Category: G06F

Designing a wiring path/YAZAKI – T 1371/16 – 17 September 2021

In this decision the subject matter is a simulation for designing a wiring path. Claim 1 does not specify any further use of an output wiring path data of the simulation, further properties or specific data format that could limit the possible uses of the data. Therefore, the output data does not contribute to an “implied” technical effect that is to be taken into account in the assessment of inventive step. Furthermore, the distinguishing features do not include any inventive details of the computer implementation.

Object of the Invention:

  • the application concerns an apparatus and method for aiding a design of wiring paths of wire harnesses in a three-dimensional space such as a vehicle body
  • the design takes into consideration three-dimensional data of a body in which the wire harness is installed, a minimum bending radius of the wire harness which varies depending on a type and the number of wires to be bundled into a wire harness, and a type of the covering of the wire harness
  • Claim 1 differs from the closest prior art in that
    • a storing unit also stores a second minimum bending radius based on force of the worker’s hand
    • a selecting unit selects the largest of the first and second minimum radii if they differ

Board I (inventive step – general considerations):

  • Claim 1 concerns an apparatus for computer aided design of a wire harness wiring path which outputs “data on corrected wiring path” as a final result
  • it thus relates to a design process which uses computer-implemented simulation to produce numerical data describing a wiring path
  • the distinguishing features result in wiring path data being output by the apparatus which take into account the force of the worker’s hand
  • the claimed subject-matter is thus analogous to a computer-implemented simulation of a technical system
  • its patentability is to be assessed taking into account the criteria established by the recent decision G 1/19
  • according to decision G 1/19, if a claimed process results in a set of numerical values, it depends on the further use of such data (which use can happen as a result of human intervention or automatically within a fwider technical process) whether a resulting technical effect can be considered in the inventive step assessment
  • if such further use is not, at least implicitly, specified in the claim, it will be disregarded for this purpose
  • calculated numerical data reflecting the physical behaviour of a system modelled in a computer usually cannot establish the technical character of an invention 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)
  • G 1/19 presents its conclusions for the application of the COMVIK approach to simulations
  • it explains that the underlying models of the simulation may contribute to technicality if, for example, they form the basis for a further technical use of the outcomes of the simulation (e.g. a use having an impact on physical reality)
  • in order to avoid patent protection being granted to non-patentable subject-matter, such further use has to be at least implicitly specified in the claim
  • G 1/19 provides some examples of further technical uses of the numerical data resulting from a simulation, which under certain conditions may be potential uses, implicitly specified or implied by the claim
  • one example is the use of the data in a manufacturing step, which “would of course be an argument in favour of patentability”
  • another example of a further technical use is the use of the data in controlling a technical device, which can be recognised if the resulting numerical data is specifically adapted for “the purposes of its intended technical use“, i.e. for controlling a technical device
  • in that case, the data is considered to have a technical character because it has the potential to cause technical effects
  • either the technical effect that would result from the intended use of the data could be considered “implied” by the claim, or
  • the intended use of the data (i.e. the use in connection with a technical device) could be considered to extend across substantially the whole scope of the claimed data processing method
  • these arguments cannot be made if claimed data or data resulting from a claimed process has relevant uses other than the use with a technical device

Board II (inventive step):

  • in support of inventive step, the appellant argued that the distinguishing features achieved a technical benefit over D1 by providing a wiring harness design capable of being installed simply and effectively in circumstances where a design output by the system of D1 would not
  • by providing the second minimum radius based on the force achievable using an assembler’s hand, the invention was “able to generate the design of a wiring harness which is easier to manufacture, yet which also does not have excessive stress generated on it, and yet which is also of as short a distance as possible in order to reduce cost and weight, as well as potentially improve the reliability of the systems utilising that harness through shorter communications paths“
  • the distinguishing features ensured the manufacturability of the design

Appellant I (inventive step):

  • according G 1/19 the claimed invention produced data that allowed manufacturing the wire harness
  • the numerical data produced by the claimed apparatus reflected the physical structure of the designed wiring path and not merely the physical behaviour of a simulated system
  • the claim specified at least implicitly a further use of the designed wire harness which had an impact on physical reality, and therefore fulfilled the requirements expressed in G 1/19
  • as with a claim to a bicycle that did not need to specify that the bicycle had two wheels, there had to be a limit to which features had to be specified in the claim for recognising the technical purpose
  • the claim explicitly specified that the design aiding apparatus comprised a designing unit and that the wiring harness was installed in a vehicle body
  • it was sufficient to show that the end result had, at least implicitly, a technical purpose
  • it was clear from the claim that the technical area of the invention was the installation of the wiring harness along the path

Board III (inventive step):

