Category: EPO’s BoA

Ephemeral group chat/SNAP – T 1959/20 – 9 November 2023

In this decision, the Board used non-technical features to formulate the technical object (in line with COMVIK). The Board then went on to explain why the implementation of non-technical requirements of a prior art system appears non-obvious, but is not non-obvious (see the last two bullet points).

Object of the Invention:

  • the invention concerns the implementation of an “ephemeral group chat”, that is, a chat whose messages are automatically deleted when a certain condition is met (for example, when a message has been viewed for a certain amount of time by all recipients)
  • how to implement the requirement of deleting all copies of a chat message based on the occurrence of an event in all client devices, such as the message having been read by all participants

Board (part I):

  • the feature of deleting all copies of a message after it has been read by all recipients is not based on technical considerations
  • nor does it solve a technical problem
  • the mentioned feature is a non-technical requirement expressing a user’s wish or subjective preference
  • non-technical features do not contribute to inventive step but may instead appear in the formulation of the technical problem, in particular as constraints or requirements to be achieved (T 641/00)

Appellant:

  • the condition to simultaneously delete a message for all participants when a trigger event had occurred at all recipient devices is not part of the problem to be solved
  • this has a technical effect, namely increasing security and maintaining data consistency across all devices
  • the technical problem to be solved was rather “how to coordinate the deletion of messages so that there is increased security and consistency“

Board (part II):

  • security of the system is not credibly increased
  • it could equally well be argued that security is decreased
  • achieving consistency of the contents of the various chat messages is not a technical effect
  • implementation of the non-technical requirements: since this cannot be achieved through the independent deletion of the messages disclosed in D1, the skilled person would have to look for a workable solution and, would consider managing the deletion operations centrally by means of the server as one of the obvious possibilities
  • implementation of nontechnical requirements on a technical prior art system might require modifications which, at first glance, appear non-obvious, as there is no technical reason for them in view of the prior art alone
  • however, since according to the principles of “Comvik” non-technical features cannot contribute to inventive step, the nontechnical requirements must be seen as a given, and the skilled person implementing them must make the necessary modifications to the prior art

Automated script grading/UNIVERSITY OF CAMBRIDGE – T 0761/20 – 22 May 2023

In this decision the Board gives far-reaching statements for an “implied technical use” and “what is technical” based on G 1/19.

Object of the Invention

  • the application relates to automated assessment of scripts written in examination, in particular English for Speakers of Other Languages (ESOL) examinations
  • the object is to provide a computer system that can automatically grade text scripts [and provide grades] that correlate well with the grades provided by human markers

Examining Division:

  • distinguishing features merely representing mathematical or linguistic operations and entities, implemented on a general-purpose computer
  • distinguishing features are not directed to a specific technical implementation going beyond the common use of a general-purpose computer
  • distinguishing features are not limited to a technical purpose, since it is not specified how the input and the output of the sequence of mathematical or linguistic steps relate to a technical purpose, so that said it would be causally linked to a technical effect
  • grading text scripts is not considered as serving a technical purpose

Appellant:

  • the problem addressed is “providing a computer system that can automatically grade text scripts [and provide grades] that correlate well with the grades provided by human markers“
  • distinguishing features reflected “further technical considerations“, for which case it stated that G 3/08 “guaranteed” that a technical character is present
  • invention provides a technical contribution in the field of “educational technology”, defined as “the combined use of computer hardware, software, and educational theory and practice to facilitate learning”

Board (part I) (technical effect within the computer):

  • the model is not based on technical considerations relating to the internal functioning of a computer (e.g. targeting specific hardware or satisfying certain computational requirements)
  • the preference ranking is chosen merely according to its educational purpose, which does not relate to any effects within the computer
  • the claimed training procedure might constitute a technical contribution to the state of the art (see e.g. G1/19, reasons 33); taken alone, however, this is a mathematical method, so this contribution is in the – excluded – field of mathematical methods (see T 0702/20 and T 0755/18, catchwords) and is therefore not a patentable contribution

