Case Law Review – T 0042/10

Case:

Claimed Subject Matter:

Determining relative skills of players (Microsoft).

The invention models performance by way of probability distributions and factor graphs.

Comments:

This case is interesting as the Board of Appeal make reference to Gale’s Application [1991] RPC 305, a UK Court of Appeal case that considered an improved method of evaluating a square root. The Board took a similar approach to Lord Justice Nicholls in the UK case, asking: 1) what does the method as a whole do, and does it produce an overall technical result? And 2) if there is no overall technical result, does the method at least have a technical effect within the computer? If both questions are answered in the negative, no technical problem has been solved and there can be no inventive step. Using this analysis the Board concluded that certain features were not technical and that representing performance by probability distributions and using factor graphs were mathematical methods or abstract computer science concepts. As such there was no inventive step.

The Board came to a similar decision in T 1281/10, a related case. There it was found that “Bayesian learning” would be part of a non-technical method the skilled person would be required to automate.

Case Law Review – T 1459/10

Case:

T 1459/10

Claimed Subject Matter:

Upgrading programs in a wireless communication system – i.e. upgrading TV or set-top box software (Samsung).

The claimed device differs from the cited art by:

(a) the means for downloading upgrade program code from a memory card, and

(b) the device is one of a set-top box and a television and the other device is the other one out of a set-top box and a television.

Comments:

Upgrading the software of a (stand-alone) television or set-top box is merely a specific example of the general case of a wireless communication system having a program update function, as is indeed apparent from the introduction to the description.

The limitation in claim 1 to the claimed device being a television or a set-top box only serves to specify the type of the device which is to be upgraded without implying additional technical features or requirements.

Such a limitation does not lead the skilled person to consider exclusively prior art in the field of upgrading software of a television or set-top box since, as noted above, there is no technical relationship between the device being specifically a television or a set-top box and the features in claim 1 relating to the upgrade of software, i.e. the means for downloading upgrade program code, the configuration of the upgrade program having first, second and a common upgrade programs, the configuration of the device to upgrade itself using the first and the common upgrade programs and comprising transmission means for transmitting the second and the common upgrade program to the other device.

Case Law Review – T 1954/08

Case:

T 1954/08

Claimed Subject Matter:

Predicting marketing campaigns using customer-specific response probabilities and response values (SAP).

The application seeks to improve on iterative algorithms which have been used to find a global maximum of a goal value of an envisaged marketing campaign. The iteration represents a “simulation” of the marketing campaign.

Comments:

The use of computers for automation purposes is technical but commonplace.

A mathematical algorithm may become a technical means, i.e. it may go beyond a mere mathematical contribution, if it serves a technical purpose (T 1227/05-points 3.1 / 3.2).

Anticipating a maximum revenue or profit value of a marketing campaign is a commercial rather than a technical purpose. Therefore, the iterative mathematical algorithm of claim 1 remains a mere mathematical contribution which does not enter into the examination for an inventive step.

The Board agrees that the mathematical algorithm is not provided by the business manager who is only interested in an economic forecast on which he can base his decision for a marketing campaign.

However, the Board does not agree with the appellant’s conclusion that the algorithm is provided by the implementing programmer. In the absence of a technical overall effect and purpose, the algorithm is provided by a mathematician for mathematical and ultimately commercial purposes. Mathematical definitions do not become technical by defining commercial relationships.

In T 1227/05, point 3.2.5 it was held that processing speed was not a suitable criterion for distinguishing between technical and non-technical method steps since it was always possible to conceive of a slower algorithm than the one claimed. Similarly, the sole amount of memory a computer-implemented algorithm requires is equally unsuitable for determining whether or not a method step contributes to the solution of a technical problem since it is always possible to imagine an algorithm demanding more memory. Furthermore, whether or not an algorithm is similar to what a human being would do may play a role for the examination for inventive step, but this examination presupposes that the technicality of the feature has been established.

The Board concludes that the claimed method does not involve an inventive step over a general computerised method for processing data according to any existing mathematical algorithm and, thus, does not meet the requirements of inventive step.

