Key points
- Another decision highlighting that also for inventive step of a software invention, the (further) technical effect must be 'proven'.
- “such further technical effect must be specifically and sufficiently documented in the disclosure of the invention [i.e. in the application as filed, see r. 5.5.1] and be reflected in the claim wording”
5.3.6 The Appellant argued that in the proposed algorithm rather than processing all received electronic messages on each individual user computing device, the invention used a client mail server. Design and implementation of innovative algorithms and data structures went beyond a particular mathematical formulation of the task of classifying electronic messages. The invention utilised a cluster rating system to obtain and analyse metadata of the unknown messages and classify these unknown messages using a cluster index tree data structure. The cluster rating was dynamically changing during the course of the filling of all clusters with various metadata of incoming electronic messages. The invention analysed mass messages sent by various sources over time and updated cluster ratings and therefore allowed to classify unknown messages more accurately. The method therefore facilitated an improved performance of a computer and computer network. Therefore, the method achieved the technical effects mentioned in section VIII above.
5.3.7 The Board agrees in so far with the arguments of the Appellant as the combination of comparing digital text content by similarity preserving hashing and dynamic cluster rating may be considered an algorithm optimised for the computer hardware and may have a technical contribution. However, this mere assumption is not sufficient. The Board is of the opinion that
(a) the implementation of an algorithm in a method for filtering spam messages must have a proved further technical effect or specific technical considerations;
(b) such further technical effect must be specifically and sufficiently documented in the disclosure of the invention and be reflected in the claim wording;
(c) the algorithm must serve a technical purpose.
ad (a)
5.3.8 Case law: Formulating an algorithm is a cognitive exercise (see G 1/19, reasons 112). The definition of an algorithm does not necessarily involve technical considerations (see G 3/08, Reasons 13.5.1). According to T 1358/09 (reasons 5.2 to 5.7) an algorithm may be particularly suitable to be run on a computer in that its design was motivated by technical considerations relating to the internal functioning of the computer. It was further concluded that not all efficiency aspects of an algorithm are by definition without relevance for the question of whether the algorithm provides a technical contribution.
5.3.9 In G 1/19, reasons 115, it was confirmed that a computer software - including the underlying algorithms - may contribute to the technical character of a computer-implemented invention in that it is adapted to the internal functioning of the computer or computer system/network.
5.3.10 Decisions T 0022/12 (reasons 2.2), T 1849/17 (reasons 9 to 9.3), T 1028/06 (reasons 9, 10), T 1179/14 (reasons 5.1), and decision 20W (pat) 13/09 (reasons II, 3.2 a) and c)) of the German Federal Patent Court (Bundespatentgericht) address spam filters and consider the implementation of a spam filter algorithm to be an administrative act or underline the importance of a further technical effect / technical considerations. However, in T 1028/14 (reasons 1.1.2 to 1.1.4) the features of an algorithm for identifying a message as an undesired message were considered to be technical and a supplementary search for these features was ordered.
5.3.11 The present invention, page 19, lines 1 to 8, discloses that the cluster size has to be optimised in order to reduce the load on the computer. However, further details are not provided, for example, the range of the optimal cluster size, relevant parameters, the amount of memory saved or the ratio of increased speed.
5.3.12 The Board is of the opinion that specific details as to how an algorithm is implemented in practice and how the load is reduced must be provided in order to give evidence that the algorithm has any further technical effect with respect to known algorithms and that it provides an improvement over the prior art.
ad (b)
5.3.13 Case law: According to T 0154/04, reasons 5, under (E) and (F), for examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.
5.3.14 However, the present invention does not provide sufficient and specific disclosure, such as parameters, how the algorithm is optimised for the computer, nor is this reflected in the claim wording.
5.3.15 The Board is of the opinion that any further technical effect has to be specified and sufficiently disclosed in the invention and that the claims must comprise the specific features which contribute to the further technical effect of the invention.
ad (c)
5.3.16 Case law: In T 1358/09, reasons 5, it was decided that whether two electronic messages in respect of their textual content belonged to the same "class" of documents (spam or legitimate) was not a technical issue. Furthermore, it was decided that algorithms contribute to the technical character of a computer-implemented method for classifying text documents only if they serve a technical purpose.
5.3.17 The present invention, on page 21, lines 24 and 25, discloses that a human malware expert may be employed to make conclusions as to whether messages are spam before placing the metadata of the messages into clusters. Such conclusions influence the forming of the rating of the clusters. The rating and clustering is an essential feature of the present invention.
5.3.18 The Board is of the opinion that, if the algorithm claimed in the present invention depends on the preferences of the user, the purpose of the claimed method may be considered non-technical. Spam filters in general need a human conditioning for training an algorithm which kind of emails should to be classified as spam messages and which kind of emails should be kept in the mail box. This depends on the individual user preferences, because some users want to receive certain types of advertising or emails that other users would consider spam. The parameters and structure of the algorithm may have to be adapted to the user preferences. Therefore, a spam filter algorithm cannot have a purely technical purpose if the classification depends on the personal preference of a user. As held in T 1670/07, if the chain of a technical process is broken by the intervention of a user who trains the algorithm, the whole spam filter process may be considered non-technical (cf. "broken technical chain fallacy", T 1670/07, reasons 11, referring to T 1741/08).
5.3.19 Antivirus software has to be distinguished from filtering undesired spam messages, because antivirus software does not depend on the preferences of a user. Furthermore, a computer virus has a direct impact on the computer hardware. T 0340/14 and T 2535/16, e.g., concern antivirus software and do not challenge the technicity of a method related to detecting malware.
5.3.20 In summary, the Board is of the opinion that any technical effects going beyond merely finding and implementing an algorithm to carry out the algorithm on a computer are not sufficiently documented in the application and are not reflected in the claim wording.
5.4 Problem
5.4.1 The problem could thus be formulated as improving the method of classifying email content disclosed in D5 such that spam emails are filtered out efficiently and therefore the load on the computer systems is further decreased.
5.4.2 According to G 1/19 (reasons 121) algorithms first of all define (non-technical) constraints to be considered in the context of the COMVIK approach (T 0641/00). Depending on whether they contribute to any technical effect achieved by the claimed invention, they may or may not in fact be taken into account in the inventive step assessment.
5.5 Obviousness
5.5.1 As discussed above a special technical effect related to the algorithm as defined in the independent claim is not sufficiently documented in the present application and is not reflected in the claim wording. The claim therefore defines a mere implementation of an algorithm without any additional special technical effect. This mere implementation of an algorithm cannot be considered involving an inventive step.
5.5.2 In addition, the algorithm of the present application is not inventive over the disclosure of D5 in combination with the teachings of D6 and D7. As discussed above the difference with respect to D5 is a combination of clustering, weighting hashes, summing up weights and rating according to the sum of weights. These differing features are taught by D6 and D7:
Peter, me again. Following on from our exchange in your recent Post on T1066/18, what caught my eye here is the need for the claim to "reflect" the technical effect relied upon for patentability under EPO-PSA. Is it common by now for a Board to use this word "reflect", or is this new. In any event, I'm wondering what the Board had in mind when it chose the word "reflect". Presumably something different from "state" or "include"?
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