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Automatic selection of a marketing script : non-technical

This EPO Board of Appeal decision concerns a patent application for an automatic selection of a marketing script. In the appeal, the Board noted that considerations were all non-technical business concepts. Therefore, although computers were technical, the implementation of the non-technical requirements would have been obvious to the skilled person in the art of telecommunication and computer systems.

This decision is one of the good examples of how the COMVIK approach is applied and how the technical implementation of the non-technical requirements are assessed for inventive step. Here are the practical takeaways from the decision T 1141/17 (Automatic selection of a marketing script/FRASER) of 15.4.2021, of Technical Board of Appeal 3.5.01:

Key takeaways

Identifying a customer contacting a business, selecting a marketing script from a plurality of customer value segments based on the customer’s “modelling score”, and presenting the selected script to the marketer are all non-technical business concepts

Technical implementation of the non-technical requirements, including identifying the customer (caller) and the contacted business (callee), use of the computer to look up information in a database, calculate the modelling score, and select and display a relevant script, would have been obvious to the skilled person in the art of telecommunications and computer systems

Computers are technical, but it would have been obvious to use one for selecting a script in accordance with the requirement specification.

The invention

The European patent application relates a method and apparatus for providing marketing intelligence about prospective customers to sales representatives utilizing telecommunication equipment.

When a potential customer calls a number on a tele-advertisement, the call is often received by a sales representative that represents many businesses. The sales representative needs to find the marketing script associated with the product or service the customer is calling about. Furthermore, it is advantageous to use a script that is targeted to the prospective customer, for example, a high-value client may receive different offers than a low-value purchase.

The invention identifies the dialled number (DNIS) associated with the product or service in the advertisement and uses the Caller I.D (ANI) to identify the calling customer. This information is used to calculate a “modelling score” of the customers’ value, and the salesperson is presented with the script depending on the score and time of the call (depending on when the advertisement is on the local cable network of a region).

Fig. 1 of WO 2005/122041 A2

Here is how the invention was defined in claim 1 of the main request of EP App no. 05753764.9 :

  • Claim 1

Is it patentable?

In the first instance, the Examination Division considered that the claimed invention lacked an inventive step over a conventional system combining telephony and computer processing technologies as exemplified by document D1 (US6597685 B), as the distinguishing features were found to provide obvious automation of a set of administrative, i.e. non-technical, steps.

The Board tended to agree with the assessment and summarised the invention as a classic mixed-type invention, where the COMVIK approach had to be applied:

2.1 The invention in claim 1 comprises a mixture of technical and non-technical features. The Board agrees with the appellant that the claimed computer system and its components have technical character. However, the invention also involves non-technical aspects related to marketing.

2.2 The established approach for assessing such mixed-type inventions is the “Comvik approach” (see T 641/00 – Two identities/COMVIK, and The Case Law of the Boards of Appeal, 9th edition, 9.1.3 b)). Under the Comvik approach, only the technical features which contribute to the solution of a technical problem by providing a technical effect are taken into account for the purpose of assessing inventive step under Article 56 EPC. The non-technical features which make no technical contribution may legitimately form part of the technical problem to be solved as a set of requirements to be met.

The Board then went on to identify the non-technical business concepts and the distinguishing features over the conventional system:

2.3 Applying the Comvik approach to the present case, the Board considers that the following included in or underlying claim 1 is part of a non-technical business concept:

– A customer, having an identity contacting a business (also having an identity) about a product or service;

– A marketer dealing with the customer on behalf of the business;

– Selecting a marketing script from a plurality of marketing scripts divided into a plurality of customer value segments (high, medium, low or “risk” or a combination thereof) based on the customer’s “modelling score” and the relevant business, product or service;

– presenting the selected script to the marketer.

Being non-technical in nature, the above features cannot contribute to inventive step. Instead, they form a set of requirements which are part of the problem to be solved.

2.4 Starting from a conventional communication system combining a telephone system and a computer system, such as the one disclosed in D1, the invention in claim 1 distinguishes itself by the use of the ANI to locate customer information in a database, the calculation of a modeling score based upon the customer information and the DNIS, the selection of a stored script based on the modeling score contemporaneously with a time at which the customer communications device provides the ANI, and the display of the script to the marketer.

2.5 In line with the Comvik approach, the Board considers that the problem to be solved by the distinguishing features is how to automate the method of selecting a customised script defined under point 2.3 above.

Finally, the Board then noted that the implementation of the non-technical requirement was obvious to a skilled person:

2.6 In the Board’s view, the technical implementation of the non-technical requirements, including the use of ANI and DNIS to identify the customer (caller) and the contacted business (callee) respectively, and the use of the computer to contemporaneously look up information in a database, calculate the modelling score, and select and display a relevant script, would have been obvious to the skilled person in the art of telecommunications and computer systems. ANI and DNIS were well known and designed to provide the recipient of the telephone call with information about the caller and the dialled number. The skilled person would have provided suitable means for storing and retrieving data, including the use of the ANI as an identifier for storing and retrieving customer information in a database.

3. The appellant argued that, while known, the ANI and DNIS numbers had never been used for looking up customer information in a database and for calculating a modelling score for selecting a script. The use of the ANI and DNIS in this way enabled selection of the script contemporaneously, which really meant less than 7/10th of a second. The invention thus achieved a low response time, which was a technical effect that contributed to inventive step in a non-obvious manner.

