T 1416/06 - Mathematicians Do Not Invent (Nor Are They Skilled Persons)

Claim 1 of all requests is directed to a method of representing a document collection.

In a communication accompanying the summons to oral proceedings requested by the appellant as an auxiliary measure, the Board stated that it had doubts whether the characterising features solved a technical problem. Providing “verbal semantics”, i.e. “words or terms” for describing the meaning of a dimension seemed basically to be a presentation of information. The verbal semantics was directed to the mind of a user. It was therefore not clear that there was a technical effect indicating the presence of technical means for solving a technical problem. As to the auxiliary requests the Board stated that it was not apparent that any part of the invention according to the independent claims of these requests contributed to the solution of a technical problem. The steps were of a mathematical nature, serving to process information with the purpose of improving its presentation or visualisation to the user. Whether or not this was new and original could not play any role as long as no technical effect was achieved. As to the skilled person it was clear that mathematical skills were crucial. A mathematician was however not a technically skilled person but could at most be part of a technical team. [V]

[…] The method is to a large extent defined in terms of equations. The purpose of the method is to present the information in a way that can be more easily understood or evaluated by a user. A fundamental question in this context is whether the invention - apart from its being implemented on a computer - is within a field of technology. At the bottom of the method is a mathematical technique known as orthogonal decomposition. This technique is generally applied to large matrices and, like many mathematical functions, can be represented graphically. It is typical for mathematical representations that they involve pure numbers, i.e. abstract data, having no physical connotation. In the present invention the representations are of documents and the terms used in the documents. Thus, although the data have a certain “meaning”, they remain abstract. They can hardly be regarded as forming a physical entity, nor does the method result in a change in the data but merely in their representation (cf. T 208/84 [5]). It could therefore be argued that the invention - again apart from its implementation - is essentially a mathematical method pursuant to A 52(2)(a) EPC, resulting in a presentation of information pursuant to Article 52(2)(d) EPC. [3.1]

For some reason, the Board was reluctant to reject the appeal on this basis. It continues :

In the following these general concerns will however not be pursued since there are more specific reasons for not allowing the appeal. [3.2]

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