Monday, 4 March 2013

T 2050/07 – Just Ignore It

Claim 1 on file in this examination appeal read:
1. A method of analyzing a DNA sample that contains genetic material from at least two individuals to determine a probability distribution of genotype likelihood or weight in the sample, comprising the steps:
(a) amplifying the DNA sample to produce an amplification product comprising DNA fragments, wherein each allele at a locus is amplified to generate relative amounts of DNA fragments of the alleles that are proportional to the relative amounts of template DNA from the alleles in the DNA sample, and wherein the amplification product produces a signal comprising signal peaks from each allele the amounts of which are proportional to the relative amounts of the alleles;
(b) detecting signal peak amounts in the signal and quantifying the amounts using quantifying means that include a computing device with memory to produce DNA length and concentration estimates from the sample;
(c) resolving the estimates into one or more component genotypes using automated resolving means, said resolution into one or more genotypes including solving the coupled linear equations d = G.w+e for the relevant loci (i), individuals (j) and alleles (k), in which d is a column vector which describes the peak quantitation data of a DNA sample from the signal, G is a matrix that represents the genotypes in the DNA sample, with a column j giving the alleles for individual j, w is a weight column vector that represents relative proportions of template DNA in the sample and e is an error vector, wherein the solution includes calculation of data variance sigma² from the linear model d = G.w+e together with the global minimal solution Pd = Gw0, where Pd is the perpendicular projection point which is the closest point to d in mixture space C(G) and w0 is the minimum weight vector, using linear regression methods, and calculating a probability distribution of the data assuming a normal distribution and that the error is unbiased, so that E(e) = 0, but has a dispersion D[e] = sigma²V in which V is the covariance matrix of the data; and
(d) determining, using the probability distribution of the data, a probability distribution of genotype likelihood or weight in the DNA sample.
The discussion of novelty (over A 54(3) document D6) is interesting.

When considering a virtual objection that might be raised, the Board answers a question which, as I vividly remember, troubled some colleagues and myself when we prepared for the EQE: can non-technical features establish novelty?

[6] In the decision of the examining division, novelty of claim 1 of the set of claims filed with the letter of 15 February 2007 was denied in view of document D6 which describes a method of analysing a DNA mixture sample that contains genetic material from at least two individuals.

[7] Document D6 is a European patent application filed by the present appellant and published on 29 August 2001, i.e. after the priority date of the application at issue (2 February 2001). Furthermore, it has a priority date of 15 February 2000, the validity of which has not been challenged by the appellant. Therefore, its content is considered as comprised in the state of the art pursuant to A 54(3).

[8] Both the method according to claim 1 and the method of document D6 involve (i) an amplification step wherein as a result of the DNA amplification a signal is produced which comprises signal peaks, (ii) a step of detecting the peak amounts in the signal, (iii) a step of quantifying the amounts to produce DNA length and concentration estimates, and (iv) a resolution step which involves a mathematical method basically consisting in representing the estimates in a linear equation, deriving a solution from the linear equation, and resolving the DNA mixture into its components. The methods differ essentially in that in the method according to claim 1, (i) the linear matrix equation ‘p = G x w’ used in document D6 to represent the linear effect of the concentration estimates – where p is a column vector which describes the peak quantitation data of a DNA sample from the signal, G is a matrix that represents the genotypes in the DNA sample and w is a weight column vector that represents relative proportions of template DNA in the sample - has been amended to include an error vector which models measurement error (see paragraph [0186] of the published patent application) and reads ‘d = G.w + e’, and (ii) the solution includes calculation of data variance sigma² from the linear model ‘d = G.w + e’ together with the global minimal solution ‘Pd = Gw0’.

[9] The argument could be made that the distinguishing features described above are of non-technical nature as being a mathematical method or a method for performing mental activities, and that, in view of the established case law according to which features that do not contribute to the technical character of an invention and do not interact with the technical subject-matter of the claim for solving a technical problem, have to be ignored when assessing inventive step, such features should equally be ignored when assessing novelty. The Board therefore examines whether or not the distinguishing features in the present case make a technical contribution.