Case Law Review – T 0844/09

Case:

T_0844/09

Claimed Subject Matter:

A computer-implemented method of operating a verification system (100) for verifying details of transactions drawn upon a financial account and a user’s authorization to use the financial account, the method comprising:

receiving from a user, at a user interface (102), information identifying (204) a financial account which the user desires to use, before the user may initiate an online transaction using the financial account;
generating (208) a series of verifying transactions involving the financial account, with selected details of the transactions not being known to the user;
initiating (210) the series of verifying transactions from a transaction processor (106);
storing in storage means within the verification system a first set of details of said series of verifying transactions;
receiving (216) from the user, at the user interface, a test set of details, to include specified details of evidence of the verifying transactions retrieved by the user from his or her financial account;
comparing (218) said test set of details to said first set of details; and
if said test set of details matches said first set of details, authorizing (220) the user to conduct online transactions using the financial account.

Comments:

Claim 1 concerns a computer-implemented method of operating a verification system for verifying details of transactions drawn upon a financial account and a user’s authorization to use the financial account. It thus relates to the field of schemes, rules and methods for doing business, which shall not be regarded as inventions pursuant to Article 52(2)(c) EPC. The corresponding features in claim 1 are deemed to be non-technical. The method of claim 1 is, however, defined to be computer-implemented and thus involves a computer as technical means, with a transaction processor, storage means and a user interface. The corresponding features in claim 1 are technical. Claim 1, thus, contains both non-technical and technical features and has technical character as a whole. Accordingly, the subject-matter of claim 1 is not a scheme, rule or method for doing business as such. The patentability of the subject-matter of claim 1 is, therefore, not considered to be excluded under Article 52(2) and (3) EPC (cf T 258/03 (OJ EPO 2004, 575), reasons 3 and 4).

Although verifying a user’s authorization to use a financial account may in certain cases involve an administrative procedure lacking technical character, this is not considered to be the case for the subject-matter of claim 1.

The verification of the user’s authorization to use a financial account in the present case, in particular the recognition that the retrieval by the user of transaction details offers a convenient and secure channel for forwarding transaction authentication information to the user, and the realization that “verifying” transactions can be generated and initiated to contain the transaction authentication information, relies on a technical understanding of the operation of the transaction system and its respective components and, thus, lies within the scope of a technically qualified person working in the field of computer-implemented online financial transaction systems and notably entrusted with the security aspects thereof.

Neither the business professional nor the administrative professional would, in the board’s judgement, be qualified and indeed able to devise any of these ideas as they lie outside their areas of competence.

Accordingly, the above consideration relating to the verification of the user’s authorization to use a financial account cannot be included in the formulation of the technical problem, contrary to what is essentially argued in the decision under appeal applying the principles of decision T 641/00 (cf above).

Still, the remaining features of claim 1 relating to a financial transaction refer to an aim to be achieved in the field of schemes, rules and methods of doing business, deemed to be non-technical, which may legitimately appear in the formulation of the problem (following T 641/00 above).

The appellant argued that since the user had to obtain transaction details online relating to a previous or test transaction, effectively he had to pass two levels of verification in order to use an account.

This argument is, however, not convincing. In conventional online-banking systems, involving the use of lists of Transaction Authentication Numbers (TAN) provided to the user like in D3, the user gains online access to a bank account via an internet site of his bank, typically by entering the bank account number and a password, thereby passing a first level verification. At this point, the user has eg direct access to his financial statements or can initiate a fund transfer for which a TAN will be needed. In the case envisaged in the application and covered by claim 1 where the transaction authenticator in the form of a set of details of evidence of a verifying transaction is available through online access to the financial statement of the bank account, a fraudulent user will, thus, have unrestricted access to the transaction authenticator. Accordingly, no second level verification needs to be passed in this case.

The objective problem to be solved relative to document D3, accordingly, is to provide transaction authenticators to the user in an alternative manner.