  • the board is however not convinced that the distinguishing features contribute to a technical effect in accordance with the criteria established by decision G 1/19
  • the only purpose of the wire harness wiring path design aiding apparatus according to claim 1 is to output “data on corrected wiring path data”, which is numerical data about the wiring path design
  • as explained above, the distinguishing features result in wiring path data being output by the apparatus which takes into account the force of the worker’s hand
  • claim 1 does not specify any further use of the output wiring path data, further properties or specific data format that could limit the possible uses of the data
  • in view of that, other relevant uses of the output data for non-technical purposes, for example informational, study or training purposes, are within the scope of the claim
  • since the data can be output in any form or format, it cannot be considered to be specifically adapted for the purposes of an intended technical use
  • in particular, the output data is not specifically adapted to be used in controlling a technical device or manufacturing a wiring path
  • it can thus be concluded that the data produced by the apparatus of claim 1 is not limited to a further technical purpose and does not contribute to an “implied“ technical effect that is to be taken into account in the assessment
  • furthermore, the distinguishing features do not include any inventive details of the computer implementation, and the appellant has not argued otherwise
  • –> no inventive step

Masking a private key/CERTICOM – T 0556/ 14 – 28 July 2016

In this decision in a patent a method of masking a privat key is claimed. It is considered not to be a mathematical method as such, because storing on a smartcard (hardware) was claimed. The claimed method achieves some protection against power analysis attacks and thus have a technical effect. An inventive step is acknowledged if, having regard to the state of the art, the invention is not obvious to a person skilled in the art. It is not necessary that the invention is a technical improvement over the prior art. The claimed method is an alternative approach compared to the closest prior art and is not suggested.

Object of the Invention:

  • the invention relates to a method for masking a private key used in cryptographic operations on a security token such as a smartcard against power analysis attacks
  • the security of cryptographic systems relies on a particular piece of information being kept secret, and power analysis attacks try to extract information about the secret by statistically analysing the power consumption of the security token when carrying out the cryptographic operation
  • the attacker of the power analysis attack considers the security token “to be a black box which contains a known algorithm and an unknown key” and in order to obtain the required statistical information, repeatedly executes the algorithm with varying parameters under his control
  • masking is, roughly speaking, a technique of randomising the calculations carried out in each instance of the cryptographic algorithms, so that their result remains the same but no relevant statistical information about the key can be gathered by repeated execution
  • first a private key d, which in elliptic curve cryptography is multiplied with a point P to derive a public key Q = dP, is “divided” into a plurality of parts
  • specifically disclosed is a division into two parts b1 and b2 such that d = b1 + b2
  • then a random number π is generated and the values of the parts are updated as b1 = b1 + π mod n and b2 = b2 – π mod n, where n is the number of points on the elliptic curve used
  • the cryptographic operation, in which the private key is “used”, is then carried out by “utilizing” the individual and modified “new parts”

Board I (Art. 52 (2) and (3) EPC):

  • due to the express reference in claim 1 to a smart card on which the key parts and also the new parts are stored, the claimed method of masking is not a mathematical method as such (Claim 1: A method […] storing the new parts on the smart card […])
  • due to the reference to the smart card and in view of the description the skilled person would understand the claimed masking operation to be an automated one to be carried out on the smart card

Board II (technical effect of masking)

  • central to any masking method is the modification of a mathematical method in such a way that its repeated execution is less prone to a statistical analysis revealing the properties of a secret
  • since the result of the computation must not change, this means that masking, in essence, relies on replacing one mathematical method by another which has an equivalent result
  • however, the modified computation is meant to be better protected against power analysis (or other sidechannel) attacks when carried out on hardware
  • as such, the idea of masking is well-established in the art as a protection against such attacks
  • the board accepts as a technical problem the protection of a cryptographic computation against power analysis attacks – if, and only if, the computation is actually carried out on hardware and thus open to such attacks
  • claim 1 specifies a masking method carried out on hardware
  • even though claim 1 literally specifies only the storage of the key parts on a smart card, in the board’s view the skilled person can only understand the method of claim 1 as a fully computer-implemented method
  • the claimed randomisation steps, namely the calculation of two randomised key parts and the computation of Q = b1P + b2P instead of Q = dP, does achieve some protection against power analysis attacks and thus have a technical effect
  • à mathematical steps contribute to the technical character of claim 1

Board III (inventive step)

  • the differences between the claimed matter and D2 (closest prior art) are
    • that D2 relates to RSA (Rivest-Shamir-Adleman = public-key cryptosystem) whereas claim 1 relates to elliptic curve cryptography (ECC), and
    • the masking of the secret by randomised splitting
  • the problem solved by the invention over D2 can therefore be considered as adapting the masking method of D2 to other cryptographic operations particular side channel attacks

Respondent I (inventive step)

  • the randomised splitting steps do not make the claimed method more efficient than the one according to D2
  • on the contrary, in fact: while the method of D2 masks the given calculation by the addition of one multiplication and one addition, the claimed method would be adding two multiplications and one addition and thus be less efficient

