Maggie Huang, Author at EUROPEAN SOFTWARE PATENTS

The European Patent Office refused to grant a software patent for an expert system for assessing patents. Here are the practical takeaways from the decision T 1817/14 (Expert system/SCHINDLER) of Technical Board of Appeal 3.5.06:

Key takeaways

A major part of the claimed procedure is done by the user, which is an intellectual activity / mental act, and thus does not, per se, contribute to the technical character of an invention.

The description and drawings shall be used to interpret the claims: a patent application “may be its own dictionary“.

Even if it is possible to interpret a claim in the light of the patent specification, Article 84 EPC may oblige the applicant to make that interpretation explicit in the claim language.

It is normally not sufficient for overcoming a clarity objection to indicate that the claim can be interpreted in the light of the description.

The invention

In a nutshell, the invention proposes to obtain from a patent (or patent application) and any prior art document elements of their respective technical teachings. These may be specified informally. 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.

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. Especially the generation of the ANC is under user control. Only the processing of user queries is meant to be automated.

Claim 1 (main request)
A method for analyzing of a patent’s or any other endeavor’s claim (and the technical teaching TT.p underlying it) over at least one document.i (and the technical teaching TT.i underlying it), PTR denoting the set of information that includes a) the technical teaching (TT.p) to be analyzed and b) the technical teachings (TT.i) of the at least one document.i, whereby a technical teaching (TT) identifies
- A, B, C, D, … as the elements of the technical teaching (TT.p) to be analyzed,
- A.i, B.i, C.i, D.i, … as the peer elements in the TT.i’s (of document.i, i=1,2,3,…) to these TT.p elements, and
- X).n, X.i).n as the fundamental facts of these elements X/X.i=A/A.i, B/B.i, C/C.i,…, n=1,2,3,…,
whereby the user of this method interacts with this method’s application by a computer system, whereby this application

repeatedly reads information from, writes it into, copies it to, or transforms it from/to/within this computer system’s various memory sections via their various interfaces during executing the steps (a)-(e),

whereby this information comprises items of a
- first kind, given by the user, comprising information identifying or describing at least one item of the PTR or one law of nature or one National Patent System, which are input to the computer system by the user, and a
- second kind, the below (a)-(d), which are generated by the execution of this method’s steps (a)-(c), and
whereby applying this method comprises at least once executing any one of the steps (a)-(d) of compiling
- (a) as (a)-item at least one first kind item into at least one technical fundamental fact of the TT.p or a TT.i,
- (b) as (b)-item at least one TT.i technical fundamental fact disclosing its peer TT.p fundamental fact,
- (c) as (c)-item at least one combination of technical fundamental facts of TT.i’s that may disclose or suggest TT.p, and
- (d) inputting all such second kind items into this information and defining all interrelations – as directed by the user – between all items in the information, wherein such defining of interrelations includes that the (a)-(c)-items are processed to form an ANC (ANC = anticipates/not-anticipates-and-not-contradicts/contradicts) Matrix, wherein the ANC defines the relation between X.i).n’s and X).n’s, such that
a query for any item in regard to the information of the technical teaching is replied to / answered by this method automatically and instantly by displaying to the user this item’s information and all its such interrelations to other items (i.e. presentation of these data).

Is it patentable?

First of all, the claims of all the requests were considered to lack clarity. Nevertheless, the decision for this case is ultimately based on inventive step.

The board concludes that the major part of claim 1 (of all requests) is a modelling procedure during which the user considers the items in the domain of interest (comprising, specifically, the patent/patent application and the documents being compared, the laws of nature and the items of a national patent system), extracts their relevant properties (elements, facts, relations), and “compiles” them “into” a formal language.

The board considers this procedure of information modelling to be an intellectual activity (effectively a method for performing mental acts which does not, per se, contribute to the technical character of an invention). 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.

The appellant essentially argued that particular features of the ANC data structure had to be considered to be technical. It stressed 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).

However, the appellant was 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, the form of the ANC is determined by the model and thus obvious.

