T 0799/24 - Technical CAD method

Key points

• G 1/19 held that "The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design", and that inventive step of a computer-implemented design method requires a 'further technical effect'. 
• Board 3.5.07 in charge of G06F/17, including G06F17/50 (computer-aided design) indicates that the applicant in this case has found a solution - not only of a technical problem but also of the legal obstacle to patenting CAD methods that G 1/19 poses. 
• Claim 1 is directed to a computer-implemented method for designing a car. Formally, the claim is formulated as an apparatus claim with corresponding features. The method is directed to designing a car body. The claim recites: "an optimization analysis unit (23) that performs an optimization analysis on the welding candidates by applying at least one [input] to the optimization analysis model to select an additional welded point or an additional welded location that satisfies the optimization analysis conditions from the welding candidates and thereby determine a location of the additional welded point or the additional welded location to be added to the automotive body to improve the stiffness of the automotive body during driving"
• So, the positions of welded points are calculated, which are recited as "to be added to the automotive body"
• The Board: "The additional welded point(s) is/are "to be added" to the automotive body to improve its stiffness during driving. In the board's view, this formulation at least implicitly specifies a further technical use (see decision G 1/19, points 124 and 137)."
• The Board gave the decision a long headnote, starting with "In the board's view, the formulation in claim 1 of the main request that additional welded point(s) is/are "to be added" to the automotive body to improve its stiffness during driving at least implicitly specifies a further technical use".
• I guess that this claim-drafting construct could be applied quite broadly for methods for designing an industrial product. 

EPO 

The link to the decision is provided after the jump.

T 1304/22 - A therapeutic effect of VR

Key points

• This is an examination appeal, i.e. an ex parte case.
• Claim 1 is directed to: 'A system for representing symptoms and symptoms alleviation,  comprising: a processor; a head mounted virtual reality display; and a memory operatively coupled to the processor and configured for storing data instructions that, when executed by the processor, cause the system to perform a method, ..."

• This is not a second medical use claim, but by way of the software rule for novelty, the method is still a limiting feature of the claim.

• " The board agrees with the appellant that, among the cited prior-art documents, document D2, in particular Embodiment 2 ("Pain Management") disclosed in paragraphs [0047] and [0048], constitutes the most suitable starting point for assessing inventive step. The appellant argued that the distinguishing features of claim 1 over D2 were that [in claim 1] a "second digital model" was created for displaying a "symptom" [] and that a "third digital model" was created for displaying an "alleviation or removal of said symptom" [on the VR display]. It submitted that these distinguishing features had the technical effect of pain reduction and solved the objective technical problem of achieving an improved virtual reality system for reducing chronic pain."

• " although claim 1 is silent as to the details of the respective "digital models", the board, in the appellant's favour, accepts the technical effect and the objective technical problem as submitted by the appellant. Thus, the question to be answered next is whether the distinguishing features of claim 1 of the main request were obvious to the skilled person starting from D2."

• Hence, the Board is willing to accept 'pain reduction' as a technical effect (further technical effect in the sense of G 1/19, it seems to me).

• The Board considers the feature to be obvious. "document D2 also gives an overview of known techniques in the prior art, in which it discusses (paragraph [0015] ff.) prior-art techniques using virtual reality for the treatment of various conditions by exposure therapy. In this context, paragraph [0018] of D2 refers to D5 [US 5 546 943] 

• which "proposes use of a visualization system using a computer to provide a user with a view of their internal anatomy based on medical scan data. The user acts upon the information in an interactive virtual reality environment by using tools or other devices to diminish a visual representation of an ailment." (board's emphasis). Thus, although it may not have been the solution preferred by the authors of document D2, it was nevertheless an alternative solution known to the skilled person at the present application's priority date to display a visual representation of a "symptom" and to display its "alleviation or removal" for the therapy of that symptom, the choice of which would have been obvious. " 

• D5 did not use a VR display.

   

 

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0702/20 - A neural network is (as such) a non-technical feature

Key points

• Board 3.5.06 in the headnote: "A neural network defines a class of mathematical functions which, as such, is excluded matter. As for other "non-technical" matter, it can therefore only be considered for the assessment of inventive step when used to solve a technical problem, e.g. when trained with specific data for a specific technical task."
• Obviously, this headnote concerns computer-implemented neural networks. Claim 1 is reproduced below. It defines a software product. 
• Inventive step is the critical issue. 
• The Board, on the Comvik approach: "following the so-called Comvik approach (T 641/00), it is made sure that only features contributing to the technical character of the invention are considered for the assessment of, in particular, inventive step (cf. G 1/19, reasons 30 (F), cited from T 154/04). In particular, "non-technical" features, understood in this context as features which, on their own, would fall within a field excluded from patentability Article 52(2) EPC (see, e.g., T 1294/16, reasons 35), can only be considered for this assessment if they contribute to solving a technical problem (see also T 1924/17, reasons 15 to 19)."
• As an aside, the Board recalls that "Even technical features may be ignored with regard to inventive step if they do not contribute towards solving a technical problem (see G 1/19, reasons 33)."
• The claimed neural network has a new structure because the claim recites that "the hierarchical neural network [is] formed by loose couplings between the nodes in accordance with a sparse parity-check matrix of a [low-density parity-check code]".
• The Board: "A neural network is composed of nodes, called "neu­rons", linked to each other by edges transmitting the output of one neuron to the input of another. Each neu­ron implements a parameterized mathematical function, typically a weighted addition of its inputs followed by a nonlinear operator (e.g. a threshold, [...]); the parameters are called weights."
• "In principle, it is possible, if cumbersome, to replace the inputs to each neuron by the mathematical functions implemented by the nodes of the previous layer and write down the mathematical function that the network implements as a whole, i.e. the output as a function of the input. "
• The Board: "The proposed network structure [...] defines a class of mathematical functions (see above points 7 and 8), which, as such, is excluded matter. As for other "non-technical" matter, it can therefore only be considered for the assessment of inventive step when used to solve a technical problem".
  
  
• "The Appellant argued that the proposed modification in the neural network structure, in comparison with stan­dard fully-connected networks, would reduce the amount of resources required, in particular storage, and that this should be recognized as a technical effect, following G 1/19, reasons 85."
• "The Board notes that, while the storage and computatio­nal requirements are indeed reduced in comparison with the fully-connected network, this does not in and by itself translate to a technical effect, for the simple reason that the modified network is different and will not learn in the same way. So it requires less storage, but it does not do the same thing. For instance, a one-neuron neural network requires the least storage, but it will not be able to learn any complex data relation­ship. The proposed comparison is therefore incomplete, as it only focuses on the computational requirements, and insufficient to establish a technical effect."
• The Board here seems to imply that reduced storage and computational requirements without reduced performance would be valid technical effects and would cause the claim feature of "loose couplings between the nodes in accordance with a sparse parity-check matrix" to be considered for inventive step.
• The Board's reasoning that a technical effect can only be acknowledged if an advantage is obtained without simultaneous disadvantages seems unusual to me. Cf., e.g, GL G-VII, 10.1: "if [a] worsening is accompanied by an unexpected technical advantage, an inventive step might be present".
• The Board concludes that "The claim as a whole specifies abstract computer-implemented mathematical operations on unspecified data, namely that of defining a class of approximating functions (the network with its structure), solving a (complex) system of (non-linear) equations to obtain the parameters of the functions (the learning of the weights), and using it to compute outputs for new inputs. Its subject matter cannot be said to solve any technical problem, and thus it does not go beyond a mathematical method, in the sense of Article 52(2) EPC, implemented on a computer."
• "For the sake of completeness, the Board also notes the following: even if, as the Appellant argued, general methods for machine learning, and neural networks in particular, were to be considered as matter not excluded under Article 52(2) EPC, it would remain questionable whether the proposed loose connectivity scheme actually provides a benefit beyond the mere reduction of storage requirements, for instance a "good" trade-off between computational requirements and learning capability."
• This issue ( 'remains questionable') seems highly fact-specific and will likely turn on the evidence. There may also be an aspect of 'plausibility'.
• 
  
• The Board: "whether a claimed invention is patentable [i.e., inventive] or not can often be decided by focusing on the tech­ni­cal problems it solves, and by means of which combina­tion of features, be they technical or not, and by answering the question of whether this combination of features is obvious"
• This observation is very interesting but sheds a different light on the headnote: all (distinguishing) features can only be considered for the assessment of inventive step when used to solve a technical problem. This observation also seems to shed a different light on the Board's reasoning, cited above, starting with "even if, as the Appellant argued ...". Whether or not general methods for machine learning, and neural networks in particular, are to be considered as matter excluded under Article 52(2) EPC, is irrelevant, the only question is whether the problem of "reduction of storage requirements" (possibly: while maintaining good learning capability)  is a technical problem and whether the claimed solution solves that problem and does so in an obvious way. 
  
