T 964/12 – Technical It Is

This is one of those cases where the Boards disagree with an Examining Division (ED) refusing an application subsequent to a no-search declaration.

Claim 1 of the main request before the Board read:

1. A computer implemented data processing method of processing an order, the method comprising the steps of:

• providing a transport layer (503, 542) for transmitting a first message (515) from an order capturing application (505; 605) to an order fulfillment application (620; 625), wherein the transport layer is provided by an integration engine (503) and an integration directory (415; 542),
• capturing an order by means of the order capturing application (505; 605),
• generating the first message by the order capturing application (505; 605), the message body of the first message carrying an order document and an indication of a receiving organizational entity,
• transmitting the first message (515) from the order capturing application to the integration engine (503),
• determining by a logical routing framework (530) of the integration engine (503) the logical name of an order fulfillment coordination engine (603) from the indication of the receiving organizational entity using a routing model directory (540) comprised in the central integration directory (415; 542),
• storing by the integration engine (503) the logical name in the header of the first message,
• converting by a mapping framework (545) of the integration engine (503) in the message body (525) the format of the order document to the format of the order fulfillment coordination engine (603) using a mapping directory (547) comprised in the central integration directory (415; 542),
• determining by a physical address resolution framework (559) of the integration engine (503) the physical address of the order fulfillment coordination engine (603) from the logical name stored in the header of the first message, wherein the determination of the physical address is performed using a service directory (548) comprised in the central integration directory (415; 542)
• storing by the integration engine (503) the physical address in the header (520) of the first message (515),
• sending the first message (515) from the integration engine (503) to the order fulfillment coordination engine (603) using the physical address,
• processing the order document by the order fulfillment coordination engine (603) to provide at least a second message, the second message carrying an order fulfillment document (615) and an indication of the order fulfillment application (620, 625), and
• transmitting the second message from the order fulfillment coordination engine to the order fulfillment application (620; 625) by means of the transport layer.

[2] The ED refused the application because they considered the subject-matter of claims 1 and 7 to be excluded from patentability and that of claim 6 to lack novelty. The essential reasoning was for all claims that the invention comprised no, or merely notorious, technical features. The Board will therefore examine whether that reasoning was correct. This is also necessary in order to determine whether an additional search must be carried out since no search has as yet been performed.

[3] The jurisprudence has laid out the following principles for determining when an additional search should be carried out. In decision T 1242/04 [9] it is pointed out that the search is an essential element of the grant procedure, being designed to identify prior art relevant to the application. The intention is to make it possible to determine, on the basis of the documents mentioned in the search report, whether and to what extent the invention is patentable. Knowledge of the prior art forms the basis for examination of the application by the ED. However, if no search report has been drawn up it is not necessary to carry out an additional search in the documented prior art where the objection is based on “notorious knowledge” (Cf. T 1924/07 [10]). The term “notorious” means prior art which is so well known that its existence at the date of priority cannot be reasonably disputed. It may also imply that technical detail is not significant (cf. T 1411/08 [4.1-2]).

[4] In the present case the Board concurs with the appellant’s view […] that the method and system claims define technical features and technical aspects which cannot be ignored in examining the patentability of the invention.

The skilled person would infer from the application that the claims are not solely related to a business method mixed with abstract ideas how to exchange messages between business people, somehow using purely non-technical computer programs and bypassing any technical means whatsoever, but that the claimed invention is a technical information system for processing data.

Such insights are easily inferred from the various references to computer systems in the introductory Summary […] and the disclosed embodiments of the invention which are implemented using the integration platform Exchange Infrastructure of SAP that “provides an infrastructure that has a middleware which allows technical integration of SAP as well as non SAP systems by using open standards” […].

The (order) fulfillment coordination engine, an essential feature in the claims, “can be implemented with SAP’s Exchange Infrastructure” […].

The exchange infrastructure includes an integration server 425 and an integration directory 415 ([…]. [… T]he application indicates that “integration server 503 and integration directory 542 provide a transport layer for transmitting of message 515 from the sending application 505 to the receiving application 557” (underlining added). The integration server and the integration directory are implemented by the SAP Exchange Infrastructure as shown in figure 9. Hence, the integration server, the integration directory, and the transport layer are technical components of the computer system.

Also the features relating to routing messages through the transport layer, converting data formats and resolving addresses are technical, or at least have technical aspects related to computer-implemented processes.

[5] The collection of these features cannot reasonably be said to fit the narrow definition of “notorious prior art”. An additional search must therefore be carried out.

[6] It also follows from the above analysis that the objections made in the decision under appeal against claims 1, 6 and 7 are not valid. The skilled person – a computer scientist – would not interpret the features discussed above in a way that neither takes into consideration that the invention is computer-implemented, nor has support in the description.

[7] The decision under appeal therefore has to be set aside. The appellant’s main request for grant of a patent is refused since no search has been carried out, but its auxiliary request for remittal is granted. The ED should perform the additional search on the basis of the claims filed with the statement setting out the grounds of appeal dated 23 March 2012, taking due regard to the description and drawings (cf. A 92). […]

The case is remitted to the department of first instance for further prosecution.

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