The claimed solution consists in:
– generating (208) a series of verifying transactions involving the financial account, with selected details of the transactions not being known to the user;
– initiating (210) the series of verifying transactions from a transaction processor (106);
– storing in storage means within the verification system a first set of details of said series of verifying transactions;
– receiving (216) from the user, at the user interface, a test set of details, to include specified details of evidence of the verifying transactions retrieved by the user from his or her financial account;
– comparing (218) said test set of details to said first set of details; and
– if said test set of details matches said first set of details, authorizing (220) the user to conduct online transactions using the financial account.

This solution is not rendered obvious by document D3.

Case Law Review – T 2464/09

Case:

T_2464/09

Claimed Subject Matter:

A system for automatically managing workflow, comprising:

a first computer arranged to receive an originating job request and job instructions from an authorized user, and to generate a job packet associated with-a digital file, wherein the digital file represents job input from the authorized user, and
a second computer for processing said job packet;

characterised in that the first computer is arranged to interpret said job instructions to provide in the job packet a job record that includes a set of computer-readable job processing requirements and the second computer is arranged to read and analyze the job processing requirements, to maintain respective scribe data for each of a plurality of scribes, the scribe data including a respective schedule data associated with each scribe and indicating when the respective scribe is to be available to work, and to automatically forward job step data to a remote computer associated with a selected scribe based on the corresponding schedule data.

Comments:

Underlying the system defined in claim 1 is a method of allocating work to workers.

A manager receives a job specification from a client and uses it to generate a “job packet” which he passes on to another manager. The second manager maintains data, including schedules, about “scribes” and forwards the job packet, or part of it, to particular scribes on the basis of their schedules. There is nothing technical in the underlying method.

It would have been obvious to the skilled person, seeking to automate that method, to use a network of computers. Once it had been decided to use such a network, it would have followed directly that the “job packet” would be associated with a digital file, that the data would be maintained on the second computer, which takes the role of the second manager, and that forwarding would be automatic.

The appellant has argued that account must be taken of the state of technology in 1998, without knowledge of the developments which have taken place since. The Board accepts that, but notes that the use of a network of computers in similar systems was known in 1998. D1 provides an example. The argument above relies only on the obviousness of using a network of computers, and not on any technical details beyond the abilities to store, process and communicate data.

Case Law Review – T 2090/08

Case:

T_2090/08

Claimed Subject Matter:

Method and system for transferring or returning unused digital rights.

The independent claims of the main request differ from the disclosure of the prior art (D1) by the following features:

The procedure according to D1 requires manual user intervention to store the licence on a floppy disk and to install it on the second device, whereas the transfer procedure according to the claimed invention is automatic and runs under the control of the server. More specifically, the claimed procedure involves a request message from the first terminal to the server, identifying inter alia the second machine to which the rights object is to be transferred, and a response message from the server to the first terminal after succesful transfer of the rights object.
The system of D1 does not provide the first device with selection options when the transfer fails.
D1 does not disclose that a revoked license, i.e. the rights object, is deleted from the first terminal, let alone in response to a response message indicating successful transfer of the license.

Comments:

In the board’s judgment, differences 1)-3) solve the following problems:

Difference 1) makes the relicensing procedure of D1 more convenient for the end user by avoiding the need for a manual transfer of the license.
Difference 2) handles the possible failure of the relicensing procedure at the second terminal.
Difference 3) saves storage on the first machine by deleting a revoked license. The board considers that these problems arise naturally in the context of D1.

The board considers it obvious to provide a protocol according to which the first end user’s machine and the license clearing house, i.e. the server, communicate using a “request message” which, inter alia, identifies the “second machine” to the license clearing house, and wherein a “response message” is used which acknowledges this request to the first machine and confirms successful receipt of the license.

The problem to contain, control or reduce storage consumption is one that, in the board’s view, a person skilled in software development is always aware of. The board therefore deems obvious the idea that any unused data object – such as, in D1, a revoked license – should, at some point, be deleted from the end user’s machine. It is also obvious for the skilled person that the unused data object can be deleted as soon as possible or at later point in time. In order to choose between these alternatives the skilled person would have to assess the circumstances and weigh the requirements against each other, including, e.g., whether storage consumption is critical and whether it is likely that a deleted object may be needed again later (see point 5 above). In the board’s view, the skilled person would make this assessment and choice as a matter of routine and with out exercising an inventive step.

