T 1782/09 and T 2127/09 – What About Some Tetris?

The present decisions deal with the patentability of devices for playing games similar to the famous Tetris game. If you are not interested in such subject-matter, you might still want to have a look at the last part of this post where Article 12(4) RPBA related questions are discussed.

The two decisions under consideration correspond to parallel appeals filed against decisions of the Examining Division (ED) refusing applications EP 1 600 197 and EP 1 600 198.

Claim 1 of the main request before the Board in T 1782/09 read:

A game apparatus having an operation unit (1406) which inputs an operation to a game, a display unit (1405) which displays information associated with the game, and a storage 10 unit (1403) which stores data required to execute the game, the game apparatus comprising:

means for generating display data of falling objects (101, 102, 103, 104) which are displayed to fall from an upper portion to a lower portion in a predetermined display area (100) on the display unit (1405), and storing the display data in the storage unit (1403);

means for reading out the generated display data of the falling objects from the storage unit (1403), and displaying the falling objects to fall from the upper portion to the lower portion in the predetermined display area (100); and

means for, when the falling objects reach a falling stop position in the display area, changing the display data to display the falling objects as stop objects whose falling movement stops, and storing the changed display data in the storage unit (1403), the game apparatus characterized by further comprising:

object designating means for designating a predetermined number or less of stop objects in accordance with a designation instruction from the operation unit (1406) and re-arranging means for, when the stop objects are designated, changing the display data of stop objects to rearrange positions of the predetermined number of designated stop objects in accordance with a re-arrange instruction from the operation unit (1406), and storing the changed display data in the storage unit (1403) wherein:

the object designating means comprises a cursor (106) movable on the display area (100) in accordance with a movement instruction from the operation unit (1406) and having a shape and size to accommodate a plurality of the objects;

the re-arranging means is arranged to perform the processing to re-arrange the positions of the stop objects when the cursor (106) has been positioned to accommodate the predetermined number of stop objects;

and the apparatus further comprises:

means for, when the re-arranged stop objects and stop objects which are located around the re-arranged stop objects form a predetermined combination, changing display data of a plurality of stop objects which match the predetermined combination to display data that express rising objects which rise from the lower portion to the upper portion in the predetermined display area (100) on the display unit (1405), and storing the changed display data in the storage unit (1403); and

means for, when the rising objects reach a predetermined clear position in the display area, changing the display data to clear display of the rising objects;

wherein the re-arranging means is further configured to perform the processing to re-arrange the positions of a plurality of objects accommodated in the cursor among the rising objects.

Having determined the differences with respect to closest prior art D1, the Board concluded that

“the non-technical aspects of the distinguishing features reflect modified game rules of the D1 computer game and the technical aspects reflect the technical implementation thereof” ([2.3.2(c)])

and that

“the objective technical problem is merely to technically implement the modified game rules on the D1 computer game apparatus.” ([2.3.4]).

The Board then stated:

[4] In summary, the board finds that claim 1 of both requests relates to the technical implementation of excluded matter in the form of game rules. Disregarding any effects and advantages inherent in the game rules themselves, the board is unable to identify any further technical effects in the particular manner of technical implementation that might render it non-obvious to the skilled person. In conclusion therefore, the board finds that the subject-matter of claim 1 of both requests does not involve an inventive step as required by A 52(1) and A 56.

During the oral proceedings (OPs) held before the Board, he applicant had requested the Board to refer a question to the Enlarged Board (EBA):

In the context of a computer-implemented gaming system, can a feature be regarded as a non-technical feature although the feature cannot exist and be put into practice outside the computer-implemented game system?

The Board refused a referral:

[5.1] A 112(1)(a) stipulates that in order to ensure uniform application of the law or if a point of law of fundamental importance arise, the board of appeal shall, … following a request from a party to the appeal, refer any question to the EBA, if it considers that a decision is required for that purpose.

However, as stated in G 3/08 [7.2.5], the boards of appeal are not authorised to consult the EBA whenever they so wish in order to clarify abstract points of law. The question has to be essential to reach a decision on the appeal in question.

Moreover it was stated therein (reasons [10.3.2]) that the case law of the boards of appeal regarding computer-implemented inventions, as summarised in T 154/04, is consistent and has a sound legal basis in the Convention.

Item 5 of the reasons of T 154/04 reads:

(E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.

