Author Archive

Image data arrangement: non-technical

This decision concerns an European patent application for image data arrangement, which was considered non-technical by the EPO. Here are the practical takeaways from the decision T 1294/16 (Image data arrangement/OMRON) of March 10, 2021 by the Technical Board of Appeal 3.5.06:

Key takeaways

It is of constant jurisprudence that only features contributing to the solution of a technical problem by providing a technical effect can contribute towards a finding of inventive step.

Differences in mathematics can lead to a finding of inventive step only if they contribute to defining a technical solution in a field of technology not excluded under Articles 52(2) and (3) EPC.

The invention

The application relates to the detection of patterns on products in manufacturing context. Starting from the known technique of using normalized cross correlation (NCC) to detect known patterns in grayscale images, the application aims at providing a robust NCC method for color images. For this purpose, the 3-color image is transformed into a 2D or 1D matrix by rearranging the values according to predetermined rules. The NCC is then computed on this matrix.

Fig. 3 of EP1783664

Fig. 4 of EP1783664

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The Board considers claim 1 of the main request obvious in view of D1/D2.

The more interesting discussion for us is about the first auxiliary request:

21. This request differs from the main request in that it defines two alternative rules of arranging the color values in a single data array.

22. This arranging does not change the result of the color NCC, which remains identical to that of D1, as the order of the elements is irrelevant for the result of the computation (compare equation 2 of D1 with equations 1 and 4 in the application). This was not contested by the appellant. There is therefore no technical effect in terms of the results of the detection procedure.

The appellant argued why D1/D2/D7 do not solve the same problem. Furthermore, the appellant argued the following:

24. Moreover, there was no requirement under Article 56 EPC of a technical effect. Even if a technical effect was not acknowledged, the claim should be recognized as compliant with Article 56 EPC (1973) because it was not obvious. Starting from D1 or D2 there was no pointer to the specific data arrangements claimed.

However, the above-given argument was not shared by the Board:

25. In response to this second point, the Board recalls that it is of constant jurisprudence that only features contributing to the solution of a technical problem by providing a technical effect can contribute towards a finding of inventive step (T 0641/00 Two identities/COMVIK, point 6). This is because the EPC provides for protection of inventions, which require a technical solution to a technical problem (Rule 27(1)(c) EPC 1973). It is the (claimed) invention, i.e. the technical solution, that needs to involve an inventive step (Articles 52 EPC and 56 EPC 1973) for a patent to be granted.

Finally, the Board considers that the distinguishing feature of claim 1 of the first auxiliary request has no technical effect:

26.2 The Board does not dispute that a technical effect might be obtained under some circumstances. But this is not sufficient for acknowledging an inventive step, because those circumstances are not claimed (nor are they in fact made clear by the description), which means that the effect is not obtained over the full breadth of the claim, which in turn leads to the conclusion that at least a subset of the claimed matter is not to be seen as a technical solution to a technical problem and hence cannot be acknowledged as an invention involving an inventive step (see also T 0939/92, points 2.4 to 2.6).

27. Regarding the argument as to the convenience for the programmer, i.e. easing the programming effort, this, in principle, cannot be considered to define an invention at all (T 1539/09, Catchword). Arguendo, even if that could be the case, the technical effect cannot be objectively assessed here, because on the one hand the programming language is not specified, and because on the other hand the answer is a matter of subjective preference: while writing code with only two loops may be more convenient, the indexes will no longer intuitively directly represent the standard RGB format, making code reading less convenient.

28. Thus the claimed data transformation means does not solve any technical problem at all, and hence cannot contribute to a finding of inventive step. As in the case of the main request, claim 1 of this request lacks inventive step starting from D1 in view of the common knowledge in the art or from D2 in view of D1 and the common knowledge in the art.

The discussion about the third auxiliary request is also interesting. Claim 1 of the third auxiliary request includes a specific mathematical formula.

35. The Board has already considered the argument as to the number of loops, so this cannot help the appellant’s case. The mathematical formula itself is different to the one in D1, but this is immaterial for the inventive-step assessment in the present context.

Differences in mathematics can lead to a finding of inventive step only if they contribute to defining a technical solution in a field of technology not excluded under Articles 52(2) and (3) EPC. This is not the case here, the proposed formula is only a mathematical equivalent of that in D1 causing no ascertainable technical effect, as discussed in the framework of the previous requests.

36. Claim 1 of this request lacks inventive step starting from D1 in view of the common general knowledge in the art, or from D2 in view of D1 and the common general knowledge in the art.

Hence, the Board arrived at the result that the subject-matter as claimed lacks inventive step and thus dismissed the appeal.

More information

You can read the whole decision here: T 1294/16 (Image data arrangement/OMRON) of March 10, 2021.

This decision also concerns an interesting procedural aspect, discussed already by DeltaPatents Case Law. 

Stay in the loop

Never miss a beat by subscribing to the email newsletter. Please see our Privacy Policy.