In addition, 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 go beyond the statement that the information in the ANC may be accessed by user queries, as is known from prior-art database systems.

The board concludes that claim 1 of all requests lacks inventive step in view of common knowledge, as an “obvious way of providing computer support to an essentially non-technical method“.

More information

You can read the whole decision here: T 1817/14 (Expert system/SCHINDLER) of 4.7.2017

Maggie Huang

Maggie is a patent attorney at BARDEHLE PAGENBERG. Her technical background is Mechanical Engineering and Computer Science.

www.bardehle.com/team/detail/huang-maggie.html

Key takeaways

Headnote I: “An invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.”

Headnote II: “Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.”

The invention

The invention relates to digital mobile telephone systems and in particular to the use of a single-user multi-identity IC card as subscriber identity module in a mobile unit of a GSM-type system.

The patent application was granted in 1997. A few months later, oppositions were filed. The opposition division revoked the patent in 2000. Shortly after that, the appellant filed an appeal against the decision. The Board of appeal dismissed the appeal in 2002 so that the patent was finally revoked.

The scope of the invention can be easily understood from claim 1 and Figure 1. The object of the invention is to enable a more flexible use of subscriptions and subscriber identity modules.

Fig. 1 of EP 0 579 655

Claim 1 (Main request)
Method in a digital mobile telephone system of the GSM type, in which subscriber units (MS) are controlled by a subscriber identity module (SIM), characterised in that
- the subscriber identity module (SIM) is allocated at least two identities (IMSI 1 , IMSI 2), information thereon being stored in a home database of the system, said at least two identities being selectively usable,
- wherein only one identity (IMSI 1 or IMSI 2) can be activated at a time, the user when using a subscriber unit (MS) selectively activating the desired identity in said home database from the subscriber unit,
- wherein the selective activation is used for distributing the costs for service and private calls or among different users.

Is it patentable?

First of all, the Board confirmed that patent claims may well contain a mix of technical and non-technical features:

On this approach it is legitimate to have a mix of technical and “non-technical” features (i.e. features relating to non- inventions within the meaning of Article 52(2) EPC) appearing in a claim, even if the non-technical features should form a dominating part. Thus in T 26/86 X-ray apparatus/KOCH& STERZEL, (OJ EPO 1988, 19) a mix of technical and non-technical features was considered as a matter of principle to be patentable even if the technical was not the dominating part of the invention. As reasoned by the Board, “the teaching (might, otherwise, be made) unpatentable in its entirety if the greater part is non-technical and even though the technical aspect which is found to be subordinate is in fact judged to be novel and to involve inventive step” (see paragraph 3.4 of the decision). It follows that the Board, although allowing a mix of technical and non-technical features to be claimed, considered the technical part of the invention as the basis for assessing inventive step.

Moreover, the Board held that the non-technical features of a patent claim cannot take part in the inventive step assessment:

Further, where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it has no significance for the purpose of assessing inventive step.

Applying these principles to the case at hand, the Board identified three features in claim 1 that distinguished over the closest prior art, namely (i) the subscriber identity module is allocated at least two identities, (ii) said at least two identities being selectively usable, and (iii) the selective activation being used for distributing the costs for service and private calls or among different users.

However, according to the Board, these features did not solve a technical problem:

Distributing costs according to specific schemes (features (ii) and (iii)), however, is not disclosed as a technical function of the system: it is left to the user to decide and to select the desired identity and to the network operator to use the additional identity data in one or other way. The inconveniences to be eliminated are actually not located in any technical aspects of the network system, distributing costs according to the claimed kind of cost attributing scheme is rather a financial and administrative concept which as such does not require the exercise of any technical skills and competence and does not, on the administrative level, involve any solutions to a technical problem. Technical aspects first come into play with the implementation of such a scheme on the GSM system. In other words, the claimed concept of selectively distributing the costs for service and private calls or among different users does as such not make a contribution to the technical character of the invention.

Therefore, the Board ultimately decided that the patent application does not provide any technical contribution that could be the basis for an inventive step.

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