  
• As a comment, I don't know if there is a clear hint or teaching in the prior art to reduce the memory and computational requirements of a neural network by "loose couplings between the nodes in accordance with a sparse parity-check matrix of a [low-density parity-check code]". According to Wikipedia, "in information theory, a low-density parity-check (LDPC) code is a linear error correcting code, a method of transmitting a message over a noisy transmission channel", which does not immediately seems to pertain to neural networks (duly noting that IT is not my technical field). 

Claim 1 of the main request defines:

A hierarchical neural network apparatus (1) implemented on a computer comprising

a weight learning unit (20) to learn weights between a plurality of nodes in a hierarchical neural network, the hierarchical neural network being formed by loose couplings between the nodes in accordance with a sparse parity-check matrix of an error correcting code, wherein the error correcting code is a LDPC code, spatially-coupled code or pseudo-cyclic code, and comprising an input layer, intermediate layer and output layer, each of the layers comprising nodes; and

a discriminating processor (21) to solve a classification problem or a regression problem using the hierarchical neural network whose weights between the nodes coupled are updated by weight values learned by the weight learning unit (20)

or comprising

a weight pre-learning unit (22) to learn weights between a plurality of nodes in a deep neural network, the deep neural network being formed by loose couplings between the nodes in accordance with a sparse parity-check matrix of an error correcting code, wherein the error correcting code is a LDPC code, spatially-coupled code or pseudo-cyclic code, and comprising an input layer, a plurality of intermediate layers and an output layer, each of the layers comprising nodes; and

a discriminating processor (21) to solve a classification problem or a regression problem using the deep neural network whose weights between the nodes coupled are updated by weight values learned by the weight pre-learning unit (22)

and

a weight adjuster (23) to perform supervised learning to adjust the weights learned by the weight pre-learning unit (22) by supervised learning; and wherein

the weights are learned by the weight pre-learning unit (22) by performing unsupervised learning; and

the weights between the nodes coupled are updated by weight values adjusted by the weight adjuster (23).

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0929/18 - Refusal without prior art search

Key points

• This is an appeal against a refusal decision.
• The invention is about "mobile location data sharing". The filing date is in 2009; the search report was established in 2009; the first Communication was issued in 2012; next action: summons oral proceedings in 2017, refusal decision in 2017. The Board's preliminary opinion was negative. 
• The search report did not cite any documents but rather stated that "the technical aspects identified in the present application are considered part of common general knowledge" (link). 
• The Board: "The appellant's request that a patent be granted on the basis of the main request, or one of the first to third auxiliary requests, cannot be allowed because no patent can be granted without a prior art search (Article 52(1) in combination with Article 92 and Rule 61(1)EPC)."
• The independent claims as filed indeed seem to broadly specify location sharing in a group by a mobile phone [user device] for a limited time, i.e. with instructions to share the information for a limited time and to stop sharing the information thereafter. 
• I note that in 2009, the previous version of Rule 63 applied, and Rule 137(5), second sentence, accordingly does not apply to the present application. However, as the searched claims recited technical means, such as a user device and an output interface, no declaration under R.63 is issued; instead, a search report not citing any document is established (OJ 2007, p.592; T1411/08; T1242/04 r.9.2)
• "The examining division refused the application for lack of inventive step without referring to any document. Essentially, they considered that the technical character of independent [method] claim 5 resided solely in the implementation of an administrative scheme on a notoriously known electronic data processing system"
• I note that the claims as pending at the time of the refusal decision were significantly amended compared to the claims pending at the time of the search.
• "The Board does not see a problem with the practice of referring to notorious knowledge in such cases; it has the obvious benefit of avoiding the need to prove facts that are self-evident or indisputably well known."
• "According to the Boards' jurisprudence (see e.g. T 1242/04 [...]), it is possible to raise an objection of lack of inventive step without documentary prior art if the technical features of the invention are notorious, i.e. so well known that it cannot reasonably be contested that they are prior art."
• "Claim 5 refers to mobile user devices in a "peer-to-peer" data sharing group."
• " In its communication accompanying the summons to oral proceedings, the Board had misgivings about the peer-to-peer aspect of the invention. Firstly it did not appear to be part of the inventive concept in the sense that it contributed to the problem that the application set out to solve. It also rather appeared from the way in which the application presented the invention that "peer-to-peer" was part of the background framework or at least technically irrelevant." 
• "At the oral proceedings, the appellant argued that the application did not describe the claimed aspects of peer-to-peer networking as known, and moreover that limiting the time period during which the devices shared data was particularly advantageous in mobile peer-to-peer networks."
• "The Board considers that, taken together, the features of the mobile device, peer-to-peer, group data and address arrangement and the relay or router [...] define details of an electronic communication architecture that cannot be dissected into non-technical and technical parts. "
• "Although the Board still has doubts about the significance of the peer-to-peer feature it would be unfair to judge such issues without proper prior art. This would be to put the cart before the horse by putting the substantive examination before the search (see e.g. T 1515/07 []). Indeed, a search may reveal prior art which puts the invention in a perspective that is different from what was originally set out in the application."
• " Also, there has been a lot of development in mobile communication networks since the filing date of the application. Thus, what is self-evident now might not have been so in 2009. Therefore, the Board judges that a search is necessary."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0909/14 - Upgrading user accounts

Key points

• This is an appeal against a refusal decision. "The invention concerns a web service enabling the creation, storage and sharing of documents (see published application page 1, lines 6 to 19). Such services are known from the prior art. The key idea is to allow new (prospective) users of the service to access only part of the available functionality in order to reduce resources consumed (page 1, line 30 to page 2, line 13).  Claim 1 of the main request recites a method for creating and upgrading user accounts. The service's full users, having an account of the first type, may create their own documents and edit documents shared by others. By contrast, a prospective user, joining the service in response to an invitation from an existing user, gets an account of a second type not allowing him to create his own documents, but only to edit shared documents (page 12, lines 8 to 31)."
• "The main point of dispute in this appeal is whether discriminating between full users and prospective users with limited functionality is the solution to the technical problem of saving resources, as argued by the appellant (see section X, above), or a non-technical requirement that could be envisaged by the business person and thus part of the problem given to the skilled person under the COMVIK approach (see T 641/00 - Two identities/COMVIK) as argued by the division."
• "Decision T 1463/11 - Universal merchant platform/CardinalCommerce, further refining the COMVIK approach, set out that in the assessment of inventive step, circumstances under which inventions are developed in the real world have to be ignored to a certain extent. It introduced the concept of the notional business person who may formulate business requirements to be implemented but will not include in them any technical matter. The notional business person is a legal fiction representing a shorthand for a separation of business considerations from technical ones. Using this legal fiction is the price paid for an objective assessment; a real inventor does not hold such considerations separately from one another "
• "Under the CardinalCommerce approach, the test used in deciding on technicality of a feature is whether the notional business person could have come up with it. This boils down to determining whether there would have been at least one way to devise it without technical considerations. If so, it does not have technical character and may form part of the requirement specification regardless of what alternative ways of arriving at it were disclosed in the application or were conceivable."
• "In the present case, the Board judges that providing limited functionality for some users, such as not enabling the creation of documents, is a business decision which need not be based on technical considerations. There are apparent business reasons for doing it, for example charging the full user a higher subscription fee than the prospective user."
• The present decision is interesting because G 1/19 does not refer to T 1463/11 though it did refer to the follow-up decision T 0817/16. G 1/19 stated that "It was argued in the course of these referral proceedings that a simulation is of a technical nature and has technical effects if the relevant skilled person is a technically skilled person in the field of the simulated system or process (see e.g. the comments of the President of the EPO, points 23 to 25). This argument is partly based on T 817/16 (see Reasons, point 3.12), which relies on the (technically) skilled person in order to distinguish between technical and non-technical features. This approach may be suitable in some cases but may prove difficult in others where the skilled person for the simulation is different from that for the system represented by the model underlying the simulation. " 
• " Concerning "simulating" the full user interface [as specified in the claims], the Board judges that including in the user interface a feature which is useless without an account upgrade, for example an empty document container, relates to the presentation of information and is not based on any technical considerations. The appellant's argument attempting to prove that this part of the solution derives technical character from effects produced when the user operates the upgraded user interface is not convincing. In addition to being speculative, it is a typical example of the "broken technical chain fallacy" in the sense of T 1670/07 - Shopping with mobile device/NOKIA, reason 11."
• The appeal was filed in 2014; the Board's first action was a preliminary opinion in 2020. The appeal procedure took 8 years. I don't know what the average is for Board 3.5.01. The prospect of having the patent application pending for 8 more years may of course precisely be the reason for filing the appeal, especially for this kind of software invention. In a way, the backlog at Board 3.5.01 may sustain itself. 