Board IV (inventive step)

  • the disadvantage of a method may be outweighed by an advantage it may also have
  • for instance, a slower method might have a statistically significant protective advantage against particular side channel attacks
  • the board hastens to add that the patent contains no detail whatsoever that might allow a judgement or even a sophisticated guess as to the relative security of the proposed measure against any particular power analysis attack
  • however, the board considers that the comparison between the claimed method and that of D2 cannot be reduced to the number of additions and multiplications
  • inventive step is acknowledged if, having regard to the state of the art, the invention is not obvious to a person skilled in the art
  • it is not necessary that the invention is a technical improvement over the prior art
  • the claimed randomized splitting and the adding of an “effective zero” according to D2 are alternative approaches and that the change from the latter to the former is not suggested by the change from ECC to RSA
  • the respondent has also not put forward any fundamental mathematical considerations which would, to the board’s satisfaction, suggest this change
  • the respondent was not able to convince the board that the skilled person starting from D2 would be led, in an obvious way, to the randomized split according to the invention
  • –> the claimed method shows the required inventive step over D2

Conclusion:

There are all necessary elements which are necessary that the mathematical method is considered for inventive step at the EPO:

  • a mathematical method
  • a use: computer implementation of the mathematical method on a smartcard
  • the use is technical: because it contributes to a technical effect, namely the protection of a cryptographic computation against power analysis attacks – if, and only if, the computation is actually carried out on hardware and thus open to such attacks

Expert system/SCHINDLER – T 1817/ 14 – 4 July 2017

This decision concerns information modelling by a user to create a data structure, where this modelling has no technical effect. Therefore, the modelling steps are considered as an aim to be achieved in a non-technical field and used for the formulation of the technical problem (COMVIK II). The data structure created by the user also has no technical advantage for a claimed subsequent query processing.

Object of the Invention:

  • expert system for aiding patent administration and jurisprudence by providing (semi)automated support for assessing a patent or patent application (or other “endeavour”) for novelty and inventive step in view of “a national patent system or its Highest court precedents”
  • the invention proposes to obtain from a patent (or patent application) p and any prior art document i elements of their respective technical teachings TT.p and TT.i
  • the TT.i’s of the prior-art document i are collectively referred to as “RS” (reference set) and, in combination with the TT.p’s, as “PTR” (pair of TT.p and RS)
  • the elements and their “relations”, expressing anticipation and contradiction between elements or sets of elements, are arranged in what is called an ANC matrix (“anticipates/non-ants/contradicts”)
  • the information in this matrix can be queried by and is then displayed to the user

Board I (claim construction)

  • the claimed method has two phases: the first phase leads to the creation of the ANC matrix which, in the second phase is used to “automatically and instantly” produce responses to user queries
  • the major part of the first phase is done by the user
  • only the processing of user queries is meant to be automated

Board II (technical effects and inventive step)

  • the major part of claim 1 is a modelling procedure during which the user considers the items in the domain of interest, extracts their relevant properties, and “compiles” them “into” a formal language
  • following T 49/99, this procedure of information modelling to be an intellectual activity
  • (effectively a method for performing mental acts, Article 52(2)(c) EPC) which does not, per se, contribute to the technical character of an invention
  • for this conclusion it is immaterial that the present application does not even relate to the modelling (let alone simulation) of a physical system but to the modelling of what a given set of documents discloses and how they relate to each other
  • accordingly, a technical contribution of the present invention could only lie in the way in which the generation and use of the model are implemented

Appellant I (technical effects and inventive step)

  • particular features of the ANC data structure had to be considered to be technical
  • in particular that the ANC had to reflect the analysis of documents in terms of two different levels of granularity (“elements” and “fundamental facts of these elements”) and that it contained novel fields (e.g. “anticipates/not-anticipates-and-not-contradicts/contradicts” as claimed)

Board III (technical effects and inventive step)

  • the appellant did not argue that the particular ANC data structure had a specific technical advantage for the subsequent query processing
  • the appellant was thus unable to convince the board that the modelling steps caused any technical effect
  • when, however, the modelling steps are assumed to be taken as an aim to be achieved in a non-technical field – according to established jurisprudence of the boards of appeal (see T 641/00, headnote 2) – the form of the ANC is determined by the model and thus obvious
  • the computer support specified in claim 1 does not go beyond the general statement that a computer is used to support the users in their task
  • likewise, the feature that users may query the “items” in the ANC and the method replies “automatically and instantly by displaying to the user this item’s information and all its such relations to other items” does not, in the board’s judgement, go beyond the statement that the information in the ANC may be accessed by user queries, as is known from prior-art database systems
  • –> claim 1 lacks inventive step in view of common knowledge, as an obvious way of providing computer support to an essentially non-technical method

 

 

Concept terms scoring/GOOGLE – T 0872/19 – 14 October 2021

In this decision, the appellant stated that a “web page” is a physical entity, corresponding to an “image”. The Board has considerable doubts about this. In fact, the inventive step did not depend on this.

