9.1.4 Assessment of technical effect

In T 258/97 the invention related to an image communication apparatus. The board referred to T 27/97, where it was stated that an abstract algorithm was relevant to inventive step only if a technical effect could be established which was causally linked to the algorithm, such that the technical effect provided a contribution to the solution of a technical problem and thereby conferred a "technical character" on the algorithm. Therefore, the board ruled that an assessment of inventive step could only be based on those elements and aspects of the invention in respect of which a technical effect could be established. Whether an invention caused a technical effect was essentially a question of fact.

In T 643/00 the board stated that an arrangement of menu items (or images) on a screen might be determined by technical considerations. Such considerations might be intended to enable the user to manage a technical task, such as searching and retrieving images stored in an image processing apparatus, in a more efficient or faster manner, even if an evaluation by the user on a mental level was involved. Although such evaluation per se did not fall within the meaning of "invention" pursuant to Art. 52 EPC 1973, the mere fact that mental activities were involved did not necessarily qualify subject-matter as non-technical, since any technical solutions in the end were intended to provide tools which served, assisted or replaced human activities of different kinds, including mental ones.

The board referred to T 1177/97 where it was stated that the use of a piece of information in a technical system, or its usability for this purpose, may confer a technical character on the information itself in that it reflects the properties of the technical system, for instance by being specifically formatted or processed. Additionally, the board referred to T 1194/97 where Board 3.5.02 stated that functional data (line numbers, coded picture lines, addresses and synchronisations) recorded on a record carrier to be used in a picture retrieval system were to be distinguished from the cognitive content encoded. Even if the overall information could be interpreted in an infinite number of different ways in other technical or human contexts, this did not detract from its technical function in the relevant context of the claimed invention (see also T 424/03).

In T 1741/08 board 3.5.06 dealt with the question whether a technical effect could be attributed to a particular layout of a Graphical User Interface (GUI). It was undisputed that according to established case law of the boards of appeal, the subject-matter of a claim cannot be inventive if there is no additional technical effect over and above any technical effects present in the closest prior art. The appellant argued that the required technical effect was to be seen in the reduction of computer resources resulting from the layout of icons which made it easier, particularly for an inexperienced user, to identify the stage reached in a process of data input requiring a number of steps and sub-steps. It was furthermore argued that any layout improvement which has the effect of "lowering the cognitive burden of the user", at least in the context of an input operation, should be at least potentially the subject of a patent. The board did not agree with this line of argument. It found that the reduction in use of resources would be caused by the way the brain of the user perceives and processes the visual information given by a particular way of presenting information. Following T 1143/06, the board considered a GUI layout as such to be non-technical, being a "presentation of information" (Art. 52(2)(d) EPC). In the case at issue, the arrangement of icons displayed was intended to convey information, namely at which step in the input process the user found him- or herself. The cases T 643/00, T 928/03 and T 333/95 which had been cited by the appellant were different from the case under consideration in that there was something other than the simple choice of what information to display and with what layout to display it, so that in these exceptional cases the displayed information might play a part in the assessment of inventive step of the claimed invention.

In T 1235/07 the invention used a tree diagram to view and navigate through the dimensions and levels of data in a multidimensional database. It showed results of arbitrary "drill-down" and "slice-and-dice" combinations in the tree diagram. The board was taking a wider view of "presentation of information" than just the actual information that was displayed, the so-called cognitive content, to include also structural aspects of how the information was displayed. In the board's view, such additional aspects could only contribute to inventive step if they had technical character.

In T 1121/02 the application related to an electric fencing element characterised in that said fencing element had along its surface contrasting markings which were deterrent to an animal. Board 3.2.04 stated that the contrasting markings were not technical features. The markings were said to be such as to resemble the warning patterning of another animal, but this was not a technical effect. Therefore the contrasting marking had no significance when assessing inventive step.

In T 258/03 (OJ 2004, 575) the overall aim of the claimed method - to identify the successful bidder for a product offered for sale at an auction - was not regarded as having technical character by the board. The appellant had argued that the technical effect resided in overcoming the problem in the prior art of delays in the propagation of information between bidders and the server. The solution to this problem consisted in adapting the known auction method such that it could be performed automatically. The board concluded that method steps consisting in modifications to a business scheme (the rules of the auction) aimed at circumventing a technical problem rather than solving it by technical means could not contribute to the technical character of the subject-matter claimed. The invention was regarded by the board as a mere automation of the non-technical activity of performing a Dutch auction in the absence of bidders and thus as limited to instructing the server computer to apply the given conditions and perform any necessary calculations. This was considered by the board to be routine programming well within the reach of the skilled person.

In T 336/07 the application related to a method of operating an electronic video poker machine in a sequence of display, detection and determination steps. It also included non-technical aspects, in that the various steps of operation of the video poker machine were carried out in accordance with rules for playing a video poker game. The board held that a set of game rules defines a regulatory framework agreed between players and concerning conduct, conventions and conditions that are meaningful only in a gaming context. It is perceived as such by the players involved, and as serving the explicit purpose of playing a game. As such an agreed framework it is a purely abstract mental construct, although the method and means for carrying out game play in accordance with such a set may well be technical in nature.

In T 12/08, the claimed game machine differed from the prior art only in that the probability in which a character appeared in the game varied with time. Board 3.2.04 noted that this difference, by which the appearance probability was made time dependent, had the effect of reducing the predictability of the machine generated chance encounters. Whereas the underlying condition that chance appearances occur within the game is a game rule in the classical sense, the claimed solution was instead concerned with the particular manner in which it is realized, namely the way in which the events are generated. In contrast to a game rule, this is not intended to be known, much less explicitly agreed to by a player, as this would in fact defeat the stated purpose of making encounters less predictable (compare T 336/07 above). Varying the probability by which a character is made to appear in a game depending on time is innately technical. It relates to the purely technical problem of realizing - or rather simulating - in the physical world, the key game concept of chance, and cannot be seen severed from the real world.

In T 784/06 claim 1 related to a five-step method of determining the genotype at a locus within genetic material obtained from a biological sample. In step A the material was reacted to produce a first reaction value. In each of steps B to E the following mental activities were performed using mathematical methods. Thus, the claimed method was defined as a mix of technical and "non-technical" features. The board referred to the established case law (G 3/08, OJ 2011, 10; T 154/04, OJ 2008, 46; T 931/95, OJ 2001, 441; T 641/00, OJ 2003, 352), according to which the assessment of inventive step should take account of only those features which contribute to the technical character of the claimed subject-matter. The board could not establish for the claimed method an interaction between the technical activity of step A and the mental activities of steps B to E leading to a tangible technical result. Thus, in the assessment of inventive step, features B to E were ignored and an inventive contribution based on step A was denied.

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