Tuesday, 20 October 2009

T 1143/06 - A Case for Mentalists ?

The invention relates to a system and method for accessing data files in a computer-based database. […] A problem associated with large computer databases is that it can be extremely difficult to identify hidden patterns in the data. The invention allows each of the data files to be represented visually as an element moving on the display. […] Thus, hidden patterns in the data are easily identified by observing groups of elements moving in a similar way. [1]

[…] The examining division (ED) refused the claim as not involving an inventive step. [3.1]

The invention differs from D1 only in that the speed of movement of respective elements is determined, causing the elements to move relative to one another. The main question is whether the ED’s finding that this feature did not have a technical effect was justified. [3.2]

A non-technical claim feature is a feature which does not interact with the technical features to produce a technical effect. According to the jurisprudence of the Boards of Appeal such a feature cannot establish novelty and inventive step (T 154/04 [15]). Since the present invention is concerned with the visualisation of data files A 52(2)(d) EPC, excluding presentations of information from patentability, is obviously relevant. [3.3]

If the new features of a claim concern the presentation of information itself (rather than its concrete implementation) a patent can only be granted if they also produce a technical effect. If they do not they cannot contribute to an inventive step. [3.4]

The movement of the elements symbolising the data files over the screen is intended to convey information. […] Regarded in isolation this feature must be held to be a “presentation of information” in the sense of A 52(2)(d) EPC. In its claim context the feature can therefore only contribute to an inventive step if it additionally produces a technical effect. [3.5]

[…] The appellant argues that the invention provides a greater amount of information and therefore provides a superior solution to the “objective technical problem to be solved”, namely to permit an “efficient search, retrieval and evaluation of data records stored in a database”. The Board’s view is that the invention does not solve a problem that is directly concerned with the search for and retrieval of information, since the only new feature relates to the movement of displayed elements. The direct effect of the visualisation is the impression it makes on the user. The stated problem is therefore too broad. A more precise formulation would be that the invention solves the problem of presenting information about data files to a person in such a manner that he can easily evaluate it, this person being the user of a system for search and retrieval of data files in a database. This wording demonstrates more clearly that the problem is not a purely technical one. In fact, the same information could theoretically be displayed as natural-text descriptions or tables. A direct technical effect therefore seems to be absent.

The user of the system responds to the displayed information by activating selecting means to select a data file and cause the system to display it. […] The user’s evaluation of the information is a mental act. Like any cognitive process it is at least in part subjective, as the ED has pointed out. Truly technical is thus only the system’s response to the user’s activation of the selection means. However, not only is the system response indirect since it is entirely dependent on the outcome of the mental act on the part of the user, but it is not even new: the system reacts on the selecting means in the same way as in the prior art. It may fetch a different data file than in the prior art, but if it does it is a mere reflection of the insight the user has gained from the mental act. Although this mental act will be influenced by the invention, such influence is not in itself a criterion of technicality.

A technical problem could therefore only be related to the implementation details of the method, as the ED correctly concluded. In claim 1 however the implementation is only implicit. [3.8]

The request must be refused under A 56 EPC 1973. [4]

To read the whole decision, click here.