4. In the Board’s assessment, however, the low response time is an effect of the automation, i.e. the use of a computer to select a script. Computers are technical, but the Board judges that it would have been obvious to use one for selecting a script in accordance with the requirement specification. The Board notes that neither the claim, nor the application as a whole, specifies any particular technical implementation details which could support a low response time beyond that achieved by merely using a computer.

Therefore, the Board decided that the subject-matter of claim 1 lacked an inventive step. Therefore, the appeal of the applicant was dismissed.

You can read the whole decision here: T 1141/17 (Automatic selection of a marketing script/FRASER) of 15.4.2021.

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Determining visibility of content on web browser by indirect measurement: Technical

This EPO Board of Appeal decision concerns a patent application for determining the visibility of content on a web browser. In the appeal, the Board considered that determination is performed by measuring raw information about running web browsers to estimate a technically meaningful parameter. Such indirect measurement is normally of a technical nature.

This decision is one of the examples of applying the G 1/19 decision, where the EPO Enlarged Board noted that regardless of their use, indirect measurement relates to physical reality and is technical in nature. Here are the practical takeaways from the decision T 1422/19 (Content item visibility/GOOGLE) of 19.5.2021, of Technical Board of Appeal 3.5.07:

Key takeaways

Estimating the size of the browser’s viewport from within a cross-domain iframe by indirect measurement is technical

Although the claim does not include technical use of the calculated/estimated content visibility, the method measures “raw” information about a running web browser and processes this information to produce an estimate of a technically meaningful parameter, namely the extent to which a content item displayed within a web page is visible to the user, and on the basis of technical considerations relating to what is possible with an unmodified browser that enforces standard security constraints. Such an indirect measurement is normally of a technical nature.

Finding a way to circumvent a technical problem may well form the basis for a patentable invention

The invention

The European patent application relates to determining the visibility of content, such as advertisements, presented in a web browser.

Conventional techniques to determine the visibility using code that runs from within a frame do not work due to browser security constraints. It prevents access to information such as the size of the browser’s viewport, the size of the content item, and the content’s item location relative to the browser’s viewport.

The present application proposes a method that allows code to determine the visibility of a content item from within the content item’s cross-domain iframe. This is achieved by calculating the overlap of the rectangle corresponding to the “webpage viewing area” and the rectangle corresponding to the content item.

Here is how the invention was defined in claim 1 of the main request of EP App no. 14768301.5:

  • Claim 1

Is it patentable?

In the first instance, the Examination Division considered that the invention aimed at ensuring the visibility of an advertisement on a web page thus concerns a non-technical, purely business-related problem. Therefore, the problem was defined as an alternative technical implementation of a non-technical problem. The examining division decided that the subject-matter of independent claims was obvious in view of document D1.

The Board disagreed with this assessment. According to the Board, the distinguishing feature solved a technical problem:

4.2 Document D1 does not disclose that the size of the viewport/web page viewing area is determined by reading the size of the browser window and subtracting from the size of the browser window the average size of one or more browser elements as determined by a statistical analysis based on historical measurements.

This distinguishing feature addresses the problem of estimating the size of the browser’s viewport from within a cross-domain iframe. Due to security constraints, the size of the viewport cannot be accessed directly from within a cross-domain iframe (see paragraph [0020] of the published application).

The examining division also noted that the technical use of determining content visibility is not claimed. Therefore, since the output (i.e., content visibility) is used for a non-technical purpose but for advertisement, the solution was obvious given the non-technical requirement. The Board applied the finding from G 1/19, which discussed conditions when indirect measurements still related to physical reality are considered of technical nature regardless of the use of the result.

4.3 In its decision, the examining division argued that, although the determination of the estimated size of the viewport was performed with technical means, it corresponded to a technical implementation of a non-technical requirement, which was the rule used to compute the estimated size. This rule was non-technical because it was based on a business requirement and, since the determined output size was an estimated value, it circumvented the technical problem of actually measuring the viewing area rather than addressing it.

4.4 It is true that the method of claim 1 does not include a technical use of the calculated/estimated content visibility. In fact, the claim specifies that the information about the visibility of the content item is reported to a content sponsor. However, the method does not merely calculate this information from numerical input data but measures “raw” information about a running web browser and processes this information to produce an estimate of a technically meaningful parameter, namely the extent to which a content item displayed within a web page is visible to the user, and on the basis of technical considerations relating to what is possible with an unmodified browser that enforces standard security constraints. Such an indirect measurement is normally of a technical nature (see decision G 1/19, not yet published in the OJ EPO, point 99).

The examining division had also argued that the solution using estimation was merely a circumvention of the problem. The Board disagreed with this assessment:

4.5 As for the examining division’s argument that the claim “circumvents” rather than addresses the technical problem of actually measuring the viewing area, the board notes that finding a way to circumvent a technical problem may well form the basis for a patentable invention.

The examining division’s argument appears to be based on decision T 258/03, OJ EPO 2004, 575, Reasons 5.7, where the deciding board argued that “[m]ethod steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed”.

However, no business or other non-technical scheme is modified in the present case.