Case Law Review – T 0702/08

Case:

T_0702/08

Claimed Subject Matter:

Process Monitoring.

The claim referred generally to “process objects” and “task objects”.

Comments:

On the facts the Board considered the term “object” to have a broad meaning encompassing the general concept of a “goal” or “objective” at an administrative management level; there was no unambiguous correlation between the described (business and process) “objects” and object-oriented programming. This suggests that a specific technical mapping between abstract concepts and their technical implementation needs to be set out in any description.

Case Law Review – T 1866/08

Case:

T_1866/08

Claimed Subject Matter:

Approach for tracking data (Yahoo! Inc.)

A method for operating an intermediary computer to track data requested by a user from a source server over a network, wherein the source server is arranged to communicate with the intermediary computer via a first network communications link, and the intermediary computer is arranged to communicate with the user via a second network communications link, the method comprising the computer-implemented steps of:

receiving (206), at the intermediary computer (104), the requested data from the source server (102); and
supplying (212), via the second network communications link, the requested data from the intermediary computer to the user (106);

characterised in that the method comprises the intermediary computer performing the steps of:

determining (208) whether the requested data includes rights data that indicates an owner of rights to the requested data; and
if the data includes the rights data:
- (a) determining whether the source is associated with the owner of rights to the data; and
- (b) if the source is not associated with the owner of rights to the requested data, then the intermediary computer not allowing the requested data to be supplied to the user; and
- (c) if the source is associated with the owner of rights to the requested data, then the intermediary computer supplying the data to the user and recording (210) that the requested data was supplied.

Comments:

The examination decision under appeal states that the difference between the claimed invention and the cited art “merely” represents “the steps per formed by a data tracking and transmission system that implements rules about what to do with the traffic and registers th[ese] activities” and that the “task of tracking data traffic is a mere administrative task”.

In passing it is argued that these rules and tasks were well-known, for example from the “activity of a librarian registering incoming and outgoing books of the library”. The only technical features of claim 1 were merely “data transmission and data recording” and these were known from the prior art. The remaining features did not, so the argument, solve a technical problem but an administrative one, namely to “control the distribution of unauthorised data” which would belong to the non-technical “domain of the administration of property”. This difference, especially within the context of D1 which is already adapted to “[implement] rules driven by a detect ion event” (see again reasons 2.2), would amount to a mere automation of this administrative task, and if its performance were improved by the automation then only to the extent that any computer automation would cause such improvement, without any further technical effect. This difference could thus not establish an inventive step.

The board in the present appeal case takes a difference perspective on the invention.

The board concedes that the claimed invention has administrative aspects but considers that these cannot be stripped from the technical context in which they occur. The claimed invention relates to the “tracking” and delivery control of “data requested by a user from a source server over a network” in view of that source server. The board fails to see how this would be analogous to, let alone known from, the activity of a librarian “registering incoming and outgoing books of the library”, or why the skilled person trying to improve the system of D1, would turn to the activities of a librarian for help. The board also considers that the claimed invention goes beyond the mere implementation of a non-technical administrative task without any effect beyond the benefits of any computer automation (see decision under appeal, reasons 2.3, last sentence). Rather, in the board’s view, the effect of the invention over D1 is tied to a specifically technical situation, namely the request and download of data by a user over a network from a server, as is now clearly claimed. In this respect, the board agrees with the appellant in considering an automated, network-based mechanism to control and authorize the delivery of data as solving a technical problem (see grounds of appeal, point 3.16).

Case was remitted for further search as it was doubted whether the feature of delivery control was exhaustively searched:

Due to the fact that this feature was substantially less prominent in the claims of the originally examined application.
because the preamble of all claims by referring to “tracking data” rather than delivery control may have further detracted from the importance attached to this feature, and
because the examining division considered it to be of no technical relevance.