Board (part II) (technical effect via “implied technical use”):

  • what remains as a potentially patentable contribution is the purpose of the claimed system to provide an automated tool for script grading (since no technical effect within the computer is established)
  • questions to be answered are (i) whether the problem is, or implies, a technical one, and (ii) whether it is actually solved (T 641/00, reasons 5 and 6)
  • question (ii): the human grading process is a cognitive task in which the marker evaluates the content of the script to assign a grade
  • the assigned grade depends on the content of the scrip itself, but is also at least partly subjective: the marker will have preferences as to style and language, and will be influenced by experience and grades assigned to scripts in the past
  • it is doubtful that the problem of automating script grading is defined well enough that one can properly assess whether it has been solved, i.e. in the sense that it provides a system that can actually replace different human markers and provide “correct” grades
  • the invention may be useful, as the for the (self-)evaluation of linguistic competences by students
  • it is assumed that the problem, as qualified by the Appellant, is solved
  • under this assumption, there is a first argument that any automation of human tasks, irrespective of the task, is sufficient to conclude that a technical problem is solved, as it reduces human labor
  • this argument contradicts the requirement of G 1/19 that there must be a technical purpose
  • G 1/19 was related to computer-implemented simulations, its reasons apply to computer-implemented methods other than simulations as well
  • Enlarged Board stated that “information which may reflect properties possibly occurring in the real world […] may be used in many different ways“, that “a claim concerning the calculation of technical information with no limitation to specific technical uses would therefore routinely raise concerns with respect to the principle that the claimed subject-matter has to be a technical invention” (reasons 98) and that “[if] the 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 wider technical process) whether a resulting technical effect can be considered in that assessment” (reasons 124), and concluded that “such further [technical] use has to be at least implicitly specified in the claim” (reasons 137)
  • therefore, the argument that a technical problem is already solved by the mere provision of any automated tool cannot succeed
  • it is assumed that the claimed invention serves the purpose of supporting its users in evaluating linguistic competences
  • the question remains whether the assessment of linguistic competences, or maybe merely providing a grade, is a technical purpose

Board (part III) (What is technical?):

  • Appellant considers that automated grading makes a technical contribution in the field of “educational technology” and, if the Board disagrees, asks the question “what is a technical field?” or “a field of technology?”
  • the express reference to “fields of technology” in Article 52(1) EPC, introduced with the EPC 2000 in order to bring Article 52 EPC in line with Article 27(1) TRIPS, was not intended to change the established understanding that patent protection is “reserved for creations in a technical field“, i.e. involving a “technical teaching […] as to how to solve a particular technical problem” (see OJ EPO Special edition 4/2007, 48, but also G 1/19, reasons 24, and T 1784/06, reasons 2.4)
  • the field of “educational technology” as defined by the Appellant is a rather inhomogeneous one, covering insights from – and presumably contributions to – a wide range of “fields“, technical ones and non-technical ones
  • it appears questionable that this field can be considered a technical one as a whole (however, this question is not decisive)
  • what is decisive, according to established case law of the Boards of appeal, is whether the invention -makes a contribution which may be qualified as technical in that it provides a solution to a technical problem
  • if this is the case, a contribution to a field of technology may be said to also be present
  • it is noted that the “field” of this contribution may be different from the one to which the patent more generally relates: for instance, inventions within the broad field of “educational technology” may make contributions in the field of computer science
  • in G 1/19, the Enlarged Board followed its earlier case law and “refrain[ed] from putting forward a definition for ‘technical’“, because this term must remain open (section E.I.a, especially reasons 75 and 76; see also OJ EPO Special Edition 4/2007, 48)
  • the Enlarged Board provided considerations as to what may be considered technical
  • the Enlarged Board had suggested that a technical effect might require a “direct link with physical reality, such as a change in or a measurement of a physical entity” (see T 489/14, reasons 11)
  • the Enlarged Board accepted that such a “direct link with physical reality […] is in most cases sufficient to establish technicality” (reasons 88) and, in this context, that “[it] is generally acknowledged that measurements have technical character since they are based on an interaction with physical reality at the outset of the measurement method” (reasons 99)
  • the Enlarged Board also stressed that an effect could also be “within the computer system or network” (i.e. internal rather than “(external) physical reality”, see G 1/19, reasons 51 and 88)
  • the Enlarged Board recalled that potential technical effects might also be sufficient (see also reasons E.I.e), i.e. “effects which, for example when a computer program […] is put to its intended use, necessarily become real technical effects” (reasons 97)
  • the Enlarged Board considered that calculated data, while “routinely raising concerns with respect to the principle that the claimed subject-matter has to be a technical invention over substantially the whole scope of the claims” might contribute to a technical effect by way of an implied technical use (reasons 98 and 137), “g. a use having an impact on physical reality” (reasons 137)
  • while the Enlarged Board has thus found that a direct link with physical reality may not be required for a technical effect to exist, it has, in this Board’s view, confirmed that an at least indirect link to physical reality, internal or external to the computer, is indeed required
  • the link can be mediated by the intended use or purpose of the invention (“when executed” or when put to its “implied technical use”)
  • returning to the case at hand, the Board finds that automated script grading, by itself or via its intended use for evaluating linguistic competences, does not have an implied use or purpose which would be technical via any direct or indirect link with physical reality
  • the claimed computer-implemented method of automated script grading does not provide a contribution to any technical and non-excluded field, be it by way of how the automation is carried out, or by way of its use
  • à no inventive step

