Monday, 26 August 2013

T 1670/07 – We Don’t Buy It

This is an examination appeal.

Claim 1 of the main request before the Board read:
A method of facilitating shopping with a mobile wireless communications device (12) to obtain a plurality of purchased goods and/or services from a group of vendors (14) located at a shopping location (16) comprising:
communicating from the mobile wireless communications device with at least one server (18) a selection of two or more goods and/or services to be purchased by a user of the mobile wireless communications device on or before the user shops at the shopping location;
the at least one server, in response to information stored therein regarding vendors located at the shopping location and the goods and/or services offered by the vendors and the selection of the plurality of goods and/or services to be purchased by the user, causing at least an identification of the vendors from which available ones of the two or more goods and/or services may be purchased and the available ones of the two or more goods and/or services to be transmitted to the mobile wireless communications device; and
the mobile wireless communications device providing to the user an identification of the available ones of the goods and/or services to be purchased and an itinerary (120) of the user setting forth at least a choice of an order in which the user visits the identified vendors to obtain the goods and/or services to be purchased wherein the itinerary is a function of at least one profile of the user.
The Board found this claim to lack inventive step. The decision is interesting because the Board identifies three fallacies related to cases where inventions mix technical and non-technical features.

[4] It is common ground that claim 1 of the main request differs from D1 in that the user can obtain goods from a plurality of vendors located at the shopping location and in that the user is provided with an itinerary with the choice of an order to visit the identified vendors, the itinerary being a function of a profile of the user.

[5] The examining division considered that obtaining goods from a plurality of vendors was not technical and was not relevant for assessing inventive step […]. The problem was seen to be how to provide a technical means to optimise an itinerary […]. By including the feature of the itinerary in the problem, it appears that the division must have considered that it did not contribute to inventive step, i.e. was also non-technical. The solution of the provision of the choice of an order of visiting vendors and making the itinerary a function of a user profile were considered to be obvious […].

[6] However, the Board goes further than the examining division and does not consider that the features of providing a choice of an order of visiting vendors and making the itinerary a function of the user profile have any technical effect either. In the Board’s view, the overall effect of the method, namely to produce an ordered list of shops, is not technical.

[7] The appellant considers that the selection of a group of vendors at a shopping location contributes to the technical character of the invention. Decision G 1/04 is referred to as noting that a non-technical feature may interact with technical elements so as to produce a technical effect. This decision refers to T 603/89 as the basis for this statement.

[8] This decision in turn cites T 26/86 as an example where the mix of technical (X-ray apparatus) and non-technical features (computer program) as a whole produces a technical effect (extending of the life of an X-ray tube). It also gives the counterexample of T 158/88 where the technical features (displaying characters on a screen) and non-technical features (processing data according to the specific selection criteria) produce an effect (replacing data representing a specific character form by data representing the same character in a different form) that differs only in the information displayed, and is not technical. In T 603/89 itself, the technical features (physical marker that is placed on keyboard of an instrument) and non-technical features (displaying numbers and notes) produce an effect (improvement of a teaching method) that is an improvement of a method for performing a mental act and thus also not technical.

[9] In the present case, the appellant argues that the alleged non-technical feature of the information regarding the group of vendors “interacts with technical elements, in the form of the server 18, to produce a technical effect in the selection of vendors and the transmission of processed information regarding that selection to the mobile wireless communications device”. However, in the Board’s view, this is an instance of the well-known argument that could be termed the “technical leakage fallacy”, in which the intrinsic technical nature of the implementation leaks back into the intrinsically non-technical nature of the problem. In this case, the “selection of vendors” is not a technical effect and the mere “interaction” with technical elements is not enough to make the whole process technical as required by the jurisprudence. Similarly, the transmission of the selection is no more than the dissemination of information, which is in itself also not technical. These effects are more like those in T 158/88 and T 603/89 than in T 26/86. Technical considerations only come into play once the relevant features are implemented.

[10] The appellant also argued that the difference of identifying a group of vendors rather than a single vendor as in D1 implied a problem of logistics, which was not a business method. However, the Board considers that a logistic or navigation system that actually involves navigation to a particular place might have some technical element, but the present invention does not as it does not involve any physical elements, but simply indicates possible choices. Moreover, in the Board’s view, producing an itinerary is not technical as it involves only standard human behavioural concepts such as going to the bank and then going to the supermarket. The appellant replied that the physical act of going to the locations conferred technical character on these thoughts.

[11] Here again, the Board sees something of a well-known argument that could be termed the “broken technical chain fallacy” after decision T 1741/08. This decision dealt with the fairly common situation that arises in connection with graphic user interfaces (GUIs) where a technical effect might result from the user’s reaction to information. The decision essentially concluded (see point [2.1.6]) that a chain of effects from providing information to its use in a technical process is broken by the intervention of a user. In other words, the possible final technical effect brought about by the action of a user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user. This applies to the present case because any possible technical effect depends on the user’s reaction to the itinerary.

[12] The appellant also argued that according to T 362/90, providing a status indication about the state of a system was a technical effect. It is true that T 115/85 states that giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem. In that case the system was the input/output device of a text processor. T 362/90 cites this decision in support of the technical character of a simultaneous optical display of a current and ideal gear selection based on conditions in a gearbox. In the Board’s view, the display of an optimal shopping itinerary is different because there is no comparable technical system since shopping is intrinsically non-technical. The availability of goods in a shop and information on shopping lists are not comparable with the status of a technical system. Furthermore, although the system of the invention has a server and a mobile device that are undoubtably (sic) technical, the invention is not displaying information about the status of these devices themselves, but only non-technical information that they process.