Although document D5 (Window outerWidth and outerHeight properties) was not discussed in the examining division’s decision, the Board, in their preliminary opinion, considered that it would be obvious for a skilled person starting from D5. However, this finding was reconsidered based on the arguments by the applicant:

4.6 In its communication, the board suggested that in view of document D5, which disclosed that the width and the height of the browser window including browser elements such as toolbars and scroll bars could be obtained by means of the “window.outerWidth” and “window.outerHeight” properties, it would have been obvious to estimate the size of the browser’s viewport in terms of width and height by determining the width and height of the browser window by means of these properties and correcting for browser elements. Since the sizes of browsers elements varied from browser to browser, they would have to be estimated, for example on the basis of statistical data.

4.7 However, on reconsideration the board is not convinced that, faced with the problem of obtaining the approximate size of the browser’s viewport, the skilled person would, without any hint, decide to obtain instead the size of the browser window and then correct for browser elements.

Since such a hint is not present in document D5 or in any of the other prior-art documents on file, the board considers that the subject-matter of claim 1 is not rendered obvious by the cited prior art.

The Board decides that the subject-matter of the independent claims involves an inventive step over the cited prior art. Therefore, the decision under appeal is set aside and the patent granted based on the main (only) request.

You can read the whole decision here: T 1422/19 (Content item visibility/GOOGLE) of 19.5.2021

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Not patentable to patent-eligible: Redesigning product based on user feedback – not technical, but Controlling the manufacture of a product – technical

This decision concerns a patent application for a method of redesigning a product based on customer feedback. In the appeal, the Board considered that claim of the Main Request was so abstract that it encompasses entirely non-technical subject-matter excluded under Article 52(2) and (3) EPC. However, with the Auxiliary Request, claim 1 was amended to include technical limitations and was then considered patent-eligible.

This decision is an excellent example of how the first (patent-eligibility) of the two-hurdle approach (i.e., COMVIK approach) is applied at the EPO. Here are the practical takeaways from the decision T 1790/17 (Redesigning product or process parameters/PROCTER & GAMBLE) of 18.3.2021, of Technical Board of Appeal 3.5.01:

Key takeaways

To not be excluded from patentability under Article 52(2) and (3) EPC (i.e., to be patent-eligible), claim should have at least a single technical feature. The so-called “any hardware” approach introduces a low hurdle that can be easily overcome by introducing any hardware limitation to the claim.

Redesigning a product based on user feedback is not a patentable invention and relates to a business method. A business person would have the idea of keeping track of products to collect consumer feedback. 

But controlling the manufacture of a product with improved process data is a patentable invention as it includes technical features. A claim, including an explicit manufacturing step, technical means of manufacturing and limited to process data, is technical.

The invention

The European patent application relates to a method for redesigning product or process parameters of a manufactured article based on consumer feedback.

As an example, the application indicates that the manufactured article may be a diaper, and customer feedback maybe the article’s performance in use (see paragraphs [0005] to [0007] of the published application).

Here is how the invention was defined in claim 1 of  EP 2 843 600 A1  :

  • Claim 1 (main request)

The two-hurdle approach:

The European Patent Office uses the established two-hurdle approach (also called the COMVIK approach) for assessing the patentability of an invention. As a quick reminder, to be patentable at the EPO, the claimed subject-matter should overcome two hurdles:

  1. Patent-eligibility hurdle: claim should have at least a single technical feature
  2. Inventive step hurdle: only distinguishing technical features are considered for assessing non-obviousness

The first hurdle (Patent-eligibility), also called “any hardware” approach, is a low hurdle that can be easily overcome by introducing any hardware limitation. This makes the subject-matter patent-eligible and no longer excluded from patentability under Article 52(2) and (3) EPC.

Is it patent-eligible?

In the present invention, the European Search report merely contained a so-called no-search declaration. The examining division maintained that claim 1 defined an administrative workflow without any technical means. Therefore, this subject matter was excluded from patentability under Article 52(2) and (3) EPC. The Board also agreed:

3. The Board agrees with the examining division’s conclusion that claim 1 is so abstract that it encompasses entirely non-technical subject-matter excluded under Article 52(2) and (3) EPC.

4. The claim essentially defines a method for collecting consumer feedback on the use of a product. This feedback is used to redesign the product such that it is better adapted to meet consumer needs.

For example, when buying shoes the consumer might report that they don’t fit. This feedback could be related to data collected during manufacture of the shoes such as a label on the shoebox indicating their size. The manufacturer might then conclude that a wrong label has been attached to the shoebox and issue an instruction to change the manufacturing – in this case the labelling – process accordingly.

The applicant argued that the process should be interpreted as a manufacturing process, and the data are technical data obtained during manufacturing or during product testing. However, the Board then considered that none of the steps of the method related to technical matter or involved technical data:

5. The Board finds that none of steps i) to vi) relate to technical matter and do not necessarily involve technical data.

5.1 Firstly, a business person would have the idea of keeping track of products such that consumer feedback can be collected for a specific product. Keeping track of products requires some sort of identifier. The “unique identifier” in step i), which according to the description can for example be a serial number or a bar code, is a self-evident implementation of this requirement.

5.2 Secondly, the product and/or process data in step ii) does not exclude non-technical product data such as the above mentioned size label.

The appellant argued that the skilled person understood that this data was recorded and used in a manufacturing process and, thus, technical (see paragraphs [0008] and [0009]). The Board is not convinced as no examples of any such data are given. Product data collected during the manufacture of a product can be interpreted broadly and – as mentioned above – include non-technical data.

