This decision concerns an application relating to tracking of packaged products, such as milk. However, despite the technical contribution of one of the distinguishing features, the EPO refused grant since the claimed subject-matter would be rendered obvious by the cited prior art. Here are the practical takeaways from the decision T 2771/18 (Content tracking/TETRA LAVAL) of January 11, 2023 of the Technical Board of Appeal 3.5.01.
The Board in charge summarized the invention underlying the present decision as follows:
1.1 The invention concerns the tracking of packaged products, such as milk (published application, first paragraph).
1.2 The claimed method comprises steps of obtaining various pieces of information about a product, such as information about the raw material and the packaging, storing this information in an electronic database together with corresponding time stamps, “cross referring” the information, and labelling a packaged product with the cross-referenced information. Finally, based on the labelling information, stored information about the product is retrieved and used to recall the packaged product (page 5, line 3 to page 6, line 34).
This information about the origin and processing of a product enables, for example, packages containing milk from a contaminated farm to be identified and discarded (e.g. page 9, lines 3 to 10).
Fig. 3 of WO 2011/010958 A1
System Claim 1 of Main Request
A method for content tracking of a packaged content in a package comprising the steps of
obtaining information of the raw material;
obtaining transport information;
obtaining process information;
obtaining packaging information;
storing said information of raw material, transport information, process information and packaging information in an electronic database;
wherein each piece of information of said information is stored together with a time stamp stating when respective piece of information is generated;
cross referring, by a computer, said stored information based on said time stamp for each of said information pieces and that said pieces of information are generated in a pre-determined sequence;
generating, by a computer, an output comprising said cross referenced information; and
labelling the package with said output;
such that said content can be tracked along a timeline and accurately generating an output comprising said cross referenced information for each package
retrieving the stored information based on the labelling information from the package, and
perform a surgical recall of the packages based on the retrieved stored information.
Is it patentable?
During the appeal stage, the Appellant argued that the first instance examining division would have incorrectly the COMVIK approach (T 641/00). This is because the examining division would have indicated which features of claim 1 of the main request were non-technical before identifying the closest prior art. This process would be known as the “contribution approach” which, however, has been abandoned:
2.2 The appellant argued that the examining division did not correctly apply the COMVIK approach (T 641/00). This approach required identifying the closest prior art and the distinguishing features over this prior art before assessing the technical and inventive step contribution of these features. In contrast, the examining division indicated which features of claim 1 were non-technical before identifying the closest prior art. In the appellant’s opinion, the approach taken by the examining division was similar to the abandoned “contribution approach” (e.g. the Case Law Book, 10th edition, I.D.9.2.1).
However, the Board in charge did not agree to the Appellant’s arguments:
2.3 The Board cannot see how the examining division failed to follow the COMVIK approach. At point 3.1 of the decision, the division identified a computer and an electronic database as the only technical features of claim 1. The rest of the claim was said to define a business/administrative method. This led the examining division to choose a general-purpose networked data processing system as the closest prior art (point 3.2). The Board considers that it is legitimate to select the closest prior art based on the technical features of the claim (e.g. T 0172/03 – Order management/RICOH, points 11 to 18). This approach is also outlined in the Guidelines for Examination, section G-VII, 5.4.
After choosing the closest prior art, the examining division identified the distinguishing features as the steps of the business scheme listed previously under point 3.1 (see point 3.3). The division then formulated the objective technical problem as how to implement this business scheme in the known computer system (point 3.4). Finally, the division argued that the solution in claim 1 was obvious and concluded that the claim lacked an inventive step (point 3.5).
As a result, the Board arrived at the conclusion that the examining division correctly applied the COMVIK approach since the examining division determined that the distinguishing features did not contribute to the technical character of the claimed subject-matter. This would be something different than denying the technical character of an invention as a whole, as done in the past according to the “contribution approach”:
2.4 Hence, the examining division followed a generally established approach for assessing the inventive step of inventions comprising mixtures of technical and non-technical features. The division acknowledged that claim 1 comprised technical means and, therefore, had technical character as a whole. The division, however, concluded that the claim lacked an inventive step since the distinguishing features did not contribute to this technical character. This is different from the “contribution approach” mentioned by the appellant, where the lack of technical contribution over the prior art leads to the conclusion that the entirety of the claimed subject-matter is excluded from patentability under Article 52(3) EPC.
Since the Appellant was of the opinion that prior art document D2 would form a more promising starting point to arrive at the claimed subject-matter, the Board in charge, for the sake of completeness, exercised the COMVIK approach based on D2 as closest prior art document and identified the following distinguishing features:
2.8 … Hence, D2 stores and retrieves information in the same way as the claimed invention … D2, however, does not disclose labelling a package with cross-referenced information and using this information for the retrieval ….
The Board considered this feature technical and thus formulated the objective technical problem to be solved as follows:
2.9 The Board agrees with the appellant that labelling a package is technical, as it relates to a physical activity. A label comprising cross-referenced information enables retrieving information about the packaged content. Hence, the problem solved can be formulated as how to obtain information about packaged content from the database of D2.
However, the combination with prior art document D1 would render obvious the claimed subject-matter:
2.10 It is standard practice to label a package with information about its content (see e.g. D1, ). In view of this, and when faced with the problem above, the skilled person would have chosen to label the package with a piece of information that can be used to retrieve further information about the packaged content. As the content’s identifier of D2 (i.e. the WorkID, ) fulfils this requirement ( to ), it would have been an obvious choice. Since the further information (e.g. information about processing and transport events) is cross-referenced to the WorkID, the skilled person would have arrived at the subject-matter of claim 1 in an obvious way.
To counter the assessment of the Board, the Appellant argued that the invention would provide further technical effects:
2.12 According to the appellant, the cross-referencing ensured that “the entire process meets the necessary standards with respect to the sequence of the process and is performed within the required time period”. The process thus ensured that a package “meets the requirements of safety prior to labelling”.
2.13 The appellant also argued that the invention helped avoid counterfeit products since a fake label could be easily identified when querying the database with the information on the label.
2.14 Finally, the appellant argued that the method allowed for retrospective and accurate recall of contaminated packages.
Concerning the argument according to item 2.12, the Board doubted that this effect is technical. Moreover, this feature would be known from D2.
With respect to the argument of item 2.13, the Board argued that this consideration would extend beyond the scope of the claim and the application as a whole.
Finally, with respect to item 2.14, the Board found that the feature in question would only relate to a non-technical activity.
As a result, the Board dismissed the appeal since the claimed subject-matter would lack inventive step.
You can read the full decision here: T 2771/18 (Content tracking/TETRA LAVAL) of January 11, 2023.