[13] In summary, therefore, the Board is of the opinion that a technical effect may arise from either the provision of data about a technical process, regardless of the presence of a user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process. In the Board’s view, neither applies to the present case.

[14] Thus, in the Board’s view, the appellant’s formulation of the problem as “the provision of a technique which has greater flexibility and can provide results tailored to a user’s preferences” is not a technical problem and is also far too general because it does not correctly take into account non-technical aspects. In the Board’s view, the problem is the much more specific one of how to modify the prior art to implement the non-technical aspects, in this case how to plan a shopping trip (itinerary) that includes orders from different vendors.

[15] Concerning the implementation, the Board first notes that it is essentially only claimed in functional terms and that there are no details of how it is actually done. The only technical features of the solution are the hardware elements themselves and the specification of which elements perform the various steps. The elements of a mobile wireless communications device and a server are conventional and moreover known from D1. The only assignment of function that is specified is that the server determines the vendors as function of the orders and the location. Since D1 determines the vendor for a single order at the server, it would be obvious to consider determining multiple vendors in the case of multiple orders.

[16] At the oral proceedings, the appellant stressed that the system of D1 only identified one facility whereas the invention identified a group of vendors and gave navigation information about how to visit them. If the system of D1 were to be used to order several items, it would only return information on a single vendor that could supply all the items. There might be no single vendor capable of doing this, or the vendor might be a long way away from the customer. The invention would be able to find more than one vendor that together could fulfil the order. Thus the invention solved the problem of reducing the number of failed attempts to fulfil an order. In the Board’s view, this is another example of a standard argument, which could be termed the “non-technical prejudice fallacy”. The argument essentially invokes non-technical aspects as a reason for not modifying the prior art, whereas these features cannot in fact contribute to inventive step. The question is not whether the skilled person would consider providing these features because that has already been decided in formulating the technical problem. The question is simply how it would be done. As mentioned above, in this case, the “how” comprises conventional hardware carrying out the tasks in an obvious way. In particular, there is no technical reason why the skilled person would not have considered modifying the various parts of the system of D1, at least to the extent claimed, to solve the problem posed.

[17] It follows from the above, that in the Board’s view, the appellant’s analysis of why the repeated selection of vendors according to D1 is not equivalent to the claimed solution is moot.

[18] Accordingly the Board judges that claim 1 of the main request does not involve an inventive step (A 56 EPC 1973).

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

The file wrapper can be found here.


Anonymous said...

no one sells it.

MaxDrei said...

Oliver your Image and (especially) your title is inspired. Brilliant. Thanks for alerting us to this interesting case.

oliver said...

Thanks for your kind comment, Max Drei.

Suleman said...

Clearly, as is often the case at the EPO, the way the problem is formulated will be very important in determining whether the claim gets through. The applicant needs to avoid it ending up as 'modifying the prior art to do X'

MaxDrei said...

Suleman, with your first sentence I agree. Your second sentence, however, leaves me puzzled (notwithstanding that there will often be a spirited debate between Applicant and EPO what exactly is the objective technical problem, so the rhetorical skills of the representative will be important).

Given that i) subject matter in the EPO is patentable only when it solves the OTP that has been derived from the D1 starting point, and ii) one is required to claim the technical feature combination that delivers technical effect X, I do not see how it is possible to have any other OTP than "Starting from D1, how do I achieve X?"

Care to enlarge on your second sentence?

Myshkin said...

Maybe Suleman assumes X is (a mere rewording of) the difference? This will be the case if the difference is non-technical / not achieving a technical effect. The technical problem is then how to modify the closest prior art to achieve that non-technical goal X. The claimed solution is to do X. No room for inventive step.

So the attorney should try to convince the Division that difference X in fact achieves some technical effect Y. Then the problem is based on Y and the question is essentially whether some prior art teaches that Y can be achieved by X.

Objectively this is not a question of rethorical skills but of sound argumentation (assuming there actually is a technical effect). In practice rethorics might of course help, e.g. by confusing or tiring down the ED.

Suleman said...

In response to MaxDrei, yes, you are correct that the EPO seeks to reduce analysis of the contribution to 'the problem' solved starting at D1. However when you have long claims with lots of features, there is often/sometimes a complex relationship between the claimed matter and the prior art, such as
i)we achieve technical effect A (e.g.cure cancer)
ii) we also achieve a little bit of technical effect B (e.g less side effects)
iii) we might have achieved some technical effect C (our invention could perhaps be used on a larger patient group and the prior art does not mention this).
[Sorry for the examples, I'm biotechie]

If different prior art documents disclose technical effects A, B and C then it is clear that the contribution made over any individual document is difficult to define. That was the sort of situation I had in mind, and in the present case I felt that the Board reducing it to modifying D1 to do X, essentially decided the case. My comment was more about applicant strategy and how best to present the contribution, rather than the correctness of the decision.

MaxDrei said...

Thank you both. I like this case because it comes out of Europe, and one can safely assume that the drafter and the prosecutor both know the Problem and Solution Approach and the key importance of framing the objective problem as a "technical" one. Nevertheless, they failed.

What can give rise to bad feelings amongst Applicants from outside EPC-land is however ignorance of that drafting imperative. I wonder how much of a home advantage European industry enjoys, when it comes to patenting methods of doing business and programs for computers on the margin of patentability.

But then again, GATT TRIPS tells us that patents are only available for "technology". So every patent attorney all over the world should grasp that patents are available ONLY for new and non-obvious solutions to problems that must be technical ones.