This decision concerns a mobile phone application allowing event configuration and processing. Specifically, a user may specify that an image is to be displayed at a certain time and the system monitoring the time and displaying the image at the specified time. However, most of the claimed features were considered non-technical and since the technical distinguishing features were considered obvious, the EPO refused grant. Here are the practical takeaways from the decision T 1682/20 (Image reminder system/LG) of March 10, 2023 of the Technical Board of Appeal 3.5.06.
Key takeaways
Non-technical user requirements cannot contribute to inventive step.
The invention
The Board in charge summarized the subject-matter of the application underlying the present decision as follows:
1. The application relates to a mobile terminal configured to classify, manage, and display images. In particular, the mobile is configured to associate images to events, and to display the images upon detection of the associated event (paragraph 3). The event may be location, time, or application related (paragraph 5). The user can configure the event by voice input (paragraphs 61, 164, 189). For instance, the user can take an image of a specific parking spot, and this image can be displayed upon the user returning to the parking area (paragraph 49); or the user may desire that an image is displayed on a certain date (e.g. a birthday; see paragraphs 49, 167); or when an application is opened (e.g. a banking app; see paragraphs 190 – 191). The annotated images may be automatically deleted after a certain amount of time (paragraph 146).
Fig. 1 of EP 3 139 304 A1
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Claim 1 of the Main Request
Is it patentable?
The first instance examining division identified several distinguishing features over the closest prior art document D1:
3. The Examining Division started its analysis from D1 and acknowledged a set of differences (see the decision, point 13.4) related to the event configuration and processing, essentially about the user specifying that an image is to be displayed at a certain time and the system monitoring the time and displaying the image at the specified time.
Since the distinguishing features were considered non-technical, the examining division used some of them in the formulation of the objective technical problem:
3.1 It argued in essence (decision 13.5 to 13.11), with reference to the description at paragraphs 49-52, 199 and 275, that the effect of these differences over D1, namely the users’ “satisfaction” or their “being reminded of past events” occurred only in the head of the user and hence was not a technical effect. Moreover, scheduling as such was an administrative consideration. The relevant steps could thus be used as a constraint in the formulation of the objective technical problem according to the problem-solution approach.
3.2 The objective technical problem given to the skilled person was therefore how to implement, on the mobile terminal of D1, the requirements specification that encompasses the distinguishing procedural steps. The technical implementation of these steps was a matter of routine computer programming and did not involve an inventive step.
Since the implementation of the aforementioned steps was considered a routine task, the examining division rejected the application due to lack of inventive step.
In the grounds of appeal, the Appellant argued that the examining division did not properly define the technical problem and suggested the following problem formulation:
4.1 … The objective technical problem, based on the differences identified, should therefore be formulated as follows: “how to provide an efficient means for configuring inputs to a form of reminder system on a mobile terminal”.
According to the Appellant, D1 does not suggest a solution to this problem.
In its assessment, the Board in charge considered both D1 and a standard mobile device with photo capabilities and voice input as suitable starting points to arrive at the claimed subject-matter (cf. decision, item 5). Over each of the two possible starting points, the invention would provide the following addition:
6. The claimed subject matter can be summarized, as also stated by the Appellant, as providing a form of reminder system on a mobile device. This system displays images upon activation of the reminder; the user configures the reminder by using voice input.
However, the Board considered this as pure non-technical user requirements:
6.2 Reminders, in general, are meant to bring a piece of information to the users’ attention when they want it. The type of information that users want to be reminded of and the (type of) conditions triggering the reminder are therefore user requirements.
The only technical contribution was identified as follows:
6.6 The only difference features that do not follow immediately from the user requirements are those related to the (sub-)problem identified by the appellant, i.e. how to enable user input for configuring the reminder.
Then, the Board found that considering user input at a mobile device was a standard routine for the skilled person:
6.7 In the Board’s view, the skilled person would consider user input in any conventional modality available on a mobile device. This includes voice, as exemplified by D1 in paragraph 32.
Hence, the Board arrived at the conclusion that the claimed subject-matter would be rendered-obvious when starting from D1. The same would apply if one would consider a standard mobile phone as starting point (cf. decision, item 7).
Finally, the Board expressed that similar considerations would apply to the auxiliary requests.
Consequently, the Board in charge dismissed the appeal due to lack of inventive step.
More information
You can read the full decision here: T 1682/20 (Image reminder system/LG) of March 10, 2023 of March 10, 2023.