T 1790/17 - Not an invention under Article 52(2)

Key points

• The Board adds a headnote about the purpose of oral proceedings in ex parte cases, but I focus on the refusal under Art.52(2).
•  “ The Board agrees with the examining division's conclusion that claim 1 is so abstract that it encompasses entirely non-technical subject-matter excluded under Article 52(2) and (3) EPC.”
• “The claim essentially defines a method for collecting consumer feedback on the use of a product. This feedback is used to redesign the product such that it is better adapted to meet consumer needs.”
• “For that reason the Board does not agree with the appellant that step v) is technical. The determined parameters encompass non-technical data and, thus, cannot imply a technical effect in the sense of points 88 and 94 of G 1/19 as argued by the appellant.”
• “Accordingly, claim 1 is not an invention under Article 52(2) EPC.”
• As a comment, the Board does not expressly identify which one of the items listed under Article 52(2) applies or whether the Board relies on the 'in particular' phrase in the opening clause of Article 52(2) EPC (in other words, not so much on the non-exhaustive list of Art.52(2) but on the requirement of 'an invention' in Article 52(1). 

Headnote

The purpose of the oral proceedings for the appellant is to better explain his case and for the Board to understand and clarify points which, perhaps, up to that point were not sufficiently clear. This is particularly relevant in ex parte cases where besides the applicant/appellant no other party is involved. If amendments resulting from such discussions were not possible, oral proceedings would be pointless. The new [substantially amended] auxiliary request was filed as a direct reaction following the exchange of arguments in the oral proceedings and addressing the objections and concerns the Board had. Furthermore, this request overcame the grounds on which the appealed decision was based. The Board considers the filing of such a request is justified by exceptional circumstances and therefore admits it into the proceedings. (See point 7 of the reasons)

T 1790/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171790eu1.html

VIII. Claim 1 of the main request reads:

"A method for redesigning one or more product or process parameters of a first manufactured article, in order to provide different product or process parameters of a second, transformed, manufactured article, wherein the method comprises the steps of:

i) associating a unique identifier with individual first manufactured articles, or with groups of first manufactured articles;

ii) capturing and recording product data and/or process data relating to the first manufactured articles;

iii) soliciting and recording consumer feedback relating to in use performance of the first manufactured articles;

iv) correlating consumer feedback with product data and/or process data of a specific, individual, first manufactured article by means of the unique identifier;

v) determining different product or process parameters for a second manufactured article; and

vi) applying one or more different product or process parameters to the first manufactured articles to transform them into second manufactured articles, the second manufactured articles being better adapted to meet consumer needs than the first manufactured article."

Reasons for the Decision

The invention

1. The invention relates to a method for redesigning product or process parameters of a manufactured article (e.g. diapers) based on consumer feedback relating to the article's performance in use (see paragraphs [0005] to [0007] of the published application).

2. Claim 1 of the auxiliary request further specifies that a controller determines the redesigned process parameters and, based thereon, adjusts manufacturing parameters of a converting apparatus (assembly line) in order to produce the second articles ([0015]).

Main request

3. The Board agrees with the examining division's conclusion that claim 1 is so abstract that it encompasses entirely non-technical subject-matter excluded under Article 52(2) and (3) EPC.

4. The claim essentially defines a method for collecting consumer feedback on the use of a product. This feedback is used to redesign the product such that it is better adapted to meet consumer needs.

For example, when buying shoes the consumer might report that they don't fit. This feedback could be related to data collected during manufacture of the shoes such as a label on the shoebox indicating their size. The manufacturer might then conclude that a wrong label has been attached to the shoebox and issue an instruction to change the manufacturing - in this case the labelling - process accordingly.

5. The Board finds that none of steps i) to vi) relate to technical matter and do not necessarily involve technical data.

5.1 Firstly, a business person would have the idea of keeping track of products such that consumer feedback can be collected for a specific product. Keeping track of products requires some sort of identifier. The "unique identifier" in step i), which according to the description can for example be a serial number or a bar code, is a self-evident implementation of this requirement.

5.2 Secondly, the product and/or process data in step ii) does not exclude non-technical product data such as the above mentioned size label.

The appellant argued that the skilled person understood that this data was recorded and used in a manufacturing process and, thus, technical (see paragraphs [0008] and [0009]). The Board is not convinced as no examples of any such data are given. Product data collected during the manufacture of a product can be interpreted broadly and - as mentioned above - include non-technical data.

5.3 Similarly, the Board is not convinced that the consumer feedback relating to "in use performance" of a product in step iii) necessarily represents technical data.

The appellant argued that this data had to be understood as objective user measurements similar to measurements obtained from laboratory testing. Any subjective element possibly included in the consumer feedback was eliminated by performing the subsequent statistical correlation analysis defined in step iv).

However, the Board does not consider that the term correlating has to be interpreted as statistical correlation of a number of users' feedback with various parameters. Paragraph [0012] of the description supports the colloquial use of the term which is that of a single connection between two things. In the case at hand consumer feedback of a specific article is connected with product and/or process data by means of the unique identifier.

The appellant's argument that the use of algorithms, spreadsheets or graphical interpretation as mentioned in paragraph [0013] would support the statistical interpretation of correlating is not persuasive. This paragraph relates to the evaluation of quality information generated from the correlation, not to the correlation analysis itself. At best it might support the appellant's view that step v) is based on step iv) - see next point.

5.4 The appellant argued that step v) in conjunction with step iv) further explained the technical purpose of the feedback information being that of identifying manufacturing parameters used for producing faulty products and changing them.

The Board notes that there is no link between step v) and iv). It is, thus, not possible to conclude that the correlated data is actually used for determining different manufacturing parameters. Even if it were, the Board remains of the view that a purely non-technical interpretation as outlined above, for example determining a different size label, still exists.

The determined different product and/or process data can, therefore, not be considered as data useful or used for controlling a technical device and, therefore, has no technical purpose or effect.

For that reason the Board does not agree with the appellant that step v) is technical. The determined parameters encompass non-technical data and, thus, cannot imply a technical effect in the sense of points 88 and 94 of G 1/19 as argued by the appellant.

5.5 The Board judges that step vi) is not clear enough to contribute to technical character either.

Applying the new parameters to the first manufactured articles to "transform" them into second articles does not seem to be possible. Most likely, what is meant is to apply these parameters to the manufacturing process. This, however, neither implies an actual manufacturing step nor involves any technical means. Also, as the parameters themselves might not be technical their application to the manufacturing process does not necessarily imply any technical effect either.

6. Accordingly, claim 1 is not an invention under Article 52(2) EPC.