T 1707/08 – Troublesome Notoriety

This is an appeal against the refusal of an application by the Examining Division (ED).

The Search Division (SD) had issued a declaration under R 45 EPC 1973 that the claims were directed at non-technical subject-matter excluded from patent protection or notorious technical means for their implementation. Therefore, it was not possible to carry out a meaningful search.

The ED was not willing to carry out an additional search because it considered the subject-matter to be notoriously known and refused the application.

Claim 1 of the main request before the Board read (in English translation):

Computer system (Datenverarbeitungssystem) comprising 

• means (118) for accessing a medical case database (104), 
• means for receiving case-related data from a medical-technical device (124),
• means (118, 120, 124; 136) for entering the case-related data into the case database, 
• means (118) for accessing a database for medical expert questions (Fachfragen),
•  means (118) for generating an query for the database for medical expert questions using the case-related data, 
• means (118, 120; 150) for outputting an expert question obtained through the query, 
• means (118, 120; 150, 154) for inputting a response to the expert question, 
• means (118) for evaluating the answer.

The Board decided to remit the case to the ED but refused the requests for re-imbursement of the appeal fee. Here is why:

*** Translation of the German original ***

[2.1] In its declaration under R 45 EPC 1973, the SD informed the applicant – with a reference to A 52(2) and (3) EPC 1973 – that it was not possible to carry out a meaningful search of the prior art.

The ED did not grant the applicant’s request for an additional search and issued the impugned decision refusing the application for lack of inventive step within the meaning of A 56 EPC 1973.

[2.2] In the impugned decision [the ED] considered that the closest prior art was a computer (Datenverarbeitungsanlage), which was well-known on the date of filing. This was not contested by the appellant (applicant).

The subject-matter of claim 1 of the main request concerns a computer system comprising, inter alia, the following additional features:

(i)  means for receiving case-related data from a medical-technical device (124)

(ii) means (118) for generating an query for the database for medical expert questions using the case-related data.

The Board agrees with the appellant (applicant) that these features confer the advantage that misinterpretations of the measured data or typing errors that could lead to irrelevant expert questions can be avoided. Therefore, the technical problem solved by features (i) and (II) can be considered to be to implement the teaching method (Lehrmethode) in a way that is user-friendly and less prone to errors.

As a consequence, the relevant skilled person is the skilled person working in the field of data treatment.

The Board is of the opinion that at least feature (i) goes beyond what indisputably belongs to technical knowledge (Fachwissen) in the field of data treatment, i.e. this feature does not belong to “notorious” expert knowledge because it is not generic. Moreover, the appellant (applicant) also contests that (i) belongs to the technical knowledge of the skilled person.

[2.3] The Board is of the opinion that under these circumstances it is necessary to carry out an additional search of the relevant prior art before the novelty and inventive step of  claim 1 of the main request can be assessed (see T 1242/04 [8-9]). Therefore, the case has to be remitted to the first instance for further examination (A 111(1) EPC 1973).

Request for re-imbursement of the appeal fee

[3.1] The appellant is of the opinion that in particular point 11 of the minutes of the oral proceedings (OPs) before the ED and point 4.4 of the impugned decision show that the ED thought that at least the provision of a portable electronic device was not to be considered to be notorious and that an assessment of inventive step was to be made in respect of this [feature].

[3.2] Point 11 of the minutes of the OPs before the ED contains the following statement:

“At the date of priority a portable electronic device within the meaning of the application was common for the purpose of data treatment.”

However, this does not allow to conclude that the ED was not of the opinion that a portable device was part of the notorious technical knowledge. The statement rather is consistent with this opinion. Moreover, point 17 of said minutes states that in the course of the proceedings the ED had had the opportunity of introducing documents  if it had considered “the application to be more than such a client/server system with a portable electronic device”. However, it had come to the conclusion that a “final decision could be taken on the basis of the notorious prior art because all technical means of the claim – and of the application as a whole – were notorious”. The Board is of the opinion that this clearly shows that the ED indeed was of the opinion that a portable electronic device was part of the notorious technical knowledge.

[3.3] In point 4.4 of the impugned decision [the ED] explains that question that are to be answered at a later time have to be stored. Whether this was to be done in the memory of the schoolboy, in an exercise book (Heft) or in a portable electronic device was “not a feature conferring inventive step” but “to be decided on the basis of what was common in the field”.

However, the Board is of the opinion that this only allows to conclude that the ED thought that the combination of features of claim 1 of the second auxiliary request was not inventive. However, this does not imply that the ED had not considered a portable electronic device not to be part of the notorious technical knowledge. Rather, point 5.3 states that the ED did not see any technical elements in the application that “went beyond a commonly known client/server computer system (possibly in connection with a portable electronic device)” This is consistent with the conclusion cited above according to which the ED was of the opinion that a portable electronic device was part of the notorious technical knowledge.

[3.4] Thus the Board has no reason to doubt that the ED was of the opinion that the claimed subject-matter did not involve any inventive step, be it only in view of notorious technical knowledge. The Board is of the opinion that under these circumstances, the fact that the ED has not carried out an additional search does not constitute a substantial procedural violation (see T 1242/04 [9]). Therefore, there is no basis for the reimbursement of the appeal fee under R 103(1)(a).

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