5.3 Similarly, the Board is not convinced that the consumer feedback relating to “in use performance” of a product in step iii) necessarily represents technical data.

The Board also noted that there was no link between the determination from the received feedback and its use in manufacturing:

5.4 The appellant argued that step v) in conjunction with step iv) further explained the technical purpose of the feedback information being that of identifying manufacturing parameters used for producing faulty products and changing them.

The Board notes that there is no link between step v) and iv). It is, thus, not possible to conclude that the correlated data is actually used for determining different manufacturing parameters. Even if it were, the Board remains of the view that a purely non-technical interpretation as outlined above, for example determining a different size label, still exists.

The determined different product and/or process data can, therefore, not be considered as data useful or used for controlling a technical device and, therefore, has no technical purpose or effect.

For that reason the Board does not agree with the appellant that step v) is technical. The determined parameters encompass non-technical data and, thus, cannot imply a technical effect in the sense of points 88 and 94 of G 1/19 as argued by the appellant.

5.5 The Board judges that step vi) is not clear enough to contribute to technical character either.

Applying the new parameters to the first manufactured articles to “transform” them into second articles does not seem to be possible. Most likely, what is meant is to apply these parameters to the manufacturing process. This, however, neither implies an actual manufacturing step nor involves any technical means. Also, as the parameters themselves might not be technical their application to the manufacturing process does not necessarily imply any technical effect either.

6. Accordingly, claim 1 is not an invention under Article 52(2) EPC.

How to be patent-eligible?

During the Oral Proceedings before the Board, the applicant filed a set of amended claims as an Auxiliary Request. Amended claim 1 of the Auxiliary Request is as follows (emphasis added to identify the additional features).

  • Claim 1 (Auxiliary request) - annotated

In brief, the amended claim included the following limitations: a hardware limitation of a controller and converting apparatus, type of manufactured article to an absorbent article, and a manufacturing step by the converting apparatus.

These amendments were adequate to overcome the first hurdle (patent eligibility):

8. Claim 1 of this request has been changed to a method for redesigning process parameters and manufacturing articles according to the redesigned process parameters. The articles are limited to absorbent articles and the manufacturing data to process data.

Furthermore, the claim specifies that a controller performs the correlation step and applies different process parameters to a converting apparatus, these parameters being determined based on the correlation step.

Finally, a new step vii) of manufacturing, by the converting apparatus, articles according to the determined different process parameters has been added.

9. The Board judges that the amendments are clear and derivable from paragraph [0015] of the description and do not add any new subject-matter.

10. The Board is satisfied that the subject matter of claim 1 is technical. It includes an explicit manufacturing step, technical means of a manufacturing process and is limited to process data which in the Board’s view can only refer to technical data.

Does this mean the application was granted? No, not yet, this was just the first hurdle.

Since the examining division had only decided on the technicality of the invention but not on the further patentability requirements (e.g., inventive step), the Board decided to remit the case to the examining division for further prosecution.

You can read the whole decision here: T 1790/17 (Redesigning product or process parameters/PROCTER & GAMBLE) of 18.3.2021

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Disambiguation of text with an upper and lower case: Technical

This decision concerns a patent application with an improved text case feature. In the appeal, the Board considered that the software to remove the ambiguity of text with an upper and lower case was technical and inventive. Here are the practical takeaways from the decision T 0200/19 (Disambiguation of text with upper and lower case/BlackBerry) of 30.4.2021, of Technical Board of Appeal 3.5.05:

Key takeaways

To enhance the efficiency of disambiguation of a user input provided via a reduced keyboard of a handheld device is technical.

Plausible advantage that the user’s wish to write the word with upper case letters is immediately recognised through the typing of a single upper case letter in the input sequence…  the user can rely on the claimed disambiguation method to type only one of the upper case letters within the input sequence, intentionally omitting the other upper case letters and avoiding the need to press different keys

The invention

The European patent application relates to a handheld electronic device includes a reduced QWERTY keyboard having software to avoid text disambiguation. Disambiguation is a process of identifying which meaning of a word is used in context.

A reduced keyboard may have keys sharing multiple alphabets. In such a case, there may be instances where the input text is not correctly identified, especially with capital letters. For instance, if the user intends to type the word “BlackBerry” (the company) instead of “blackberry” (the fruit), in the reduced keyboard of the invention, the user can type the sequence of keys “BN”, “L”, “AS”, CV”, “JK” and “BN”, wherein only one of the “BN” entries is entered as upper case. Based on the sequence of keys and the uppercase typed, the options may be either “blackb” or “Blackb” or “blackB”.

The invention in the present patent application determines, based on the input, that the user intended to type “BlackBerry” instead of “blackberry”, as it is a relatively more preferred variant based on the uppercase prefix that was entered. This avoids the need to press different keys more times in order to obtain upper case letters in a reduced keyboard, for the intended word.