Object of the Invention:

  • the subject matter relates to online advertisement auctions
  • when an online advertisement auction is to be conducted to select one or more advertisements to be included in a resource/ web page, resource features are extracted from the web page
  • a concept term scoring system uses the received resource features to predict a vector of scores that includes a score for each of the set of concept terms/ advertising features
  • in online advertising, the concept term scoring system can generate a score for each of a set of concept terms that may be used as advertising keywords for selecting advertisements for participation in the auction
  • the concept term scoring system includes a deep network and a classifier
  • Claim 1 differs from the closest prior art inter alia in that it is configured to process the alternative representation of the input to generate a respective relevance score for each concept term in a pre-determined set of concept terms, wherein each of the respective relevance scores measures a predicted relevance of the corresponding concept term to the resource

Appellant I (inventive step – 3rd auxiliary request)

  • the objective problem to be solved was to provide a more accurate representation of the resource features by generating an alternative representation of these resource features “in a new way”
  • in decision T 208/84, point 3, the board found that a method for image processing was susceptible of industrial application
  • T 208/84 stated the following: “Clearly a method for obtaining and/or reproducing an image of a physical object or even an image of a simulated object (as in computer-aided design/computer-aided manufacturing (CAD/CAM) systems) may be used e.g. in investigating properties of the object or designing an industrial article and is therefore susceptible of industrial application. Similarly, a method for enhancing or restoring such an image, without adding to its informational content, had to be considered as susceptible of industrial application.“
  • in T 208/84, points 6 and 7, the board stated that it was of the opinion that “even if the idea underlying an invention may be considered to reside in a mathematical method a claim directed to a technical process in which the method is used does not seek protection for the mathematical method as such” and concluded that “[i]n contrast, a ‘method for digitally filtering data’ remains an abstract notion not distinguished from a mathematical method so long as it is not specified what physical entity is represented by the data and forms the subject of a technical process, i.e. a process which is susceptible of industrial application“
  • thus, the board equated a “technical process” with “a process susceptible of industrial application“
  • in accordance with the case law, “processing images” was considered as being susceptible of industrial application and thus was technical
  • according to the appellant a “web page” is a “physical entity”

Board I (inventive step – 3rd auxiliary request)

  • the board agrees that the electrical signals producing the “web page” are physical entities and that a web page printed on a piece of paper becomes physical
  • but it has strong doubts that a “web page” can be considered as a “physical entity“
  • rather, a “web page” is data representing information

Appellant II (inventive step – 3rd auxiliary request)

  • it would thus be correct to consider processing other entities, such as text, to be technical as well
  • the appellant questioned the difference between processing images versus processing text: the words in a particular language had a meaning (except for nonsensical words or sounds) that a (sufficient) number of people understood in the same manner as a (sufficient) number of people recognised a particular colour as being “red”, for example, even though this understanding was not “universal”
  • both an image and a web page were physical entities and that the claimed system concerned the processing, i.e. the analysing and classification, of physical entities
  • the classification of images had been recognised in the case law as solving a technical problem

Board II (inventive step – 3rd auxiliary request)

  • the board did not consider whether the system of claim 1 might be susceptible of industrial application but indeed whether the system had a technical effect going beyond the mere implementation of a non-technical method on one or more computers
  • however, providing a more accurate “alternative representation” of the resource features, and therefore refined relevance scores, is not a technical effect since the relevance scores do not constitute technical features
  • this does not depend on whether the “resources” are text, web pages, images or multimedia content, as in page 1, lines 4 to 5, of the description, and thus does not depend on whether the “resource features” are features of text, web pages, images or multimedia content (G 1/19 of 10 March 2021, Reasons 126, last sentence; see also T 1924/17 of 29 July 2019, Reasons 12 to 13).

Board III (inventive step – 3rd auxiliary request)

  • the relevance scores measure a predicted relevance of the “concept terms” to the resource
  • taking the example of an “image” as a “resource”, the concept term might be “cat“
  • the (first) relevance of this “concept term” to a first image comprising only dogs might be lower than its (second) relevance to a second image comprising exactly one dog and one cat, which might itself be lower than its (third) relevance to a third image comprising two cats or more, as an example
  • inversely, the three images exemplified here might be classified by their relevance to the concept term “cat”: the third image is more relevant than the second image, which is itself more relevant than the first image
  • the system of claim 1 does not explicitly stipulate that the classifier is also “configured to classify the concept terms” or “configured to classify the resources”
  • on the contrary, the description on page 6, lines 10 to 13 discloses that it is the concept term scoring system and not the classifier that orders the concept terms based on the alternative representation
  • moreover, not all image classifications solve a technical problem
  • if a user classifies displayed images via a user interface to have the images arranged according to the user’s viewing preferences, the image classification will, in most cases, not solve a technical problem
  • in the absence of any technical effect beyond its mere implementation in one or more computers, the subject matter of claim 1 of the first to third auxiliary requests cannot be considered to involve an inventive step

Spam classification/MICROSOFT – T 0022/ 12 – 16 November 2015

This decision concerns the classification of emails where a user flags spam in addition to a computer-implemented method. This is considered to be a de-automation of a computer-implemented method. De-automation is not, according to the Board, a technical solution to a technical problem.

