T 1359/08 (Information management/SAP AG) of 14.1.2011

Summary of Facts and Submissions

I. European patent application no. 04 030 049.3 (publication number EP 1 544 773) relates to a computer-implemented method and a computer program product for defining and updating a configuration model for a product.

II. The examining division refused the application for lack of inventive step. The configuration model of a product was of a highly abstract nature; the method of updating and versioning was a business or administrative scheme. The technical implementation of such a method on a computer system, described in the application only in general terms on a high abstract level, was straightforward to the person skilled in the art tasked with implementing the configuration model and using standard programming techniques. The decision was announced in oral proceedings and posted in writing by registered letter with advice of delivery on 6 March 2008.

III. The appellant (applicant) lodged an appeal against the decision on 18 March 2008; a statement setting out the grounds of appeal was filed on 8 July 2008.

IV. The Board notified the appellant of its provisional opinion that it concurred with the decision under appeal in that the technical contribution of the invention over the prior art was an obvious computer implementation of a non-technical method.

V. In oral proceedings held before the Board on 14 January 2011, the matter was discussed with the appellant on the basis of three amended sets of claims submitted as new main, first and second auxiliary requests, the wording of claim 1 of these requests is as follows:

Main request:

"1. A computer-implemented method for defining a configuration model (100) and for updating subcomponents thereof for a configurable product comprising:

receiving a first input;

defining, based on the first input, a first version of a first subcomponent (120A) to be used in the configuration model (100), the first version including information that describes the product;

receiving a second input;

defining, based on the second input, a second version of the first subcomponent (120A) to be used in the configuration model (100), the second version including information that describes the product, wherein the second version is generated by updating the information within the first version;

designating the first version as an active version, and designating the second version as an inactive version;

defining, based at least in part on the active version of the first subcomponent (120A), a first component (102) that describes the product;

testing and revising the second version within the configuration model (100) while it is in an inactive state prior to making it the active version without taking the first subcomponent offline; **(1)<and>

upon approval, changing the second version to the active state and the first version to the inactive **(2)<state>."

The numbered angle brackets **(1)<> and **(2)<> have been added to indicate the text portions changed in claim 1 of the auxiliary requests.

In claim 1 of the first auxiliary request:

**(1)<…> is deleted;

**(2)<…> has the following wording: "state; and

importing a change to the first subcomponent that is in operational use in an inactive state and activating the change to the first subcomponent at a later stage."

In claim 1 of the second auxiliary request:

**(1)<…> is deleted;

**(2)<…> has the following wording: "state; and

establishing an inter-model link between the subcomponents of the configuration model (100) and subcomponents of a second configuration model, wherein after the second version of the first subcomponent is activated, rerouting the link to the second version of the first subcomponent and updating the second configuration model that is reusing the first subcomponent."

VI. The appellant has requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims according to the new main, first and second auxiliary requests filed at the oral proceedings.

VII. According to the appellant's submissions, the invention was novel and inventive. The object of the invention was to provide an efficient update and versioning process for a product configuration model. Updating and versioning was clearly a technical problem. Even if the content of the configuration model included some business-driven aspects, the claimed method considered as a whole was directed to such a technical update and versioning process. A software engineer, who was the skilled person in the present case, understood that the invention as claimed was not about a purely mental plan to be carried out using paper and pencil but a concrete method for updating the configuration model of a physical product in the real world.

The technical essence of the invention was the combination of a versioning technique and an active/inactive state approach. This unique approach allowed to test and revise the updated version within the configuration model without interfering with any possible concurrent use of the configuration model. By testing the updated version prior to making it the active version, the operational version could stay online and visible to the user, avoiding the inconvenience of having to take the current version "off-line" and to interrupt access to the data during the update process. By changing from the active to the inactive state, and vice versa, the change to the updated version could be made very fast and efficient. The server running the configuration model did not have to be shut down, and the user of the configuration model was not affected by the update process.

There was no hint to be found in the prior art which could inspire the skilled person to combine a versioning process and an active/inactive state approach. Therefore, the invention in claim 1 of the main request was clearly novel and inventive over the prior art.

