T 1802/13 - Mixed invention

Key points

• The distinguishing feature is " evidently concerned with "how" specific cognitive data is actually presented rather than "what" is presented". The board indicates that, in order to decide whether the feature (of how the information is presented) is technical (and can provide inventive step) the main issue to be established is "whether the underlying user interface together with the manner in which cognitive content is presented credibly assists the user in performing a technical task by means of a continued and guided human-machine interaction process. 
• The board judges that the feature relates to presentations of information as such, i.e. to a non-technical feature, which has to be disregarded in the assessment of inventive step.
• Of interest, the Board refers to T decisions with the Board number added (e.g. T 1749/06-3.4.03). Possibly the Board wishes to indicate that some of the cited decisions are of other Boards. I don't believe it is common practice to cite T decisions in this way.

EPO T 1802/13 - link

2.1 Novelty and inventive step

In the board's judgment, present claim 1 does not meet the requirements of Article 56 EPC 1973, for the reasons set out below.

2.1.1 The board does not see any prejudicial errors in the assessment of inventive step as conducted in the decision under appeal, having regard to prior-art documents D1 and D2 (cf. Reasons 3 and 4).

2.1.2 Although the impugned decision relied on D1 as closest prior art, the board agrees with the appellant that document D2 may likewise be regarded as a starting point for assessing inventive step. In particular, it discloses the following features of present claim 1:

A computerised system ("DBS system") comprising:
a) an imaging data storage circuit adapted to store imaging data corresponding to an image of an anatomic volume of a patient (see e.g. Fig. 1);
b) a processor circuit, coupled to the imaging data storage circuit, configured to
b1) generate a model of brain tissue ("diffusion tension imaging DTI") that represents a non-uniform spatial distribution of tissue conductivity including inhomogeneous and anisotropic tissue conductivity, wherein the model includes a representation of an implanted electrode leadwire ("3-dimensional finite element models of the Medtronic 3387 DBS lead") (see abstract; page 590, left-hand column, second and third paragraphs);
b2) calculate, for each of the set of stimulation parameters (e.g. "stimulus amplitude") and prior to use of an electrode leadwire in accordance with the respective set of stimulation parameters, a predicted volume of activation by calculating a second difference ("Delta**(2)Ve") of the electric potential distribution ("Ve") produced by the electrode leadwire ("DBS electrode") using the model of brain tissue which represents the non-uniform spatial distribution of tissue conductivity (see e.g. page 590, right-hand column, last paragraph; page 592, right-hand column, second paragraph; Fig. 1B);
b3) register the image of the anatomic volume of the patient to an atlas of the brain to create a patient-specific atlas of the brain tissue (see e.g. page 590, right-hand column, lines 32-35; Fig. 1B);
c) a computer display, coupled to the processor circuit, configured to display on the computer display a map ("FEM VR Map") in which the electrode leadwire and the predicted volume of activation are displayed (see Fig. 1B).

2.1.3 As regards feature c), it is apparent to the board that the "FEM VR Map" shows the DBS electrode and the modelled volume of activation, while the screen relating to "Human DTI" displays the patient's brain atlas (see e.g. caption of Fig. 1B: "... The right panels of the top row shows[sic] the volume ratio ... for the entire axial slice (far right) and the ... region that was used in the finite element model (middle right)"). Thus, those displays indeed do not directly and unambiguously disclose the superimposition of the electrode leadwire and the predicted volume of activation on the patient's brain atlas as called for by claim 1. 

Consequently, the sole difference between present claim 1 and the disclosure of D2 is that
i) a map is displayed in which the electrode leadwire and the predicted volume of activation are superimposed on the patient-specific atlas of the brain tissue.

2.1.4 The focal question is now whether distinguishing feature i) has a technical effect or whether it relates merely to presentations of information as such within the meaning of Article 52(2)(d) and (3) EPC. In this context, the board notes that the superimposition of both the monitored data ("electrode leadwire") and the calculated data ("predicted volume of activation") on the patient's brain atlas is evidently concerned with "how" specific cognitive data is actually presented rather than "what" is presented.

