The European Patent Office considered retrieving documents from a database using a normalized symbol non-technical. Here are the practical takeaways from the decision T 0309/10 (Archival and retrieval/MULTEX) of June 19, 2013 of Technical Board of Appeal 3.5.01:
Key takeaways
Using computers for what they are good at – e.g. storing and processing large amounts of data quickly – is an obvious measure that cannot contribute to inventive step.
The invention
The application underlying the present decision relates to archival and retrieval of documents. As explained in the application (cf. WO 00/79430 A1, “Background Information”), companies issue various securities, but there are different ways of referring to them in different parts of the world. For example, “T” might refer to AT&T in the US, but to Telos in Canada. Vendors of financial information sometimes use a two-part name for securities or companies, for example T.US, IBM@GB, IB.EG. These are not used in a consistent way: IBM@GB and IB.EG might both be used to refer to the same company, T.US might refer to an AT&T security, T@US might refer to a security issued by a different company. All that creates problems with archival and retrieval. It is difficult to locate all documents, and only those documents, that relate to a particular company.
To solve this problem, the application underlying the present decision suggests a method and system for the reference, archival and retrieval of symbolically linked information despite idiosyncratic symbol usage (cf. WO 00/79430 A1, “Summary of the Invention”).
Fig. 1 of WO 00/79430 A1.
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Claim 1 (main request)
Is it patentable?
The present application was considered as not patentable by the first instance examining division. In more detail, the examining division considered most of the claimed steps as non-technical an thus ignored them for the assessment of inventive step. Against this decision the appellant argued as follows:
The invention made the retrieval of relevant documents easier and more accurate. It saved time and resources. A solution to a similar problem was found to involve an inventive step in T 0654/10, Searchable message storage system/J2 GLOBAL COMMUNICATIONS (not published in the OJ EPO).
The invention could not be viewed as the automation of a mental act. A human, for example a librarian, would not, or could not, maintain the information required in his head. Nor could the invention be seen as the automation of a known method, because the method was not known.
Implementation using a computer system would allow the repository to grow larger than without.
According to the Board in charge, the method as claimed comprises some technical features (for example “a storage device”, “a network interface”, and “a processor) as well as some specific method steps that vary from request to request. However, it includes a core method common to all requests:
5. Claim 1 according to each request defines a document repository system. The system comprises a number of technical features, for example “a storage device”, “a network interface”, and “a processor. The bulk of the claim is the method that the processor is adapted to carry out. This method is slightly different from request to request. However, there is a core method, common to them all, and it is useful to set that out at the start.
6. The first part of the method sets up a table of master symbols: a symbol is normalised, the result being a master symbol; a parent identifier is assigned to it, and the association is stored. The same parent identifier can be assigned to more then one master symbol.
7. The second part of the method creates a database of documents, and a table that links documents with parent identifiers: a document identifier is generated; the document identifier is stored with the associated parent identifier; the document is stored together with its parent identifier.
8. The final part of the method retrieves documents from the database: a symbol is normalised; the table of master symbols is consulted; the corresponding parent identifier is retrieved; the database is searched; and a document with the parent identifier is retrieved.
With respect to the core method, the Board in charge argued that this part of the overall method as claimed could be performed without using a computer:
9. The core method as just set out could well be performed without the technical aid of a computer. One readily imagines a librarian creating an index. He would not include all the variants of each entry (e.g. “IBM”, “iBM”, “IbM”, and so on) but choose one representative form. He might provide a unique identifier for each book (or just use the ISBN), a list of authors linked to book identifiers, and a list of index entries linked to book identifiers. When a user of the library asks for books about, say, “International Business Machines”, the librarian might look up “IBM”, discover that the books are indexed under “IBM – COMPANY” and so find a list of the required books. There would be nothing technical in what the librarian would be doing. He would simply be a good administrator, solving the non-technical problem of storing and locating books.
Hence, the problem underlying the present application could be considered as implementing the core method by means of a computer. However, this would be obvious to the skilled person:
10. Thus, the Board considers that the core method is not technical. According to the established jurisprudence of the Boards of Appeal non-technical features do not contribute to inventive step, and can appear in the formulation of the technical problem, when inventive step is at issue (T 641/00 Two identities/COMVIK, OJ EPO 2003,352). That means, that the novelty or obviousness of the core method is not an issue, and that the technically skilled person can be considered as being faced with the technical task of implementing it using a computer system.
Concerning the arguments of the appellant, the Board argued as follows:
17. The further argument that implementation using a computer system would allow the repository to grow larger than without cannot change the Board’s assessment that using computers for what they are good at – storing and processing large amounts of data quickly – was an obvious measure.
18. The argument that the invention cannot be seen as an automation of a known method, because the method, in this case, was not known, fails because the novelty of non-technical methods is irrelevant (cf T 0641/00, headnote 2).
Accordingly, the Board considered implementing such a method on a computer as an obvious measure. Moreover, since novelty of non-technical methods alone is irrelevant, the Board in charge dismissed the appeal.
More information
You can read the whole decision here: T 0309/10 (Archival and retrieval/MULTEX) of June 19, 2013.