technical implementation – no

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

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

Semi-automatic answering/3M INNOVATIVE PROPERTIES – T 0755/18 – 11 December 2020

This decision is about the output of a machine learning algorithm. The output of the algorithm is more accurate here compared to the prior art. However, this is not a reason that the output automatically serves a technical effect. The output therefore does not automatically lead to non-technical features making a technical contribution via the output.

Object of the Invention:

the present application is concerned with the generation of billing codes to be used in medical billing, wherein billings are provided to an insurer for reimbursement
computer-based support systems have been developed to guide human coders through the process of generating billing codes
claim 1 specifies a computer-implemented method for improving the accuracy of automatically generated billing codes

Board I (inventive step):

a billing code is non-technical administrative data
generating a billing code is a cognitive task

Appellant (inventive step):

use of machine learning techniques to improve the accuracy of the machine output
invention is technical because it improved the system so that it would generate more accurate billing codes in the future

Board II (inventive step):

if neither the output of a learning-machine computer program nor the machine output’s accuracy contributes to a technical effect, an improvement of the machine achieved automatically through supervised learning for producing a more accurate output is not in itself a technical effect
in this case, the learning machine’s output is a billing code, which is non-technical administrative data
the accuracy of the billing code refers to “administrative accuracy” regarding, for example, whether the billing code is consistent with information represented by a spoken audio stream or a draft transcript
the learning machine to generate more accurate billing codes or, equivalently, improving the accuracy of the billing codes generated by the system, is as such not a technical effect

Conclusion

Furthermore, the below figure shows according to G 1/19, point 85 and 86 how and when “technical effects” or “technical interactions” based on inter alia non-technical features may occur in the context of a computer-implemented process (the arrows in the figure above represent interactions and not abstract data). In this decision T 755/18 it was discussed whether the non-technical features contribute to the technical character of the invention via the output side and also via the technical implementation (although the latter is not discussed here in this commentary).