2.1.5 The appellant submitted that the case law of the Boards of Appeal relating to presentation of information had "relied heavily on the understanding that it is important how the data is displayed not what is displayed" (cf. appellant's letter dated 7 April 2016, first page, last paragraph). The appellant seems to rely for authority on the conclusions drawn in T 1749/06-3.4.03 of 24 February 2010 (see Reasons 4.1.3), which are further elaborated by reference to the corresponding PCT provisions in recent case T 651/12-3.4.03 of 14 April 2016 (see Reasons 3.2, page 15, last paragraph to page 16, second paragraph).

In that regard, the board recalls that e.g. T 1143/06-3.5.01 of 1 April 2009, relied on by several boards, states that "a feature which relates to the manner how cognitive content is conveyed to the user on a screen normally does not contribute to a technical solution to a technical problem. An exception would be if the manner of presentation can be shown to have a credible technical effect" (see Reasons 5.4, emphasis added by this board). This is also reflected (almost verbatim) in the Guidelines for Examination in the European Patent Office (see G-II, 3.7, second paragraph e.g. in the version of November 2016).

Similar to the issue of "what" is presented (see e.g. T 336/14-3.5.05 of 2 September 2015, Headnote), the board finds that - regarding the technicality of the manner in which (i.e. "how") information is presented - the main issue to be established is whether the underlying user interface together with the manner in which cognitive content is presented credibly assists the user in performing a technical task by means of a continued and guided human-machine interaction process (basically related to the question "for what purpose" the content is presented).

This was the case in T 928/03-3.5.01 of 2 June 2006, cited by the appellant in its letter dated 7 April 2016 (cf. second page, first paragraph), where it was held that displaying, in an interactive video soccer game, guide marks indicating the direction in which the football is to be passed by the active soccer player at predetermined locations of the screen solved the objective technical problem of resolving conflicting technical requirements, namely that (1) a portion of an image is desired to be displayed on a relatively large scale and that (2) the display area of the screen is not too small to show a complete zone of interest (cf. Reasons 4.3). In the context of distinguishing the claimed subject-matter from the prior art by the manner in which information is presented, a technical effect and a contribution to inventive step were also acknowledged in recent cases T 1375/11-3.4.03 of 31 March 2016 (relying on the problem of improving ergonomics and user-friendliness in an online gambling system including physiological considerations; see Reasons 4.3) and T 1715/11-3.2.04 of 22 July 2015 (relying on the problem of facilitating man-machine interactions; see Reasons 3).

2.1.6 Coming back to the present case, in the appellant's opinion, distinguishing feature i) had the technical effect of "lowering the cognitive burden of a user", resulting in a more efficient man-machine interface (cf. statement setting out the grounds of appeal, fourth page, last paragraph), while the objective problem addressed by feature i) was the "provision of an improved system that provides a more efficient method of selecting the electrode parameters for DBS" (cf. appellant's letter dated 7 April 2016, first page, fourth paragraph).

2.1.7 However, it is established jurisprudence of the Boards of Appeal that "lowering the cognitive burden of a user" per se cannot in principle be considered to be a technical effect (see e.g. T 1741/08-3.5.06 of 2 August 2012, Reasons 2.1.6; T 1539/09-3.5.06 of 18 July 2013, Reasons 4; T 1237/10-3.5.07 of 16 October 2015, Reasons 5.4). Nor is it derivable from present claim 1 - beyond mere speculation - that it credibly brings about the technical effect of accurately predicting the electrodes' properties and providing that information to the surgeon in an efficient manner (contrary to the appellant's assertion in the statement setting out the grounds of appeal, page 5, eighth paragraph).