Privacy policy *
* = Required field

Method for the detection of a movement characteristic of a vehicle: non-technical

This decision concerns a method for the detection of a movement characteristic of a vehicle. The EPO considered this non-technical. Here are the practical takeaways from the decision T 0772/18 (recording a movement characteristic of a vehicle / TELEKOM) of February 26, 2021 of Technical Board of Appeal 3.5.01:

Key takeaways

The information that a fuel consumption deviates from a reference fuel consumption or the cause of such a deviation (for example acceleration, air resistance, etc.) may be considered technical information. However, such information does not credibly support the driver in carrying out a technical task through constant and / or guided human-machine interaction.

On the one hand, the information only displayed to the driver does not contain any specific instructions on how he should control the vehicle, for example to optimize fuel consumption, and on the other hand, the real fuel consumption is not shown either, which is why this information does not contribute to the inventive step.

 

The invention

The European patent application relates to traffic telematics with the object to provide an efficient concept for detecting causes of fuel consumption of a vehicle.

For this purpose, a speed profile of the vehicle is recorded with the aid of a mobile communication device, for example a smartphone. Based on this, physical formulas are used to calculate the forces acting on the vehicle and associated partial energies, such as acceleration energy or air resistance energy, as well as a corresponding fuel consumption.

As shown in table 603 in Figure 6, these values ​​are compared with corresponding reference values ​​that are calculated from a specified reference speed. The column “LPH” in Figure 6 shows, for example, that the fuel consumption is 300% higher than the typical fuel consumption for the urban reference cycle.

Fig. 6 of EP2913792

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

Both the examining division and the Board did not question the technical character of the invention as a whole.

However, the Board considers that the distinguishing feature of claim 1 does not solve a technical problem:

2.4 The board agrees with the appellant that D2 does not disclose the calculation of a reference energy and a corresponding fuel consumption characteristic. However, it cannot see a solution to a technical problem in this, in particular not – as the appellant claims – the recognition of economical driving behavior and the optimization of fuel consumption (to be understood in the context of human-machine interaction, see T 336/14, guiding principle ).

2.5 The detection of the fuel consumption characteristic, as carried out in the last step of claim 1 …calculates an additional consumption or a saving of a fuel consumption compared to a specified reference consumption.

The mere calculation of such a characteristic does not include any feedback to the driver or any other output of this information. For this reason alone, this information cannot play a role in the interaction of the driver with the vehicle…

2.6 The information that a fuel consumption deviates from a reference fuel consumption or the cause of such a deviation (e.g. acceleration, air resistance, etc.) may be considered technical information. However, the board is of the opinion that this information does not credibly support the driver in carrying out a technical task through constant and / or guided human-machine interaction (as in T 336/14, reasons 1.2.4 and 1.2.5, or T 1000/09, reason 7, explained).

On the one hand, the information displayed to the driver does not contain any specific instructions on how to control the vehicle, for example in order to optimize fuel consumption, and on the other hand, as the testing department has already determined, it does not seem to reflect real fuel consumption either. Rather, this also depends on the preferences of the driver, for example on the selection of more efficient or less efficient gears.

At most, feedback may sharpen the driver’s understanding that he may be driving too fast or driving too often on roads with steep inclines and in city traffic. However, this alone is not sufficient to solve the technical problem mentioned by the appellant.

Since the distinguishing feature over D2 could not provide any technical contribution, the claimed subject-matter does not involve any inventive step within the meaning of Article 56 EPC. Hence, the appeal was dismissed.

More information

You can read the whole decision here: T 0772/18 (recording a movement characteristic of a vehicle / TELEKOM) of February 26, 2021.

Stay in the loop

Never miss a beat by subscribing to the email newsletter. Please see our Privacy Policy.

Privacy policy *
* = Required field

Method for determining comparability of service offers or products: non-technical

This decision concerns a European patent application relating to a method for determining comparability of service offers or products, which was considered non-technical by the EPO’s Board of Appeal in charge. Here are the practical takeaways from the decision T 2379/16 () of 11.9.2020 of the Technical Board of Appeal 3.4.03:

Key takeaways

The closest prior art can be a generally known network-based computer system, so that there is no need to refer to a document to assess inventive step.

The invention

A dynamic online reservation system for events is proposed in the application underlying the present decision, in which customers can submit quality assessments for seating and standing space online. These ratings are then available to all customers when choosing a seat during the online reservation (see paragraphs [0004] to [0006] of the published application).

Fig. 1 of EP2079045

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

In the first instance, the application was refused due to lack of inventive step by the examining division.

At the appeal stage, the Board confirmed the decision of the examining division with the following reasoning:

No closest prior art was cited in the examination procedure. The board shares the examining division’s view that the closest prior art is a generally known network-based computer system, so that there is no need to refer to a document to assess inventive step.

Then, the Board categorised the features of claim 1 into technical features and non-technical features, as required by the COMVIK approach (see T 0641/00).

3.2.1 The Board identifies the following known technical features of a network-based computer system:

(B) data processing system (32) with at least one computer unit (32), a memory unit (30), an input / output unit (36) and a communication network (34),

(D) where by means of the input / output unit (36} [deleted: evaluations of quality] features [deleted: n according to a specified evaluation standard of the place (24) and / or place area (26, 28) and related to place or place area and related to quality characteristics] are saved,

(E) [deleted: where] the [deleted: evaluations] can be processed by means of an algorithm and a result can be stored and accessed in a user-specific manner using the input / output unit (36) [deleted: based on a selected quality feature].