Board (part IV) (Referral to the Enlarged Board of Appeal):

  • the case law of the Boards of Appeal on the question of what is “technical” or a “field of technology” is sufficiently uniform (see in particular G 1/19) so that a referral to the Enlarged of Appeal is not required
  • the term “educational technology” is too vague to be relevant for deciding the present case
  • even within a field of technology a patentable invention must be shown to solve a technical problem
  • in the present case, the Board was unable to identify a specific technical problem solved by the invention

Summary

  • Appellant: problem is to provide an automated tool for script grading that correlate well with the grades provided by human markers
  • Board: no technical effect within the computer
  • Board: doubtful that problem is solved
  • Board: it is assumed that the problem is solved
  • Board: based on G1/19 the argument that a technical problem is already solved by the mere provision of any automated tool cannot succeed
  • Board: it is assumed that the claimed invention serves the purpose of supporting its users in evaluating linguistic competences
  • Board: the question remains whether the assessment of linguistic competences, or maybe merely providing a grade, is a technical purpose
  • Appellant: considers that automated grading makes a technical contribution in the field of “educational technology” and, if the Board disagrees, asks the question “what is a technical field?” or “a field of technology?”
  • Board: the field of “educational technology” as defined by the Appellant is a rather inhomogeneous one, covering insights from – and presumably contributions to – a wide range of “fields”, technical ones and non-technical ones
  • Board: it appears questionable that this field can be considered a technical one as a whole (however, this question is not decisive)
  • Board: it is decisive whether the invention makes a technical contribution
  • Board: at least an indirect link to physical reality is required
  • Board: link can be mediated by the intended use or purpose of the invention
  • Board: automated script grading, by itself or via its intended use for evaluating linguistic competences, does not have an implied use or purpose which would be technical via any direct or indirect link with physical reality
  • Board: not inventive

Simulation accuracy/YOKOGAWA – T 2014/21 – 7 December 2022

This EPO’s Board of Appeal decision relates to a simulator for a facility in a plant. The simulator adjusts a simulation model based on actual data from the plant. All features were taken into account by the Board in assessing inventive step, but the objective technical problem (as formulated by the Board) was simply to find an alternative simulation algorithm.