Fig. 18 of EP 1 710 666 A1

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

The Examining Division considered that the claims lacked inventive step over cited document D1 (US 6 286 064), which also relates to the avoid disambiguation on a reduced keyboard. The Board summarised the cited document as follows:

2.1 D1 was considered the closest prior art in the impugned decision. D1 discloses a method for disambiguating an input sequence on a reduced keyboard device. A list of candidate words is presented to a user as a result of the disambiguation of an input sequence of keys. The candidate words are ranked according to their frequency of use in the vocabulary to help the user select the desired input. D1 further discloses in column 16, lines 46 to 51, that words with one or more capital letters may be stored in the vocabulary database and associated with keystroke sequences which omit keystrokes indicating capitals, eliminating the need for the user to enter the capital letters. This means that a sequence of input letters in lower case only may lead to a candidate word having upper and lower case letters.

Thereafter, the distinguishing features were identified by the Board as:

2.2 The subject-matter of claim 1 differs in substance from the disclosure of D1 by the following features:

– for an input sequence having a case makeup, at least two candidate words having the same sequence of letters but different makeup cases are retrieved from the vocabulary and presented to the user in the disambiguation list

– the word ranked first in the disambiguation list is a word having an upper case linguistic character corresponding to an upper case linguistic character in the input sequence and having an upper case linguistic character corresponding to a lower case linguistic character in the input sequence

In the preliminary opinion, the Board agreed with the Examination Division and opined was that the subject-matter indeed lacked inventive step. In particular, starting from D1, a solution for multiple case makeup would result in a straightforward choice of ranking candidate words in a sequence.

However, during the Oral Proceeding, the applicant successfully argued that the problem was incorrectly formulated, and the skilled person will have no motivation to the present solution of the invention:

2.3 The objective technical problem was formulated in the decision as how to enhance a disambiguation process where multiple case makeups exist. However, since D1 does not disclose any disambiguation between words having the same linguistic characters but different case makeups, the board agrees with the appellant that the objective technical problem should not contain the expression “where multiple case makeups exists” and be formulated as how to enhance the efficiency of disambiguation of a user input provided via a reduced keyboard of a handheld device.

D1, in particular with reference to column 16, lines 27 to 51, quoted in the impugned decision, only teaches automatic capitalisation correction of an input sequence provided in lower case and determined to correspond to a word that should always contain at least one upper case letter. D1 is not concerned with disambiguation of words having the same letters but different case makeups. Thus, the board agrees with the appellant that D1 would not have provided any suggestion or motivation for the skilled person facing the objective technical problem to modify the solution disclosed in D1 in such a way as to arrive at the claimed solution.

Although document D1 also disclosed that the system learned and stored different versions, the Board noted that this does not prompt the skilled person to the specific class of words:

2.4 Moreover, even if the skilled person would have considered that the system of D1 might learn and store versions of words that could present different case makeups in its vocabulary, like “blackberry” and “BIackBerry” or “asics” and “ASICS”, the board agrees with the appellant that the skilled person would not have been prompted, either by D1 or their common general knowledge, to modify the disambiguation process of D1 to arrive at the disambiguation method for the specific class of words presenting different case makeups defined in claim 1.

Starting with D1, the Board noted that the skilled person is presented with numerous modifications to present words with the same sequence but different case makeups. The intended word may not be ranked first on the list, thus will not leading to the same result as the present invention:

In this respect, D1 discloses that words resulting from the disambiguation process are presented to the user in order of decreasing frequency of use. The skilled person would have considered numerous modifications that could be made to D1 to present words having the same letter sequence but different case makeups in the disambiguation list. The impugned decision mentions an approach consisting in ranking first the candidate which matches the case input of the user as closely as possible, namely at the level of the case of each character in the input sequence. However, in this case, if the user types an input sequence for an intended word comprising several upper case letters, such as BlackBerry or ASICS, omitting to type all the required upper cases for the input sequence except one, the intended word would not be ranked first in the disambiguation list since the case makeup of the word without upper case letters, such as blackberry and asics in the aforementioned examples, would most resemble the case makeup of the input sequence. Therefore, the approach suggested in the decision does not lead to the same result as claim 1.

Finally, the Board was convinced that the advantage of the user’s wish to write the specific word is plausibly achieved by the claimed invention, to the extent that the user can rely on intentionally omitting the upper case. This resulted in the advantage of the reduced need to press different keys:

The appellant plausibly argued that, for the specific class of words having different possible case makeups, one with some upper case letters and one with only lower case letters, such as BlackBerry/blackberry, ASICS/asics and some company names and acronyms, the method according to claim 1 provides the advantage that the user’s wish to write the word with upper case letters is immediately recognised through the typing of of a single upper case letter in the input sequence. Therefore, the user can rely on the claimed disambiguation method to type only one of the upper case letters within the input sequence, intentionally omitting the other upper case letters and avoiding the need to press different keys more times, as is usually the case on reduced keyboards to obtain upper case letters, to obtain the intended word with upper case letters ranked first in the disambiguation list.

Therefore, the subject-matter was considered inventive, and the case remitted to the first instance with an order to grant the patent based on the claims of the main request.

You can read the whole decision here: T 0200/19 (Disambiguation of text with upper and lower case/BlackBerry) of 30.4.2021

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Software implementation of high security financial transaction with efficient network load: Technical

This decision concerns a mobile payment method using QR codes. In the appeal, handled by BARDEHLE PAGENBERG, the Board considered that the software implementation of an efficient and high-security transaction method was technical and inventive. This is one of the first decisions citing G 1/19, and the Board has noted that features may contribute to the technical effect of the invention, though some of them may be considered non-technical features. Here are the practical takeaways from the decision T 1746/16 of March 4, 2021, of Technical Board of Appeal 3.4.03:

Key takeaways

Features contribute to realising a transaction method that effectively unloads the network while maintaining a high security standard and high safety level for the transaction are technical.