EPO T 0909/14

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0955/20 - (II) Better search results are not technical

Key points

• The appeal is against the refusal of a patent application with applicant Google.
• The Board, on inventive step: " Furthermore, even if distinguishing features (b) and (c) could be seen to plausibly improve the "quality" of the translated query in the sense that it leads to search results that are "better" in the sense of closer in meaning to the desired search results, this would not be a technical effect (see decisions T 1569/05, Reasons 3.4 to 3.7; T 598/14, Reasons 2.3 and 2.4)." 
• T 1569/05: " The appellants regard the invention as belonging to the technical field of utilizing a natural language as a search input. In their view, the invention makes a technical contribution in a field not excluded from patentability," " In the Board's view, neither the mathematical model of meaning according to D3 nor the modified model according to the invention are within the technical area, since only the meaning of the words determines how they are represented, stored and selected, and since mathematical algorithms completely define the processing. In this respect the present invention is similar to the case T 52/85 - Listing of semantically related expressions/IBM (not published in OJ EPO), where the deciding board held that automatically generating a list of expressions semantically related to an input linguistic expression is basically not of a technical nature but a matter of the meaning of those expressions, ie of their abstract linguistic information content." 
•  T 52/85: "Such a semantical relationship is basically not of a technical nature but a matter of the meaning of those expressions, i.e. of their abstract linguistic information content; it does not relate to any physical entity. A semantical relationship can be found by performing mental acts only, with no technical means involved. This does not necessarily mean that any system automatically concatenating, in place of a human being, semantically related expressions to a list is excluded from patentability. Rather, this will depend on whether the manner in which it is automated, involves features which make a contribution in a field outside the range of matters excluded from patentability under Article 52(2) and (3) EPC."
• "the appellant's observation on document D1 does not call into question the board's finding that the distinguishing features provide no technical contribution over document D1. Hence, the subject-matter of claim 1 lacks inventive step (Article 56 EPC)."

EPO T 0955/20 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1035/18 - Inventive step of simulation method

Key points

• The Board: According to G 1/19, whether a simulation contributes to the technical character of the claimed subject-matter does not depend on the degree to which the simulation represents reality (point 111 [of G 1/19] ); nor does it depend on the technicality of the simulated system (point 120). What counts is whether the simulation contributes to the solution of a technical problem (point 120).

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1234/17 - Customizing footwear

Key points

• "In the Board's view, the claimed invention can essentially be seen as two mappings: the first maps sensor acceleration data to gait category and the second maps the gait category to a "customized design". The first mapping is specified in the claim to be via a "model of human physiology", which according to the description, see [0041], might involve "suitable statistical processing". The model of human physiology is defined by physiological attributes[]. In the case of footwear [to be customized] the physiological attributes are a set of categories of human gait (e.g., supination, protination, over-protination, neutral)."
• "the Board considers that the basic idea of customising footwear depending on the model of human physiology, that is, the type of human gait, does not contribute to inventive step, but is a non-technical idea that would be given to the skilled person [by the notional business person, PJL].'
• "Regarding the first mapping, the recording of sensor data, such as time series of acceleration vectors, is no doubt technical. However, the question is whether the mere idea of mapping this acceleration data to gait category is technical, involving any technical considerations or having any overall technical effect. This question arises in many inventions that involve mappings and algorithms. "
• " In T 1798/13 [] the present Board essentially held that it was not enough that an algorithm makes use of a technical quantity in the form of a measured physical parameter (weather data). What matters is whether the algorithm reflects any additional technical considerations about the parameter, such as its measurement. "
• "the Board considers that the mere idea of mapping acceleration data to gait category does not contribute to inventive step either, but is an idea that would be given to the skilled person  [by the notional business person, PJL]. Only its implementation involving the sensors could contribute."
• The present decision does not refer to G 1/19. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0489/14 (II) - Pedestrian simulation

Key points

• This is the follow up to G 1/19. Inventive step of the claimed "computer-implemented method of modelling pedestrian crowd movement in an environment" is at issue.
• " The main purpose of the simulation is its use in a process for designing a venue, as shown in Figure 22 []. Essentially, the designer creates or imports an architectural venue design, specifies the constituents of a pedestrian population that is typical for the venue being designed, and performs a number of simulations of pedestrian flows which the designer can specify at a high level (in terms of sources (entrances), sinks (exits) and supply rate). The simulation results are then examined and the design is revised if necessary." 
• The Board summarized G 1/19.
  The Board: " Hence [according to G 1/19], in the case of a computer-implemented invention, a technical effect relevant for the assessment of inventive step exists if the features of the claim directly achieve a (real) technical effect on physical reality (including both external physical reality and the "internal" physical reality of the computer system in which the invention is implemented).
• In addition, an "implied" technical effect relevant for the assessment of inventive step is present if the claimed invention or the data produced by it necessarily achieves a real technical effect when it is put to its intended (and only relevant) use. In contrast, merely providing calculated data which corresponds closely to technical effects of physical entities is not a technical effect relevant for the assessment of inventive step." 
• Turning to the claim at hand: " It follows that the data produced by the method of claim 1, which reflects the behaviour of a crowd moving through an environment, does not contribute to a technical effect for the purpose of assessing inventive step. Indeed, the potential use of such data is not limited to technical purposes, as it can be used in computer games or presented to a human for obtaining knowledge about the modelled environment, to give just two examples of non-technical uses that are within the scope of the claim."
• " The subject-matter of claim 1 of the main request therefore lacks inventive step (Article 56 EPC)."
• 
  
• 
  

EPO 

The link to the decision is provided after the jump.

