9 Oct 2017

T 1756/14 - Automating a method

Key points:

  • The invention relates to a problem of installing in an automated way the same software on a new computer as on an old computer. 
  • The board considers that the technical problem solved by the invention is to provide automated support for the installation on a second device of the software that happens to be installed on a first device.
  • In this way, the Board disagrees with the Examining Division. " The examining division thus considered that the method being implemented was both known and non-technical. The board notes that if an invention solves the problem of automating a known method, whether it involves an inventive step does not depend on whether that method is also non-technical, in part or as a whole." 


EPO T 1756/14 -  link

Inventive step, main request
5. The examining division found that claim 1 of the main request "define[d] the implementation of a known non-technical method on top of known hardware" (see page 7, section "Conclusion").
5.1 The examining division thus considered that the method being implemented was both known and non-technical. The board notes that if an invention solves the problem of automating a known method, whether it involves an inventive step does not depend on whether that method is also non-technical, in part or as a whole.


5.2 The examining division started from a hypothetical situation in which a user wanted to install on a new, second computer the software installed on an old, first computer. The situation was imagined to arise "at Christmas", when the second computer was received as a gift, and was hence referred to as the "Christmas example" (see the decision, page 5, paragraph 1).
5.3 The appellant challenged "the Christmas [e]xample [as] an assertion without substance" (see grounds of appeal, page 7, paragraph 3, and page 8, penultimate paragraph, and point 3(c) above). The appellant did not explain which feature of the example it considered not to have been known before the priority date.
6. The board agrees with the contested decision that the situation is one that commonly arises and which arose before the priority date in the present case (not only at Christmas). The application itself (paragraph bridging pages 1 and 2) makes this assumption too, and the appellant did not challenge it.
6.1 The board therefore considers that common knowledge is a suitable starting point for the assessment of inventive step.
6.2 Furthermore, the board considers that the technical problem solved by the invention is to provide automated support for the installation on a second device of the software that happens to be installed on a first device. During oral proceedings, the appellant accepted this.
6.3 In the board's view, any solution to the given problem necessarily requires
(i) determining what software is installed on the first machine,
(ii) determining where and how that software may be obtained, and
(iii) installing it on the second machine.
6.4 The appellant contested this view, arguing that it was based on hindsight and that the inventive step assessment should, even at this point, pay greater attention to the structural and technical features of the claimed solution.
6.5 The board disagrees for the following reasons.
6.5.1 To decide whether or not a claimed invention involves an inventive step, it must be determined whether the claimed invention would have been obvious to a person skilled in the art (Article 56 EPC 1973). Since an invention is construed as being the solution to a technical problem (see esp. Rule 27(1)(c) EPC 1973), the problem-solution approach for the assessment of inventive step starts with the determination of a technical problem to be solved over a suitably chosen starting point (the "closest prior art"). Once both have been selected, the next step is to determine whether what the skilled person would have done without exercising inventive skill would have led him to the claimed invention. In assessing what the skilled person would have done, it is precisely in order to avoid the risk of hindsight that no regard is taken of the claimed invention.
6.5.2 Secondly, items (i) to (iii) merely paraphrase aspects of the technical problem specified in point 6.2. The board agrees with the appellant that it would be possible to copy the software direct from the memory of the first device to the second device. This is, however, not in contradiction of item (ii), because the skilled person would still have to determine "where and how [the] software may be obtained", namely in this case: from the memory of the first device ("where") and by direct copying ("how").
6.6 The board also notes that the existence of one obvious solution to a problem is insufficient to show that other solutions are non-obvious. That is to say, irrespective of whether the skilled person could or would have considered copying software from the first device to the second device, the board regards it as an obvious alternative to perform a new installa­tion of the required software on the second device.
6.7 The appellant remarked that the installation of software from a server on the Internet (as opposed to from a CD or DVD) was not as common in 2004 as it is today, without, however, denying that such an installation method was already known before the filing date of the application. The board, by contrast, is convinced that it was not just known but already common in 2004. Even the application describes the "nodes from which [the ...] software programs can be obtained" (see e.g. page 3, lines 1-4, and table 1) as known infrastructure, and thus as part of the problem rather than as part of the solution. The board notes in passing that a major part of the structural, and undisputably technical, features of the claimed invention, namely the first and second devices and the "software program providing nodes", are thus either implied by the problem or identified as commonly known.
6.8 If the skilled person were to perform the installation on the second device manually, it would be obvious for him to assemble all the required information on a sheet of paper (which software, where to get it, what else to do). Likewise, when and since the skilled person is interested in an automated solution, it would be obvious to assemble that same information in a suitable data structure (an "application profile"). It would further be obvious to task a dedicated program (a "synchronization manager") with the management of the installation task.
6.9 The board accepts that there is no necessity for that data structure to contain the "nodes" from which the software can be obtained. The nodes might be left implicit, for instance if they can be derived from the identity of the program and its vendor, or be left for the user to input later on. Nonetheless, it would be obvious to inform the synchronisation manager explicitly about the nodes, for instance to simplify its task. The board notes that the claimed "identifying" step specifies no more than that the synchronisation manager accesses the information in the application profile. There is nothing in the claims or the application to support the appellant's assertion that "the step of identifying is a complex task" (see grounds of appeal, page 11, paragraph 5).
6.10 In summary, the board agrees with the examining division that claim 1 of the main request specifies an obvious way of automating the installation on a second machine of the software which happens to be installed on a first machine, and therefore lacks inventive step over common knowledge, Article 56 EPC 1973.
7. As already mentioned, the board's assessment does not rely on the assumption that the central idea of the claimed invention is a non-technical method. Therefore, the appellant's criticism of the "COMVIK approach" to assessing inventive step and its opinion on how the examining division should have presented its analysis are not pertinent. Hence, neither a response from the Enlarged Board of Appeal to the proposed question (see point II above) is required for a decision in the present case (cf. Article 112(1)(a) EPC 1973), nor a discussion of the board of appeal decisions cited by the appellant.

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