Case Law Review – T 1992/07

Case:

T_1992/07

Claimed Subject Matter:

Filtering of market information, wherein the filtering was used to provide a real-time trading status update.

In particular, a processor-implemented method of filtering market data generated at a market place, for providing real-time trading status information, the method comprising:

providing (620) a plurality of listings (222), each listing associated with a corresponding market place and traded at the associated market place;
providing (640) a set of filter criteria (224) suitable for filtering market data to determine the trading status information;
receiving (650) market data for at least one listing of the plurality of listings associated with a specific market place;
filtering (660) the received market data in accordance with the set of filter criteria to determine in real-time, whether trading of the at least one listing has been suspended or resumed at the specific market place; and
providing (680), in real-time, the status information (226) indicating whether trading of the at least one listing has been suspended or resumed at the specific market place.

Comments:

In this case, the data, processing and modified output data were considered to be “non-technical”; in particular, they were deemed to relate to financial and/or administrative aspects. The problem was thus deemed to be how to implement these non-technical aspects and the solution was deemed to be trivial. Even though the claim had a step of “filtering”, this did not relate to any technical process.

Data are “filtered” according to criteria (neither the filtering operations nor the criteria are well-defined in the claims), and as a consequence of the processing the received market data is broadcasted, but with supplemental information. This processing cannot be deducted alone from the wording of the claims, but corresponds to the description, p 4, penultimate para.. As the result of the processing is the provision/broadcasting of modified market data, this processing is considered essentially non-technical.

The processing as claimed also has an essentially non-technical aim, namely to assess and disseminate information about the trading status at market places of a plurality of listings. Following T 641/00, the objective technical problem can be formulated as finding a technical implementation of a system that achieves the non technical purpose (task) of assessing and disseminating information about trading statuses of a plurality of listings at market places.

In the Board’s view, the invention carries out non-technical (financial/administrative) processing on non-technical (financial) data. Since, according to the established jurisprudence of the Boards of Appeal, these features cannot contribute to inventive step, the problem boils down to how to implement these aspects. As effectively established by the division, the implementation specified in the claim amounts to no more than the use of a conventional computer system, to receive, process and generate the desired data. This cannot involve an inventive step either.

The appellant argues that the step of filtering is technical because it is carried out by a processor. However, in the Board’s view this only establishes that the processor is a technical implementation, not that the filtering relates to any technical process. Similarly, the appellant discusses the technicality of a memory device and storing filter criteria. However, as the appellant admits these features are not claimed. The appellant also discusses the features of providing data, receiving data and providing real time status information. However, as with the filtering feature, this discussion attempts to establish an overall technical effect by virtue of the intrinsic technical nature of the implementation. As stated above, the only technical features of the solution are the use of a processor to receive, process and generate data. The prior art shows that these are conventional.

Case Law Review – T 1577/07

Case:

T_1577/07

Claimed Subject Matter:

Graphical User Interfaces (GUIs).

Differentiating features:

Clickable and activatable GUI items are linked to information available on a network, e.g. the World Wide Web.
A conflict between several users is solved by a specific rule (like a majority decision, a weighted majority decision or the result of a game, e.g. rock-paper-scissors play, see page 15, lines 11 to 33), instead of a first come first served rule like in the prior art.

Comments:

The rule was deemed to solve “a purely organisational problem, and not a technical one”. As such this distinguishing feature was found not to contribute to an inventive step and the claim was deemed obvious.

In particular, the recognition of the problem as such was found not to involve an inventive step and could not be put into the formulation of the problem without involving inadmissible hindsight.

The examining division did not contest that GUIs can in principle be technical, nor did it argue so. However, the second distinguishing feature is not technical. In principle, a technical solution to a non-technical problem can be inventive. But the solution to this organisational problem in claim 1 is merely described in terms of general functional means directly describing a (non-technical) problem, without any reference to more specific technical means. Hence the claimed generic solution did not contribute to an inventive step.