Rather, the board holds that feature i) corresponds to presenting cognitive content which addresses solely the user's mental process instead of credibly and causally assisting the user (surgeon) in performing the task of neurosurgical operations via a continued and/or guided human-machine interaction process. In particular, the board finds that the mere fact that two specific types of information (i.e. "electrode leadwire" and "predicted volume of activation") are presented in a superimposed manner with regard to another type of information ("patient-specific atlas") is not sufficient - contrary to the situation in case T 928/03-3.5.01 - to conclude that the underlying system is thereby indeed improved or that the corresponding method is more efficient. Rather, this remains mere speculation. For example, such a superimposition of different data may arguably - depending on the display resolution and/or the user's (surgeon's) cognitive capabilities or preferences - detrimentally affect the comprehensibility and usability of the data presented and thus might even deteriorate the efficiency of selecting the optimal DBS electrode parameters.

Accordingly, the board judges that feature i) relates to presentations of information as such, i.e. to a non-technical feature, which has to be disregarded in the assessment of inventive step according to the established jurisprudence of the Boards of Appeal (see e.g. T 641/00-3.5.01, OJ EPO 2003, 352, first headnote).

2.2 In view of the above, the main request is not allowable under Article 56 EPC 1973.

T 2172/13 - Displaying suggestions inventive

Invention

• The invention relates to a computer system for communicating HD data to a game console. The Board accepts inventive step based on the features of evaluating bandwidth, and in case of insufficient bandwidth, informing the user of bandwidth issues, displaying data throughput, and displaying suggestions for improving network throughput. The Board identifies as objective technical problem: how to improve reliability of high-definition transmissions within the system.
• The Board does not expressly identify a technical effect, or how the features provide such effect, and does not discuss the "broken technical chain fallacy",i.e. a chain of effects from providing information to its use in a technical process is broken by the intervention of a user (T1670/07). 

T 2172/13 -  link


Summary of Facts and Submissions

V. The independent claims according to the appellant's main request read as follows: 

1. "A computer system for communicating high definition transmissions to a game console (120) comprising:
a remote computer-readable medium (206);
a tuner (202) to receive high definition content transmissions; and a game console (120) communicatively coupled, by a network, to the tuner (202), the game console (120) being configured to retrieve and execute program code (208) from the remote computer-readable medium (206), the program code (208) enabling the game console (120) to receive high definition content (402) streamed from the tuner (202) in real-time; and the program code (208) enabling the game console (120) to play high definition content received by the tuner (202),

wherein the program code (208), when executed, comprises:
performing a test to evaluate (504) the available bandwidth of the network coupling the game console (120) to the tuner (202) and, in response to the network bandwidth being insufficient to support the real-time streaming of high definition content:
informing (510) a user of possibility of network performance issues;
starting (512) continuous network throughput monitoring;
measuring (514) network throughput;
displaying (516) current network throughput at a network performance monitor user interface (600, 700);
displaying (518) one or more suggestions for improving network throughput; 

and looping back (520) to the starting (512) continuous network monitoring until the user terminates the loop or a timeout occurs or an adequate bandwidth is achieved".

Reasons for the Decision

7. Inventive step, claim 1

7.1 The Board considers D1 to be the most relevant of the available prior art. Following on from the discussion of novelty, the identified differences of the system including a medium carrying [are] program code that, when executed on the game console of the system, evaluates bandwidth, and in the case of insufficiency thereof, inter alia informs the user of bandwidth issues, displays throughput, displays suggestions for improving network throughput. In the Board's opinion, the problem associated with this difference is to modify the computer system of D1 to improve reliability of high-definition transmissions within the system.

7.2 Nothing in D1 itself suggests the claimed solution, nor does the Board consider it would belong to the skilled person's general knowledge. Whether or not it might be obvious to modify the system of D1 to continuously monitor available bandwidth, the disclosure of D1 focuses on making the best use of shared bandwidth by allocating different amounts to different tasks, rather than extending the total available bandwidth (see paragraph bridging pages 28 and 29).