[5.2] In the present case, the board distinguished between technical and non-technical aspects of the claimed distinguishing features on the basis of their contribution to the technical character of the invention. Whether, in the context of a computer implemented gaming system, a feature may be regarded as a non-technical feature although the feature cannot exist and be put into practice outside the computer-implemented game system, is not decisive for this assessment.

Put differently, this finding of the board answers the question of the appellant, and implies that features do not become inevitably technical merely because such features only make sense and realistically may only be put into practice in a computer-implemented game system. The board also notes that it was able to arrive at this finding without having to refer the question to the EBA. Furthermore, the board is also not aware of any other decision on this specific point, hence the board is also not aware of any divergence in the jurisprudence, as mentioned above.

An answer of the EBA to the question submitted at the OPs is thus not necessary for the decision on the present appeal and the request for referral to the EBA must therefore be refused.

Now, coming to the second decision, the independent claims of the main request before the Board in T 2127/09 read:

1. A game apparatus for making a player operate a falling object (102) that falls within a predetermined display area (100), and clearing the falling object (102) and falling stop objects (103) by combining the falling object (102) and the falling stop objects (103) under a predetermined condition, the apparatus comprising: a CPU (1101),

a) said CPU (1101) being adapted to display a falling object (102) at a falling start position (101) of a predetermined display area (100);

b) said CPU (1101) being adapted to display the displayed falling object (102) to move in a lower direction of the display area independently of an operation input from the player;

c) said CPU (1101) being adapted to display the falling object (102) to move in the lower or horizontal direction of the display area in accordance with an operation input to the falling object (102); and

d) said CPU (1101) being adapted to, when the falling object (102) reaches a falling stop position of the display area (100) and satisfies a falling stop condition, stop falling of the falling object (102), and display the falling object (102) as a falling stop object;

e) said CPU (1101) being adapted to determine if the falling stop object and other falling stop objects (103) which are arranged around the falling stop object in advance satisfy clear conditions, characterized by further comprising:

f) said CPU (1101) being adapted to, when the clear conditions are satisfied, register a portion of the falling stop object which satisfies the clear conditions as an object to be cleared;

g) said CPU (1101) being adapted to display a sequence bar (701) when a counter, counting given timings independently of the music data, reaches a predetermined value, the sequence bar being displayed to move from left to right in the display area in synchronism with a music which is output along with progress of a game; and

h) said CPU (1101) being adapted to, when the sequence bar (701) has passed the portion of the falling stop object registered as the object to be cleared, clear the portion of the falling stop object.

9. A method of controlling a game apparatus having an operation unit (1106) which makes an operation input to a game, which makes a player operate a falling object (102) that falls within a predetermined display area (100), and clears the falling object (102) and falling stop objects (103) by combining the falling object (102) and the falling stop objects (103) under a predetermined condition, a display unit (1105) which displays information associated with the game, a storage unit (1102, 1103, 1104) which stores data required to execute the game, and an audio output unit (1107) which outputs music data of the stored data along with progress of the game, the method comprising:

a step of displaying the falling object (102) at a falling start position (101) by setting display position data of the falling object (102) at the falling start position (101) in the predetermined display area (100) of the display unit (1105);

a step of changing the display position data of the falling object (102) to move the falling object (102) displayed on the display unit (1105) in a lower direction of the display area independently of an operation input from the operation unit (1106);

a step of changing the display position data of the falling object (102) to move the falling object (102) in the lower or horizontal direction of the display area in accordance with an operation input from the operation unit (1106) to the falling object (102);

a step of stopping, when the falling object (102) reaches a falling stop position of the display area and satisfies a falling stop condition, falling of the falling object (102), and displaying the falling object (102) as a falling stop object;

a step of determining if the display position data of the falling stop object and display position data of other falling stop objects (103) which are arranged around the falling stop object in advance satisfy clear conditions; and

a step of generating, when the clear conditions are satisfied, clear object data used to register a portion of the falling stop object which satisfies the clear conditions as an object to be cleared, and storing the generated data in the storage unit (1102, 1103, 1104) , characterized by further comprising:

a step of displaying a sequence bar (701) when a counter, counting given timings independently of the music data, reaches a predetermined value, the sequence bar being displayed to move it in the display area from left to right in synchronism with the music data which is read out from the storage unit (1102, 1103, 1104) and is output from the audio output unit (1107) along with progress of the game;

a step of determining on the basis of display position data of the sequence bar (701) if the sequence bar (701) has passed the portion of the falling stop object corresponding to the clear object data stored in the storage unit (1102, 1103, 1104) and

a step of clearing, when it is determined that the sequence bar (701) has passed the portion of the falling stop object, display of the portion.