Object of the Invention:

  • the invention concerns the classification of emails, e.g. as either spam or legitimate mail
  • an incoming email is first analysed to determine whether it contains one or more features in a set of predetermined features that are particularly characteristic of spam
  • two types of feature are used: word-oriented and “handcrafted“
  • the former refers to the presence of particular words, or stems of words, the latter to features determined through human judgement alone
  • examples of a handcrafted feature is a sender address, since most spam messages are sent at night from “.com” or “.net” domains

Board I (inventive step):

  • the Board agrees with the Examining Division that the classification of messages as a function of their content is not technical per se
  • it is immaterial whether the messages are electronic messages, because, even though an email has technical properties, it is the content of the email that is classified
  • mathematical methods as such are not technical and the application of a mathematical method as such in a non-technical analysis of message content does not change that
  • if there is a technical effect, it can only reside in the automation of the email classification using a computer
  • the technicality of the computer is not enough to establish a technical effect of any method that it executes

Appellant I (inventive step):

  • a classification based on a combination of “handcrafted features” and “word oriented features” had the technical effect of reducing processing load

Board II (inventive step):

  • the Board is not persuaded that the alleged effect is actually achieved by the invention
  • there is no link between the word-oriented and handcrafted features, so that the latter reduces the processing involved in the former
  • the handcrafted features are, rather, a different class of features that the user considers indicative of spam, but which cannot be expressed in terms of the presence of individual words
  • simply adding a second class of features to the analysis increases the load rather than reducing it
  • furthermore, the Board does not consider that the de-automation of a computer-implemented method, by making a human perform steps that a computer could do automatically, is a technical solution to a technical problem
  • any reduction in computer processing would be a mere consequence of the de-automation
  • handcrafted features relate to information content that is considered as indicative of spam
  • including such features in the analysis might, if well chosen, improve the quality of the classification, but the designation of a second class of features does not provide a technical effect

Appellant II (inventive step):

  • the appellant argued, however, that there was a technical effect in the particular combination of an SVM and a sigmoid function
  • performing the method in two stages, first using an SVM, and then applying an adjustable sigmoid function as a threshold to the output of the SVM, reduced the processing load, which reduced the complexity of the computer implementation
  • thus, the invention was motivated by technical considerations of the computer implementation

Board III (inventive step):

  • the Board is not persuaded by the appellant’s arguments on this point
  • the Board does not find support, anywhere in the application, for the classifier being updated by adjusting the sigmoid parameters alone, without retraining the SVM
  • the generation of parameters for the classifier during the training phase involves two steps:
    • first the weight vector w is determined by conventional SVM training methods
    • second the optimal sigmoid parameters are calculated by using a maximum likelihood on the training data
  • there is nothing to suggest that re-training may involve only one of those steps, or that the classifier may be updated by simply adjusting the parameters A and B
  • on the contrary, it is the teaching of the application that, when the conditions of what is considered as spam change (e.g. when the user reclassifies a message) the whole classifier is retrained
  • furthermore, the Board does not consider that reducing the complexity of an algorithm is necessarily a technical effect, or evidence of underlying technical considerations
  • that is because complexity is an inherent property of the algorithm as such
  • if the design of the algorithm were motivated by a problem related to the internal workings of the computer, e.g. if it were adapted to a particular computer architecture, it could, arguably, be considered as technical (T 1358/09 referring to T 258/03)
  • however, the Board does not see any such motivations in the present case
  • thus, the Board is not persuaded that the use of an SVM in combination with a sigmoid threshold function contributes, technically, to the the computer implementation
  • the Board rather considers this to be a mathematical method
  • the technical implementation of the method consists in programming the computer to perform the method steps
  • this would have been a routine task for the skilled programmer
  • –> no inventive step

Classification method/COMPTEL – T 1784/06 – 21 September 2012

In this decision, the appellant criticises the COMVIK approach on several points. The Board disagrees. With regard to inventive step, according to the Board, there is a lack of “technical purpose” according to T1227/05.

Information from the author: “technical purpose” is no longer sufficient according to decision G1/19 for non-technical features to make a technical contribution. According to current case law (as of August 2024), in such a case a further or intended or implied technical use is required.