T 0288/19 - Notional business person

Key points

• The applicant is Swiss Re.
• The Board: "The volcano activities in Iceland 2010 and the subsequent closure of airspace led to an estimated loss of 1.7 billion dollars for the airline industry. Between 15 and 21 April 2010 almost the entire European airspace was closed resulting in cancellation of all flights in, to and from Europe. The invention relates to dealing with such airport closures and flight plan changes related to natural disaster events."
•  "It is an aim of the invention to reduce the risk that airline companies go bankrupt due to lack of cash for operation during or after natural disaster events. The airlines seek risk transfer by means of insurance technology to cover such unforeseeable events and to ensure operation of the aircraft fleets."
• I'm not sure why the board uses "insurance technology" here.
• "The invention proposes automatically paying financial compensation to the affected business units, i.e. airlines and their fleets, by monitoring relevant airport data, defining critical thresholds and automating cover payments in case of airport closures."
• The distinguishing features include d) "The invention proposes automatically paying financial compensation to the affected business units, i.e. airlines and their fleets, by monitoring relevant airport data, defining critical thresholds and automating cover payments in case of airport closures."
• "Features (d) to (f) as such and disconnected from the (technical) automated system are related to a business method."
• "Non-technical features within the meaning of Article 52(2)(c) EPC, i.e. features related to business methods, are allowed in the context of other technical features, but cannot contribute to inventive step. These features can thus be included into the formulation of the task (see, inter alia, G 1/19 [reasons 31], T 0641/00, G 3/08, Case Law of the Boards of Appeal, 9th edition 2019, sections I.D.9.1.2 to I.D.9.1.4). According to T 0641/00, the aim to be achieved in a non-technical field may legitimately appear in the formulation of the problem as part of the framework of the technical problem. Therefore, the non-technical features (O) to (V) ("damage cover" and "automated payment") can be included into the task formulation as a framework condition to be fulfilled."
• The Board, in the headnote: "The business person sets the framework of the problem to be solved by their business model (insurance conditions) and thus reduces - by setting specific boundary conditions - the degrees of freedom of the skilled computer specialist. The technically skilled person, who has to solve the objective technical problem of implementation, therefore has no latitude in selecting the corresponding (physical) parameters"

EPO T 0288/19 - 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0550/14 - Trying to prove a negative

Key points

• This is an appeal against a refusal decision. 
• " The examining division considered the basic idea of the invention to be non-technical. It was seen as a method for managing the funding of catastrophe relief efforts which enabled charitable organisations to put in place funding before a catastrophic event actually occurred."
• The applicant Swiss Re apparently found it a good idea to seek a patent monopoly on this.
• "as stated in e.g. T 2314/16 [] over the years the case law has provided guidance on the issue of technicality. Recently, the Board has tended to use the framework for discussion given in [T1463/11 - CardinalCommerce] to help classify whether borderline features of a claim are on the technical or the non-technical side."
• "The appellant was heavily critical that the division merely alleged that all aspects of the invention were part of a business method with no supporting evidence. It was therefore deprived of a chance to argue for inventive step in a proper way. The business model had to be properly defined. Moreover, if there were no arguments why certain features were deemed to be part of the business model, the right to be heard was not respected. In the present case, a more detailed discussion should have taken place about the feature "parametric trigger", which in the appellant's view was electronic, measurable and therefore technical and which therefore should have been searched. The appellant asked the Board to define criteria that the examining division should use to prove that a feature was not technical."
• "The Board agrees that in this field there is a danger of simply asserting that certain features are non-technical with no basis. Indeed, the Board has seen decisions where the reasoning has not been fully convincing. But this is not one of them."
• "It is thus clear that some discussion can and ought to take place [about whether borderline features are technical]. However, rather like objections against added subject-matter, one is essentially trying to prove a negative which tends to be a rather short exercise. On the other hand, the appellant is trying to prove a positive which involves more argument. Thus an objection from the division should probably start with a prima facie assertion that the feature in question is non-technical, perhaps because it is in one of the exclusions listed in Article 52(2) EPC, or a related or analogous field. If this is uncontested then this would be enough. However the Board considers that it is then up to the appellant to provide arguments why there is a technical effect or that some technical considerations are involved. The division should consider these arguments and give reasons why they are not convincing. As mentioned above, the Board is satisfied that this happened in the present case."
• This analysis of the debate may be of even greater general relevance as the framework for Article 123(2), mutatis mutandis. I don't recall it having been spelt out for Art. 123(2) before, but the outlined approach seems to make sense.
• The Board seems to say that the opponent (or examining division)  "is essentially trying to prove a negative" when arguing that a feature is non-technical, but at least when the argument is that the feature is in fact the implementation of a business method, the opponent seems to make a positive assertion. 

EPO T 0550/14

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0926/17 - (I) Software as such

Key points

•  Claim 15: " A computer program comprising instructions for carrying out all the steps of the method claim 14, when said computer program is executed on a computer system."
• Always useful to recall the basics: there is no need that a claimed product is a tangible product.
• Do we know if this claim 15 is permitted under Art.52 based on its wording? The answer is no. The computer system is recited but not actually part of the claimed subject-matter, of course, so that feature does not help. Moreover, the claim does not specify any computer-readable medium (T424/03).
• We have to apply T1173/97 headnote: "A computer program product is not excluded from patentability under Article 52(2) and (3) EPC if, when it is run on a computer, it produces a further technical effect which goes beyond the "normal" physical interactions between program (software) and computer (hardware)"."
• As also outlined in G-II, 3.6.
• In the case at hand, claim 14 is directed to "A method of detecting and cutting tough tissues such as bones, cartilage, and fat from food item pieces such as fish or meat fillets or poultry items, comprising imaging incoming food item pieces using at least one x-ray machine ... conveying, subsequent to said x-ray imaging, said food item pieces on a second porous conveyor belt ... cutting said tough tissues from said food item pieces"
• The method of claim14 clearly produces a further technical effect which goes beyond the "normal" physical interactions between software and computer.
• It seems that claim 15 hence passes the test of Art.52.
• The Board: "Claim 15 is directed to a computer program comprising instructions for carrying out all the steps of the method claim 14. As such, the above positive conclusions in respect of sufficiency, clarity, added subject-matter, novelty and inventive step in respect of claim 14 also hold for claim 15 for similar reasons."
• This is all fairly settled case law and there was no dispute about claim 15 in the opposition appeal case at hand.
• credits to Mr. Thomas for highlighting the decision - https://www.linkedin.com/pulse/92617-claims-computer-program-comprising-instructions-thomas/

• 
  
• EPO T 0926/17

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

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.

T 1141/17 - An example of the Comvik approach

 Key points

• Under the Comvik approach to inventive step, the non-technical features of the claim are basically put in the objective technical problem (“in particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met”; T 641/00 hn.2, G1/19 r.30(g).
• However, it's not so easy to find an easy and illustrative example of the Comvik approach in the case law of the Boards. There are numerous decisions applying the Comvik approach but often the non-technical innovation is complex, or the step of actually formulating the objective technical problem in line with the Comvik approach is summarily disposed of.
• In the present case, “The invention concerns the automatic selection of a customised telemarketing script. When a potential customer calls a number in an advertisement, the call is often received by a sales representative firm that represents many businesses. Thus, the sales representative needs to find the marketing script associated with the product or service that the customer is calling about. Furthermore, it is advantageous to use a script that is targeted to the prospective customer. For example, a person who is likely to make a high value purchase may receive a different offer than a person who is likely to make a low value purchase, or unlikely to make a purchase at all.” (internal citations omitted).
• The invention uses number recognition to identify the caller's phone number (ANI), looks the number up in a database (shared between different telemarketing firms), and calculates a score (e.g. a "prospective customer value indicator") which in turn is used to select the phone script from a database that the marketer is to follow. In the same way, the specific phone number (DNIS) in the advertisement is also used (for telemarketing firms acting for various selling companies)
• The Board, “Starting from a conventional communication system combining a telephone system and a computer system, such as the one disclosed in D1 [(US6597685], the invention in claim 1 distinguishes itself by the use of the ANI to locate customer information in a database, the calculation of a modeling score based upon the customer information and the DNIS, the selection of a stored script based on the modeling score contemporaneously with a time at which the customer communications device provides the ANI, and the display of the script to the marketer.”
• “In line with the Comvik approach, the Board considers that the problem to be solved by the distinguishing features is how to automate the method of selecting a customised script defined under point 2.3 above.”
• ô2.6 In the Board's view, the technical implementation of the non-technical requirements, including the use of ANI and DNIS to identify the customer (caller) and the contacted business (callee) respectively, and the use of the computer to contemporaneously look up information in a database, calculate the modelling score, and select and display a relevant script, would have been obvious to the skilled person in the art of telecommunications and computer systems. ANI and DNIS were well known and designed to provide the recipient of the telephone call with information about the caller and the dialled number. The skilled person would have provided suitable means for storing and retrieving data, including the use of the ANI as an identifier for storing and retrieving customer information in a database.”