In this respect the Board does not consider it would be obvious for the skilled person to solve the above problem by modifying D1 to inform the user of a bandwidth issue, nor by introducing the technical features, involving technical display means, of displaying actual network throughput and suggestions for improving network throughput. This is because the thrust of D1, with its optimised allocation of shared bandwidth, is to mitigate any effects of a bandwidth issue, so that the user need never be aware of the issue, let alone be presented with suggestions for network throughput improvement on a display (cf. impugned decision page 8, third from last paragraph).

At best the objective problem might prompt the skilled person to further optimise the existing scheme of bandwidth allocation to make even better use of available network throughput, but not to arrive at program code informing the user of network throughput and empowering them to extend it as claimed.

7.3 As also explained above (see point 6.2), neither D2 nor D3 give any hint to the program code features. Therefore, the combination of the teachings of D1 and either of these documents (whether that combination is obvious or not) would not result in the program code features claimed.

T 1670/07 - Comvik fallacies

Key points

• This is the decision, already published in 2013, which introduced a number of fallacies under the Comvik approach: the "technical leakage fallacy" , the "broken technical chain fallacy" , and the "non-technical prejudice fallacy" . These are often tried, but invalid arguments, that a feautre would be technical in the sense of the Comvik approach to inventive step.

Reasons for the Decision

[...] 9. In the present case, the appellant argues that the alleged non-technical feature of the information regarding the group of vendors "interacts with technical elements, in the form of the server 18, to produce a technical effect in the selection of vendors and the transmission of processed information regarding that selection to the mobile wireless communications device". However, in the Board's view, this is an instance of the well known argument that could be termed the "technical leakage fallacy", in which the intrinsic technical nature of the implementation leaks back into the intrinsically non-technical nature of the problem. In this case, the "selection of vendors" is not a technical effect and the mere "interaction" with technical elements is not enough to make the whole process technical as required by the jurisprudence. Similarly, the transmission of the selection is no more than the dissemination of information, which is in itself also not technical. These effects are more like those in T 158/88 and T 603/89 than in T 26/86 (supra). Technical considerations only come into play once the relevant features are implemented.

10. The appellant also argued that the difference of identifying a group of vendors rather than a single vendor as in D1 implied a problem of logistics, which was not a business method. However, the Board considers that a logistic or navigation system that actually involves navigation to a particular place might have some technical element, but the present invention does not as it does not involve any physical elements, but simply indicates possible choices. Moreover, in the Board's view, producing an itinerary is not technical as it involves only standard human behavioural concepts such as going to the bank and then going to the supermarket. The appellant replied that the physical act of going to the locations conferred technical character on these thoughts.

11. Here again, the Board sees something of a well known argument that could be termed the "broken technical chain fallacy" after decision T 1741/08 - GUI layout/SAP. This decision dealt with the fairly common situation that arises in connection with graphic user interfaces (GUIs) where a technical effect might result from the user's reaction to information. The decision essentially concluded (see point 2.1.6) that a chain of effects from providing information to its use in a technical process is broken by the intervention of a user. In other words, the possible final technical effect brought about by the action of a user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user. This applies to the present case because any possible technical effect depends on the user's reaction to the itinerary.

12. The appellant also argued that according to T 362/90 - Schaltanzeige für eine Gangschaltung/WABCO, providing a status indication about the state of a system was a technical effect. It is true that T 115/85 - Computer—related invention/IBM OJ EPO 1990,030 states that giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem. In that case the system was the input/output device of a text processor. T 362/90 cites this decision in support of the technical character of a simultaneous optical display of a current and ideal gear selection based on conditions in a gearbox. In the Board's view, the display of an optimal shopping itinerary is different because there is no comparable technical system since shopping is intrinsically non-technical. The availability of goods in a shop and information on shopping lists are not comparable with the status of a technical system. Furthermore, although the system of the invention has a server and a mobile device that are undoubtably technical, the invention is not displaying information about the status of these devices themselves, but only non-technical information that they process.

