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#actionable T 1096/23; 2025-12-4
ORIGINAL-HEADNOTE:
When a complete granted dependent claim is incorporated into an independent claim of another category (here: method step -> method step carried out by an apparatus), then only the amendments related to the change of category can be examined for clarity under G3/14. (Grounds, 3.2.5)
PATENTOWNER/-APPLICANT: Marel A/S
OPPOSING-PARTY: Nordischer Maschinenbau Rud. Baader GmbH + Co. KG; MULTIVAC Sepp Haggenmüller SE & Co. KG
LEGAL PROVISIONS: EPC Art. 52(1), 54(1), 54(2), 56, 84, 123(2); RPBA 2020 Art. 13(2)
ORIGINAL-KEYWORDS: Novelty – main request and auxiliary request 1 (no) – auxiliary request 2 (yes); Inventive step – auxiliary request 2 (yes); Claims – clarity – auxiliary request 2 (yes); Amendments – auxiliary request 2 – allowable (yes) – change of category; Sufficiency of disclosure – auxiliary request 2 (yes)
CITED DECISIONS: G 0003/14
AI FEEDBACK:
– The headnote applies G 3/14 to a category change. Incorporating the complete wording of a granted dependent claim does not reopen every pre-existing clarity issue; only clarity problems arising from the conversion into the new claim category may be examined.
– For a computer-implemented method step, expressing the same step as functionality of the controller in an apparatus claim does not necessarily create ambiguity. The relevant question is whether the category change itself makes the claim unclear.
– Example from the case: granted dependent method claims defining sub-weight ranges and a shortage-based prioritisation variable were incorporated into apparatus claim 11 for a batching machine. The skilled person would understand that the controller implemented those steps in software, so the method-to-apparatus conversion introduced no new ambiguity; an alleged antecedent issue already present in the granted wording was not open to review.
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T 0558/21; 2025-12-15; Calcul cryptographique sur courbe elliptique/IDEMIA
ORIGINAL-KEYWORDS:
Procédure orale – requête de tenue de la procédure orale par visioconférence (refusée)
Vice substantiel de procédure – violation du droit d’être entendu (non)
Modifications – admises (oui)
Interprétation de la revendication 1 – sous-étape mentionnée dans la revendication n’est pas limitative
Exclusion de la brevetabilité – (non)
Activité inventive – effet technique (oui) – non-évidence au regard de l’état de la technique documenté pas contestée en recours
AI-TRANSLATED-KEYWORDS:
Oral proceedings – request to hold the oral proceedings by videoconference (refused)
Substantial procedural violation – violation of the right to be heard (no)
Amendments – admitted (yes)
Interpretation of claim 1 – sub-step mentioned in the claim is not limiting
Exclusion from patentability – (no)
Inventive step – technical effect (yes) – non-obviousness over documented prior art not contested on appeal
ORIGINAL-HEADNOTE:
1. Sur la pertinence de l’appartenance d’une invention à un « domaine technique » pour son caractère technique et pour l’identification des caractéristiques qui y contribuent, cf. points 29 et 42.
2. Sur la contribution technique d’une méthode mathématique de génération d’un point sur une courbe elliptique utilisé dans une application cryptographique, cf. point 40.
3. Sur la détermination des caractéristiques d’une invention qui contribuent à son caractère technique dans le cadre de l’approche COMVIK, cf. point 41.
AI-TRANSLATED-HEADNOTE:
1. On the relevance of an invention’s belonging to a “technical field” for its technical character and for identifying the features that contribute to that character, see points 29 and 42.
2. On the technical contribution of a mathematical method for generating a point on an elliptic curve used in a cryptographic application, see point 40.
3. On determining the features of an invention that contribute to its technical character under the COMVIK approach, see point 41.
AI FEEDBACK:
– Merely classifying cryptography as a “technical field” does not make every feature of a cryptographic invention technical. The decisive question is whether a feature contributes to producing a technical effect that solves a technical problem.
– A mathematical method for generating an elliptic-curve point is non-technical as such. In the claimed context, however, the secret parameter t was transformed by an electronic component into point P efficiently while reducing the risk that the secret could be recovered through a timing attack. That functional integration into the cryptographic application gave the combined steps a technical contribution.
– Under COMVIK, the relevant features are those that contribute to the invention’s technical character. The Board may recognise a technical contribution by the mathematical steps as a whole without deciding immediately that every mathematical detail contributes; arbitrary details can still be identified later, including through comparison with the prior art.
– Example from the case: in the disclosed PACE password-authentication embodiment, t was derived from the user’s password and therefore represented a secret. The claimed operation pattern generated the elliptic-curve point used in the protocol while keeping the number and type of important operations sufficiently uniform to resist timing analysis.
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T 0035/20; 2024-5-17; Double press to pay/APPLE
ORIGINAL-KEYWORDS:
Inventive step – double press on button with integrated fingerprint sensor to pay with phone – (yes – not a mere user requirement)
ORIGINAL-HEADNOTE:
The term “user requirement” is often used when assessing the technicality of features of user interfaces. The Board understands the term to refer to needs and preferences defined by the end user of a system, who does not possess any technical understanding of the system. Under the Comvik approach (T 641/00 – Two identities/COMVIK), such user requirements may appear in the formulation of the technical problem as they do not make any technical contribution. It was confirmed in T 1463/11 – Universal merchant platform/CardinalCommerce that non-technical (user) requirements cannot normally specify any technical matter or be based on technical considerations. That is not to say that they cannot refer to the underlying technical system at all. Just like the technically skilled person, the user starts from the technical system of the prior art; user requirements do not appear in a vacuum. Thus, if the user uses software on a computer, he may formulate non-technical requirements relating to this software (see e.g. T 2019/12 – Angabe einer Order/Lacqua). Analogously, if, as in the present case, the system is a mobile phone, the user may formulate requirements relating to the use of the phone, as long as they do not involve technical considerations or require technical understanding.
(See point 8 of the reasons)
AI FEEDBACK:
– A “user requirement” is a goal or preference that a non-technical end user can formulate, such as making payment faster, reducing the number of steps, or allowing payment while the rest of the phone remains locked. Such a requirement can be included in the technical problem under COMVIK but cannot itself support inventive step.
– The boundary is crossed when the supposed requirement already embodies technical considerations that the skilled person must investigate. A simple mapping such as pressing a known “pay” button may remain non-technical, whereas coordinating a timed double press with a fingerprint sensor that already performs the phone-unlock function is a technical design choice.
– The Board therefore assessed the concrete interaction and implementation rather than treating every user action as non-technical. It found no prior-art suggestion for the claimed dual use of the home button and integrated biometric sensor and considered the solution inventive.
– Example from the case: on the iPhone 6, the user first unlocked the device and then opened the payment app, authenticating again with the fingerprint sensor. The claimed method instead detected a second press within a predetermined interval, such as 300 ms, and used the integrated fingerprint reading to enable payment directly from the lock screen; without the second press, the device merely unlocked.
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