I. BREVETABILITÉ

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Novelty of selection inventions - selection from a broad range - "gold standard" - see point 3.4

Catchword:

Neuheitsschädlich sind nur solche Vorrichtungen, deren offenbarte Merkmale all jene der Erfindung vorwegnehmen, einschließlich etwaiger Strukturen und Funktionalitäten, die durch ein Verfahrensmerkmal bedingt sind. Wenn eine Vorrichtung ihre beanspruchte Funktionalität im Zusammenwirken mit einer nicht mitbeanspruchten Gegenstruktur entfalten kann, so ist auch diese Erfindung nur neuheitsschädlich vorweggenommen, wenn ihre strukturellen und funktionalen Merkmale bereits vor dem Anmeldetag unmittelbar und eindeutig offenbart worden sind. Auch wenn die Gegenstruktur nicht mitbeansprucht ist, erscheint es im Rahmen der Prüfung von Artikel 54 EPÜ unzulässig, sich eine beliebige Struktur auszudenken, die für die Erreichung der Funktionalität eingesetzt werden könnte, wenn eine solche im Stand der Technik nirgends auch nur ansatzweise gezeigt ist. (Siehe Gründe 3.5 bis 4.2)

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A neural network defines a class of mathematical functions which, as such, is excluded matter. As for other "nontechnical" matter, it can therefore only be considered for the assessment of inventive step when used to solve a technical problem, e.g. when trained with specific data for a specific technical task.

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The clinical trials were carried out in accordance with the EMEA Guidelines for Good Clinical Practice. These guidelines explicitly require adherence to the prescribed protocol and assurance of drug accountability. This set-up of the trials implies that the patients who decided to participate in the trials agreed, following their informed consent, to use the provided medication according to instruction or to return the unused medication. Accordingly, the participating patients who were provided with the tablets under investigation entered into a special relationship with the investigators of the trials and were with regard to the provided tablets not members of the public that could freely dispose over these tablets. (see section 4.3)

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The undesired phenomena observed in the patent with the use of the prior art compositions would not inevitably manifest themselves upon the practical implementation of the teaching of the prior art. The recognition of the relevance of these phenomena should therefore be considered to form part of the technical contribution described in the patent. A specific reference in the formulation of the objective technical problem to the avoidance of these phenomena risks to unfairly direct development towards the claimed solution, which is not permissible in line with the principles as developed in the established jurisprudence (see reasons section 4.2.3).

Catchword:

The mere change, by an operator, of the degree of abstraction of a graphical view ("condensation") of a power grid does not credibly assist a user in performing a technical task by means of a continued and/or guided human-machine interaction process within the meaning of T 336/14 and T 1802/13 and thus cannot bring about a technical effect (see points 3.2 to 3.6 of the Reasons).

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As to the application of the problem-solution approach, in particular the determination of the objective technical problem and the choice of the "second document", see points 6.3.2 and 6.3.4 of the Reasons.

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The normal rule of claim construction of reading a feature specified in a claim in its broadest technically meaningful sense corresponds to determining the broadest scope encompassed by the subject-matter being claimed according to a technically sensible reading. In the case of a feature defined in a positive manner, which imposes the presence of a specific element, this is effectively achieved by giving to the element in question its broadest technically sensible meaning. However, for a feature defined in a negative manner, which excludes the presence of a specific element, the broadest scope of the claim corresponds to the narrowest (i.e. most limited) technically sensible definition of the element to be excluded. (Reasons, point 5.7)

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If an abstract feature is not defined in more concrete terms either in the relevant claim or in the description of the application, it has to be understood in a broad sense. This may be important when assessing the implicit disclosure of a document of the state of the art. In particular, for this assessment it may be irrelevant whether there are several alternatives for implementing the abstract feature in concrete terms (Reasons 2.3.7).

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Inventive step objection based on hindsight: arguments involving a convoluted set of sequential steps conceived starting from the claimed subject-matter and working backwards in attempt to bridge the gap with the prior art (Reasons 1.27)

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Die Verbesserung der Nutzerzufriedenheit z. B. bei einer TV-Live-Übertragung ist im Allgemeinen eine nicht-technische, administrative Aufgabe, für die üblicherweise ein TV-Stationsmanager als Fachperson zuständig ist (siehe Gründe 5.6 der Entscheidung).

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Improved patient compliance to a pharmaceutical formulation cannot be used to establish an overall technical effect if it is the result of a "broken technical chain", namely an alleged chain of technical effects starting with information provided to a patient which is then broken by the patient's mental activities (see points 2.4 and 2.5).