T 1141/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171141eu1.html

Reasons for the Decision

1. Background

1.1 The invention concerns the automatic selection of a customised telemarketing script (see page 4, lines 12 to 14 of the published application).

1.2 When a potential customer calls a number in an advertisement, the call is often received by a sales representative firm that represents many businesses (page 3, lines 5 to 16). Thus, the sales representative needs to find the marketing script associated with the product or service that the customer is calling about.

T 2534/17 - Bitcoins at the Boards

 Key points

• “The invention relates to a payment module, such as a smart card, storing pre-loaded electronic money which is used for purchasing goods or services []. Known cards subtract a payment amount from the amount of electronic money stored on the card. If the stored amount is below the required amount, the payment fails. Even smart cards, storing electronic money of different currency types, such as Euro, Dollar, or Yen, cannot compensate a shortage of one of the currencies with the other currencies stored on the card []. The invention seeks to solve this problem []. The solution involves using a reference currency ("utility electronic value" in the claims). If payment in one currency ("electronic value") is required, e.g. Euro, and the Euro balance on the card is insufficient, the deficit is taken from the reference currency. If, however, the balance of the reference currency is also insufficient, the reference currency is replenished from one or more of the remaining currencies[]. This idea is implemented by a plurality of applications (or "apps") on the card; one for each of the electronic values, and one for the utility electronic value.”
• This may all sound rather complex for normal currencies.
• However, the Board explains “As the [examining] division observed, administrative or commercial restraints might hinder the direct exchange between certain types of electronic money. For instance, loyalty points from different merchants or pairs of rare currencies are not always directly exchangeable. The conversion is then realised via a commonly used reference currency, such as US Dollar. Likewise, most cryptocurrencies are not directly exchangeable for fiat currencies but require an intermediate conversion step, e.g. via Bitcoin. ”
• As a comment, the application (EP2704073A1 ) does not seem to mention cryptocurrencies.
• The Board finds the claims to lack inventive step under the Comvik approach.

T 2534/17 -  

https://www.epo.org/law-practice/case-law-appeals/recent/t172534eu1.html

Reasons for the Decision

1. The invention

1.1 The invention relates to a payment module, such as a smart card, storing pre-loaded electronic money which is used for purchasing goods or services (paragraph [0002] of the published application).

1.2 Known cards subtract a payment amount from the amount of electronic money stored on the card. If the stored amount is below the required amount, the payment fails. Even smart cards, storing electronic money of different currency types, such as Euro, Dollar, or Yen, cannot compensate a shortage of one of the currencies with the other currencies stored on the card ([0004]).

The invention seeks to solve this problem by using the total amount of electronic money of all available currencies on the card ([0005]).

1.3 The solution involves using a reference currency ("utility electronic value" in the claims). If payment in one currency ("electronic value") is required, e.g. Euro, and the Euro balance on the card is insufficient, the deficit is taken from the reference currency. If, however, the balance of the reference currency is also insufficient, the reference currency is replenished from one or more of the remaining currencies ("electronic values", Figure 9B and [0086] to [0096]).

1.4 This idea is implemented by a plurality of applications (or "apps") on the card; one for each of the electronic values, and one for the utility electronic value.

Figure 4 shows electronic value apps A-1 to A-N, and a utility electronic value app UA (feature 8). Each electronic value app A-i includes storage areas 40-i, 42-i, 44-i for storing the balance of currency i, an encryption key for UA, and programs for communicating with UA and for updating the balance of currency i ([0040] to [0043] - features 1 and 9). The utility electronic value app UA includes storage areas 40U, 42U, 44U for storing the balance of the utility electronic value, encryption keys for each of A-1 to A-N, and programs for communicating with A-1 to A-N and for updating the balance of the utility electronic value ([0044] to [0047] - feature 11).

G 1/19 - Inventive step of computer simulations

Key points

• In this decision 10.03.2021, the Enlarged Board confirmed that the Comvik-approach to the assessment of inventive step is also to be applied to claims directed to computer-implemented simulation methods.
• The Enlarged Board added that “for that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process” (headnote 2). This headnote may be somewhat cryptic. 
• The case was remitted back* to the Technical Board of Appeal for a decision on inventive step of the claims at issue. The TBA has issued a preliminary opinion wherein the TBA concludes that the Enlarged Board's answer does not fully decide the case. Hence, the TBA still has to decide on inventive step. The TBA refers in particular to para. 128 of G 1/19 as giving guidance. 
• Therein the Enlarged Board said that in its view, “calculated numerical data reflecting the physical behaviour of a system modelled in a computer usually cannot establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behaviour adequately reflects the behaviour of a real system underlying the simulation. Only in exceptional cases may such calculated effects be considered implied technical effects (for example, if the potential use of such data is limited to technical purposes...)”
• * = strictly speaking, the appeal case is pending with the TBA during the time that the referral of questions is pending with the EBA, so the EBA's order does not include a remittal.
• I also highlight that the Enlarged Board in r.110 held that “Following the COMVIK approach, models underlying a simulation form constraints (technical or not) which are not technical for the purposes of the simulation itself. However, they may contribute to technicality if they are, for example, a reason for adapting the computer or the way in which the computer operates, or if they contribute to technical effects relating to the results of the simulation.”
  
  
• In AR-4, the simulation method is claimed as part of a design method. The TBA notes that the description makes clear that the step of revising the designed model in dependence upon the simulated movement of pedestrians through the modelled building structure, can be done by a human designer. Therefore, the design step feature is not technical and does not contribute to inventive step, in view of para. 143 and 144 of G 1/19, according to the preliminary opinion. For this it is also relevant that data representing a model of a building structure appears to have no implied technical use that can be the basis for an implied technical effect, referring to point 98 of G 1/19, because such data can be used for a variety of (technical and) non-technical purposes, for example in a video game. The claim also does not specify how the simulation results are used to modify the design model. 
  
  
• The whole decision G1/19 deserves careful reading and study.

 G 1/19  - G 0001/19

https://www.epo.org/law-practice/case-law-appeals/recent/g190001ex1.html

decision text omitted.

T 2607/17 - Virtual testing of virtual welding (after G1/19)

 Key points

• “In G1/19 the EBoA concluded that, for the purposes of assessing inventive step of a computer-implemented simulation, it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process”
• “Compared to [] a notoriously well-known personal computer, the system of claim 5 differs in that it can ("is operable to") execute coded instructions including a rendering engine configured to render a 3D virtual weldment and an analysis engine configured to perform simulated testing and inspection of the 3D virtual weldment for pass/fail conditions and/or defect/ discontinuity characteristics. In addition, the display device can display the 3D images of the weldment and the user interface allows the user to move the displayed images around ("manipulating an orientation").”
• As a comment, for software invention the 'suitable for' rule for novelty does not apply, neither for the novelty-like analysis to determine the distinguishing features under inventive step. Hence, it does not matter if a normal computer can execute coded instructions (as further defined in the claim). 
• “the board notes that the claimed system carries out computer-simulated testing and inspection of a virtual weldment, i.e. of a computer-simulated weldment and not of a physical, i.e. "real life", weldment.”
• So double simulation in a way.
• “In the board's opinion [...]  the claimed system carries out image processing. Images of weldments are rendered, manipulated and displayed. That the images represent weldments or that the manipulations represent testing and/or inspection of those weldments is, in the general manner claimed and described in the application, the result of the cognitive content (information) of the displayed images. It is the user who perceives the images as weldments and the manipulation of those images as testing and/or inspection. Such cognitive information ("what" is displayed) is not related to any technical problem or technical constraints. [...] It is established case law that the cognitive content of a displayed image ("what" is displayed) is in principle not a technical feature ”
  
  
• “Following the established case law and practice in the formulation of the technical problem, these non-technical features will be given to the skilled person (a computer programmer expert in image processing) for implementation. The objective technical problem can thus be formulated as how the skilled person would implement these non-technical features in the notoriously well-known general purpose computer. In other words, how the skilled person would configure the notoriously well-known general purpose computer to render, process, and display 3D images of the virtual weldment, before, during and after the virtual testing and determine a pass/fail condition based on them.”
• “The claimed system solves this problem by using a "rendering engine" and an "analysis engine". [...] The application describes what the rendering and the analysis engines do but does not provide any information as to how they do it [...] There is no information in the application about any particular technical constraints or considerations regarding the implementation (programming) of the rendering engine, so the board's conclusion is that a skilled person would be able to program such a rendering engine only applying their common general knowledge.”
• The claims are found to lack an inventive step.