Object of the Invention

  • plant simulation device and method for simulating a facility in the plant
  • claim 1 differs from the closest prior art (CPA) in that a first parameter is adjusted at the start of a operation of the plant and a second parameter is varied during operation, while the first parameter is kept constant at this stage

Appellant (part I)

  • enhance the model used for providing diagnostic results via the simulator thanks to successive adjustments of the first parameter and the second parameter, resulting in better process diagnosis for estimating possible deterioration
  • objective technical problem: how to improve the modelling accuracy of a simulator

Board (part I)

  • establishing a model is a purely mental act (see e.g. G 1/19, Reasons 106)
  • consequently, improving such a model, e.g. in terms of accuracy, also represents a purely mental act and thus corresponds to a non-technical problem
  • claim 1 does not specify any of the parameters that are adjusted, nor the type of plant that is controlled or the relationship between the first and the second parameter
  • reduction of arbitrarily chosen parameters also does not necessarily improve “modelling accuracy” because models with arbitrary parameters may never converge irrespective of the number of fixed or adjusted parameters
  • the distinguishing features cannot credibly relate to increasing the accuracy of the simulation process used for controlling
  • objective technical problem has to be derived from technical effects that are based on objectively established facts and are directly and causally related to the technical features of the claimed invention (see e.g. T 583/93, Reasons 7.5 and T 1341/16, Reasons 2.1.7)
  • objective technical problem: how to provide a plant simulation device having an alternative simulation algorithm compared to that of closest prior art

Appellant (part II)

  • even if the objective technical problem was formulated in such a less ambitious manner, the skilled person would not have arrived at the claimed subject-matter when starting from CPA
  • CPA did not present any hints towards fixing some parameters and adjusting others successively
  • the invention implied a change of perspective compared to CPA which adjusted all parameters simultaneously

Board (part II)

  • adjusting the parameters successively is a usual approach that is ubiquitously used in manual tuning of control systems
  • adjusting a first parameter at the start of the operation of the plant and varying the second parameter during operation is a mere straightforward choice which the skilled person would have selected depending on the circumstances
  • —> not inventive

Measurement for a diaper – T 2803/18 – 13 December 2022

This decision concerns an invention comprising a mathematical method. The invention includes the input of sensor signals. However, the Board decided that this was not relevant to the question of whether the non-technical features contribute to the technical character, because there is no technical interaction of the mathematical method on the output side, or no technical implementation of the mathematical method. Nevertheless, the Board considered the non-technical features in the inventive step assessment and found them obvious.

Object of the Invention

  • method for processing sensor signals representing a wetness event in an absorbent article
  • Claim 1 differs from the closest prior art in that it is comprising certain mathematical method steps (comparing vectors with representative vectors of clusters, determining the most similar, allocating the vector to a cluster, based on a mathematical model) to indicate volume of exudate in the absorbent article in a wetness event

Respondent (patent owner):

  • the mathematical method steps contribute to a technical effect
  • relying on point 99 of the Reasons in G 1/19, claim 1 was directed to an indirect measurement or at least to an accurate estimation of the exudate volume collected in an absorbent article

Board (part I):

  • claim only relates to the processing and analysis of sensor signals received from a sensor and results in a more or less accurate estimation of the volume of collected exudate
  • the results obtained by the claimed method are not necessarily more accurate, since the accuracy would depend on many factors (size of training sets, number and type of elements/variables constituting the representative vectors, etc.), none of which are defined in claim 1
  • whether the processing method in the present case may be qualified as an indirect measurement envisaged may be left undecided here, for reasons mentioned below
  • it may just be added that the determination of the volume of a single or of multiple successive wetness events does not provide any technical effect in the sense that the so determined volume necessarily affects the control of any component of the system composed, for example, of an absorbent article comprising sensors and an appropriate processor
  • further, the method does not necessarily imply any action on some other system or a modification of the operation of the system executing the claimed method going beyond the normal physical interaction between the program and the computer
  • -> absent of any technical effect

Board (part II) (assumption of a technical effect):

  • considering in favour of the respondent, that the estimation of the volume of exudate could be seen as a technical effect, to which the distinguishing feature step (mathematical method) further contributs
  • objective technical problem could only be seen in providing an alternative method of processing sensor signals representing wetness events in an absorbent article
  • irrespective of whether the processing method could be considered to involve a technical effect, the subject-matter of claim 1 lacks an inventive step in view of the obvious combination of the method known from the closest prior art with common general knowledge
  • –> no inventive step

Conclusion

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.