[10] Both the distinguishing features (i) and (ii) aim at ascertaining the reliability of the claimed method for analyzing DNA samples containing genetic material from two or more individuals and for determining the genotypes involved. By providing estimates of the error ‘e’, estimates of the variances and standard deviations can be computed from the data using the global minimal solution ‘Pd = Gw0’ and these values can be used to estimate probabilities. This results in a quantitative estimate of the quality of the solution […]. Thus, the distinguishing features constitute a means for improving the confidence of the genotype estimate of the quantitative method analysis of document D6 […]. The board therefore considers that the distinguishing features contribute to the technical character of the claimed invention.

[11] In decision T 784/06, the present Board in a different composition had to assess the inventive activity of a five-step method of determining the genotype of a locus within genetic material obtained from a biological sample. The method as claimed was regarded as a mix of technical features (step A) and non-technical features relying on the performance of mental activities based on the application of mathematical methods (steps B to E), the latter features being argued by the patentee to be core features of the invention. It was found that the disclosure of the invention was of such a general nature that it deprived the skilled person of the information he/she needed to understand how to proceed from the first reaction value collected in step A through steps B, C and D to the determination on a probabilistic basis of the genotype of step E. Thus, the Board came to the conclusion that the technical activity of step A did not interact with the mental activities of steps B to E to lead to a tangible technical result and therefore had to be ignored in the assessment of inventive step.

[12] The Board considers that the present case clearly differs from the case underlying decision T 784/06. In contrast to the vagueness of the disclosure of the invention in appeal case T 784/06, the description of the present patent application makes it sufficiently clear how the distinguishing features (i) and (ii) of the method of claim 1 should be implemented and how they interact with the remaining steps of the claimed method in order to provide a common technical result, namely a genotype estimate with an improved confidence compared to the quantitative method analysis known from the prior art.

[13] The above consideration leads the Board to consider that the distinguishing features have to be taken into account when assessing novelty of claim 1 and, therefore, it concludes that the method of claim 1 is new.

As claims 2 to 21 are dependent on claim 1, the request as a whole complies with the requirements of A 54.

The Board then remitted the case for examination of inventive step.

I have to admit that I do not find the analogy reasoning of point [9] particularly persuasive. What is true for inventive step does not have to apply to novelty.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Manolis said...

Oliver, you don't find it persuasive because there is no legal basis provided...(I guess the habits of the trade....;-).
How about this:
G2/88: for an invention to be novel it must have at least one novel technical feature;
T154/04: novelty is only to be based on the features that contribute to technical character (confirmed also in G3/08).
Have a nice day!

pat-agoni-a said...

Why should a decision be more persuasive for the sole reason of providing references to other decisions?

On the present topic I find it very persuasive that the requirement of technicality is derived form A 52(1)(ie "inventions in all fields of technology") and applies therefore to all the requirements stated therein: novelty, inventiveness and industrial applicability.

MaxDrei said...

Very topical debate, given what is currently going on in the Supreme Court of the USA.

Take a coffee mug, old except that on its side is musical notation for an indisputably 8for the sake of argument here) NEW melody. Is a claim to that mug patentable?

Well, it has technical character. Tick Art 52. (UK and USA would say it fails, because the notation does not count).

At the EPO, it lacks an inventive step. It fails EPO-PSA. But, no other jurisdiction does PSA, so every other jurisdiction has trouble saying that the claimed mug is obvious.

What about Art 54, and novelty? For me, the mug IS new. Patent law should (as much as possible) make sense to lay people, that is, inventors, engineers and scientists. For such non-lawyer lay people, the claimed mug is indisputably NEW.

Where is the harm in recognising novelty? The claim to the mug inevitably fails, in every jurisdiction, either on eligibility (Art 52) or on obviousness, Art 56?

pat-agoni-a said...

Novelty, inventive step, clarity and much others are special legal concepts that go beyond the meaning they have for lay people. What would a lay person think of the sentence in A 52 that an invention should involve an inventive step?

Hence I find it very reasonable to consider novelty only on hand of the features contributing to the technical character of the invention.

DrZ said...

T 172/03 addresses this from another perspective. For something to form 54(2) state of the art it must be technical. (see headnote)

oliver said...

Thanks, Manolis. I think the case law is quite consistent on this issue, but as far as I can see, the arguments are somewhat hand-waving, because the EPC does not give much legal basis. I think pat-agoni-a has nicely summed up what can be said.

@pat-agoni-a: Manolis alluded to the EQE. Being EQE correctors, we would not award points (in the D1 paper) for statements without legal basis. If a candidate had cited G 2/88, we would have given marks.