3.2.2 The following, mainly “non-technical” features can be identified which can easily be implemented in such a computer system, but which relate to a business method:

(A ‘) Process for providing ratings for personal spaces (24) and / or space areas (26, 28),

(C ‘) where the place (24) and / or place area (26, 28) is assigned an individualizing identification, (D’) where [deleted: by means of the input / output unit (36}] evaluations of quality features according to a specified evaluation standard of the space (24) and / or space area (26, 28) are released and stored in relation to the space or space area and in relation to quality features,

(E ‘) whereby the evaluations [deleted: by means of an algorithm] can be processed and a result [deleted: can be saved and called up user-specifically by means of the input] [deleted: /] [deleted: output unit (36)] based on a selected quality feature.

3.2.3 These procedural steps could also be carried out in the case of over-the-counter sales through the experience and customer feedback of the seller, with the storage and the algorithm being carried out purely mentally. As a rule, such consultations take place at a counter sale. The features (A ‘) and (C’) – (E ‘) are not generally known for a web-based computer system.

Further, in line with the COMVIK approach (see T 0641/00), the non-technical features (A ‘) and (C’) – (E ‘) can be included in the formulation of the technical problem.

The Board agreed with the examining division that the task to be solved is to enable an accurate and detailed quality assessment of seat categories. Therefore, the objective technical problem reads as follows:

Computer-implemented realization of a dynamic, quality-optimized seat selection through a web-based computer-implemented method for the provision of ratings for personal seats and / or seat areas,

where the space and / or space area is assigned an individualizing identification, whereby evaluations of quality features according to a defined evaluation standard of the space and / or space area are issued and stored in relation to space or space area and in relation to quality features, whereby the assessments can be processed by means of an algorithm and a result is obtained can be called up on a user-specific basis for a selected quality feature.

However, the Board denied an inventive step of claim 1:

3.5.3 The Board … is also of the opinion that no unexpected technical solution is proposed for either the technical or the non-technical subtask. In addition, there is no apparent technical contribution that would appear unexpected or surprising to the person skilled in the art (T258/03, T172/03 and T641/00).

3.5.4 The inventive step can only be based on the particular type of implementation of a non-technical subject (see T336 / 07, catchword 1 and 2). When implementing the solution to the above task, beyond a pure computer implementation, no solution is offered that has an additional technical effect or special technical advantages. Such effects could be achieved by adapting the hardware, the input / output devices or special database structures and their linking. Even in electronic payment systems that serve a purely commercial purpose, there is patentable material for such technical features that go beyond a pure computer implementation.

As a result, the appeal was dismissed.

More information

You can read the whole decision here: T 2379/16 () of 11.9.2020.

Stay in the loop

Never miss a beat by subscribing to the email newsletter. Please see our Privacy Policy.

Privacy policy *
* = Required field

Call routing matrix: technical

This decision concerns an European patent application for a wireless device to manage cross-network telecommunication services. While the device is technical per se, the decision depends on whether the distinguishing feature(s) of the application are novel and involve an inventive step over the prior art. Here are the practical takeaways from the decision T 1352/18 (Call routing matrix/AVAYA) of 23.3.2021 of Technical Board of Appeal 3.5.03:

Key takeaways

Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met. (cf. T 641/00, Headnote 2)

The invention

This European patent application centres on the provision and use of a user profile for call routing (“call routing matrix 1900”; see e.g. Fig. 19). In this user profile, based on a certain user activity mode (e.g. “At Home”; “At Office”, etc.) so-called communication management directives (e.g. call forwarding settings such as “Send to Voicemail”; “Ring Mobile”, etc.) are associated with the user’s distinct user addresses (e.g. telephone number, home/office email address) and the dedicated communication networks (e.g. PSTN, wireless networks, etc.). This user profile is supposed to be set up by the user and is most pertinently illustrated in Figure 19 of the present application:
Fig. 19 of EP 1 794 995

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 application based on lack of novelty over the prior art on record.

On the appeal stage, the board of appeal re-assessed the disclosure of D1 and found that D1 does not disclose the second last feature:

– determining which communication management directive applies to the initiated communication is further responsive to a determination as to which user address was used in initiating communication.

However, the board of appeal denied an inventive step based on the well-known problem-solution approach:

2.1.3 The board considers that the technical effect associated with this distinguishing feature is that it provides more flexible handling of incoming calls because, in addition to the activity mode for the user, also the “user address” used in initiating the communication is considered.

2.1.4 The objective technical problem can thus be defined as “how to adapt the call system of D1 to the case of multiple communication subscriptions (i.e. user addresses) per user”, in which using more than one subscription per user is taken as an administrative requirement …

2.1.5 …For the skilled person, in view of the system of D1 – with each subscription comprising a respective single personal number (PN) associated with a respective subscriber profile – it would have been straightforward to associate a single user with multiple subscriptions in the underlying database, each subscription comprising a respective single PN associated with a respective subscriber profile.

The choice of a communication management directive for the initiated communication would inevitably have relied on both the user address used in initiating the communication (i.e. relating to which subscriber profile is to be used) and the retrieved association (i.e. the corresponding entry in the “Subscriber Schedule” for the corresponding subscriber profile).

