T 2593/16 - The mere possibility that a technical effect is present

 Key points

• This decision feels like plausibility in the software field.
• The Board: “the mere possibility that a technical effect is present for some subset of the claimed matter is not sufficient (T 1294/16, points 25 and 26.2). The claimed selection of specific filter parameters can therefore be disregarded when assessing inventive step (T 0641/00, point 6), which means that no inventive step can be acknowledged over D1.”

T 2593/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t162593eu1.html

The Board agrees with the Examining Division that claim 1 lacks inventive step.

6.1 D1 provides for a family of (mathematically formulated) filters that can be adapted to every object size and image resolution by choosing the appropriate filter scale by the parameter sigma, and to the object shape patterns by e.g. the parameter c. The skilled person would employ these filters to provide object descriptors for specific problems (e.g. face recognition in an airport implying an expected face size and image resolution), none of which is however claimed.

6.2 When doing so, the skilled person needs to perform the said adaptation; depending on the object and image characteristics, the selected filters will be different. No set of selected filters will be beneficial, in the sense of providing the desired accuracy and computational efficiency, for all objects and images.

6.3 The application does not link the claimed choice to a specific dataset on which it would be beneficial. Even if it would, the claims do not specify any image or object characteristics, which means that, when considering the said breadth of the claim, for most datasets this choice is not beneficial. Consequently, the claimed parameterization does not predictably bring about a technical effect over a reasonable extent of the claim, which means that the filters cannot be said to contribute towards providing a technical solution to a concrete technical problem; the mere possibility that a technical effect is present for some subset of the claimed matter is not sufficient (T 1294/16, points 25 and 26.2). The claimed selection of specific filter parameters can therefore be disregarded when assessing inventive step (T 0641/00, point 6), which means that no inventive step can be acknowledged over D1.