In this decision T 2803/18, input data of a sensor is claimed. However, the claimed mathematical method/non-technical features do not lead to a technical effect on the output side or to a technical effect based on a technical implementation. Therefore, according to the Board, the claimed method could not be considered to involve an inventive step. However, presumably because of the sensor/ sensor signals on the input side, the Board assumed a technical effect and then examined the inventive step based on the non-technical features.

Classifying resources using a deep network/GOOGLE – T 0874/19 – 6 July, 2022

In this decision, the EPO’s Board of Appeal clarifies that the (previously important) decision T 1227/05 is no longer followed due to the decision of the Enlarged Board of Appeal G1/19.

Object of the Invention

  • classifying search engine resources (e.g. a blog) as a spam resource or not a spam resource
  • subject matter of the invention differs from the closest prior art in that a classifier is configured to generate a respective category score for e.g. a “spam” and “not spam” category, wherein each of the respective category scores measure a predicted likelihood that a resource is a “spam” resource

Appellant:

  • following decision T 1227/05, the claimed system could at least be regarded as simulating a hardware circuit that classifies inputs and thus had a technical purpose

Board:

  • decision T 1227/05 cannot be followed as argued by the appellant in view of recent decision G 1/19, Reasons 133
  • absence of any technical effect beyond its straightforward implementation in one or more computers, the subject-matter does not involve an inventive step

Pedestrians simulation – G 1/19 – March 10, 2021

In this article you will find key takeaways from G 1/19. The information is based, inter alia, on the presentation “Aftermath of G1/19” by Kemal Bengi of the Boards of Appeal.

Referal case T 489/14

  • The invention in the ex-parte case relates to a simulation of the movement of pedestrians through an environment (e.g. a building like a stadium or railway station).

Results of the Enlarged Board of Appeal

  • If the invention does not solve a technical problem, it has no distinguishing features that could contribute to inventive step (point 49).
  • Using the problem-solution approach, the analysis under Art. 56 EPC may reveal that a specific problem is not solved (i.e. a specific effect is not achieved) over the whole scope of the claim. In such cases, the … specific problem may not be considered as the basis for the inventive step analysis unless the claim is limited in such a way that substantially all embodiments encompassed by it have the desired effect (point 82).
  • Only those technical effects that are at least implied in the claims should be considered in the inventive step analysis (point 124).
  • The existence and technicality of the system to be simulated is not a relevant criterion for the patentability of computer-implemented simulations (points 109, 120).
  • A “direct link with physical reality” is not a necessary condition for contributing to the technical character of the claimed invention (point 88).
    • “Measurements” and “indirect measurements” are related to physical reality and are therefore of a technical nature (point 99).
  • An “adequately defined technical purpose” should not be taken as a generally applicable criterion of the COMVIK approach (point 133).
  • Simulation models and algorithms mainly define non-technical constraints to be considered in the context of the COMVIK approach, but may contribute to technicality if, for example
    • they are a reason for adapting the computer or its functioning or
    • they form the basis for a “further technical use” of the outcome of the simulation (points 110, 137).
  • The accuracy of a simulation is a factor that may have an influence on a technical effect going beyond the implementation of the simulation.
  • An indication of the “intended technical use” or “further technical use” of the simulation results in a claim could contribute to the technical character of the claimed invention (points 94, 124).

G 1/19 Conclusions