The additional feature of the first auxiliary request more clearly defined the inventive concept to test and revise the new version offline and to put it online at a later stage after approval. The additional features of claim 1 of the second auxiliary request established an inter-model link between the configuration model and a second configuration model. The link was merely rerouted when subcomponents were updated so that the update information could be reused, which saved considerable storage resources. The subject matter of the second auxiliary request thus provided a novel and inventive contribution over the prior art.

Reasons for the Decision

1. The appeal although admissible is not allowable since the requests before the Board do not remove the objections regarding inventive step (Article 56 EPC 1973).

Main request

2. Claim 1 of the main request is directed to a method for defining a configuration model for a configurable product and for updating subcomponents thereof. As explained in the description, a "configuration model is generally some collection of ... information that is needed to configure the product" (see p. 2, section 0003). The configuration model includes components, subcomponents, and elements which define characteristics of the product as for example prices, costs, colours etc (see p. 3, section 0011 ff.).

Defining a configuration model and its components and subcomponents is thus a form of information modelling, which is, as such, not an invention for the purposes of Article 52(1) EPC (cf decision T 49/99 - Information modelling/INTERNATIONAL COMPUTERS, not published; retrievable from URL: legal.european-patent-office.org/dg3/pdf/ t990049eu1.pdf). The same holds for the management of information models during their life cycle. In general, abstract activities in the field of information management are per se not patentable, and to the extent that they do not interact with technical features to contribute to the technical solution of a technical problem they cannot establish novelty or inventive step (for a summary of the relevant case law, see the EPO-publication "Case Law of the Boards of Appeal of the European Patent Office", sixth edition, European Patent Office, July 2010, chapter I.D.8.1.).

All features in claim 1, except for the general computer-implementation of the method, concern abstract processes of information management in the context of defining and updating a configuration model. In particular, setting versions of the model to an active or inactive state is primarily part of the abstract concept of managing the update process and not per se a genuine technical feature of the computer implementation.

The feature "testing and revising... without taking the first subcomponent offline" is allegedly another important technical feature of the invention. Its meaning can be understood from the description, section 0022, which reads as follows: "Often, it is not possible to take a component off-line in order to change the information contained within a component. In this situation, a different version can be generated that contains the new or updated information. Then this new version can reside in the configuration model as an inactive version." It is evident that despite the apparent analogy between "offline" and the technical term "online" this feature relates to an abstract organisational concept involving availability, detached from any specific computer implementation and applicable even to the classical document management on paper.

The only technical feature in present claim 1 is thus that the method is "computer-implemented". Although this feature avoids exclusion from patentability under Article 52(2) and (3) EPC, it does certainly not render the method inventive, considering the notorious usage of computer systems in business and administration.

First auxiliary request

3. Similar considerations apply to claim 1 of the first auxiliary request, which more precisely than the main request defines the sequence of updating steps after approval of a change of the configuration model. However, this sequence of steps like the whole method of versioning and updating has the character of an abstract concept of information management and is thus considered not to provide any technical contribution to the prior art either. Given the abstract concept, its technical implementation on a computer system remains merely a matter of routine.

Second auxiliary request

4. According to the second auxiliary request, an inter-model link is established between two configuration models so that after updating one subcomponent, the other configuration model is updated simply by rerouting the link.

Although terms like link and rerouting point to computer-implemented functions, the claim definitions and the description of the application do not force such an interpretation on these features. On the mere conceptual level, a product list on paper with name references to items of another product list, identified by version numbering and subject to manual update changes, would fully meet the claim definitions.

The present application does not provide any specific information about the computer implementation of the method at all. Even from the drawings, no details of the implementation can be derived. Only from the acknowledgement of the background art and from general statements at the end of the application, starting with section 0067, can it be understood that the computer implementation is a possibility for carrying out the invention.

Considering that the application is confined to disclosing abstract concepts of information management rather than setting out a practical computer implementation, the Board concludes that a technical interpretation of the said features of the second auxiliary request would be inappropriate. The board judges that these features do not support inventive step.

5. In summary, none of the requests before the Board concerns an invention which complies with the requirement of inventive step. The appeal, therefore, cannot be allowed.

ORDER

For these reasons it is decided that:

The appeal is dismissed.