18. A computer program product adapted to perform the method steps of one or more of claims 9 to 17.

19. A computer readable recording medium recording a computer program product of claim 18.

Again, the Board examined whether this subject-matter involved an inventive step:

[3.1] The application relates to a computer game like “Tetris” in which objects as blocks are displayed to fall down and fill a row. Once a row is fully filled, the blocks will be cleared immediately. It can be stated that the blocks will be cleared when they satisfy a first condition.

The idea behind the claimed subject-matter is now to introduce a second condition which has to be satisfied before the blocks are cleared. According to claims 1, 9, 18 and 19, the second condition is implemented with a sequence bar moving over the blocks to be cleared.

[3.2] The rules of the notoriously known “Tetris” computer game could be described as follows:

A random sequence of objects appear at the top of a playing field display and fall down to the bottom thereof. The objects stop falling when they hit either the bottom line of the playing field or an object that has already fallen and stopped before. In the latter case, the objects will be stacked towards the top of the display. When new objects cannot fall any longer because the fallen objects are stacked and reach the top of the playing field where the new objects are supposed to fall, the game is over.

A player can move the falling objects to the left or to the right and can thus try to fully fill a horizontal row of objects. When a row is fully filled with objects, these are immediately cleared, i.e. they disappear, and any object above a cleared one, will fall into the cleared space.

The new objects appear at the top of the playing fields display as soon as the falling object stop moving.

[3.3] Compared with the standard “Tetris” game in which objects are cleared when a first condition is satisfied, the distinguishing features f) to h) of claim 1 and the corresponding features in claims 9, 18 and 19 include now a second condition which has to be satisfied before the objects are cleared and disappear.

[3.3.1] These distinguishing features have both technical and non-technical aspects.

(a) “Game rules” form part of “the regulatory framework agreed between [or with] players concerning conduct, conventions and conditions that are meaningful only in a gaming context (T 12/08 [4.6]). They govern the conduct and actions of the players during game play (T 336/07 [3.3.1]).

Thus, “games rules” define inter alia the structural setup of the game that allows choice making to occur and determines how the game play evolves from the beginning to its end in response to player actions and decisions. It should be noted that the structural setup of the game does not require a player’s interaction.

(b) Such “games rules” are clearly recognisable in the independent claims. The game apparatus of claim 1 and the method of claim 9 are setup such that the objects are cleared only when the first and the second clearing conditions are satisfied. The same can be stated with respect to claims 18 and 19.

(c) From this it follows that the non-technical aspects reflect modified “Tetris” game rules and the technical aspects reflect the technical implementation of these modified game rules.

[3.3.2] Since these distinguishing features include both technical and non-technical aspects, the subject-matter of claims 1, 9, 18 and 19 is of “mixed” nature.

(a) In dealing with such “mixed” inventions the board adopts the approach as set out in T 1543/06 [2] which is based foremost on T 641/00. Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step.

That requirement cannot rely on excluded (non-technical) subject-matter alone, however original that matter might be. The mere technical implementation of something excluded cannot form the basis for inventive step. Decisive for inventive step is the question how excluded subject-matter has been technically implemented, and whether such implementation is obvious in the light of the prior art. As explained in T 1543/06 [2.7-9], such a consideration focuses on any further technical effects associated with implementation of the excluded subject-matter over and above those inherent in the excluded subject-matter itself.

(b) In the present case, the independent claims have been substantially amended and specify now in addition the control of the sequence bar in accordance with a counter when a predetermined count value is reached.

However, since the search division (SD) did not carry out a search under R 45 EPC 1973, the board is unable to finally assess whether the claimed subject-matter involves an inventive step, and in particular whether these amended features provide any further technical effects associated with the implementation of the modified “Tetris” game rules over and above those inherent in these rules themselves.

Procedural matters

[4.1] The OPs before the board focused in particular on the definition of “game rules” and resulted in amendments to the claims which addressed the board’s objections. Thus the amended claims have been filed in response to the board’s objections at the OPs.