As a result, the main request was found to lack an inventive step. Since none of the auxiliary requests was found to be allowable either, the appeal was dismissed in the end.

More information

You can read the whole decision here: T 1352/18 (Call routing matrix/AVAYA) of 23.3.2021

Stay in the loop

Never miss a beat by subscribing to the email newsletter. Please see our Privacy Policy.

Privacy policy *
* = Required field

Transmitting geographical risk rating to insurance company server to determine insurance cost on the server: technical

This is an example case which involves a mixture of technical and non-technical features. Here are the practical takeaways from the decision T 2486/16 of 12.1.2021 of Technical Board of Appeal 3.4.03:

Key takeaways

A non-technical aspect of the distinguishing feature(s) can be considered as part of the framework of the technical problem to be solved, in accordance with T 641/00 (COMVIK, see points 1 and 2 of the Headnote).

The invention

This European patent application concerns a method and device for recording driving characteristics utilized to monitor and compile vehicle usage data and diagnosing device condition for determining an insurance premium.

Some vehicle insurance currently determines price based upon information gathered by in-vehicle sensors that indicate where the vehicle was driven, how fast the vehicle was driven, times of day and days of the week, etc.

There are some concerns that the amount of detailed information that is given to the insurance companies with these types of systems intrudes on the privacy of the users.

SUMMARY OF THE INVENTION

The aim of the invention is to improve the privacy of the user.

According to the invention, the privacy of the user is protected by performing some coding prior to sending the information from the user. Specific details of the user’s driving history are converted to generalized codes that relate to insurance rates.

 

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 application based on lack of novelty and lack of inventive step.

On the appeal stage, the appellant argued that D1 fails to disclose features b) and c) of claim 1 of the main request. According to the appellant, the problem was how to operate a remote usage recording system in a manner that secured the location information against third parties. A secondary problem was to reduce the technical requirements of transmission. Moreover, the transmission of only the risk rating to a server rather than the full location data required the prior comparing step to occur at the vehicle, which necessitated further computing resources. While processing of this nature might be commonplace for vehicles in 2020, this was not the case at the priority date of the application. Simply transmitting all of the data was the solution at the time.

Regarding feature b), the Board interpreted claim 1 broadly:

3.5… the more general point is that claim 1 does not define that the determination of the insurance cost is based only on the geographical risk rating; it is not excluded that other information (including data collected by other sensors on the vehicle, such as the time of day or the speed) may also be part of the determination.

Hence, the Board judges that feature b) is disclosed in D1.

Regarding feature c), the Board found that D1 discloses:

  • embodiments in which the driver score is transmitted to the central system, and
  • embodiments in which the driver score corresponds to or includes a geographical risk rating.

The Board judges that the embodiments of D1 can not fully anticipate feature c) of claim 1.

Subsequently, the Board used the Problem and Solution approach to assess feature c). Here are the Board’s main considerations:

5.3 In the Board’s view, feature c) comprises both technical and non-technical aspects, and while the Board acknowledges that improved user privacy is the overall aim of the invention, in order to arrive at a precise statement of the technical problem solved by feature c) it is necessary to disentangle the technical and non-technical aspects.

5.4 The present application addresses concerns about “the amount of detailed information that is given to insurance companies” (paragraph [0003]). An obvious and non-technical remedy to these concerns, i.e. that would have occurred to a business person without requiring an engineer or programmer, would be to ensure that the insurance company never had access to this “detailed information” in the first place…

The technical problem solved by feature c) would be how to implement this solution, i.e. how to arrive at a workable method whereby an insurance cost is determined based on geographical location (as in D1), but in which the vehicle location data is not transmitted to the insurance company. In this formulation the non-technical aspect of the distinguishing feature c) appears as part of the framework of the technical problem to be solved, in accordance with T 641/00 (COMVIK, see points 1 and 2 of the Headnote).

The technical solution to this problem, according to the invention, is to transmit to the insurance company server a geographical risk rating, so that the insurance cost may be determined on the server, without requiring transmission of the actual location data.

5.5 The skilled person facing the task of providing a method whereby an insurance cost may be determined based on geographical location, but without transmitting vehicle location data to the insurance company, would readily have found a solution starting from D1:

As mentioned above, D1 discloses a driver score which may constitute or include a geographic risk rating within the meaning of claim 1, and paragraph [0015] discloses that the determination of the driver score can be carried out on the vehicle by the vehicle monitor (point 4.3, above); in such a case it is implicit that the determined driver score would be transmitted to the central system/server for the determination of the insurance cost, with no requirement or incentive to include in the transmitted signal the raw location data, which, once the driver score has been determined, is redundant. The skilled person would thereby have been led in an obvious manner to the subject-matter of feature c).

Therefore, the main request was found to lack an inventive step. Also the other requests did not succeed, so that the appeal was dismissed in the end.

More information

You can read the whole decision here: T 2486/16 of 12.1.2021. 

Stay in the loop

Never miss a beat by subscribing to the email newsletter. Please see our Privacy Policy.

Privacy policy *
* = Required field

Determining a threshold of operational parameters of a nuclear reactor: technical

This case is already a few years old but relates to one of the hottest current topics: the patentability of computer simulations. The overall question was whether the purpose of the simulation and the nature of the processed data confer technical character to a method. 