Features may contribute to the technical effect of the invention, though some of them may be considered as non-technical features

The invention

The European patent application concerns a payment method via mobile phone using QR code. It aims to provide an inexpensive method using mobile phones while avoiding transmitting sensitive data to the merchant and unloading the network.

The merchant’s mobile phone generates a QR code having all data relevant for the payment transaction. Once the customer can scan the QR using their mobile phone, the payment data is then transmitted from the customer’s mobile phone to the server via encrypted SMS, including the authorisation PIN.

This way, the customer’s personal information does not need to be given to the merchant during the transaction, and the transaction is done using only a single SMS message sent via the mobile phone network. Since the same software is used on both mobile devices, the customer can also play the role of the merchant by using the same software application.

Fig. 3 of EP 2 549 421 A1

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

Both the Examining Division and the Board considered document D1 (US 2008/222048 A1) as the closest prior art, which discloses a payment method with the mobile phone as a payment device and a point-of-sale (POS) as a receiving device, with an aim to avoid the installation of specific software and sensitive codes on the mobile device.

The transaction method of D1 requires at least five different communications via the internet, including both the devices sending the payment information to the server, which generates a bar code, decodes and verifies it and finally authorises the payment.

The first instance Examining Division considered the distinguishing features were merely an aggregation or juxtaposition of features, and the claim was obvious as the features were a straightforward implementation of the non-technical requirements.

In the detailed preliminary opinion, the Board was of the opinion that the subject-matter of the claims lacks an inventive step. However, during the appeal Oral Proceedings, the Board agreed with the appellant and identified fifteen different distinguishing features. Their effects were summarised generally into a) replacing the POS with a mobile phone and b) using the same device to carry out both the function of buying and selling according to a precise sequence of claimed steps.

The Board decided that providing an inexpensive system by avoiding the POS and using QR code instead of bar code was obvious for a skilled person.

However, the Board agreed that the other features provided a combined effect of using the same device to carry out both the function of buying and selling, and it was not obvious starting from document D1:

2.7.4 However, using one and the same type of device (mobile phone) and corresponding software for carrying out both the function of buying and the function of selling depending on the need and according to a precise sequence of steps is not suggested in any of the documents cited above. Starting from D1 and complying with the concept that the server controls the transaction and matches both the merchant’s and customer’s action – while maintaining a high security level -, one and the same software on the mobile devices would be counter-productive. If the skilled person replaced the POS device of document D1 by a mobile phone, they would consider a specific corresponding software tailored to the need of the seller in order to guarantee the required safety level. D1 explicitly teaches to reduce any software to be installed (paragraphs [0008], [0009] and [0018]). In view of the teaching of D1 the skilled person would therefore reduce these modules to a minimum. This teaches away from a more complex universal solution.

Furthermore, to reduce the number of communications, it also required that a different communication route (“Route B”) be taken in document D1, which goes against the teaching and objective of document D1 for the following reason:

2.7.8 The skilled person would always seek for a balance between security requirements and unloading the network. In view of the teaching of D1, where security has first priority, the skilled person would not abandon a separate PIN request. Given the teachings of D1 and D2 (see abstracts) the skilled person would not abandon the matching of merchant’s and customer’s data by the server, either. Therefore, a communication between the merchant’s device and the server is always required in addition to the communication from the customer to the server. None of the documents cited above provides any teaching that the transaction is at the same time (1) reduced to one single communication, i. e. the authorisation SMS of the paying party, (2) performed without any message between merchant and server for matching the merchant’s and client’s request, and (3) performed without a separate authorisation PIN request.

2.7.9 The approach proposed by the invention has the advantage that only one request has to be transmitted via the mobile phone network without connection to the Internet or a similar network. This makes the method independent from any wired structure and insensitive to network interruptions during the transaction or between two transaction transmissions. These interruptions would lead to an insecure situation. The proposed solution is both save and unloads the network by providing only one single communication via the mobile phone network. It considerably reduces data traffic. During shopping events like “Black Friday” or the days prior to Christmas, where there can be thousands or millions of payments being made at the same time, the invention offers the benefit that for each of these transactions only one single data transmission to the server is needed, instead of five or more.

Therefore, the Board considered that the skilled person starting from document D1 would have led to a solution different from the subject-matter:

2.7.11 If – starting from document D1 – the skilled person considered to replace the POS device by a mobile phone, there would still be a communication between the merchant’s device and the server (via the mobile phone network) for matching the data and in total at least one communication in addition to the communication between the customer and the server, thus leading to different subject-matter than defined in the claims.

Importantly, the Board noted that the distinguishing features, including details of software implementation of transaction method, provided technical contribution and were not disclosed in any of the cited documents:

2.7.13 The prior art cited above is completely silent about Features (H) to (M), i. e. the details of the software implementation of the transaction method, handling the data, decoding and encryption. These features contribute to realising a transaction method which effectively unloads the network while maintaining a high security standard and high safety level for the transaction. Therefore, these features contribute to the technical effect of the invention, though some of them may be considered as non-technical features (see G 1/19, point 85 and T 0697/17, point 5.2.5).

