T 0551/11 - Abstract idea at the EPO

Key points

• The invention relates to a software .
• The distinguishing feature of claim 1 is a step of displaying keywords or key phrases in rank order and adding suggested alternatives once they have been suggested a threshold number of times. 
• The Board: "The Board considers the claimed way of re-categorisation to be within the administrative, i.e. non-technical domain, which cannot involve an inventive technical contribution over the disclosure of D1. It is regarded as an abstract non-technical concept how to organise the way categories, keywords etc. are provided and used, which is not driven by technical considerations, but merely by abstract administrative considerations." 

EPO T 0551/11 -  link

Reasons for the Decision

Introductory remarks

1. The claimed invention is directed to a system and method for publishing content. Such content is categorised by the author assigning keywords or key phrases used for searching or navigating. Categories, keywords or key phrases can later on be re-categorised by other users and for this purpose are displayed in rank order. Depending on how often a re-categorisation has been suggested, it is replaced or added.

Main request

2. Article 56 EPC - Inventive step

2.1 The independent claims are directed to a mix of technical and non-technical features. Claim 1 is directed to a computer system which is technical per se. The Board also does not dispute that the corresponding method according to independent claim 14 appears in a technical context. The method can be considered to be performed by technical means, because it involves a computer with means for storing data and means for processing data, and, therefore, has technical character. Accordingly, the claimed subject-matter is an invention in the sense of Article 52(1) EPC (see T 258/03 "Auction method/HITACHI").

2.2 However, the question of inventive step requires an assessment of whether the invention makes a technical contribution over the prior art. Features which do not make such a contribution cannot support the presence of an inventive step (see T 641/00 "Two identities/COMVIK", Headnote I).

2.3 The Board agrees with the analysis of D1 with regard to the features of claim 1 in the contested decision (see point 9.1).

D1 discloses the following features set out in independent claim 1: [...]

2.4 D1 does not disclose the same re-categorisation as claim 1, i.e. displaying in rank order keywords or key phrases and adding suggested alternatives once they have been suggested a threshold number of times.

With regard to displaying the keywords in rank order, the Board considers the rank order of the displayed information to be directed to the information content as such. The mere fact of displaying such information was known from D1, because in order to edit meta-data such data must be displayed (e.g. using a web-page, see D1, page 9, second paragraph, last sentence). Regarding the rank order, this is considered to be displaying of cognitive information and not functional data (see T 1194/97), since the system works the same way irrespective of what the rank order actually is. A wrong ranking would not affect the technical functioning of the claimed system.

2.5 The appellant alleged that search and navigation through large amounts of data content was improved by the invention. The appellant argued during oral proceedings that this resulted from using suggestions of keywords from many reader-users rendering the keywords better, since what many users came up with was usually of higher relevance and quality.

However, such large scale effects were well known principles in the fields of statistics and economic analysis and, hence, stem from business related administrative considerations. The basic idea behind the invention is to use only keywords (or key phrases) that many users suggest. This, in the Board's judgement, is an entirely administrative and therefore non-technical concept, which per se does not provide for a technical contribution over the prior art. The quality of a keyword is a highly subjective issue and not linked to any technical data or to any technical considerations. The claimed system merely provides an infrastructure for potentially taking advantage of those large scale effects, but this does not necessarily lead to an improved search and navigation.

This is all the more so since the value for the threshold is not specified and therefore can also have the value of two, three or four etc.

2.6 The Board considers the claimed way of re-categorisation to be within the administrative, i.e. non-technical domain, which cannot involve an inventive technical contribution over the disclosure of D1. It is regarded as an abstract non-technical concept how to organise the way categories, keywords etc. are provided and used, which is not driven by technical considerations, but merely by abstract administrative considerations. Particularly, it is not a technical feature who the person categorising content is, be it the author or a reader. It depends on the intellectual background and experience of the individual suggesting a keyword whether it is suitable or not, but not on the role (author/reader) the person plays, and it is irrespective of technical considerations for implementing such a concept on a computer system.

In contrast to the present invention, decision T 0643/00 referred to by the appellant concluded that a technical effect resulted from overcoming physical limitations of the size and resolution of a computer screen, but not from making the searching easier. In the present case, however, the use of a hierarchical rank order to which the user may collectively add new suggested keywords or key phrases does not provide a corresponding technical effect. It might reduce the mental effort required, which depends on subjective user skills or preferences. The Board is not convinced that an objectively credible technical effect is thereby achieved and regards this distinguishing feature to be only a secondary consideration not providing a technical contribution.

Decision T 0769/92 further referred to by the appellant essentially held that output formats are usually dictated by subjective preferences of humans and do not provide for a technical contribution, whereas features related to a specific input format might involve a technical contribution. Despite being quite old and having been overturned by more recent decisions of the Boards of Appeal, the present distinguishing features do not correspond to a specific input format as argued by the appellant (see e.g. page 6, paragraph 7 of the letter dated 16 August 2017). Claim 1 does not specify a specific format of an input for suggestions made by reader-users. Rather the rank order specifies an output format, which according to the reasoning of T 0769/92 does not provide for a technical contribution. The appellant's argument therefore does not convince the Board.

The further decision referred to, T 0125/04, essentially relates to a mere presentation of output data and does not support the appellant's arguments.

2.7 The Board does not agree with the appellant that the invention reduces the amount of computer resources and processing power required in order to execute a search as a technical consequence of providing a mechanism by which the inputs are taken, applied and used. Rather, the Board concurs with the contested decision (see point 9.5) that in the present case the alleged reduction of processor load would depend on the intellectual inputs provided by human users and the resulting tags selected, and the claimed system would therefore not necessarily result in a reduction of processing power required.

Even if a reduction of processing power was achieved, this would be the mere consequence of administrative measures and subjective human decisions, i.e. subjective user skills or preferences. Technical considerations are only involved through their implementation on a technical system such as the one disclosed in D1. Any administrative scheme, once implemented on a computer system, will have consequences in respect of the load on the technical means used.

2.8 The person skilled in the art within the meaning of Article 56 EPC, a computer expert provided with the complete description of the non-technical abstract administrative concept, in particular with the basic idea to use only keywords (or key phrases) that many users suggest, would have considered the claimed implementation obvious in view of the normal skills and the general knowledge of computer programming in view of the known system in D1.

The appellant's arguments to the contrary therefore do not convince for the aforementioned reasons.

2.9 In the absence of any technical contribution beyond the straight-forward computer-implementation, the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC).

2.10 Similar objections and arguments apply mutatis mutandis to corresponding method claim 14.