Here are the practical takeaways from the decision T 0625/11 () of 19.1.2017 of Technical Board of Appeal 3.4.01:

Key takeaways

The determination, as a threshold value, of the value of the first operating parameter confers a technical character on the claim, this technical character exceeding the simple interaction between the numerical simulation algorithm and the computer system. The nature of the parameter is, in fact, intimately linked to the operation of a nuclear reactor, whether this parameter is actually used within a nuclear reactor or not.

The invention

This European patent application generally concerns the simulation of the operation of a nuclear reactor.

According to the description, it is desirable to operate nuclear reactors at reduced power when demand on the network is low, before reverting to nominal power, as necessary. But such use of a nuclear reactor, which would allow its capabilities to be better used, should not result in safety problems.

An objective of the invention was therefore to provide a method which allows at least one threshold value of an operational parameter of a nuclear reactor to be established, allowing the capabilities of the reactor to be better used, while maintaining safe operation of the reactor.

Fig. 1 of EP1556870A1
Fig. 1 of EP1556870A1

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. The main argument was that the only technical feature was the computer implementation of the method, whereas the various steps of the claimed process had no effect on a technical subject, being limited to the calculation of a value.

On the appeal stage, first of all the board made clear that all of the steps of claim 1 are undoubtedly carried out by the computer system mentioned in the claim. Accordingly, patent-eligibility was no issue.

The board then went on to contrast “two approaches” in the context of inventive step with each other:

According to the “first approach”, the computer-implementation was considered to be the only technical aspect of claim 1, but not the actual simulation performed by the method. The board noted that if this approach was adopted, it would have been obvious to implement the excluded method on a standard computer system (the citations are translated from the French original):

7.2.4 … Failure to take into account the nature of the data processed or the aim pursued by the claimed method, according to the hypothesis retained above under the first approach, would then lead to the finding that the object of claim 1 of the main request is not inventive within the meaning of Article 56 EPC.

Accordingly, the board found that there would be a lack of inventive step if the nature of the processed data and the purpose of the claimed method was disregarded as non-technical.

The “second approach” was of course pursued by the appellant and relied, among others, on T 1227/05 (OJ EPO 2007, 574) and T 471/05. Accordingly, the board noted:

7.3.2 … In the present circumstances, the recognition of a technical nature linked to the use of the threshold value resulting from the simulation of an effective operation of a nuclear reactor would lead to a significantly more specific redefinition of the objective technical problem solved by the invention. Contrary to what the approach based on the sole use of technical means implies, the aspects linked to the operation of the nuclear reactor would then have a role to play in defining the objective problem to be solved. Likewise, the recognition of a technical nature inherent in the data taken into account within the framework of the simulation, would also lead to a necessary reformulation of the problem to be solved.

In the present case, the definition of the technical problem adopted by the applicant appears realistic. The invention would aim at determining at least one limit value of an operating parameter of a nuclear reactor in order to allow better use of the latter’s capacities.

In the context of this approach, the board notes that none of the documents cited against the request offers the claimed solution.

Of course, the question was then which approach was the correct one. After a detailed comparison of existing case law, the board followed the approach taken in T 1227/05:

In agreement with the appellant, the Board considers, in the present case, that the question before it is, in principle, identical to the question which arose in Board 3.5.01 in T 1227/05. In the present case, the Board is also convinced that steps b), c) and d) of the claimed process serve the stated objective of determining an operating limit value for the nuclear reactor.

Accordingly, the board ultimately adopted the “second approach”:

8.4 At the end of the deliberation of the board, the latter came to the conclusion that the determination, as a threshold value, of the value of the first operating parameter conferred a technical character on the claim, this technical character exceeding the simple interaction between the numerical simulation algorithm and the computer system. The nature of the parameter thus identified is, in fact, intimately linked to the operation of a nuclear reactor, whether this parameter is actually used within a nuclear reactor or not. In doing so, the board recognizes the relevance of the analysis developed in case T 1227/05 which it takes up for itself. Likewise, in the opinion of the board, this finding leads to retain the analysis developed above (cf. point 7) under the second possible approach and therefore to conclude that the subject of claim 1 according to the main request is inventive within the meaning of Article 56 EPC 1973.

Therefore, 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 0625/11 () of 19.1.2017

Stay in the loop

Never miss a beat by subscribing to the email newsletter. Please see our Privacy Policy.

Privacy policy *
* = Required field

An objective approach to the assessment of inventive step for computer-implemented inventions (RICOH case)

This is an important decision when it comes to the patentability of software. 

On the merits, the European Patent Office revoked a software patent for order management with the decision T 0172/03 (Order management/RICOH) of 27.11.2003 of Technical Board of Appeal 3.5.01. Here are the practical takeaways from the decision:

Catchword

The RICOH case provides an objective approach to the assessment of inventive step for computer-implemented inventions. It teaches to identify first the claimed features which define the non-technical part of the invention, and then to identify the claimed features that are clearly technical.

The invention

This European patent application concerns an order management system and method for automatically placing an order for particular expendable supplies based on order information input from each department or section of a user of the system. Expendable supplies or parts are such as copy papers or toner cartridge used in an office.

The aim of the solution is to provide an order management system and method which can unitarily and automatically manage ordering processes based on order information supplied by each department or section.

