T 1820/16 () of 25.9.2020

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division refusing European patent application No. 13 178 377.1 on the grounds that the claimed method constituted subject-matter in the sense of Article 52(2) and (3) EPC and was therefore not patentable under Article 52(1) EPC.

II. In the statement of the grounds of appeal the appellant requested to set aside the decision to refuse the application and to remit the case to the examining division for further prosecution on the basis of the main request (filed with letter dated 22 July 2015) on which the decision of the examining division was based or on the basis of the auxiliary request submitted with the grounds of appeal. Oral proceedings were not requested.

III. In a communication dated 21 February 2020 the Board gave its provisional opinion that claim 1 of the main and the auxiliary request did no comply with Article 123(2) EPC and with Article 52(1) in combination with Article 52(2) and (3) EPC.

IV. In a reply dated 23 April 2020, the appellant provided arguments with respect to the objections under Article 123(2) EPC raised by the Board and confirmed its arguments with respect to the objections raised under Articles 52(1), (2) and (3) EPC.

V. Claim 1 of the main request reads as follows:

FORMULA/TABLE/GRAPHIC

VI. Claim 1 of the auxiliary request, which was submitted with the grounds of appeal, differs from claim 1 of the main request only by replacing the expression 'a set of feasible solutions' in line 2 with 'a set of technically feasible solutions' (underlining added by the Board).

VII. The applicant's arguments are summarised as follows:

Concerning the objection under Article 123(2) EPC, the appellant stated that the first sentence of the description indicated that the subject-matter concerned a 'discrete combinatorial problem'. In the second paragraph of the description 'knowledge-based configuration of products and services' as described in 'http://en.wikipedia.org/wiki/Knowledge-based_configuration;' were given as example of such discrete combinatorial problems. The skilled person would thus directly and unambiguously understand that the claimed method concerned a 'discrete combinatorial problem', which was also used, for example, for the 'configuration of products'. Therefore, the claimed limitation was directly and unambiguously disclosed in the original documents.

Concerning the objections under Articles 52(1), (2) and (3) EPC, the appellant argued that the subject-matter defined in claim 1 had technical character and solved a technical problem. Due to the definition in claim 1 'in a process of configuration of products' the method must be understood as being performed by machines or technical means and was therefore 'computer-implemented'. This followed from the teachings on page 1, lines 11 to 15 in the description, where reference was made to an article in Wikipedia concerning discrete combinatorial problems. This article was quoted in relation with the general background of the claimed method, discussing the solution of combinatorial problems for one exemplified field, namely the field of artificial intelligence. The link to the field of artificial intelligence necessarily implied that the claimed method was computer-implemented (Grounds of appeal, page 2, lines 7 to 17).

The appellant further cited three decisions of the Boards of Appeal (T 1227/05, T 258/03 and T 914/02) which it considered to support its arguments.

Finally the appellant argued that a product configuration performed technical functions and was directly linked to computer programs, because a qualified selection from many designs necessitated a computer-implemented method. Also, references to a "domain-independent" normalization method and to a "code complexity" in the application indicated without doubt the necessity to use a computer (see description page 4, lines 12 to 15). Consequently, neither the technical character nor the implicit computer implementation could be questioned, because in claim 1 a combinatorial problem was defined in the context of a process of configuration of products.

Reasons for the Decision

1. The appeal is admissible.

2. The appellant did not request oral proceedings and was informed about the preliminary opinion of the Board. After reconsideration of the grounds of appeal and the additional explanations in the appellant's letter of reply, the Board still does not see any reason to deviate from its preliminary opinion. Hence, the Board considers the case ready for decision (Article 12(8) RPBA 2020).

3. Main request

3.1 Article 123(2) EPC

Claim 1 of the main request has been amended compared to the originally filed claim 1 by introducing the wording 'in a process of configuration of products' in lines 3 to 4 of the claim.

This expression has no literal basis in the application as filed. Page 1, lines 9 to 15 of the description is the only passage mentioning a 'configuration of products' and refers to the background art with reference to a Wikipedia article and therefore does not form part of the disclosure of the claimed method itself. The cited passage explains in a very general way that combinatorial problems play an important role in economical and technical areas and that examples can be found, inter alia, in the field of 'knowledge-based configuration of products'. A feature taken from the background art, however, cannot normally serve as basis for an amendment of the claimed subject-matter (see Case Law of the Boards of Appeal, 9th edition 2019, II.E.1.11.3).

Hence, the Board finds that the originally filed documents do not directly and unambigously disclose that the claimed method is used 'in a process of configuration of products'. Claim 1 does consequently not meet the requirements of Article 123(2) EPC.