@ Max Drei: The only real problem is A 54(3) prior art, where novelty is enough and A 56 cannot find application.

Anonymous said...

G2/88 (reasons 7) talked about *essential* technical features in the context of novelty.

Later on, the requirement of a distinguishing [technical] feature being essential appears to have been dropped (cf. T411/98, reasons 4.1).

That being said, "it is often difficult to separate a claim into technical and non-technical features" (cf. T258/03, reasons 3.6).

G2/88(reasons 7): "A claimed invention lacks novelty unless it includes at least one *essential* technical feature which distinguishes it from the state of the art".

T411/98(reasons 4.1): "A claimed subject-matter would lack novelty only if it were derivable as a whole directly and unambiguously from a prior art disclosure and if a 'clear and unmistakable teaching' of the combination of all claimed features (and not only the *essential* ones) could be found in said disclosure."

MaxDrei said...

Thanks Oliver, with the point about 54(3). I'm glad you see it as the only problem.

For me, 54(3) performs a very important role, that of forcing everybody to be very clear on what is the difference between novelty and obviousness. Without it, Europe would have gone the way of most other jurisdictions, blurring the two concepts to the detriment of legal certainty.

Just a little bit new, is it? OK, well then ergo it must be obvious.

That weak-minded approach is to be deprecated.

You worry that my coffee mug decorated with "new" script would survive when the only relevant prior art is available only under Art 54(3). I don't. Here's why.

The rest of the world finds it astonishing that a coffee mug new only because of new script survives testing Art 52, EPC. It does, of course, because a coffee mug, even when notoriously old, has "technical character". Other jurisdictions ask what is new about the coffee cup (or computer) and decide patent-eligibility under Art 52 on the basis of what is new. Script is not eligible, so my claim would fail Art 52 in, say, the UK.

In the same way that my coffee mug gets past Art 52 at the EPO, I would allow it past Art 54, and despatch it for failure to meet Art 56. With EPO-PSA you need to distinguish between objective problems that are technical and those that are not (Like thinking up a new melody). With Art 54 you do not need to embark on the fiendishly difficult exercise of distinguishing technical claim features from non-technical, so why do it?

But, hey, I don't really mind. I just think that the likelihood that there is no prior published art on whichg to build an obviousness rejection strikes me, in these circumstances, as not very likely. Computers, coffee mugs, and even methods of analysing DNA are all prior published, no?

I'm just having fun here, trying to stimulate interesting responses.

Anonymous said...

In my eyes the mug would not be novel as the presence of a new melody is not a technical feature. The presence of music notes in itself Is perhaps of esthetical nature, whether presenting a new melody or not. But certainly not technical since it has nothing to do with the function of a coffee mug.

pat-agoni-a said...

If it is to stimulate interesting responses the following questions could be asked:
If features not contributing to the technical character are to be ignored for novelty and inventiveness, should they also be ignored when assessing clarity and added subject-matter?

manolis said...

Just to add to the fun of the discussion, how about this statement:
"at least the implementation of characterising features assures technical novelty...".
It is from T 958/03 (KONAMI) and it has been cited many times (out of context) to support the idea of "photographic" novelty (in contrast to technical novelty). The idea is that even if there are non-technical features (like the melody of MaxDrei's mug) their implementation (eg. a music playing ic chip) would be novel since it would not be the exactly the same chip that would play another melody. If one takes the time to read the decision would see that some of the characterising features in that case were technical and it is not clear to which features this statement refers to. Well, it didn't matter much at the moment because none of the features was inventive, but still..

@pat-agoni-a: look into T619/05 according to which in Art.123(2) there is no distinction between technical and non-technical subject matter. The Board states that as to the technical subject matter, they are satisfied that the limits of Art123(2)were respected but since they were technically qualified, they could have an opinion on whether this was also true for the non-technical subject matter. They regretted the fact that the applicant did not attend the oral proceedings to explain to them whether non-technical subject matter had been added or not. Finally they decided that it was not important since the claim was not inventive, anyway...
How much more fun you want? ;-))

pat-agoni-a said...

One could also argue that features that do not contribute to the technical character of the invention do not need to be in the claim in the first place. They are hence redundant and offend against the requirement of conciseness in A 84. What about that, does it sound convincing?

Anonymous said...

Interesting that T619/05 makes to reference to G1/93, hn.2, which apparently says something different on the same topic:

<<2. A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC.>>