without overly cluttering the screen. However, as the board informed the appellant in its preliminary opinion, reducing screen clutter and presenting the user with more details in a GUI are not technical requirements.

5. Regarding claim 1 of the first auxiliary request, the appellant had argued in the statement setting out the grounds of appeal that D1 did not disclose “the modification of information” or “how a use may be enabled to modify the shown information”. However, as noted in the board’s preliminary opinion, modifying the presentation of a GUI does not produce a technical effect.

As a result, the Board confirmed that claim 1 does not involve an inventive step. Thus, the appeal was dismissed.

More information

You can read the whole decision here: T 1677/18 (Polyhedron components 2/SAMSUNG) of May 3, 2021 of Technical Board of Appeal 3.5.05

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Managing media in a network: non-technical

This decision concerns a media management application. However, the effect produced by said application was considered non-technical by the EPO. Here are the practical takeaways from the decision T 2950/18 (Managing media in a network) of May 5, 2021 of Technical Board of Appeal 3.4.07:

Key takeaways

Features that only relate to the presentation of information in an intuitive way are generally considered non-technical and therefore cannot contribute to inventive step.

The invention

The subject-matter of the European patent application underlying the present decision was summarized by the Board in charge as follows:

2. The invention

The application relates to utilising a media management application to manage, control and/or render media from a collection of digital media files in a network. The proposed invention allows a user to browse, search, manage or render content from multiple servers in the network. The user may view a visual representation of active media connections between the available servers and the available rendering devices connected to the network (description as published, page 1, lines 8 to 18).

Figure 6 illustrates a connections sub-view of a media management application disclosed in the application and is further described in the description, page 37, line 8, to page 39, line 30. The connections sub-view displays a graphic representation of media flowing between the servers and the rendering devices. The user may interact with this graphic representation to control the media flow between devices.

Fig. 2 of WO 2009/123694 A2

Here is how the invention was defined in claim 1:

  • Claim 1 (main request - labeling A, B ... added by the Board)

Is it patentable?

At the end of the examination phase, the examining division rejected the present application due to lack of inventive step. In its statement of grounds of appeal, the appellant argues as follows:

3.4.1 In its statement of grounds of appeal (page 4, second paragraph), the appellant essentially agrees that the distinguishing features over document D1 relate to the graphic representation displaying a first list of icons according to feature B and a second list of items that is, according to the last part of feature C, displayed as icons simultaneously with the first list of icons and wherein a connection between an icon of the first and the second list of icons indicates the selected transmission of a media file from a server to a destination (feature F of claim 1).

…

3.5 In its statement of grounds of appeal (last paragraph of page 4, first paragraph of page 5), the appellant submitted that the display of a graphic representation as specified in claim 1 provided users with feedback on their selection of the rendering device to which the media file is to be transmitted. Displaying graphic indications provided a representation of media flowing between the servers and the rendering devices (see description, page 37, lines 27 to 29) and allowed a user to monitor how media was transmitted between devices. This made it easier for the user to track transmission of media, envision a functional picture of the network, and manage and/or troubleshoot the network (see description, page 6, lines 10 to 21).

According to the appellant, the objective technical problem could be considered to be how to enable the user to more effectively and efficiently manage media transmissions in the network (statement of grounds, page 5, third full paragraph).

However, the Board in charge did not follow the appellant’s line of argumentation because it considered the distinguishing feature over the cited prior art as non-technical:

3.6 The board considers that the distinguishing features do not contribute to solving a technical problem. It agrees with the examining division that the particular manner of presenting the network and the transmission (displaying two lists of icons representing servers and rendering devices simultaneously and displaying connections between servers and rendering devices) concern aspects that are directed to graphical representations of information in a manner particularly appealing to some users (“intuitive”). The board considers that these particular aspects concern merely the manner in which the information is presented and do not contribute to the technical character of the claimed invention.

Hence, the Board ignored the non-technical feature for assessing inventive step and arrived at the result that the subject-matter as claimed is rendered-obvious by the cited prior art. Thus, the Board in charge dismissed the appeal.

More information

You can read the whole decision here: T 2950/18 (Managing media in a network) of May 5, 2021

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