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If non-technical features have both a technical and a non[1]technical effect, the technical effect must be taken into account when assessing inventive step, but the technical effect must be clearly derivable from the application as a whole (Reasons 3.6.4 (1)).

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While a feature might, in certain contexts, be seen as technical, the technical effect of a feature must be assessed as a whole and in the context of the claimed invention (reasons 2.7.4).

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According to the Comvik approach the non-technical features of a claim may be incorporated into a goal to be achieved in a non-technical field. Subsequently, the approach invokes what might be described as the legal fiction that this goal, including the claimed non-technical features, would be presented to the skilled person, who would be charged with the task of technically implementing a solution which would achieve the stated goal. The question whether the skilled person would "arrive" at the non-technical features does not therefore arise, as these features have been made known to the skilled person, as part of the goal to be achieved. The relevant question for the assessment of inventive step is whether it would be obvious for the skilled person to implement a technical solution corresponding to the claimed subject-matter (Reasons, point 3.12).

Catchword:

The business person sets the framework of the problem to be solved by their business model (insurance conditions) and thus reduces - by setting specific boundary conditions - the degrees of freedom of the skilled computer specialist. The technically skilled person, who has to solve the objective technical problem of implementation, therefore has no latitude in selecting the corresponding (physical) parameters (reasons 3.6.10).

Catchword:

In case T 625/11, the board concluded that the determination, as a limit value, of the value of a first operating parameter conferred a technical character to the claim which went beyond the mere interaction between the numerical simulation algorithm and the computer system. The nature of the parameter thus identified was, in fact, "intimately linked to" the operation of a nuclear reactor, independently of whether the parameter was actually used in a nuclear reactor (T 625/11, Reasons 8.4). The board is of the opinion that, in the case at hand, no technical effect is achieved by the method's functionality as the method merely produces a test rod pattern (i.e. a fuel bundle configuration) design and data "indicative of limits that were violated by the proposed test rod pattern design during the simulation". Contrary to case T 625/11, no parameter is identified that is "intimately linked to" the operation of a nuclear reactor. A rod pattern design appears to have non-technical uses such as for study purposes. These are "relevant uses other than the use with a technical device", and therefore a technical effect is not achieved over substantially the whole scope of the claimed invention (G 1/19, points 94 and 95). The data "indicative of limits that were violated by the proposed test rod pattern design during the simulation" do even not, or at least do not entirely, reflect the physical behaviour of a real system underlying the simulation (see G 1/19, point 128). The board notes that, due to the breadth of the wording of claim 1 of the main request, the obtained rod pattern design might violate any number of limits by an almost unlimited amount. Hence, this is not an "exceptional case" in which calculated effects can be considered implied technical effects (see decision G 1/19, points 94, 95 and 128).

Catchword:

The appellant argued that the claimed features relating to the abstract business concept neither could have been provided by the business person to the technical expert for programming, nor would the technical expert have corresponding knowledge starting from a networked standard computer system. The appellant thereby alleged that there was to be considered an imaginary third person who came up with the concept of the invention to be implemented on a computer system. The Board notes that when assessing inventive step in the field of computer implemented business related inventions following the COMVIK approach and the corresponding case law, there is no room for such a third expert. When analysing the features of a claim and answering the question of whether they provide a technical contribution, each such feature has to be judged to be either a contribution of the technical expert or of the non‑technical business person in order to conclude whether there is an inventive technical contribution.

Catchword:

Während eine Fachperson im Allgemeinen Dokumente nicht kombinieren würde, wenn dies zu einem Verzicht auf eine wesentliche Funktion der Erfindung im nächstliegenden Stand der Technik führen würde, gilt dies in der Regel nicht für Kombinationen, bei denen ein wesentliches Merkmal durch ein dieselbe Funktion erfüllendes alternatives Merkmal ersetzt wird (Punkte 1.3.2 und 1.3.3 der Gründe).

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An encoding or compression algorithm contributes to the technical character of the claimed compression method if it is used for the purpose of reducing the amount of data to be stored or transmitted (reasons 7).