13. In summary, therefore, the Board is of the opinion that a technical effect may arise from either the provision of data about a technical process, regardless of the presence of a user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process. In the Board's view, neither applies to the present case.

14. Thus, in the Board's view, the appellant's formulation of the problem as "the provision of a technique which has greater flexibility and can provide results tailored to a user's preferences" is not a technical problem and is also far too general because it does not correctly take into account non-technical aspects. In the Board's view, the problem is the much more specific one of how to modify the prior art to implement the non-technical aspects, in this case how to plan a shopping trip (itinerary) that includes orders from different vendors.

15. Concerning the implementation, the Board first notes that it is essentially only claimed in functional terms and that there are no details of how it is actually done. The only technical features of the solution are the hardware elements themselves and the specification of which elements perform the various steps. The elements of a mobile wireless communications device and a server are conventional and moreover known from D1. The only assignment of function that is specified is that the server determines the vendors as function of the orders and the location. Since D1 determines the vendor for a single order at the server, it would be obvious to consider determining multiple vendors in the case of multiple orders.

16. At the oral proceedings, the appellant stressed that the system of D1 only identified one facility whereas the invention identified a group of vendors and gave navigation information about how to visit them. If the system of D1 were to be used to order several items, it would only return information on a single vendor that could supply all the items. There might be no single vendor capable of doing this, or the vendor might be a long way away from the customer. The invention would be able to find more than one vendor that together could fulfil the order. Thus the invention solved the problem of reducing the number of failed attempts to fulfil an order. In the Board's view, this is another example of a standard argument, which could be termed the "non-technical prejudice fallacy". The argument essentially invokes non-technical aspects as a reason for not modifying the prior art, whereas these features cannot in fact contribute to inventive step. The question is not whether the skilled person would consider providing these features because that has already been decided in formulating the technical problem. The question is simply how it would be done. As mentioned above, in this case, the "how" comprises conventional hardware carrying out the tasks in an obvious way. In particular, there is no technical reason why the skilled person would not have considered modifying the various parts of the system of D1, at least to the extent claimed, to solve the problem posed.

17. It follows from the above, that in the Board's view, the appellant's analysis of why the repeated selection of vendors according to D1 is not equivalent to the claimed solution is moot.

18. Accordingly the Board judges that claim 1 of the main request does not involve an inventive step (Article 56 EPC 1973).

T 1755/10 - Software implementation fallacy

Key points

• Published online on 10 March 2015
• This decision adds another fallacy to the fallacies under the Comvik approach, the "software implementation fallacy" 

EPO T 1755/10 - link

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse European patent application No. 99916241.5, entitled "Method and apparatus for determining commission", published as A1: WO-A1-99/60486. [...]

T 0483/11 - Technical inheritance fallacy

EPO Headnote 

A feature does not automatically inherit the technical character of the context in which it occurs. The feature must, itself, make a contribution to the technical context or the technical aspects of the invention (technical inheritance fallacy - see points 2.7 and 2.8 of the reasons).

Key points

The EPO Headnot (not the decisioni itself) adds another fallacy under the Comvik approach: the "technical inheritance fallacy" .

T 0483/11 - link

Reasons for the Decision

1. The invention

1.1 At the date of the invention, mobile data connections were slow and mobile devices had limited processing and display capabilities. At the same time, electronic documents (word processor, worksheet, and spreadsheet documents) were large and contained "rich" content. Therefore, there was a need for a smaller, summary version of electronic documents for use by mobile communication devices.

1.2 According to the invention, the summary is generated by a server (figure 1, reference numeral 100) in response to a request from a mobile communication device (106) and is transmitted to the mobile device (page 4, lines 15 to 20). The user of the mobile device can use the summary to navigate the electronic document and request content corresponding to the summary entries from the server. This precludes the need to send the entire document to the mobile device (page 4, line 21 to page 5, line 3), at least initially.

1.3 The server generates the summary by selecting content from the electronic document. It does this using one of three processes (figure 3).