G06F17/30 – legalAND.tech

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

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

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

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

Object of the Invention:

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

Board I (inventive step):

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

Appellant (inventive step):

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

Board II (inventive step):

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

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

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

Object of the Invention:

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

Board I (field of technology):

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

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).