Object of the Invention:

  • data records, e. g. the duration and data volume of a telecommunication connection, that are sorted into service classes, in particular for rating and billing purposes
  • identifying the class of a service from a data record forms a performance bottleneck once the number of services is increased to the thousands
  • the application seeks to provide a method which can handle large numbers of service classes more efficiently than the conventional use of conditional statements does
  • the solution is based on reducing, as a first step, a large number of service classes into specific sets
  • these sets are then intersected in a final step
  • this algorithm classifies data records more efficiently

Board (COMVIK approach):

  • it would appear paradoxical to the Board to recognise an inventive step on the basis of a non-technical innovation (such as an organisational, administrative, commercial or mathematical algorithm) having no technical implication other than the (obvious) desire for its implementation on a general-purpose computer

Appellant I (COMVIK approach):

  • claimed subject-matter as a whole should be examined for the presence of an inventive step once the subject-matter as a whole has been found to meet the technology criterion of Article 52(1)(2)(3) EPC
  • Article 56 EPC 1973 should be applied independently of Article 52(1)(2)(3) EPC because Article 52(2) EPC has to be applied independently of Article 56 EPC 1973

Board I (COMVIK approach):

  • the Board does not accept such formal reasoning and points out that it is normal and often necessary for legal provisions to be in an asymmetric relationship or hierarchical dependency
  • for example, the novelty of a claim has to be examined independently of inventive step considerations, whereas a finding of inventiveness presupposes a novelty examination
  • another example is the validity of a priority claim which has to be checked independently of novelty and inventive step requirements, whereas novelty and inventive step cannot be established independently of the validity of a priority right.

Appellant II (COMVIK approach):

  • regarding the Board’s insistence on a technical problem when applying the problem-and-solution approach, the appellant disputes that such a requirement can be deduced from the EPC or introduced from its Implementing Regulations
  • the appellant refers inter alia to decision T 473/08 (by a different Board) to point out that “a non-technical problem can have a technical solution“

Board II (COMVIK approach):

  • there is no divergence, the Board agrees to the statement that a non-technical problem can have a technical solution
  • on the other hand, where an intrinsically non-technical solution (mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical
  • this is the point on which the present case hinges

Appellant III (COMVIK approach):

  • another argument of the appellant refers to the legislative history of the EPC (travaux préparatoires) which is said not to provide any explicit support for a cumulative application of Article 52(2) EPC and Article 56 EPC 1973

Board III (COMVIK approach):

  • the restriction of substantive patent law to technical subject-matter is so self-evident that the founding fathers of the EPC did not even mention that requirement in the original (1973) version of Article 52(1)
  • the explicit clause “in all fields of technology” was not added to Article 52(1) until the Diplomatic Conference in the year 2000 harmonised the Article with the TRIPs treaty
  • nevertheless, Article 52(1) EPC has always been understood as referring to technical inventions

Board IV (inventive step):

  • as the algorithm is a mathematical (inter alia Boolean) method and mathematical methods as such are deemed to be non-inventions (Article 52(2)(3) EPC), a technical character of the algorithm could be recognised only if it served a technical purpose (T1227/05)
  • however, the automatic classification of data records according to claim 1 serves only the purpose of classifying the data records, without implying any technical use of the classification
  • the claim covers any non-technical (e.g. administrative or commercial) use of the classified data records
  • in the light of the description, the classification method prepares rating and billing procedures
  • the Board does not consider the result of the algorithm — a set of classified data records — as technical

Board V (inventive step):

  • enhanced speed of an algorithm, as compared to other algorithms, is not sufficient to establish a technical character of the algorithm (T 1227/05)
  • if a computer-implemented algorithm runs more quickly, the resulting saving in energy is a technical effect inherent to the normal interaction of software and hardware, i.e. it is not a “further” technical effect of the algorithmic program controlling the computer (T 1173/97)
  • the claimed algorithm may allow a data record to be processed in a parallel computer architecture as the various fields of a data record can be judged separately in a first level of processing
  • however, claim 1 is not limited to an implementation on a parallel hardware structure
  • in fact, the application as a whole is silent on parallel data processing (Parallel processing has been mentioned by the decision under appeal and addressed by the statement setting out the grounds of appeal)
  • –> no inventive step

Classification/BDGB ENTERPRISE SOFTWARE – T 1358/09 – 21 November 2014

This decision concerns the patentability of the classification of text documents. In this context, the Board clarifies whether the determination of claim features contributing to the technical character is made without reference to the prior art.