Fig. 1 of EP 0 767 436

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 application for lack of inventive step.

According to the reasons given in its decision, the regime of patentable subject-matter was only entered with the design and programming of the computerized system for implementing the improved order placing mechanism. The examining division considered such an implementation obvious, taking into account that the relevant skilled person was a computer science expert, actually a team comprising a business expert and a programmer, who had the knowledge of the economic concept and structure of the improved order placing mechanism.

On appeal, the board gave a nice summary on relevant case law and practice of the EPO for assessing inventive step.

3. According to the case law and practice of the EPO, the patentability of an invention, for which inventive step is a requirement, must arise from features and aspects of the invention from which a technical solution to a technical problem can be inferred and which are thus of a technical character (see, for example, the PBS-decision (T 931/95) and the COMVIK decision (T 641/00 – Two identities/COMVIK, OJ EPO 2003, 352), points 2 and 3, respectively).

In the case of a mixed-type invention (including non- technical aspects), examination for patentability normally requires an analysis of the invention and the construction of the claims to determine the technical content of the claims as a prerequisite step (see, in respect of inventive step, the COMVIK and PBS decisions, points 7 and 8, respectively). The required analysis of claim features is possible only ex post facto, i.e. in knowledge of the patent application and the invention to which it relates.

The appellant objected inter alia that the examination approach in this decision was based on a fictitious kind of prior art and unlawful ex post facto considerations.

According to the board:

5. …the prerequisite step of determining the technical features and aspects of a mixed-type invention is not part of the prior art analysis. Certainly, an ex post facto knowledge of the patent application and the claimed invention cannot be avoided completely in judging inventive step; what should strictly be avoided are retrospective considerations and conclusions in evaluating the technical contribution the invention provides to the relevant prior art (see decision T 967/97 – Chipkarte/OVD KINEGRAM AG, not published in OJ EPO, point 3.3).

Furthermore, the board gave definition for the term “person skilled in the art”

6. …According to the COMVIK decision, point 8, the “skilled person will be an expert in a technical field”. The decision goes on to state: “If the technical problem is concerned with a computer implementation of a business, actuarial or accountancy system, the skilled person will be someone skilled in data processing, and not merely a businessman, actuary or accountant.”

7. Indeed, Article 18 EPC determines that an examining division in principle consists of three technically qualified examiners. The examining division is thus, due to its composition, neither professionally competent to evaluate the state of “non-technological art” nor to assess innovations in a non-technological field. It would be inconsistent with the terms and objects of the EPC to attribute an essentially different professional competence to the “person skilled in the art” within the meaning of Article 56 EPC, for example by construing this term to include business experts or practitioners in other non-technological fields. Even if there may be borderline areas, like system analysis and design which are based on rather abstract and intellectual activities but nevertheless provide important results for developing complex software systems (see decision T 49/99-Information modelling/INTERNATIONAL COMPUTERS, not published in OJ EPO, point 7), this should not divert from the principle that the skilled person within the meaning of Article 56 EPC is a technical expert, professional or practitioner.

In the present case, the board defined the relevant “person skilled in the art” as a software project team. It does not include any business expert, but it has knowledge of the business-related features and aspects of the order management method, in the kind of a requirements specification, as part of the formulation of the technical problem to be solved.

The board also gave definition for the term “state of the art”

8. …as explained in the COMVIK decision, point 2, the term “state of the art” in Article 54 EPC should, in compliance with the French and German text, be understood as “state of technology”, which in the context of the EPC does not include the state of the art in commerce and business methods.

9. The term “state of the art” should be interpreted in its legal context, and in the light of the object and purpose of the patentability requirements of the EPC.

In the present case, the board considered the closest prior art to be a distributed information system comprising multiple general purpose computers at different locations and connected by a communication network as known and in use in a vast number of companies for office automation well before the priority year 1995.

As a summary, the board considered that the claimed invention was distinguished from a normal distributed information system only in terms of functional features and data structures for implementing the essentially business-related features of the order management method. The claimed technical solution did not go beyond the concept of a mere automation of constraints imposed by the business-related aspects, such automation using conventional hardware and programming methods being considered obvious to the skilled person. Therefore, the European patent application was invoked for lack of inventive step.

You can read the whole decision here: T 0172/03 (Order management/RICOH) of 27.11.2003

Stay in the loop

Never miss a beat by subscribing to the email newsletter. Please see our Privacy Policy.

Privacy policy *
* = Required field

 

Authorisation of access terminal rather than user: technical

The European Patent Office refused to grant a software patent on a method and system of authorisation of an access terminal rather than a user. Here are the practical takeaways of the decision T 0737/14 (Authorisation system / SECOREN) of 9.7.2019 of Technical Board of Appeal 3.5.01:

Key takeaways

Catchwords: The proper application of the COMVIK approach requires a thorough analysis of the business constraints when formulating the problem to be solved before investigating what the skilled person would have done to solve it. The failure to reflect all aspects of the business method in the problem to be solved led the examining division to argue unconvincingly that the inconvenient distinguishing feature of authorising the access terminal was an alternative whose choice was governed by unspecified business constraints.

The invention

The invention concerns an authorisation system for authorising a transaction on an account.