3.2 Articles 52(1), (2) and (3) EPC

The claimed method of solving optimization problems is defined purely in form of a mathematical method. The input and output data including any technical results that could be derived from the output remain unspecified and the field of application may even be non-technical in nature (economic). Hence, the method defined in claim 1 is considered to be an abstract method which falls under the category of non-inventions set out in Articles 52(2)(a) and (3) EPC (see Case Law of the Boards of Appeal, 9th edition 2019, I.A.2.2.2).

A computer-implementation is neither explicitly specified in claim 1 nor could it be acknowledged as being implicit from the present wording of claim 1 considering the overall context of the application. The word 'computer' is mentioned only once in the entire application documents, namely on page 1, line 26 of the description, where 'computer-based information systems' are mentioned in relation to the background art. Throughout the whole application, the claimed method is presented as an abstract method without any condition of being 'computer-implemented'. The passages to which the appellant refers (i.e. page 4, lines 12 to 24) are not sufficient to render the computer-implementation mandatory, because the presentation remains general and the verb "to compute" does not necessarily imply the use of a digital computer. The wording of the claims and the presentation of the matter in the description concerns a mathematical method of a multidimensional optimisation problem as such for which no computer-implementation is defined. Moreover, a complex formulation of the optimization problem is not sufficient to imply that the method must be computer-implemented. In accordance with the decision T 0914/02 (Reasons, point 2.3.4), the Board finds that if the use of computer means were indeed indispensable, then it would have been necessary to include the computer-implementation as an essential feature in the claimed method.

The optimisation problem itself and the related object defined in claim 1 do also not have technical character either. The entire claim defines the subject matter in an abstract way by a purely mathematical formulation as such. Neither a specific technical field is specified nor any specific technical input or output data nor any possible technical effects resulting therefrom.

In addition, an optimisation of economical/financial/ business data is not excluded and the description even includes the economical domain as one possible field of application besides the technical domain. In case of optimising financial/economical problems which are understood as non-technical business contributions no technical contribution is provided.

Because the area in which the optimization is carried out and the optimized input and output data itself remain vague and unspecified, the technical character can only reside in the manner how the optimization is carried out. However, since this is defined by pure mathematics as such (Art. 52(2)(a) EPC), no technical character can be acknowledged.

3.3 The appellant cited the decisions T 1227/05, T 258/03 and T 914/02 of the Boards of Appeal in order to support the argument that the claimed subject-matter should be considered technical and not be excluded pursuant to Articles 52(2) and (3) EPC. The Board finds however for the following reasons that the findings of these decisions are not applicable to the present case.

3.3.1 In T 1227/05 the claimed method explicitly related to a computer-implemented method of a simulation of an integrated circuit. All steps relevant to the circuit simulation, as well as the computer-implementation, were considered to contribute to the technical character of the invention. Hence, in contrast to the present case, the claimed method steps as such did not fall under the provisions of Articles 52(2) and (3) EPC.

3.3.2 A similar situation applies for T 258/03 where the claimed method under consideration comprised the technical feature 'executed in a server computer comprising the steps of'. The board held that a method involving technical means was an invention within the meaning of Article 52(1) EPC, contrary to the present case where no such technical means are present.

3.3.3 Finally, in T 914/02 the deciding board held that the involvement of technical considerations (loading nuclear reactor fuel bundles into a reactor core) was not sufficient to escape the exclusion as long as the claimed method defined procedural steps which might exclusively be carried out mentally (Reasons, point 2.3.3). The deciding Board also questioned if 'an alleged sheer complexity' of a problem and its associated solution automatically implied a technical character through an implicit use of technical means, in particular a computer. Rather, if the computer means were indispensable, they should be included in the claims as an essential feature of the invention (Reasons, point 2.3.4).

3.4 Therefore, the present Board concludes that the main request is not allowable, because it contravenes Article 123(2) EPC and its subject-matter is not regarded as an invention pursuant to Article 52(1) EPC in combination with Articles 52(2) and (3) EPC and therefore not patentable.

4. Auxiliary request

4.1 The objections under Article 123(2) EPC given for the main request in respect of the feature "in a process of configuration of products" apply in an identical manner to the auxiliary request.

4.2 The introduction of the term "technically" does not provide a sufficiently clear limitation with regard to the unspecified input and output data and is therefore not sufficient to confer a clear technical character to the claimed subject-matter. It does also not render the computer-implementation compulsory or exclude the application of the method to economical problems, so that all arguments presented under point 3.2 above with respect to the main request apply mutatis mutandis to the auxiliary request.

5. Conclusion

The main and the auxiliary requests do not fulfil the requirements of Article 123(2) EPC and concern subject-matter which is not patentable pursuant to Article 52(1), (2) and (3) EPC. Therefore, the appeal must fail.

Order

For these reasons it is decided that:

The appeal is dismissed.