Object of the Invention:

  • the invention is concerned with the computerized classification of text documents
  • this is done by first building a “classification model” and then classifying documents using this classification model

Board I (sufficiency of disclosure):

  • the application does not explain several techniques in detail, and claim 1 does not specify any measure being taken to ensure linear separability
  • it may therefore be questioned whether the application is sufficiently disclosed over the whole scope claimed
  • however, the Board considers that this issue does not prevent it from examining for the presence of an inventive step
  • given the outcome of this examination the question of sufficiency of disclosure need not be answered

Board II (inventive step):

  • claim 1 defines a method for classifying text documents essentially in terms of an abstract mathematical algorithm
  • a mathematical algorithm contributes to the technical character of a computer-implemented method only in so far as it serves a technical purpose (T 1784/06)
  • in the present case, the algorithm serves the general purpose of classifying text documents
  • classification of text documents is certainly useful, as it may help to locate text documents with a relevant cognitive content, but does not qualify as a technical purpose
  • whether two text documents in respect of their textual content belong to the same “class” of documents is not a technical issue
  • the same position was taken in T 1316/09 which held that methods of text classification per se did not produce a relevant technical effect or provide a technical solution to any technical problem

Appellant I (inventive step):

  • the claimed invention could not be seen as the straightforward implementation of something which had been done manually before
  • when manually classifying a text document, a human being would read it through and assign a particular class to it on the basis of his understanding of the document
  • as was known from the domain of cognitive psychology, he would not consider all of the words in the document; words near its beginning would often already provide a clear indication of its semantic topic
  • the claimed automatic classification method on the other hand involved precise computation steps which no human being would ever perform when classifying documents
  • the claimed computerised method was highly efficient, in particular in comparison to classification methods disclosed in documents cited in the international search report

Board III (inventive step):

  • the Board agrees that a human being would not apply the claimed classification method to perform the task of classifying text documents
  • the Board accepts that the proposed computerised method may be faster than classification methods known from the prior art
  • however, the determination of the claim features which contribute to the technical character of the invention is made, at least in principle, without reference to the prior art (T 154/04)
  • it follows that a comparison with what a human being would do or with what is known from the prior art is not a suitable basis for distinguishing between technical and non-technical steps (T 1954/08)

Board IV (inventive step):

  • nevertheless, not all efficiency aspects of an algorithm are by definition without relevance for the question of whether the algorithm provides a technical contribution
  • if an algorithm is particularly suitable for being performed on a computer in that its design was motivated by technical considerations of the internal functioning of the computer, it may arguably be considered to provide a technical contribution to the invention (T 258/03)
  • however, such technical considerations must go beyond merely finding a computer algorithm to carry out some procedure (G 3/08)
  • in the present case no such technical considerations are present
  • the algorithm underlying the method of claim 1 does not go beyond a particular mathematical formulation of the task of classifying documents
  • the aim of this formulation is clearly to enable a computer to carry out this task, but no further consideration of the internal functioning of a computer can be recognised

Appellant II (inventive step):

  • the claimed method provided more reliable and objective results than manual classification, since it was independent of the human subjective understanding of the content of the documents

Board V (inventive step):

  • the Board does not contest that the claimed classification method may provide reliable and objective results, but this is an inherent property of deterministic algorithms
  • the mere fact that an algorithm leads to reproducible results does not imply that it makes a technical contribution
  • since the mathematical algorithm does not contribute to the technical character of the claimed method, an inventive step can be present only in its technical implementation
  • the technical implementation of the mathematical algorithm being obvious
  • –> no inventive step

Information from the author: “technical purpose” is no longer sufficient according to decision G1/19 for non-technical features to make a technical contribution. According to current case law (as of August 2024), in such a case a further or intended or implied technical use is required.

Categorization of Messages – T 1316/09 – 18 December 2012

In this decision, the Board considers the technical effect, i.e. categorization of electronic messages is more efficient and better, to be speculative.

Object of the Invention:

  • method and a system for suggesting automated responses to an incoming electronic message based on content analysis and categorisation

Board I (inventive step):

  • a decisive factor in any assessment of inventive step is the objective technical problem underlying the invention
  • the inventive solution of the objective technical problem must be based on the technical features of the invention as claimed
  • text classification per se, however, does not serve any technical purpose
  • neither does the combination of different methods of text categorisation per se provide any relevant technical effect that could form a valid basis for defining the objective technical problem
  • in the light of document D2, the invention seems merely to consist of proposing an alternative to the classifier 34 in the form of a “classifier committee” combining the rule-based scheme of D1 with an example-based classifier based on the k-nn algorithm disclosed in D1

Appellant (inventive step):

  • the distinguishing features of claim 1 over D2 lead to the following technical effects:
    • more relevant responses to an incoming message can be located, i.e. a greater number of irrelevant responses are filtered out
    • the time and effort required to respond to incoming messages is reduced
    • messages can be processed at a greater rate, i.e. more efficiently
    • the quality of responses to messages can be improved
    • the synergistic combination of query based classification and example based classification yields greater efficiency and better results than either method taken alone
  • the skilled person is confronted with the objective technical problem of how to more efficiently and effectively provide a response to an incoming message

Board II (inventive step):

  • the alleged effects are speculative, considering that nothing in the claimed invention prevents the intersection of the categories provided by a query and by the example-based algorithm being empty and hence that the claimed method is a complete failure
  • even more importantly, the appellant did not provide any substantive reason why a more efficient and better categorisation of the informational content of an incoming electronic message qualifies as a technical effect at all and why such an advancement over the prior art has technical character
  • no inventive step

Text mining/BOEING – T 1416/06 – 24 April 2009

In this decision the board considers the data does not form a physical entity.