The invention recognised that existing commercial outlets, which were equipped with terminals able to read card details, could be used for loading money onto a pre-paid card with little effort or expense.

In this new scenario, there was no need for the card owner to register themselves with the system handling the authorisation of the pre-paid cards. Instead, trust was established based on the access terminal being authorised to carry out such transactions.

As shown in Figure 7, there are three entities in this system: an access terminal 100, an account server 120, and an authorisation server 140. The access terminal sends a first transaction request 204 to the account server that forwards this, as the third transaction request 208, to the authorisation server. The access terminal also sends a second transaction request 206, including a terminal identifier, to the authorisation server. Based on the transaction data, the authorisation server determines whether the access terminal is authorised to enable the transaction, and sends the response 210 to the account server that carries out the transaction on the account.

Fig. 7 of EP2115676
Fig. 7 of EP2115676

Here is how the invention is defined in claim 1 of the sole request:

  • Claim 1

Is it patentable?

Although the invention concerns inter alia a business idea, claim 1 also includes technical means. Therefore, there was no discussion whether the claim 1 as a whole is patent-eligible.

During the proceedings, D1 was considered as the closest prior art. The key distinguishing feature from claim 1 over D1 was found to be:

  • The authorisation server in claim 1 determined, based on access terminal identification data, whether the access terminal (rather than the user) was authorised to enable the transaction.

The examining division argued that the identification of the access terminal rather than the user was a well known alternative available to the skilled person, and that the choice was “governed by business constraints”.

The assessment of the examining division was found not convincing by the Board:

2.6 The examining division did not say what the business constraints were. That is unfortunate, because the business constraints are key in this case. The Board does not see any technical reason, given the on-line purchasing scenario in D1, why the skilled person would have identified the access terminal…

The Board took a further analysis of the underlying transaction scenario in the invention:

4.1 The Board takes the view that the pre-paid scenario, including the relationship between the point-of-sale/agent, the credit card issuer/processor, and the third party, is a business idea. According to decision T 641/00 – Two identities/COMVIK, this type of subject-matter cannot contribute to inventive step. Instead, as mentioned above, it is considered to be part of the problem that the skilled person has to solve.

4.2 In the Board’s view this case is a good example of why the proper application of the COMVIK approach requires a thorough analysis of the business constraints when formulating the problem to be solved before investigating what the skilled person would have done to solve it. …

4.3 …, the skilled person should have been given the problem of implementing a business model on the conventional transaction processing system, as exemplified in D1, in which the third party carries the financial risk and needs to safeguard itself from fraud and recover the funds from the agent. The skilled person would have assigned the necessary technical means, namely an access terminal at the side of the agent, an account server at the side of the credit card issuer/processor, and an authorisation server that carries out the task of the third party. The functions performed by those entities in claim 1 follow directly from the business scenario. Since the third party needs to safeguard itself, rather than the agent, from fraud, the skilled person would realise that the third party has to authorise the agent. Performing the authorisation based on the terminal identifier of the access terminal would have been an obvious implementation.

In the end, the Board concluded that claim 1 lacks an inventive step over D1. The appeal was thus dismissed and the patent application was finally refused.

More information

You can read the whole decision here: T 0737/14 (Authorisation system / SECOREN) of 9.7.2019.

Stay in the loop

Never miss a beat by subscribing to the email newsletter. Please see our Privacy Policy.

Privacy policy *
* = Required field

Conducting internet search from an instant messenger: non-technical

The European Patent Office refused to grant a software patent on a method of conducting internet search from an instant messenging application. Here are the practical takeaways of the decision T 0543/18 (Internet search from an instant messaging application/OATH) of 9.5.2019 of Technical Board of Appeal 3.5.07:

Key takeaways

The desire to enable users to perform explicitly defined web search queries is not a technical aim but rather a non-technical requirement. Searching for documents using keywords has a non-technical character, and this is not changed by the mere use of a computer system.

The invention

This patent application relates to inline searching in an instant messaging (IM) environment. According to the description, known IM applications do not allow a user to link directly to the World Wide Web to perform searches, nor do they allow the user to easily share the search result. IM users must manually open a separate web browser window to visit the web site of an internet search engine. After typing search criteria into the internet search web site, an IM user manually flips through the search results to identify relevant web sites and then visits those web sites. To share the search result, the user must copy and paste the URL of the web site into an IM conversation and send the URL.

The patent application proposes performing a web search inline in an IM environment and displaying search results inline in the IM environment. A user can enter a search query in the IM application by typing a predefined character string as a search trigger to identify the text following this string as a search query. The search query itself is then displayed inline in the IM windows of the two users connected via IM. The search request is also sent to an internet search server, which processes the request and generates search results. At least one search result is then displayed inline in an IM window to both users.

Fig. 1 of EP1747516
Fig. 1 of EP1747516

Here is how the invention is defined in claim 1 of the sole request:

  • Claim 1

Is it technical?

