This decision concerns a European patent application relating to development and deployment of analytical models. The Examining Division (ED) refused the application for lack of inventive step. The applicant successfully appealed against the decision of the ED. Here are the practical takeaways from the decision of T 1249/22 dated January 13, 2025, of Technical Board of Appeal (TBA) 3.5.06.
Key takeaways
Underlining words in the text of a claim to identify what is considered “technical” is normally not sufficient to clearly identify the technical and non-technical features of the claimed subject-matter.
The invention
The application relates to the development – including the training – of an analytical model (e.g. a machine learning model) and the deployment of the trained analytical model on a “compute engine” so as to process live incoming data. The application indicates as aim to allow domain experts, as well as data scientists and data engineers, to carry out these tasks quickly and easily. To meet this aim, the application discloses in particular a GUI to manage and deploy different analytical models across different run time environments that creates a layer of abstraction between the user managing the models and the target run time environments.
Fig. 8 of EP3182283
Here is how the invention was defined by independent claim 5:
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Claim 5 (main request)
The claims of the auxiliary request are not relevant for the present decision.
Is it patentable?
The ED found that the independent claims of the main request lacked an inventive step in view of common general knowledge evidenced by D5 (Grid computing: Making the global infrastructure a reality, Wiley, 2003, ISBN: 978-0-470-85319-1).
The TBA disagreed with the ED. Firstly, the TBA clarified that the approach adopted by the ED for accessing the inventive step was acceptable:
10. The board notes that the examining division did not select a particular piece of prior art as starting point for the assessment of inventive step (as suggested in the Guidelines, G-VII, 5.4, fourth paragraph, point (ii)).
The board does not find fault in this aspect of the examining division’s argumentation.
In the case of an invention that amounts to a technical implementation of a non-technical method (provided the “non-technical method” does not contribute to the technical character of the invention), the board considers it to be a valid approach to
– identify, on the one hand, the non-technical method underlying the invention, and, on the other hand, the features of its technical implementation,
– define as “technical problem” to provide a technical implementation of that non-technical method, provided to the (technically) skilled person as a “non-technical requirement specification” which is part of the technical problem,
– assess whether the skilled person would have solved this technical problem by providing the claimed technical implementation (if so, the claim is not inventive).
Such an approach has been applied in several board of appeal decisions, for instance in T 1027/06 Rewards programs/MARITZ.
11. In this approach, the choice of the IT infrastructure on which the non-technical method is to be implemented is considered to be part of the technical solution and the assessment of inventive step includes assessing whether it would have been obvious to the skilled person to select this IT infrastructure to implement the non-technical method. This is in contrast to starting from that IT infrastructure as “closest prior art” and formulating the (objective) technical problem as to provide an implementation of the non-technical method on that IT infrastructure.
In cases where the IT infrastructure used in the invention is a computer system that is commonly used to implement methods of the same kind as the non-technical method (e.g. a generic computer for most applications or a generic client-server architecture for e-business applications), there will be no difference in result between both approaches. There could however be a difference where the choice of a specific IT infrastructure might not have been a straightforward one for the given non-technical method (as noted in T 1325/17 Location-based dating/LOCATOR, reasons 10.2).
However, the TBA found that the ED wrongly assessed the non-technical features:
12.2 First, this is mainly due to the fact that the examining division identifies “technical features” of the claimed subject-matter merely by underlining parts of the text of claim 5 and implies that the remainder of the claim are its “non-technical features” (decision, points 14.2 and 14.3).
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In simple cases, it may be possible to somehow “reconstruct” from the two bags of words what the respective sets of (meaningful) technical and non-technical features and thus the non-technical requirements are, but this is not the case here.
Underlining words in the text of a claim to identify what is considered “technical” is normally not sufficient to clearly identify the technical and non-technical features of the claimed subject-matter.
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12.6 Hence, the board cannot derive from the decision, what precisely the examining division considered to be the non-technical features of the method of claim 5 and thus the “non-technical requirements” referred to in point 14.7 of the decision.
The board is therefore not in a position to review whether the technical problem including the “non-technical requirements” has been correctly defined.
Moreover, the TBA recognized that the ED did not adopt the COMVIK approach:
13.1 The examining division specifies the technical features “A” to “D” stripped of all the alleged non-technical aspects (e.g. decision, point 14.6: “storing (file) data in a database, using storage location specifiers”, without indicating that the storage location specifiers are inter alia for the trained analytical model) and appears then to only assess their obviousness in isolation of the rest of the claim (decision, point 14.6: “When considering only the technical features of claim 5, […]”).
This is however not sufficient to show that the skilled person, confronted with the technical problem including the non-technical requirements, would have arrived at the claimed technical implementation of the non-technical method.
In this exercise, it is normally not possible to perform a meaningful obviousness analysis by completely disregarding the non-technical aspects of the claim, as they are normally the raison d’être for the claimed combination of technical features relating to their implementation. This is taken account of by including these non-technical aspects in the technical problem as non-technical requirements (in accordance with T 641/00 Two identities/COMVIK, headnote II). This, in turn, ensures that an inventive step will not be found because the non-technical aspects are non-obvious, as required by the principle expressed in T 641/00, headnote I, that only features contributing to the technical character of a claimed invention may support the presence of an inventive step.
In T 688/05 Ticket auctioning system/TICKETMASTER, headnote and reasons 4.5, similar considerations were expressed by saying that features making no technical contribution “may well form the only logical link between technical features resulting from their implementation” and that “they must therefore be taken into consideration for the examination as to inventive step while at the same time not being permitted to contribute to it.” This is, for instance, what is done in T 1027/06 (cited above), reasons 10.
13.2 In some cases, it is possible to treat groups of technical features separately from each other, but this requires a proper definition of the respective partial technical problems solved by them and an explanation of why this approach is justified in the case at hand.
It may also be possible to argue that a skilled person confronted with the general technical problem of providing a technical implementation of a given non-technical method, after having selected a particular IT infrastructure in a first step towards a solution, would necessarily have been confronted with several separate sub-problems arising when having to implement the non-technical method on that IT infrastructure (see e.g. T 1158/02 Vehicle web access/ICO SERVICES, reasons 3.9, for similar considerations).
But none of this has been argued by the examining division.
- Outcome
The TBA considered the decision of the ED not to be sufficiently “reasoned” within the meaning of Rule 111(2) EPC, which amounts to a substantial procedural violation with the meaning of Rule 103(1)(a) EPC and a fundamental deficiency within that of Article 11 RPBA.
The case is remitted to the ED for further prosecution.
More information
You can read the whole decision here: decision of T 1249/22 dated January 13, 2025, of Technical Board of Appeal 3.5.06.