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Since the problem and solution approach defines the problem based on the effect of the differences from the closest prior art, and the effect is derived primarily from the disclosure of the invention, the effect documented in the present documents alone is taken as the basis for the problem formulation. The Board concluded that any further, undocumented effects would be speculative and should not be additionally included in the problem formulation (reasons 5.3.2)

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If the only feature that distinguishes a claim from the closest prior art is a range of an unusual parameter and it is concluded that it would be obvious for the skilled person to solve the underlying technical problem in ways that can be presumed to inherently lead to values within or close to the claimed range, it is the proprietor who should bear the burden of proof to demonstrate that implementing such solutions would not lead to the claimed parametrical range.

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A disclosure within a prior art document can only be considered to represent a suitable starting point for assessing inventive step if the skilled person would have realistically started from it. An important consideration in this assessment generally is whether this disclosure aims at the same or a similar purpose or effect as that underlying the patent in question (see in particular 5.3 to 5.6 of the Reasons).

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If a claim is unduly broadened with respect to the scope of the examples used to illustrate a technical effect, particularly when this broadening concerns the feature/s allegedly providing that effect, the burden of proof might shift back to the proprietor to prove that the effect observed in the examples would also be obtained throughout the entire scope of the claims. If no evidence is provided in this respect, a conclusion may have to be drawn on the basis of plausibility arguments (reasons 2.2.5-2.2.7).

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In the Board's judgement it is part of the non-technical requirement specification to keep keys (be it analog or electronic keys) away from people one does not trust. This does not require technical considerations of a technically skilled person. The Board does not consider this to be a technical difference, but to be an administrative consideration within the sphere of a business person when contemplating a secure tender process. It is not regarded as a technical innovation, but a natural choice for the bidders to use individual keys, keep the keys back as long as possible and furnish them as late as possible. And even if this was considered technical, it would, in the Board's view, be obvious to do so. Furthermore, the Board considers that implementing a functionality in the networked e-tender system corresponding to D1 would be, at the claimed level of generality, obvious in view of the above business related requirement specification. The Board notes that the implementation is claimed in functional terms and neither the claim nor the application as a whole provide details on how encryption/decryption is achieved on a technical level. The application apparently relies in this respect on the skilled person's common general knowledge. The Board notes in this regard that if providing necessary software and data structures were beyond the skilled person's skills, the invention would not be sufficiently disclosed (Article 83 EPC). Even if the appellant is correct that using different keys for different bidders is a difference over D1, this would in the Board's view imply - in the light of bidders creating their own individual keys for unlocking/decrypting being obvious - that the keys of different bidders are different, too. Therefore creating individual keys/pass-phrases would inherently require the use of multiple keys for implementation. (See points 4.2 to 4.4 of the reasons)

Catchword:

Claim not allowing a distinction between the ingredients which prevent obesity and those which do not prevent or can even induce it. Identification of the protein hydrolysate as an active ingredient for preventing obesity not distinguishing the claimed subject-matter from the disclosure of the prior art. See reasons, points 1.4 to 1.8.

Catchword:
The appellant's wish for the Board to define criteria that the examining division should use to prove that a feature is not technical is tantamount to defining the term technical, which the Boards have consistently declined to do. However, as stated in e.g. T 2314/16 - Distributing rewards/RAKUTEN at points 2.6 to 2.8, over the years the case law has provided guidance on the issue of technicality. Recently, the Board has tended to use the framework for discussion given in the CardinalCommerce decision (T 1463/11 - Universal merchant platform/CardinalCommerce) to help classify whether borderline features of a claim are on the technical or the non-technical side. It is thus clear that some discussion can and ought to take place. However, rather like objections against added subject-matter, one is essentially trying to prove a negative which tends to be a rather short exercise. On the other hand, the appellant is trying to prove a positive which involves more argument. Thus an objection from the division should probably start with a prima facie assertion that the feature in question is non-technical, perhaps because it is in one of the exclusions listed in Article 52(2) EPC, or a related or analogous field. If this is uncontested then this would be enough. However the Board considers that it is then up to the appellant to provide arguments why there is a technical effect or that some technical considerations are involved. The division should consider these arguments and give reasons why they are not convincing. As mentioned above, the Board is satisfied that this happened in the present case. One final piece of advice for examining divisions would be where possible to search for and start from a document that already discloses some of the alleged non-technical features, thus avoiding the discussion for these features (see for example, T 756/06 - Displaying a schedule/FUJITSU, point 5 or T 368/05 - Integrated account/CITIBANK, point 8). (See points 3.3 to 3.5 of the reasons)

Catchword:

Application of decision G 1/19 to
- simulation methods (Reasons, point 2)
- design methods (Reasons, point 4)
- measurement methods (Reasons, point 7)