During the proceedings, D3 was considered as the closest prior art. The Board took the view that D3 does not disclose steps (a)(i), (b) and (d) of claim 1:

  • (a) (i) said recognizing comprises identifying a predetermined character string in the instant message as a search trigger
  • (b) causing the search query to be displayed to the first user inline in an IM window on the first client computer and to the second user inline in a second IM window on a second client computer of the second user
  • (d) automatically causing at least one of the search results to be displayed inline in the IM window on the first client computer and inline in the second IM window on the second client computer

The Board found that these steps do not have a synergistic interaction and could therefore be treated separately in the obviousness assessment. For step (a)(i), the problem solved was formulated as how to modify the teaching of document D3 to inform the system explicitly when a search should be performed.

5.3.2 However, the desire to enable users to perform explicitly defined web search queries is not a technical aim but rather a non-technical requirement. Searching for documents using keywords has a non-technical character, and this is not changed by the mere use of a computer system.

Also the appellant’s arguments did not change this assessment:

5.3.7 The appellant further argued that D3 … would have dissuaded a skilled person from using a command-line type mechanism because computer/user interaction schemes had evolved away from command-line interfaces to windowed environments precisely to try to reduce requirements for user effort/action, and this represented a technical prejudice in the relevant art.

However, the desire to add an explicit search query is non-technical and forms part of the problem to be solved. As an explicit search command always involves some input from the user side and as explicit search commands were also well-known in windowed environments, the appellant’s arguments are not persuasive.

For steps (b) and (d), the appellant argued that they had the technical effect of improving user ergonomics. Step (d) of claim 1 improved the visibility of search results for both users by displaying search results in an inline manner, thereby increasing user convenience to enable users to view search results fatigue-free while also continuously keeping track of their conversation. The Board also considered the appellant’s argument that the invention provided an objective physiological reduction in eye and hand movement when providing input:

5.4.2 … That the inline manner of presentation enables users to view search results fatigue-free while also continuously keeping track of their conversation is not convincing as this depends on subjective user preferences (some users may prefer an inline presentation whereas others may not like it) and the information to be presented (e.g. reproducing a retrieved web page inline may not be appropriate as the web page may no longer be readable or occupy so much window space that the messaging context is no longer visible). Hence, the inline manner of presentation does not contribute to the technical character of the invention.

In the end, the Board considered that also steps (b) and (d) do not contribute to the solution of a technical problem. The appeal was thus dismissed and the patent application was finally refused.

More information

You can read the whole decision here: T 0543/18 (Internet search from an instant messaging application/OATH) of 9.5.2019.

Stay in the loop

Never miss a beat by subscribing to the email newsletter. Please see our Privacy Policy.

Privacy policy *
* = Required field

Managing booting of secure devices with untrusted software: technical

The European Patent Office refused to grant a software patent on a method of managing booting of secure devices with untrusted software. The decision was appealed successfully and the case was remitted to the Examining Division. Here are the practical takeaways of the decision T 1563/17 (Booting untrusted software) of 7.5.2019:

Key takeaways

Erasing user data outside of the security block before allowing the execution of an unsigned operating system contributes to increasing the security of the claimed device.

The invention

This European patent application considers the situation in which a “third party” or “contract manufacturer” manufactures a computing device on behalf of an OEM. In the eventually delivered product, only trusted operating systems should be executed; trust may be established with cryptography. During manufacture, however, it may be convenient to allow the execution of operating systems which are unsigned or only signed by an entity not trusted by the OEM.

To deal with this situation, the invention proposes to provide the device with two modes: “factory mode” and “product mode” (see figure 2).

Fig. 2 of EP2487618A2
Fig. 2 of EP2487618A2

In product mode, only “secure boots” are allowed. In factory mode, a limited number of “insecure boots” is allowed during which the access to a “security block” is disabled. The security block is disclosed as containing, inter alia, device-specific cryptographic keys or “user-specific data”.

Here is how the invention is defined in claim 1 of the sole request:

  • Claim 1

Is it technical?

When assessing inventive step, the Board found that having two “modes” of operation in which two security policies apply is non-technical:

7. Having two “modes” of operation (see feature (ii)) in which two security policies apply is the direct consequence of a non-technical requirement. Starting from D1, the invention would have to be viewed as the provision of a “product mode” as opposed to a (suitably modified) “factory mode” as disclosed in D1.

However, the Board found that to validate a cryptographic signature of the OEM before execution is technical.

8. The application starts from the situation in which a device manufacturer has to execute software provided by an OEM during manufacture and, for security reasons, to validate a cryptographic signature of the OEM before execution. …

8.2 A device manufacturer would naturally experience the inconvenience of having to obtain an OEM signature for any software to be executed and would want to have this requirement relieved at least during manufacture­­. The OEM would then address the objective technical problem of providing a more lenient security policy to the manufacturer without unnecessarily compromising security.

After a detailed comparison between all the features of claim 1 and D1, the Board found the following feature technical and inventive:

  • (v) “user data not stored in or protected by the security block” is erased along with the disabling of the access to the security block.

The reasons are:

8.6 D1 does not disclose an explicit step of erasing user data that happens not to be stored in the security block – or rather, the security environment of D1, for that matter (see feature (v)).

8.7 Erasing user data outside of the security block before allowing the execution of an unsigned operating system contributes to increasing the security of the claimed device in a way not suggested by D1 or any of documents D2 to D4.

Therefore, the subject-matter of claim 1 was found to involve an inventive step.

More information

You can read the whole decision here: T 1563/17 (Booting untrusted software) of 7.5.2019.