inventive step – no – legalAND.tech

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

Programmiersystem/RENNER – T 1539/09 – 18 July 2013

The invention is directed to a graphical programming language and environment that should enable a user to create programme code without a great deal of learning effort or special expertise. The definition and provision of a programming language does not contribute to the solution of a technical problem according to the Board.

Object of the Invention:

enable persons without special prior knowledge in the position to create their own computer programmes
the application proposes a graphical programming system as a solution
the system provides different “programme modules” which can be linked together according to predetermined rules
graphic symbols are assigned to the program modules, which the user can arrange on a “visualisation surface” and which are linked there by means of suitable lines to form a “structure diagram”
each programme module of a structure diagram corresponds to a “programme code section” and the entire structure diagram thus to a programme
thus, the user can define programme code “on a text basis” by manipulating graphic symbols on the computer screen without having to enter it directly
when the user selects a programme block, a display interface (e.g. a window) opens in which the user can edit the programme code section of this block

Board:

the invention is directed to a graphical programming language and environment that should enable a user to create programme code without a great deal of learning effort or special expertise
the effect of reducing the user’s mental effort when creating programmes is not in itself a technical one in the opinion of the Board
this is all the more true as it is aimed at equally for all programmes, regardless of the purpose of the developed programme

when programming – in the sense of formulating programme code, “coding” – the programmer must select those formulations from the repertoire of a programming language that lead to the desired result when the programme is executed
the programming language defines, on the one hand, which formulations are permissible as “well-formed” (syntax) and, on the other hand, which “behaviour” is attributed to a program (operational semantics)
in individual cases, the choice of programming language can influence how easily (and sometimes whether at all) the solution to a problem can be formulated as a programme

the activity of programming itself is an essentially mental process – comparable to the verbalisation of a thought or the formulation of a mathematical fact in a calculation – which, in the words of the Enlarged Board of Appeal in G 3/08 lacks “further technical considerations”
this applies at least if and to the extent that, as in the present case, the activity of programming does not serve to achieve a technical effect in a causal manner in the context of a specific application or environment.

–> the definition and provision of a programming language or programming language tools per se does not contribute to the solution of a technical problem

Configuring a system-of-systems with membrane computing/SIEMENS – T 1565/ 17 – 9 January 2018

In this decision the appellant argued inter alia, that it is not possible to prove the expected technical effect and that this obliged the board to accept the effect unless it could “falsify” it.

Object of the Invention:

the application relates to what is called the “configuration of a system-of-systems“
the term “system-of-systems” is said to have arisen in the systems engineering community, where it “reflects the concepts and developments” of real systems such as “smart grids, integrated supply chains, collaborative enterprises, and next-generation air traffic management“
a system-of-systems is “a collection of independent systems that work together to create a new, more complex system which offers more functionality and performance than simply the sum of the constituent systems“
configuration of a system-of-systems is said to be “the task of selecting the optimal subset of component systems, that can perform the required task“

the problem/task is rephrased in mathematical terms as a selection problem
the relevant “characteristics” C of any system-of-systems SoS are defined as a set of pairs of attributes A and values from a set Domain(A) of all values which the respective attributes can take: Hence, the set of all possible such characteristics is C(SoS) = union of all attribute-value pairs Ai x Domain(Ai)
the available components for any particular system are given as a set S of components Si, each having some characteristics: Thus C(Si) is a subset of C(SoS) for any Si
the required characteristics are given as a subset of all possible ones too: C(R) is a subset of C(SoS)
the configuration problem is then said to be the problem of finding an “optimal” subset Simpuls of the available components S so that their characteristics include the required ones: C(R) must be a subset of C(Simpuls)
the notion of optimality is not defined in the application

the declared objective of the invention is to solve this “system-of-systems configuration problem” with “membrane computing“, which is disclosed as being “a variation of” P-systems, a computational model “inspired” by biological processes
the invention is said to rely on “a new kind of solver” which is “constructed using membranes, also called P-systems, and uses metaphors of chemical reactions occurring in living cells”

Appellant I (issue to be decided)

use of “membrane computing” is the only difference over D1
this difference has the effect of making it “possible to solve the occurring NP-hard problems […] in linear time”
the objective technical problem solved by the invention thus has to be seen as “improv[ing] the time behavior of a method for the configuration of a system-of-systems“
the claimed invention involves an inventive step because “there is no teaching in the prior art that would have prompted the skilled person, faced with the objective technical problem, to modify” D1 “by means of membrane computing“
a “skilled person, confronted with the invention and with the information about” D2 “would accept” that by using “membrane computing” the “occurring NP-hard problems in the method” for the configuration of a complex system-of systems “can be solved in linear time“
D2 “is conclusive proof” of “the claimed technical effect“
“it is principally not possible for the applicant to prove the expected technical effect“, suggesting that the invention was “a theory in the empirical sciences“, which, according to Sir Karl Popper, “can only be falsified“
this obliged the board to accept the effect unless it could “falsify” it