Therefore, the subject-matter was considered inventive, and the case remitted to the first instance with an order to grant the patent based on the claims of the main request.

You can read the whole decision here: T 1746/16 of March 4, 2021.

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Querying a dedicated server to determine whether a mobile device is NFC enabled: Technical

This decision concerns a method and system of sending a prepaid gift card to other users. Although the Board indicated that the invention had a business aspect, the specific implementation of the solution was technical and inventive. Here are the practical takeaways from the decision T2040/14 (Providing prepaid gift cards to devices with or without NFC capability/ MasterCard International Incorporated) of February 12, 2021, of Technical Board of Appeal 3.5.01:

Key takeaways

A delivered card is requested by one user for the benefit of another user, is a business aspect which is according to the COMVIK approach given to the skilled person as a non-technical requirement specification within the framework of the above objective technical problem.

Implementing a dual provisioning process on a user’s mobile phone is a technical problem.

Querying a dedicated server to determine whether a mobile device is NFC enabled and providing a prepaid gift card to devices with or without NFC capabilities is technical.

The invention

The European patent application concerns a method to enable users to purchase and send prepaid gift cards to other users. Depending on the recipient’s mobile phone, the gift card is either sent as a digital gift card (automatic wireless payments over an NFC connection) or as a physical card.

This determination is made by an over-the-air server (OTA) server, which queries the telecommunications operations server if the recipient’s mobile phone number is NFC enabled or otherwise. If the mobile phone is NFC enabled, the OTA provisioning server establishes a secure connection with the recipients’ phone and provides a soft card that can be used by an NFC connection. If the recipient’s mobile phone is not NFC enabled, the OTA server generates and sends the recipient an SMS including a card authorisation code which can be used to obtain a physical gift card from a physical store.

Fig. 1 of WO2010019670A2

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

Both the Examining Division and the Board considered document D2 (US-A-2008/0058014) as the closest prior art, which discloses a system for providing soft cards to mobile devices enabling wireless payments over an NFC connection.

The first instance Examining division considered that the technical aspects of using SMS technology were commonplace. The remaining differences, in particular the use of a separate sender device, were considered to be obvious implementations of business-driven non-technical aspects.

However, the Board did not agree with the assessment of the Examining Division and the assessment of :

3.4 In appeal, the Board considered that using separate sender and recipient devices was not just an incidental feature, but an essential feature of the invention which should be considered when determining the starting point for inventive step. Thus the Board preferred to start from the embodiment in D2 relating to WAP push provisioning of prepaid cards which deploys separate sender and recipient devices.

The Board then summarised the distinguishing features as i/ii) a merchant server, iii) a telecommunications server determining whether the recipient’s device is NFC enabled, iv). the provisioning over the communication link is in response to determining that the device is NFC enabled and v/vii/viii). sending a card authorisation via SMS if the device is not NFC enabled.

With these as the distinguishing features, the Board then separated the business aspects from the technical features as follows:

3.5 The Board judges that the background to this invention, namely that a delivered card is requested by one user for the benefit of another user, is a business aspect which is according to the COMVIK approach given to the skilled person as a non-technical requirement specification within the framework of the above objective technical problem.

It is probably also true that recognising that providing prepaid soft card personalisation data to mobile phones that can use it and providing authorisation codes to ones that cannot is also a non-technical aspect. This is in effect the situation in T 1503/12; granny would not send her grandson a Ybox game for his Xbox console – see points 4.6 and 4.7.

Thus, the technical problem is to implement the dual provisioning process on a user’s mobile phone.

Starting from document D2, the Board agreed with the applicant that the solution was not obvious:

3.7 It might well be obvious to check whether a mobile phone is NFC enabled in order to decide whether the soft card personalisation data or the card authorisation code should be provided.

However, the Board agrees with the appellant that the obvious solution would be to obtain this information from the provisioning and payment application which, if not already present, would need to be installed on the mobile phone. In fact, using this application for provisioning card data is the key aspect of D2’s teaching ([11] and [23]).

3.8 The Board also agrees with the appellant that while D2 discloses a provisioning configuration server, storing configuration information for multiple card issuers ([26]), and implicitly that the push proxy gateway is used (see D12, points 5 and 6), there is no hint to adapt any of these servers to provide upon request information on whether a mobile phone is NFC enabled.

D2 discloses that the provisioning and payment application communicates with the provisioning configuration server to verify whether the mobile phone is authorised for obtaining soft card data ([42]). The Board agrees, however, with the appellant’s reading of D2 and accepts that this step does not involve obtaining from the server information on the phone’s hardware capabilities; the only information obtained is an indication that the phone was authorised for receiving soft card data.

Also, the general teaching in D12 that the push proxy gateway may be queried for capabilities of WAP clients (sections 6.6. and 7.2.6), is not a strong enough hint to obtain from the push gateway specific information concerning the phone’s NFC capability.

Finally, the Board decided that using SMS to provide the code was teaching away from document D2, and thus also not obvious:

3.9 As for providing the card authorisation code in an SMS, the Board judges that the skilled person would rather provide the code using the provisioning and payment application installed on the mobile phone in the NFC capability determination stage.