Object of the Invention:

  • the subject matter is directed to a method of representing a document collection
  • the method is to a large extent defined in terms of equations
  • the purpose of the method is to present the information in a way that can be more easily understood or evaluated by a user

Board I (field of technology):

  • at the bottom of the method is a mathematical technique known as orthogonal decomposition
  • this technique is generally applied to large matrices and, like many mathematical functions, can be represented graphically
  • it is typical for mathematical representations that they involve pure numbers, ie abstract data, having no physical connotation
  • in the present invention the representations are of documents and the terms used in the documents
  • thus, although the data have a certain “meaning“, they remain abstract
  • they can hardly be regarded as forming a physical entity, nor does the method result in a change in the data but merely in their representation (T 208/84)
  • it could therefore be argued that the invention – apart from its implementation – is essentially a mathematical method pursuant to Article 52(2)(a) EPC, resulting in a presentation of information pursuant to Article 52(2)(d) EPC

Image classification / STMICROELECTRONICS – T 1148/05 – 27 May 2009

In this decision, a method of image classification was claimed. The Board assumed that all features contribute to the technical character and that the sufficiency of disclosure was given.

Object of the Invention:

  • image classification method for classifying digital images into photographs, texts, and graphics
  • conventional heuristic methods implemented by expert systems present a number of drawbacks, in particular the computational complexity required for analysing the large number of pixels of an image
  • another problem is touched on by the “impossibility of optimising analysis using parallel architectures”
  • the thrust of the application is for constructing a classification algorithm (“tree-structured classifier”) which is both powerful in terms of class discrimination and efficient in terms of processing speed

Board I (sufficiency of disclosure (Article 83 EPC):

  • examining division has argued that the application does not disclose any specific example of a tree classifier adapted to a specific set of image classes
  • however, the application does disclose the “high-level classification problem” (i.e. to distinguish photographs from graphics and texts, see paragraphs 0002 and 0046) and it discloses that 72 lowlevel features have been chosen (from among 389 features, for example, see paragraphs 0016 and 0052) to carry out the test described in paragraphs 0047 to 0053
  • background of that choice may lack detail but it still provides the general teaching that a (sub-)set of low-level features can be chosen according to general criteria (discrimination power and efficiency, column 3, lines 22 to 25) and managed in any combination (paragraph 0020) to build a classifier fulfilling a set of conditions (see e.g. paragraphs 0021/0022, 0039, 0042)

Board II (inventive step):

  • all features are assumed to contribute to the technical character of the claimed subject matter
  • general aspects of processing and pre-classifying digital images are old
  • however, the claimed method derives novelty from the use of a large library of 22 specific technical image parameters (low-level features) which are not disclosed in combination in any of the available prior art documents
  • Article 56 EPC 1973 asks for an inventive technical contribution (T 641/00-Two identities/COMVIK)
  • the following line of argument guides the skilled person in an obvious manner from the prior art to the claimed method:
    • classification of digital images for the adoption of the most suitable image-processing strategies has become “an indispensable need“, see application
    • according to D2, which may be used as a starting point, Web images are classified into photographs and graphics
    • in digital image processing, it is well-known (and inevitable) to construct a classification algorithm before it is used for classifying images
    • when constructing an algorithm for classifying digital images, it is well-known to accomplish this by way of a tree classifier using features or parameters which describe a digital image, see e.g. the prior art referred to in the application itself
    • invention mainly differs from prior art by the library of specific low-level features for improving the classification result
    • however, it is evident that all the image features which are known to describe properties of digital images are natural candidates for distinguishing images and classes of images, from each other
    • the skilled person has an expectation of improvement in that any low-level feature is prima facie suitable for discriminating image classes at least at a high level.
    • the skilled person designing a binary classification tree obviously prefers features having a great power of discriminating two classes (see e.g. D3, page 4, second paragraph)
    • the application itself presents most of its low-level features as forming part of the prior art
    • regarding the few features for which no prior art has been cited in the application, the application still conveys the impression that those features represent usual parameters for describing and analysing digital images
    • otherwise, if they were fundamentally new to the image processing person, they would have to be disclosed in much greater detail
    • –> no inventive step