This decision concerns a European patent application relating to a system and a method for indicating the presence of a substance in an article. Here are the practical takeaways from the decision T 3104/19 of April 11, 2024, of Technical Board of Appeal 3.4.03.
Key takeaways
Obvious automation of an administrative method does not solve a technical problem by technical means.
The invention
The invention relates to a system and a method for indicating the presence of a substance in an article. The system of the invention calculates the total amount of a selected substance in an article using information related to the compositions of the components and materials of the article. The aim is to identify if the selected substance is present in the article in a quantity (amount) that may exceed legally set thresholds, such as a substance which may be considered dangerous for the public according to certain regulations if it is present in the article in a certain quantity.
Figure 2a of EP2754108
Here is how the invention was defined by claim 1 of the main request:
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Claim 1 (main request)
Is it patentable?
The Board concluded that no technical problem is solved by the claimed system because claim 1 concerns an obvious automation of an administrative method.
Below are the detailed reasons:
3.1 Starting point for the skilled person’s considerations is the conventional administrative procedure whereby information about the presence of certain substance(s) in the components of an article has to be requested and obtained from the corresponding component manufacturers/suppliers …
3.2 Instead of that procedure, the claimed system retrieves the relevant information from various record units, (e.g. databases), where information about the material and substance compositions of the component(s) of the article is stored.
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3.2.3 Once the relevant information is retrieved, the system calculates the total amount of the substance in question. …
3.2.4 In the board’s view, the claimed system can be seen as a general purpose computer system with network capabilities, which retrieves data, executes a mathematical calculation based on these data and shows the result. In other words, the claimed system is considered to be general purpose computer (system) with network capabilities, which is able to perform the basic operations of storage, retrieval and processing of data, as well as receiving input from and providing output to a user. It is common ground that such a computer was notoriously known to the skilled person at the priority date of the application.
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3.3.2 There is no measurement (e.g. weighing) or any analysis (chemical, spectral, etc.) which takes place in order to determine the substance(s) contained in the component of the article. The indicated total amount of the selected substance corresponds rather to the expected, theoretical amount, since it is based on information related to the theoretical compositions of the components and the materials included in the article and not on any actual measurements.
3.3.3 Hence, even if indicating the total amount of a substance or determining the material composition of an article were considered technical problems, they are not solved using technical means by the claimed system.
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3.4.2 … In any case, the indicated total amount of the selected substance corresponds merely to an expected, theoretical rather than a detected or measured amount.
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3.5.2 … Instead of providing declarations about the amount of a substance in a component/material directly to the user, the suppliers/manufacturers of the various components provide the relevant information to record units, from where it can be retrieved (by the claimed system) any time the amount of a substance has to be calculated.
In the board’s view therefore, if there are any gains in efficiency, they are the result of modifying the administrative procedure of obtaining the total amount of a candidate substance in an article and not by solving a technical problem by technical means. According to established case law and practice, this amounts to a circumvention of a technical problem rather than to a solution of the technical problem through technical means, assuming that improving efficiency or reducing costs were regarded as technical problems.
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3.7 Hence, no technical problem is solved by the claimed system. No technical effect is apparent beyond those expected when an administrative procedure is implemented using a computer system.
Finally, the Board concluded that claim 1 of the main request lacks an inventive step. The appellant filed an auxiliary request but it was rejected due to late filing. Hence, the European patent application was finally rejected.
More information
You can read the whole decision here: decision T 3104/19 of April 11, 2024, of Technical Board of Appeal 3.4.03.