Board I (clarity)

Claim 1 refers to “configuration of a system-of-systems without defining either “system-of-systems” or the problem of “configur[ing]” one, apart from mentioning that a “components system” has “roles described by […] participation statements” and “a set of requirements” which a configuration has to “fulfill”
both terms are unclear
there is no indication in the application that the term “system-of-systems“, or the problem of configuring one, has an established clear meaning in the art
the application itself uses these terms in two significantly different ways […]
D1 stresses further differing aspects of a “system-of-systems“, namely that the system components are related to each other by “use” relationships

Claim 1 states that the configuration of the system-of-systems is computed “by means of membrane computing“
the term “membrane computing“, and the notion of computing something “by means of” membrane computing, to be unclear in this generality […]

in response to the board’s objections relating to clarity, the appellant has merely asserted that the claims are “clear enough” for the relevant skilled person
this sweeping asserting does not sway the board’s opinion
in this respect it is only of passing relevance that the skilled person is insufficiently characterised as having an unspecified “academic” education and “scientific work experience”
claim 1 does not specify in clear terms the problem addressed (“configuration of a system-of-systems”) or the solution proposed (at least with regard to the phrase “by means of membrane computing”) and is thus unclear

Board II (further remarks)

since claim 1 does not specify the problem to be solved or its solution, it is impossible to determine the complexity class of the problem or the computational complexity of the solution
for this reason alone, the appellant’s allegation that the claimed invention solved “the occurring NP-hard problems […] in linear time” is without merit

the board notes at this point that computational complexity theory is not, as the appellant seems to suggest, an empirical theory which is not amenable to proof
to the contrary, complexity theorems are established by mathematical proof and their limits are precisely indicated
therefore, if the appellant’s inventive step argument turns on an improved time behaviour, a rather specific one in particular, it is for the appellant to establish that the proposed solution has the claimed time complexity, and in which situations or under which circumstances it applies

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 – 3^rd 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 – 3^rd 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 – 3^rd 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 – 3^rd 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 – 3^rd 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

Edge Detection – T 0165/ 12 – 6 July 2017

In this decision, the Board found that the description of the main request did not support the claim, as the description disclosed only one specific example of a merely general feature (“first phase congruency component”). In an auxiliary request, the appellant overcame this rejection, but the claimed subject-matter is still considered not to be inventive (but technical), since the choice of one out of the 3 straightforward possibilities – mentioned in the decision – for increasing the number of edge pixels does not involve an inventive step.

Object of the Invention:

method for edge detection of an image
the method categorises pixels in the image as edge pixels or non-edge pixels

Board I (support by the description – main request):

in the application itself, no different way to determine the phase congruency at a pixel is disclosed than to calculate the ratio between the local energy at the pixel and the sum of Fourier components
also in the statement of grounds the appellant provided no additional example and, thus, failed to support its view that a different phase congruency component could be used
hence, it is a mere allegation that other “first phase congruency components” could be used
according to the established jurisprudence of the boards of appeal, the requirement of 84 EPC means that the subject-matter of the claim must be taken from the description and it is not admissible to claim something that is not described
in decision T 94/05, in particular, the board pointed out that the requirement for the claims to be supported by the description was intended to ensure that the extent of protection as defined by the patent claims corresponds to the technical contribution of the disclosed invention to the art
therefore the claims must reflect the actual contribution to the art in such a way that the skilled person is able to perform the invention in the entire range claimed
the skilled person, at least after reading the patent specification, taking account of his common general knowledge, and possibly also after carrying out normal experiments, must actually be provided with at least a plurality of different embodiment variants
in the present case, the use of the term “first phase congruence component” leaves it open, what other embodiments besides the “local energy” are envisaged
–> there is not enough support in the description for using the broad term “first phase congruency component” in the independent claims instead of the only embodiment disclosed in the specification, i.e. the “local energy”

Board II (inventive step – auxiliary request):

technical effect disclosed in the application is: “This allows for pixels that fail the phase congruency test, to be counted as edge pixels if their local energy satisfies the phase congruency component criteria.“
a person skilled in the art recognizing that a first method for edge detection does not result in an expected number of edge pixels evidently has three straightforward possibilities to increase the number of edge pixels:
1. by using another – better – method for edge detection
2. by adapting the first method for edge detection (for instance by reducing a respective threshold that distinguishes between non-edge pixels and edge pixels)
3. by using a further known method for edge detection, which provides different results (i.e. additional edge pixels) than the first method and combining the results of both methods
for instance, an example for an algorithm using different methods for detecting different kind of edges is disclosed in D3
choosing one out of these straightforward possibilities does not involve an inventive step
the Board does not see an inventive step in using the local energy method for finding additional edge pixels that were missed by the first method (as claimed) as compared to rejecting edge pixels by using the local energy method that were found by the first method, but should not be considered as edge pixels (as disclosed in D1)
this is considered a mere implementation detail, depending on the choice of criteria of the first method, which might cause too many or not enough edge pixels

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

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