[4.2] It is true that according to Article 13(3) of the Rules of Procedure of the Boards of Appeal (RPBA) amendments made especially at the OPs should not be admitted if they raise issues which the board cannot reasonably be expected to deal with without adjournment of the OPs.

However, in the present case, the SD decided under R 45 EPC 1973 to draw up no search report, without consulting the applicant, so that the claims on file contain unsearched matter and that an amendment to the claims also necessarily introduces unsearched matter.

Thus, the board at the OPs was not able to examine whether the amended claimed subject-matter involves an inventive step, not because this amendment had been submitted at a very late stage namely at the OPs but because it merely relates to unsearched matter.

The fact that the board was not in a position to decide on the issue of inventive step at the OPs is clearly not dependent on the degree of lateness of the applicant’s amendment, it is primarily the result of the SD’s decision that no search should be carried out so that only unsearched matter could be used by the applicant for amending the claims.

[4.3] In cases in which the SD did not carry out a search under R 45 EPC 1973 and features are claimed which are neither notoriously known nor explicitly accepted by the applicant as known, the boards of appeal have decided (see e.g. T 1515/07 [6]; T 690/06 [2]) that an additional search must be carried out.

Since the amendment in feature g) of claim 1 and the corresponding amendment in claim 9 meet these requirements, it is necessary to carry out an additional search according to R 63.

Moreover, already in the annex to the OPs, the board expressed the view that if a request were found to be allowable on the basis of the available facts and evidence, then the case should be remitted to the department of first instance for carrying out an additional search.

[4.4] The above nothwithstanding, the board emphasizes that remittal should be seen as an exceptional procedural possibility, and it must be also examined whether the applicant could have been expected to make the amendments which were made during the appeal before the board earlier (see Rule 12(4) RPBA), and thereby could have requested from the ED to perform the necessary search. For example, the board notes that the applicant did not file any auxiliary request before the ED, and therefore the question arises if the appellant could have been expected to file these amendments at least by way of an auxiliary request.

To this the board notes that the identification and separation of the technical effects which may and may not contribute to the technical charater of an invention (and thus to inventive step) is far from straightforward. Further, the assumption of a general obligation to file auxiliary requests - in the sense that the party must fear adverse procedural consequences if he does not - appears problematic.

Firstly, if one were to recognise this as a procedural obligation, one must immediately also answer the question: how many auxiliary requests are then “expected”, given that it is also standing jurisprudence of the boards that too many auxiliary requests can be seen as an abuse of the procedure.

Secondly, the EPC as such is completely silent on auxiliary requests: while the board recognises that these are well established in the proceedings before the EPO, both before the first and appeal instances, there is no legal basis for penalising an applicant for not using them. In other words, it should be possible for an applicant to act in good faith also without making use of auxiliary requests.

On the other hand, it is also clear that parties have no entitlement to a remittal as of right (apart from those cases where the first instance commits a procedural violation). This means that a party restricting itself to a single request before the first instance must be prepared for the possibility that he will not be able to present further requests and have them examined.

Considering the above, the board finds that the appellant himself is also not completely without fault, as nothing prevented him from introducing the subject-matter of the present amendments earlier into the procedure.

However, an examination of the first instance proceedings reveals that while the applicant possibly might have realised that further technical features in the claims could lead to the identification of potentially patentable and searchable subject-matter, it would be exaggerated to state that the applicant could have been expected to recognise what amendments he needs to make there and then. He was apparently not invited to make such amendments - and indeed the ED had no obligation to invite him -, but apparently he also could not have been expected to realise that by way of the further amendments he might at least achieve the recognition of a searchable invention. Apparently the ED did accept that the claims on file at that time do contain technical features and as such are not excluded from patentability on the basis of A 52(2) EPC, see point 3 of the Minutes, first sentence. However, all the recognised technical features were considered notorious and not contributing to inventive step. At no time did the ED indicate (at least according to the file) that it intends to perform a further search. In other words, there is some justification for the applicant for not trying to find further technical features which could potentially overcome the A 56 objections of the ED.

[4.5] In view of these particular circumstances, the board decided to admit the amendments to the claims submitted for the first time at the OPs before the board and, in accordance with A 111(1) second sentence, to remit the present case to the department of first instance for further prosecution, starting with an additional search.

Should you wish to download these decisions, click here and here.

The file wrappers can be found here and here.

NB: I guess the IPKat was the first to report T 1782/09 (here).