Case Law Review – T 0042/10


T 0042/10

Claimed Subject Matter:

Determining relative skills of players (Microsoft).

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


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 1954/08


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.


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 1227/05



Claimed Subject Matter:

The purpose of the application is to simulate or model the performance of a circuit under the influence of a 1/f noise, i.e. a stochastic process with a frequency spectrum whose intensity is inversely proportional to a power beta of the frequency. The process describes the time dynamics of a physical variable, e.g. electric voltage.

The solution is based on the notion that 1/f noise can be simulated by feeding suitable random numbers into the circuit model. The application derives the numbers from a Gaussian stochastic process BFBM (fractional Brownian motion as a function of time) whose derivative is known to have a 1/f spectrum. The BFBM process and its derivative are characterised in particular by a covariance function and a covariance matrix.

The invention generates a covariance matrix which features the same simple elements as the covariance matrix (equation 2.7) of the derivative of the fractional Brownian motion. A triangular (Cholesky) decomposition of the generated covariance matrix is multiplied by a vector x of random numbers having a Gaussian distribution. Due to the design of the covariance matrix, the resultant random number sequence y forms a 1/f noise source.


The board held that specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which can form an essential part of the fabrication process and precede actual production of a product. Such simulation methods cannot be denied a technical effect merely on the grounds that they do not yet incorporate the physical end product.

The take-away point is that if a simulation is clearly and specifically limited to a narrow technical field (and particular technical features within that field) it is more likely to be found to be technical it itself.

While the invention may be preceded by a mental or mathematical act, the claimed result must not be equated with this act. The present claims relate to a simulation method that cannot be performed by purely mental or mathematical means, not to the thought process that led to that simulation method.

Simulation performs technical functions typical of modern engineering work. It provides for realistic prediction of the performance of a designed circuit and thereby ideally allows it to be developed so accurately that a prototype’s chances of success can be assessed before it is built. The technical significance of this result increases with the speed of the simulation method, as this enables a wide range of designs to be virtually tested and examined for suitability before the expensive circuit fabrication process starts.

Without technical support, advance testing of a complex circuit and/or qualified selection from many designs would not be possible, or at least not in reasonable time. Thus computer-implemented simulation methods for virtual trials are a practical and practice-oriented part of the electrical engineer’s toolkit. What makes them so important is that as a rule there is no purely mathematical, theoretical or mental method that would provide complete and/or fast prediction of circuit performance under noise influences.

For example, specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In view of this development it must be assumed that the outlay for implementing a technical product will increasingly shift to the numerical simulation phase, while final implementation of the simulation result in the actual manufacture of the product will entail no or only comparatively little extra innovation effort. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product.

A further fundamental change is to be found in the fact that development and production are increasingly separated, materially and geographically, in a globally distributed industry. In that light, too, the board considers specific patent protection to be appropriate for numerical development tools designed for a technical purpose.