Tuesday, 17 November 2009

T 1671/06 – A Non-Technical Prejudice is Not Relevant

According to the case law of the Boards of appeal, inventiveness can sometimes be established by demonstrating that a  prejudice had to be overcome. But what if this prejudice is not technical ? The present decision, which concerns a first-instance decision to refuse an EP application, provides the (expected) answer.

[...] Starting from the prior art of the so-called “high-end” portable phone with reminders implemented using a calendar, such as that disclosed in D1, the invention differs simply by the idea of not using the calendar […]. According to the appellant’s interpretation of calendar, this difference must therefore imply the absence of the capability to store and display an overview of days, months and years. [5]

The appellant appears to be proposing that this feature solves the problem of “reducing the costs of a high-end mobile phone with minimal sacrifice of functionality and an improved ease of use”. However, the Board considers that this problem is too general because it does not take into account that the concept of reminders (and thus entering them) is already known. The Board thus prefers a more specific problem acknowledging this feature, namely an alternative way of providing the reminder function. The solution being to do away with going via the calendar function. [6]

However, D2, which deals with the general concept of “schedule setting”, solves the converse problem of providing an alternative to entering manually schedule information, which is described as conventional, but complicated, by using a calendar. In the Board’s view, the skilled person would realise on reading D2 that entering the data for a reminder manually, or with the aid of a calendar are two possibilities having a trade-off between ease of operation and device complexity, e.g. memory utilization.

In this respect, the Board disagrees with the appellant’s view that the skilled person would follow the “general trend”, or would not “move in the opposite direction” since in a trade-off situation he would appreciate the advantages and disadvantages of the various discrete possibilities (or in the continuous case, trade-off points). [7]

The appellant argues that the skilled person would only consider solutions at the modularity of complete applications. Thus the skilled person would not consider a reminder application without a calendar function. However, the Board does not agree with this because the decision at the application level is largely governed by non-technical considerations that may lead to the grouping of features into specific applications to suit user’s requirements or marketing strategies, for example. This argument therefore amounts to saying that there is a non-technical prejudice against removing parts of an application. However, in the Board’s view, the only prejudice that is relevant is a technical one that would prevent such a modification. The skilled person is aware of and operates at a technical level where “modules” have a finer granularity. Such modules would be individual software techniques such as the means for entering time information, or comparing the time with a clock in the claim. There is no evidence of any prejudice against combining such known features in the known way to implement the required manual entry system on the phone of D1. [8]

To read the whole decision, click here.