T 2607/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t172607eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. The claimed invention

The claimed invention relates to virtual (computer-simulated) testing and inspection of virtual (computer-simulated) weldments.

As a start, 3D images of virtual weldments are rendered. It is to be noted that the virtual weldments are generated using a virtual reality arc welding system, which is described in detail in the application.

Once the 3D images of the weldments are rendered, one or more computer-simulated tests are carried out on them. These computer simulated tests correspond to tests carried out on "real-life" weldments in order to assess their quality and identify possible defects. Images and animations of the virtual weldments after the test are rendered and displayed. The user can then inspect the tested weldment(s) by moving the image(s) around in a display.

The invention is conceived for a training context, in which trainees generate virtual weldments, which are then tested and the result of the test can be used as criterion for passing or failing an examination.

3. Main Request

3.1 Claim 1 defines a method comprising a series of steps: rendering a weldment, subjecting the rendered weldment to a computer-simulated test, rendering the virtual weldment after the test and carrying out a computer-simulated analysis of the weldment and data related to the test so as to determine a pass/fail condition with respect to at least one characteristic. The board notes that claim 1 does not provide any details about how the defined method steps are to be carried out.

T 2825/19 - Linguistics vs abstract formulation of algorithms

 Key points

• The Board finds the claim shown below not inventive under the Comvik approach. The Board: “In essence, the invention translates natural language input into internal formal language expressions and then further translates these expressions into executable formal expressions in a formal language such as SQL (structured query language)”
• The present Board: “The Enlarged Board of Appeal [in G3/08] defined the expression "further technical considerations" by analogy to the expression "further technical effect" introduced in decision T 1173/97 (Computer program product/IBM, OJ EPO 1999, 609). That decision pointed out two cases in which the technical character of a computer program is supported. First, when a computer is used to solve a technical problem related to a technical field outside of computing such as control of industrial manufacturing processes. Second, when there is a "further technical effect" that solves a technical problem internal to the computer system”
• “The board understands opinion G 3/08 as taking a negative view on the technical character of the activity of programming a computer as also expressed in the decision T 1539/09”
• “the board agrees with the examining division that steps b) to p) do not contribute to the technical character of the claimed invention as these steps do not involve technical considerations going beyond "merely" finding an abstract computer algorithm to carry out the translation from natural language text into an internal formal language. In particular, nothing in steps b) to p) reflects considerations that concern the internal technical operations of a computer system on which these steps are carried out. Rather, these steps are specified merely on an abstract level”
• “the board has made it clear that according to opinion G 3/08 the issue of technicality is not only relevant for linguistic aspects but also for the abstract formulation of algorithms. ”
  
  
  
• “Consequently, [under the Comvik approach] the objective technical problem may be formulated as how to implement a non-technical algorithm comprising steps b) to r) in the computer system disclosed in document D4. The board judges that the method of claim 5 does not contain any implementation details going beyond a mere automation of the underlying non-technical algorithm using computing means known from document D4. In view of the above, the board concludes that the method of claim 5 lacks inventive step and is therefore not allowable”

T 2825/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t192825eu1.html

IX. Claim 5 of the new main request reads as follows:

"A computer-implemented method for translating natural language into a formal language executable on a programmable device, said method comprising the steps of:

a) receiving (3.1.1) natural language text;

characterised by:

b) parsing (3.1.2) said text into a sequence of sequences of pretokens;

c) recognizing (3.2.0) the pretokens as tokens in a lexicon of terms;

d) inserting new terms into the lexicon under specific control;

e) assigning syntactic types to pretokens by comparison to lexical terms in the lexicon for further syntactic processing;

f) generating a sequence of expressions by reassigning lexical types to tokens based on syntactic context based on the assigned types;

g) correlating terms occurring in the set of expressions in order to replace indirect references by direct references;

h) performing a process of term reduction, using a type reduction matrix, to establish syntactic dependencies between terms in an expression created by said correlating of terms, wherein the type reduction matrix maps sequences of tokens into a relative reduction ordering that represents syntactic dependencies between tokens;

i) constructing in a process of term inversion chains of syntactic dependencies among lexical terms in an expression provided by the term reduction process and determining dependencies;

j) generating (3.2.3) syntactic trees which represent the syntactic structures of said processed expressions provided by the term reduction process;

k) representing said processed expressions as terms in a syntactic algebra on the basis of the syntactic trees, the syntactic algebra comprising syntactic terms formally representing processed expressions;

l) representing terms in the syntactic algebra as objects in a semantic algebra, the semantic object algebra comprising semantic objects as internal references of terms in the syntactic algebra;

m) combining objects in a semantic object algebra by means of a semantic product on pairs of semantic objects to form more complex semantic objects;

n) representing (3.3.1) correlated syntactic algebraic terms and semantic objects as terms in a semantic tensor algebra, the semantic tensor algebra comprising correlated syntactic terms and semantic objects;

o) representing terms in the semantic tensor algebra as internal formal models;

p) transforming terms in the syntactic algebra into equivalent expressions in an internal formal language;

q) associating external operation environments with internal formal models; and

r) translating expressions of the internal formal language into equivalent formal expressions executable in an external operational environment."

[decision text omitted]

https://www.epo.org/law-practice/case-law-appeals/recent/t192825eu1.html

T 0505/18 - Stopping advertisment display technical

 Key points

• Automotive is technical. Software less so, for the purposes of the Comvik approach. This appeal against a refusal decision concerns the interface between both. Inventive step is to be decided. The distinguishing features are essentially that the computer implemented method involves stopping displaying advertisements on the screen of a navigation system of a car when the car is moving and near a road intersection (my summary). The question is whether this feature is technical.
• The Board: “The distinguishing feature is based on the automatically obtained motion information, the current real-world position of the vehicle and its vicinity to a real-world intersection. By stopping the advertisement based on those physical conditions of the vehicle and its physical environment, it [...] establishes a direct link with physical reality [...]. The distinguishing feature could nevertheless be a mere straightforward implementation of a non-technical requirement [...], for example location-based advertisements for improving sales. However, the board is not convinced that the distinguishing feature has a business motivation, since stopping displaying advertisement in the way claimed is contrary to business objectives. As explained above, the purpose of the feature is to avoid driver distraction for improving safety, which according to T651/12 is a technical effect.”
• “the board decides, in line with decision T 651/12, to recognise improved safety in the technical context of the invention, that of real-time route guidance of a driver of a vehicle, as being a technical effect, and the considerations regarding improved safety in a vehicle navigation system as being technical considerations made by the technical expert in navigation systems.”
• The feature is therefore to be  taken into account for inventive step.
the board is not convinced that the skilled person, without a hint in that direction, would have arrived at the claimed specific safety measure on the basis of the proximity to an intersection and the position and motion of the vehicle.

T 0505/18
https://www.epo.org/law-practice/case-law-appeals/recent/t180505eu1.html

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Invention

2. The invention concerns displaying, on a mobile wireless communication device, advertisement and location-based navigation information for a route.

Admission into the proceedings - sole request

3. During the discussion of inventive step at the oral proceedings, the board made the observation that claim 1 of each of the then main and first to third auxiliary requests was so broad that it could also cover a navigation system for pedestrians, which could play a role in assessing which features made a technical contribution.