The Board considers that providing sensitive card data in an SMS instead of downloading it securely using the provisioning and payment application runs against the key teaching of D2 and the skilled person would not do it without a hint in prior art. However, D2 does not give such a hint and actually teaches away from the claimed solution. Paragraph [23] states that the provisioning and payment application’s payment functionality is actually not essential for the disclosed subject-matter which rather relates to its provisioning functionality. The skilled person would derive from this that the authorisation code should be downloaded using the provisioning and payment application, even if it cannot be used for wireless payments.

Therefore, the subject-matter was considered inventive and the case remitted to the first instance with an order to grant the patent based on the claims of the main request.

More information

You can read the whole decision here: T2040/14 (Providing prepaid gift cards to devices with or without NFC capability/ MasterCard International Incorporated).

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Consolidated notification feed across multiple devices: non-technical

This decision concerns notification of feed across multiple client devices where the Board reiterated that the technical effect should be a result of a “further technical consideration”. Here are the practical takeaways from the decision T 2366/18 (Notification feed across multiple client devices/DROPBOX) of 16.3.2021 of Technical Board of Appeal 3.5.07:

Key takeaways

The introduction of a field on an algorithmic level is not based on “further technical considerations”.

The decision to send only the most recent notification records is a non-technical consideration that is related not to the internal operation of the distributed computer system but to the client’s perceived information need.

Design and use of notification records based on the mere algorithmic consideration, rather than hardware-related aspects of the functioning of the computer, lacks “further technical considerations”.

The invention

The European patent application underlying the present decision relates to online content management services that allow users to access and manage content across multiple devices. Users can store contents (e.g., documents, files) in a master repository maintained by the service provider, mirrored to or synchronised with local copies on various user devices.

The invention aims at keeping all of a user’s clients (such as mobile device applications, desktop applications and web browsers) synchronised. This is done by providing a flexible feed of event notifications reporting the various events provided in real-time. The feed is a structured notification (including a topic identifier, sequencing information, and content), enabling replacing obsolete information with current information.

Fig. 1 of EP 2 943 895 A1

Here is how the invention was defined in claim 1:

  • Claim 1 (main request)

Is it patentable?

In the first instance, the Examining Division alleged that the claimed subject-matter lacks inventive step over document D1 as it considered some of the claimed features to be non-technical aspects.

At the appeal, the Board agreed with the applicant that document D1 (method of managing updates to website) failed to disclose the feature including providing a consolidated set of notification records. Therefore, the board was not convinced that document D1 is a suitable starting point for assessing inventive step.

However, the Board assessed inventive step over the prior art which were acknowledged in the background section of the application, and the distinguishing features among others, related to the information in the notification report (i.e., notification record,  sequence field including a temporal order indicator, and content field).

The applicant argued that the features contributed to the technical character as it provides an event notifications feed with increased efficiency. For instance, sending the consolidated set of records instead of all records saved bandwidth, and was computationally more efficient than comparing the content fields.

The Board disagreed with the applicant and did not acknowledge the effect of increased efficiency as it was not a result of a further technical consideration:

The board does not consider the alleged bandwidth savings to be a result of “further technical considerations” (see opinion G 3/08, OJ EPO 2011, 10, Reasons 13.5 and 13.5.1). The decision to send only the most recent notification records is a non-technical consideration that is related not to the internal operation of the distributed computer system but to the client’s perceived information need. The board thus does not consider this effect to be technical (see decision T 1924/17 of 29 July 2019, Reasons 21).

The applicant also argued that the introduction of a topic field permitted efficient operation as it avoided having to compare the full content. The Board again disagreed here:

As to the alleged improved efficiency due to comparing topic fields instead of content fields, the board sees no “further technical considerations” here either. According to decision T 1924/17, Reasons 21.2, it has to be considered whether an improvement in the processing speed is based on “further technical considerations”, i.e. technical considerations going beyond the abstract formulation of algorithms or beyond “merely” finding a computer algorithm to carry out some procedure. Such “further technical considerations” may relate to the specific internal functioning of the computer as a technical system. However, the introduction of the topic field is on an algorithmic level and not based on “further technical considerations” within the above meaning. Consequently, the board is not convinced that the alleged effect of improved efficiency is technical.

In an Auxiliary Request, the applicant tried to amend the claim to include the feature of time-stamps and argued that its use in the topic field corresponded to a higher hierarchical level so a machine could more easily/efficiently determine whether records related to the same topic. However, the Board did not agree with this argument:

7.1 In the board’s view, the use of time stamps in computing was notorious at the priority date (see D1, paragraphs [0056] and [0060], for example). In this case, the use of time stamps and further fields for consolidating (folding) records serves an overall non-technical purpose (providing information to a user without superseded notifications) and does not involve any “further technical considerations” relating to the internal operation of the computer system.

The various target identifiers concern the desired non-technical communication aspects for alerts/notifications, such as which user is alerted about which type of events and to which object an event pertains.

As to the appellant’s argument that the machine could more easily/efficiently determine whether records related to the same topic, the board considers that this relates to mere algorithmic considerations rather than to “further technical considerations” as the considerations underlying the relevant aspects relate to the design and use of notification records rather than to hardware-related aspects of the functioning of the computer.

In the end, the subject-matter of the claim was considered obvious as the distinguishing feature did not contribute to a technical effect and not included in the assessment of inventive step.

More information

You can read the whole decision here: T 2366/18 (Notification feed across multiple client devices/DROPBOX) of 16.3.2021

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