In this decision, the board of appeal once more uses the concept of the notional business person to draw the line between technical and non-technical features. Here are the practical takeaways from the decision T 0232/14 (Method and apparatus for identifying, authenticating, tracking and tracing manufactured items) of 6.10.2020 of Technical Board of Appeal 3.5.01:
This European patent application concerns the identification of specially taxed or branded manufactured items (e.g. cigarette cartons) packaged into containers. Identification allows products to be authenticated as genuine, tracked and traced, which helps to detect contraband and counterfeit products. Conventional identification systems stored an individual record of the identifier for each item in the container together with its associated container identifier. According to the application, this requires a large amount of data storage.
The invention essentially replaces the individual records with ones representing any contiguous ranges of identifiers for items packed in a container. Since items are generally packed as they are produced, there are fewer ranges than items and thus fewer records in the database.
Here is how the invention was defined in claim 1:
Claim 1 (main request)A method for identifying manufactured items in containers, each container suitable for containing two or more units, the method comprising the steps of:
at a production line, uniquely identifying each unit by marking each unit with a unique unit identifier;
at the production line, allocating two or more units to be contained in each container;
at the production line, uniquely identifying each container by marking each container with a unique container identifier;
for each container, determining one or more ranges of unit identifiers of the two or more units allocated to the container; and
storing, in a database, a container identifier for each container, each container identifier being coupled, in the database, to the one or more ranges of unit identifiers of the two or more units allocated to the container.
Is it patentable?
The first-instance examining division had refused the patent application based on lack of inventive step.
On appeal, there was common ground that claim 1 differed from the closest prior art by the last two features of claim 1:
- “for each container, determining one or more ranges of unit identifiers of the two or more units allocated to the container”
- “storing, in a database, a container identifier for each container, each container identifier being coupled, in the database, to the one or more ranges of unit identifiers of the two or more units allocated to the container”
One of the central questions was whether the determination of ranges of unit identifiers is technical or not. The examining division had taken the view that this feature was part of the requirement specification of an administrative scheme for the identification of manufactured items in containers.
The appellant, on the other hand, argued that ranges of unit identifiers did not have a meaning for the business person because they did not exist in the business area. They would be used in combination with production details and only for saving storage space, which was a technical contribution. This further enabled an authentication process to be implemented for products which were produced in very high numbers using standard data processing equipment. Hence, the requirement specification could only be formulated along the lines of “we need an identification and authentication system like we have for products that are shipped in containers, but which can be implemented practically and economically for very high volume units, such as cigarette packs”.
However, the board disagreed:
The Board however agrees with the examining division that this feature belongs to the business specification. The Board judges that using ranges of unit identifiers to label a number of (consecutive) unit identifiers of manufactured items is, at the level of generality at which it is claimed, on the business side of the line between technical and non-technical subject-matter (see e.g. T 144/11 – Security rating System / SATO MICHIHIRO, points 2.1, and 3.6 to 3.9).
The ranges of unit identifiers do have a meaning for the business person. They correspond to batches of units produced on a production line. This is apparent from Table 2 of the application, where a first batch is produced at 10:11 and a second batch at 10:12. In Example 1 on page 14 of the application, ranges of counter values correspond to cartons which were produced in the same time period. In Example 3 on page 15, the ranges correspond to cartons produced in batches of different production lines. In Example 2 on page 15, the ranges correspond to as many individual cartons as are packed together into one shipping case. The ranges of unit identifiers in all examples are not different from the general understanding of what a batch is in production, see, for example, D1, paragraph . Therefore the determination of ranges of unit identifiers is rather linked to the number of possible ways of organising items of a group of items based on how they are produced, that is, the number of batches, than to the way in which data can be stored.
The Board agrees with the examining division that the use of an (electronic) database for the storage of data, that is, the ranges of unit identifiers, was a straight-forward consequence of the requirement specification when implementing it on a data processing system, such as the one cited in the prior art. An (electronic) database was known in the prior art, for example, from WO 2006/038114, page 7, lines 5 to 11, and D1, paragraphs  to , where a checking center 30 receives and centralises product data, and has access to database 31, page 15, lines 13 to 15, and D1, paragraph . The person skilled in the art when implementing the business requirements would straight-forwardly store in the database a container identifier for each container, each being coupled, in the database, to the one or more ranges of unit identifiers allocated to the container. The saving in storage space is a mere “bonus effect”.
Therefore, the board concluded that claim 1 of the main request lacks an inventive step.
The board also noted that the case was no different even if the “determining of ranges of unit identifiers” achieved a technical effect, such as reducing data storage and data bandwidth requirements:
It is a matter of routine design for the skilled person, a software programmer or a database expert, based on common general knowledge to store the first and the last element of a list of items, instead of the whole list. If a list comprised non-consecutive numbers with numbers missing, then the skilled person would recognise without requiring inventive skills that several ranges can be defined to exclude the missing numbers. In an example of a list of items ranging from 1 to 50 with missing numbers 11, 12, 33, 34 and 35, the skilled person would store three ranges from 1 to 10, 13 to 32 and 36 to 50.
As a result, the board dismissed the appeal.
You can read the whole decision here: T 0232/14 (Method and apparatus for identifying, authenticating, tracking and tracing manufactured items) of 6.10.2020
Patrick is a European patent attorney at BARDEHLE PAGENBERG. He specializes in software patents in Europe both from a prosecution and litigation point of view.