The appellant then submitted a new auxiliary request 1bis restricting the claimed system to a system for assisting navigation while driving. The appellant argued that the request should be admitted because it was a response to the above observation expressed for the first time at the oral proceedings. The board agrees that its communication pursuant to Article 15(1) RPBA had not mentioned this interpretation of the claim, and that the new auxiliary request 1bis restricted the claimed subject-matter and no longer covered a navigation system for pedestrians. The board considers these to be exceptional circumstances which justify admitting the amendments under Article 13(2) RPBA 2020.

After the board had expressed its preliminary view that claim 1 of the new auxiliary request was inventive, and that the case should be remitted to the first instance for examination with respect to the dependent claims, description and drawings, the appellant submitted the sole request to replace all requests then on file. Since the sole request merely incorporates an obvious correction (deletion of a redundant "and") into claim 1, and since this request does not raise any new issues, its admission contributes to procedural efficiency. Also with respect to this editorial amendment, the board finds exceptional circumstances which justify admitting the request under Article 13(2) RPBA 2020. Consequently, the board admits the sole request into the proceedings.

Clarity and added subject-matter - claim 1

4. No clarity objections have been raised by the examining division and the board finds that claim 1 is supported by the description and clearly defines the subject-matter for which protection is sought.

5. Claim 1 is based on a combination of claim 1 as originally filed and the features specifying that the position determining device determines "the position of the device when driving", and that the obtained current location is the "current driving location". It is directly and unambiguously derivable from paragraphs [0034] and [0038] of the description as originally filed that the system of the invention, including the features of claim 1, is thought to be used for assisting navigation during driving.

6. Therefore, claim 1 fulfils the requirements of Articles 84 and 123(2) EPC.

Inventive step - claim 1

7. Document D2 discloses a mobile advertisement information delivery system comprising an advertisement server (paragraphs [0052] and [0053]; Figure 1, network navigation center 10; Figure 2; paragraph [0093]), as well as mobile wireless communication devices carried in automobiles (paragraphs [0053] and [0086]; Figures 1 and 3, instrument 12/41; claims 1 and 2). Each mobile wireless communication device comprises a display unit, position detecting means and a processor, and receives and displays advertisements from the advertisement server, and location-based navigation information while driving (paragraphs [0087] to [0097]; Figures 3 and 5). As did the examining division, the board regards D2 as the closest prior art.

7.1 The subject-matter of claim 1 differs from the system disclosed in document D2 in that it includes the following feature:

- stop output of the at least one advertisement while said at least one mobile wireless communications device is moving and within a given distance of an intersection.

7.2 In the decision under appeal, the examining division considered that this feature had the effect described in paragraph [0038] of avoiding the user being distracted by advertisements when the user is within a given distance of an intersection and is more likely to be in need of the navigational information. In the assessment of the claims then on file, the examining division considered that this effect was not technical.

7.3 The appellant contested that opinion, arguing that in accordance with decision T 651/12 of 14 April 2016, avoiding driver distraction for improving safety was a technical effect. The subject-matter of T 651/12 was, in the appellant's view, similar to that of the present application, and its reasoning confirmed that there was a technical problem addressed in an improved navigation system which reduced the level of driver distraction and hence improved safety of operation of the vehicle. This was exactly the effect that was provided by the distinguishing feature of the claimed invention.

According to the appellant, the distinguishing feature resulted in the driver being less distracted from the output navigation information close to the intersection. In this way, the driver was more aware of the direction to take at the intersection before reaching the intersection and could thus better focus on the road and traffic at the intersection and was better prepared to avoid a crash or other dangerous sudden situation. Following the rationale of T 651/12, the distinguishing feature provided a technical solution to a technical problem, namely that of improving the safety of operation of a vehicle.

The appellant further argued that the claimed invention provided an "ergonomically" improved navigation system running advertisements, which was optimised for use by the driver because the system assisted the driver in making the right decisions at intersections by stopping the advertisements at a given distance from the intersections. In accordance with T 651/12, in this respect too, the distinguishing feature thus provided a technical solution to a technical problem.

7.4 Even though the claim does not specify how the advertisement is output, the board recognises, as did the examining division in the decision under appeal, that stopping output of an advertisement reduces the level of distraction. As a consequence, the board is satisfied that the distinguishing feature credibly contributes to the safety of operation of the vehicle by reducing the level of driver distraction in a difficult driving phase that requires higher concentration.

8. Decision T 651/12

8.1 With regard to the question of whether that effect is technical, the board agrees with the appellant that decision T 651/12 is pertinent. The claimed invention considered in that decision concerned a map display apparatus capable of displaying a bird's eye view map, which was generated by calculation means of the apparatus. The board was of the opinion that "the outcome of the calculation is used for a technical purpose, namely to display information in an ergonomically improved manner" and that "ergonomics, understood as the applied science of refining the design of products to optimize them for human use, in the context of the map display of [that] case", was a technical field (Reasons 3.2). The board further stated the following (also Reasons 3.2):

"in the context of e.g. a car navigation system, the immediate apprehension of the presented information results in the driver being less distracted from the road and traffic and, thus, also adds to safety. Accordingly, also in this respect, displaying the three-dimensional bird's eye view map provides a technical solution to a technical problem.

As such, the board sees no fundamental difference between the present case and a method for operating a computer-controlled machine where the outcome of some calculation is used for operating the machine in an improved manner, which is generally considered technical in all aspects."

8.2 As the appellant pointed out, decision T 651/12 has recently been referenced as being "exceptional" in decision T 1091/17 of 4 June 2020, according to which the view expressed in T 651/12 that the reference to "presentations of information" in Article 52(2)(d) EPC was meant to relate exclusively to the cognitive content of the presented information ("what is presented") and not to the manner in which it is presented ("how it is presented") has not been adopted by the mainstream case law in the course of legal development. The board in decision T 1091/17 explains, with reference to several decisions, that the predominant view in the case law is what T 1235/07 of 17 March 2011 in point 11 calls the "wider view", according to which both what is presented and how it is presented are considered to be "presentations of information" (see T 1091/17, Reasons 1.6). Similarly, decision T 1802/13 of 10 November 2016 does not follow decision T 651/12 on this question either (Reasons 2.1.5).

The board fully agrees with those conclusions in T 1091/17; however, contrary to the appellant's argument in its letter, the fact that T 1091/17 contradicts decision T 651/12 does not mean that T 651/12 is a "different decision" within the meaning of Article 112(1)(b) EPC or that a problem of uniform application of the law within the meaning of Article 112(1)(a) EPC exists. The statements in T 1091/17 and T 1802/13 merely reflect a development of the law (cf. G 3/08 of 12 May 2010, OJ EPO 2011, 10, Headnote 4).

Moreover, those two decisions diverge from T 651/12 only on account of the adoption of the "wider view" as explained above. They do not contradict T 651/12 with regard to the question of whether features of a navigation system contributing to improving safety by reducing driver distraction during driving are technical. The board is not aware of any decision clearly diverging from T 651/12 with regard to that point of view. In the following, the board describes relevant case law for the present case.

9. Other relevant decisions

9.1 In decision T 2035/11 of 25 July 2014, the competent board states the following (Reasons 5.2.1):

"providing real-time route-guidance information to a user in dependence on the user's real-world position is a technical task. It involves an interaction between the user and the navigation system, wherein the navigation system continuously measures the user's position using technical means and, on the basis of these measurements, provides the user with information aimed at enabling the user to manage the technical task of moving a vehicle to a desired destination.

Although the completion of this technical task depends on the user acting upon the provided route-guidance information and hence on an intervention by the user, it does not rely on subjective considerations by the user or on psychological effects. The user may still decide to ignore the route-guidance information, but that does not detract from the technical character of the navigation system as a technical tool to be used interactively in a technical process and not merely in a preparatory phase as a substitution of what could also be done using pencil and paper."

The board in T 2035/11 then concludes that a mathematical route-planning algorithm, which as such is not technical, when used in a navigation system comprising a position-determining device and route-planning functionality dependent on the actual real-world position of the system, provides a technical contribution at least to the extent that it produces information that enables the route-guidance functionality (Reasons 5.1.3 and 5.2.2).

