T 414/12 – ¡No pasarán!

In this case Board 3.2.04 came to the conclusion that the claimed electronic gaming apparatus did not involve an inventive step. The applicant requested the following questions to be referred to the Enlarged Board of appeal (EBA):

1. When a claim relating to an electronic gaming apparatus defines as an integer a game rule which provides a further technical effect (which may be known) in the sense of decision T 1173/97, which technical effect is an inherent result of implementing the rule in the apparatus, should that integer be taken into account in assessing inventive step?

2. If the answer to Question 1 is positive, would the answer be different if there is also, as a result of the rule, a nontechnical or cognitive effect on a person playing a game on the apparatus?

3. If the answer to Question 2 is negative, would the answer be different if the application presents the nontechnical or cognitive effect as the, or one of the purposes of the invention?

The Board dismissed this request:

[4] A 112 provides for the possibility of referring questions of law to the EBA “in order to ensure uniform application of the law or if a point of law of fundamental importance arises” (paragraph (1)).

In the present case the [applicant] has asked for referral of questions concerning the particular approach to be adopted by the Boards in considering how to assess inventive step in regard of electronic gaming apparatus that implements a game rule providing a further technical effect.

The approach adopted by the present Board […] builds upon existing case law regarding implementation of game rules, which in turn is based upon various decisions of the Boards concerning the assessment of inventive step for “mixed” inventions involving computer programmes which are per se excluded from patentability under the same provision as rules and methods for playing games, A 52(2)(c). The decisions and their underlying approaches have become well-established case law and are consistently and uniformly followed by the Boards. Most recently the EBA in G 3/08 [7] held these decisions to constitute a “legitimate development of case law” and that there was no divergence between them. Nor has the [applicant] provided any compelling evidence that this might not be so.

Moreover, the particular questions raised by the [applicant] are specific to a very limited field of subject-matter and – in contrast to, say, the questions addressed in G 3/08 relating to computer implemented inventions – are of small relevance outside that field. In the Board’s estimation the questions posed are therefore also not of fundamental importance.

Finally, the differing results arrived at by the [applicant] and the Board in assessing inventive step of the claimed invention appear not to be the result of differing views as to whether further technical effects inherent in the implementation of a game rule should be taken into account when assessing inventive step (to which the questions pertain), but rather lie in differing assessments as to what aspects of the claim are technical and what aspects are non-technical game rules as such. The questions posed have in essence been answered by the Board, thus an answer from the EBA is not necessary for reaching a decision on the appeal in hand (A 112(1)a EPC, first sentence).

In the light of the above, the Board concludes that there is no justification for referring the questions posed to the EBA.

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