In the present case, claim 1 clearly specifies the distinguishing feature in the context of a navigation system with means for automatically measuring the driver's position using technical means and displaying the route in real-time in order to continuously provide information aimed at enabling the driver to move the vehicle to a desired destination. That by itself does not mean that the distinguishing feature is technical. The presentation of information for business purposes is not technical (see e.g. T 370/15 of 28 June 2019, Reasons 3.2 and 3.3).

The distinguishing feature is based on the automatically obtained motion information, the current real-world position of the vehicle and its vicinity to a real-world intersection. By stopping the advertisement based on those physical conditions of the vehicle and its physical environment, it provides data about a technical process (see, for example, decision T 1784/06 of 21 September 2012, Reasons 3.1.1, T 2035/11, Reasons 5.1.3) and establishes a direct link with physical reality (T 489/14, OJ EPO 2019, 86, Reasons 11). The distinguishing feature could nevertheless be a mere straightforward implementation of a non-technical requirement (see e.g. T 1455/16 of 20 November 2019, Reasons 5.5), for example location-based advertisements for improving sales. However, the board is not convinced that the distinguishing feature has a business motivation, since stopping displaying advertisement in the way claimed is contrary to business objectives. As explained above, the purpose of the feature is to avoid driver distraction for improving safety, which according to T 651/12 is a technical effect.

9.2 In decision BGH, X ZR 47/07, GRUR 2011, 125 -Wiedergabe topographischer Informationen of 26 October 2010, the German Federal Court of Justice (Bundesgerichtshof) decided that features concerning the choice of a cartographic presentation of position-based topographic information for vehicle navigation were not technical (paragraph 39). However, the decision considered the presentation of cartographic information to be user-friendly (see paragraph 40), and did not address the issue of whether this user-friendly presentation of information was considered to contribute to driving safety.

In decision BGH, X ZR 27/12, GRUR 2013, 909 -Fahrzeugnavigationssystem of 23 April 2013, the German Federal Court of Justice considered that providing street names to the driver in a vehicle navigation system was not technical. The decision recognised that the purpose of the feature was to relieve the user from looking at the screen of the navigation system (paragraph 16). However, the decision did not explicitly address the question of whether improving driving safety is technical or whether the feature was considered to credibly contribute to improving driving safety (rather than merely contributing e.g. to "user comfort", as mentioned in paragraph 28). It is also not clear whether the street names were seen as necessary for the navigation or simply as being additional optional information to meet user preferences.

9.3 In deciding whether features relating to presentation of information make a technical contribution, several criteria have been established in the case law of the Boards of Appeal.

A feature which relates to the manner in which 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 (T 1143/06 of 1 April 2009, Reasons 5.4).

According to decision T 336/14 of 2 September 2015, in assessing whether features relating to the presentation of cognitive content to the user of a graphical user interface (GUI) contribute to a technical effect, it has to be analysed whether the GUI together with the content presented credibly assists the user in performing a technical task by means of a continued and/or guided human-machine interaction process (Reasons 1.2).

According to decision T 1442/16 of 30 August 2019, one criterion for assessing the credibility of an alleged technical effect in inventions involving presentation of information is to take into account whether the alleged effect is the result of subjective psychological factors or objective physiological factors, a distinction that has already been made in several decisions (Reasons 1.8).

The mere fact that mental activities are involved does not necessarily qualify subject-matter as non-technical, but reducing the cognitive burden is not a technical effect in itself (T 1741/08 of 2 August 2012, Reasons 2.1.6; T 1143/06, Reasons 5.4).

In the present case, the board is of the opinion that the distinguishing feature assists in the continued and guided human-machine interaction, for the reasons given in point 9.1 above. The distinguishing feature is not lowering the cognitive burden, but only avoiding driver distraction. The fact that the driver can concentrate better without advertisements is not the result of a subjective psychological effect. Even if some persons may be less distracted than others by advertisements, and subjective psychological aspects can influence the degree to which an advertisement distracts a person, anyone at any time is more distracted if an advertisement is displayed than if it is not displayed.

9.4 Some decisions deal with the question of increased safety, with none of them clearly denying improving safety as a technical effect.

In decision T 547/08 of 10 March 2011, the board considered that prompting the user to press a hard key in a portion of the screen display in a process of confirming entry of information into a dialysis machine contributed to the technical effect of improving safety when the dialysis machine was operated by non-trained personnel (Reasons 5.1.1 and 5.1.2).

In decision T 1188/13 of 27 October 2016, the invention concerned a method of producing a graphical representation of a text message in the context of air control messaging. The board found that the steps of parsing a text message, using rules for applying graphical enhancement, retrieving graphic components and assembling them into a graphic representation were not inventive, but the board considered that the skilled person would be aware of the safety of air control messaging and in this context would consider teachings in respect of graphical representation of textual messages on a display (Reasons 3.1 to 3.3, 5).

In decision T 336/14 the board did not believe that the distinguishing features "help[ed] a nurse in setting up the blood treatment machine in a safe and efficient way" because the information provided could not credibly support a continued and guided human-machine interaction process and thus could not assist the user in performing the technical task. However, the board did not address the question of whether improving safety was a technical effect (Reasons 1.2.5).

10. In view of the considerations above, the board decides, in line with decision T 651/12, to recognise improved safety in the technical context of the invention, that of real-time route guidance of a driver of a vehicle, as being a technical effect, and the considerations regarding improved safety in a vehicle navigation system as being technical considerations made by the technical expert in navigation systems.

The way the advertisement is implemented is the task of the person skilled in the technical field of navigation systems faced with the non-technical requirement of displaying advertisement in the navigation system (T 641/00, OJ EPO, 352, Reasons 6). Independently of the prior art, when implementing the system in accordance with the non-technical requirements, the decision to stop displaying advertisements close to an intersection when the vehicle is in motion for safety reasons is made not by the notional business person but by the technical expert in navigation systems.

The board therefore concludes that the distinguishing feature is to be considered to make a technical contribution and has to be taken into account in the assessment of inventive step. The distinguishing feature solves the technical problem of adapting the navigation system of document D2 in order to improve driving safety.

11. With regard to the question of whether the distinguishing feature is inventive, document D2 concerns outputting advertisements at any point as an advantage over the previous limitation of providing advertisements on sign boards by the roadside. It does not address the subject of driving safety and, with regard to some embodiments, even discloses providing advertisements close to or at road intersection points. For example, it suggests presenting an advertisement for a restaurant in the vicinity that can be reached by taking the opposite direction, thereby actively using on-screen advertisements close to a point of intersection to influence the driver to possibly change direction (paragraph [0118] and [0119], Figure 5).

12. Even though it was common general knowledge that driver distraction is to be avoided for safety reasons, the board is not convinced that the skilled person, without a hint in that direction, would have arrived at the claimed specific safety measure on the basis of the proximity to an intersection and the position and motion of the vehicle.

At the oral proceedings, the appellant argued that there were many possible technical options for the skilled person to improve driving safety in general. Since document D2 taught showing advertisements as often as possible at the right points on the driver's route, including at intersections, the skilled person attempting to improve driving safety would not consider stopping advertising as claimed as a matter of routine development, but would opt for other solutions. Consequently, the invention involved an inventive step.

The board agrees with this argument. Indeed, limiting the advertising negatively impacts the underlying business method of D2 and thus would not be considered as a matter of routine by the skilled person facing the general problem of driving safety.

The appellant also argued that even if the skilled person at all considered stopping the advertising, they would not arrive at the claimed solution, which was a sophisticated compromise between no advertising and the approach disclosed in D2, which maximised advertising.

Again, the board agrees with the appellant.

13. Document D1 relates to measuring the effectiveness of location-based advertisement and does not address the issue of driving safety either.

14. Therefore, the subject-matter of claim 1 of the main request is inventive over the cited prior art (Article 56 EPC).

Concluding remarks

15. The appellant has overcome the objections of the decision under appeal and the board has no further objections to claim 1. However, the board did not examine the dependent claims, description and drawings. The case is thus to be remitted to the department of first instance for any adaptation accordingly.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.