9. Assessment of inventive step

In T 799/24 the invention concerned a method and device for analysing optimisation of vehicle body joint position. The aim of the invention was to provide an analysis apparatus for determining an optimal location of an additional welded point to be added to a portion to join a part to an assembly of parts in consideration of the load acting on the automotive body and of the inertia force acting on a fitting or lid component of the automobile during driving. Claim 1 of the main request concerned an "arithmetic processing unit" or a CPU together with a display device including elements which were computer-implemented or performed a "computer-implemented" method. The board noted that the first hurdle mentioned in decision G 1/19, which requires that the claimed subject-matter as a whole must not fall under the "non-inventions" defined in Art. 52(2) and (3) EPC, was overcome since claim 1 related to an "arithmetic processing unit" together with a display device.

The second hurdle, mentioned in decision G 1/19, is where, as part of the inventive step assessment, it must be established which features of the invention contribute to its technical character, by providing a technical effect in the context of the invention as a whole..

According to the board, the formulation in claim 1 of the main request that additional welded point(s) were "to be added" to the automotive body to improve its stiffness during driving at least implicitly specified a further technical use. The board considered it implicit from claim 1 that the additional welded points of which the locations were determined would be added to the automotive body.

In the board's view, since the use of the analysis results was defined in the claim as being "for automotive body designing", leaving it open which further steps, technical or not, were to be performed with the analysis results, a potential further selection of a particular automotive body might also be based on the visual characteristics or appearance of the automotive body. However, the board was of the opinion that the selection of the automotive body was, in addition, also restricted to the selected additional welded points to be added to the automotive body.

The board noted that the optimisation analysis on the welding candidates applied at least one of the load, of which magnitude and direction were different at each joining portion. An additional welded point or an additional welded location that satisfied the optimisation analysis conditions, including maximising absorbed energy, was selected.

The analysis results used in the automotive body designing were, for example, "automotive body displacement amount". The possible use by the user of the displayed analysis results might be a cognitive exercise such as selecting the automotive body corresponding to the lowest displacement amount (G 1/19), but the board considered that the step of selecting the additional welded points contributed to the technical character of the invention.

The board further noted that the additional welded points of which the locations were determined or selected were "to be added to the automotive body" ("to improve the stiffness of the automotive body during driving"). In the board's view this wording at least implicitly specified a further technical use (G 1/19)..

The board considered that, even if the automotive body was a "prototype" and the additional welded points were added to this "prototype", this "prototype" would still be a physical object having at least some of the features of an automotive body.

The board noted that the Enlarged Board in G 1/19 required a simulation to be "accurate enough" or a simulation that reflects "reality" "accurately enough". In the present case, the automotive model constituted by the automotive body frame model and the chassis model together with the welded points at the joining portion(s) was considered by the board to reflect an automotive body (as "reality") "accurately enough". The board concluded that the subject-matter of claim 1 and dependent claim 2 of the main request involved an inventive step.

In case T 412/23, the invention related to a method for determining a suitable colour variant for painting a car without the need for expensive equipment and extensive colour fans. The only state of the art discussed by the appellant was the prior art discussed in the impugned patent itself (E0, E00, E15). Both parties agreed that E0 was the closest state of the art. The formulation of two partial problems was not appropriate.

According to the opponent (appellant), the skilled person would combine the teachings of the prior art discussed in the impugned patent in paragraphs [0002], [0005] and [0007] and therefore arrive at the subject-matter of claim 1. That is to say the skilled person would combine the teachings of E0, E00 and E15 especially because these different teachings were discussed in close relation to each other in the impugned patent, reflected the general common knowledge of the skilled person and could be easily combined with each other without technical difficulty.

The board essentially agreed with the reasoning of the opposition division. When solving a single objective technical problem, the skilled person could not combine in the present context the teachings of three documents at a single stroke, but must first combine the teaching of E0 with the teaching of one of the documents E15 and E00 and then, in a second step, combine the result of this combination with the teaching of the other one of the documents E15 and E00..

In other words, when the teachings of three documents are combined, this has to be done – in circumstances such as the present ones – step by step, i.e. in a first step, the teaching of another document is combined on the basis of the teaching or embodiment of the closest state of the art. In a second step, it must then be examined whether the skilled person would also combine the result of this combination with the teaching of the third document. In doing so, the context of the initial situation as well as the complexity and specific technical context of each document or embodiment has to be taken into account (see Catchword).

In the present case E15 taught the examination of texture only by using complex image processing software, while E0 and E00 taught the examination of colour only with the human eye from only one or two angles. The board noted that the reference to E15 and its content in paragraph [0005] was added during examination proceedings and was not part of the original application documents. Furthermore, E15 did not relate to the method described in paragraph [0007] at all. The observation that metallic effect paints presented particular challenges in colour matching and that texture must be considered to improve matching accuracy, originated from the patent itself and could not be regarded as prior art. Furthermore, from the context of the contested patent, it was clear to the board that E00 and E0 referred to different evaluation methods. E00 related to a basic method and involved a method with examination of a single angle and a single visual property. E0 related to a different, more sophisticated method with examination from two different angles and two visual properties. The board could not see how the skilled person would arrive at a combination of all claimed features by combining the teachings of E0, E00 and E15.

The board agreed with the opponent only insofar as the skilled person might combine the teaching of E0 with the teaching of E00 or E15. However, in a second step, the skilled person would not take into account the teaching of the other document, since, depending on whether the skilled person would first turn to a simpler or more complex teaching, they would not consider the more complex or overly simplified teaching in a second step. The board came to the conclusion that the person skilled in the art would not combine the teaching of E0 at the same time with the teachings of both E00 and E15, since in the latter the context was different from that in E0, being significantly more complex in one case (E15) and simpler in the other (E00).

In case T 1465/23, the opposed patent addressed the problem of securing wireless communications for hearing devices. The board was not satisfied that the technical effects mentioned by the respondent (proprietor) were credibly achieved by the claimed features over the whole scope of claim 1 as granted.

Given that the alleged technical effect was not credibly achieved and the board could not identify an effect either, it was not possible for the board to formulate an objective technical problem that was directly and causally related to the claimed invention, in particular to the alleged distinguishing features (b) to (h). The board recalled the principles established in G 1/19, that the problem-solution approach may be "terminated" at this stage if the distinguishing features do not credibly achieve any technical effect over the whole scope claimed. The introduction of a distinguishing feature having no credible technical effect may then be considered to be no more than an arbitrary modification of the design of a known subject-matter which, being arbitrary, cannot involve an inventive step.

The respondent argued that the principles of G 1/19 were limited to computer-implemented simulations and that the board should instead have applied the "ab initio implausibility" standard addressed in the referral case underlying G 2/21. This line of argument was not persuasive. Recalling the purpose of Art. 112(1) EPC, the board observed that the Enlarged Board in G 1/19 itself designated its findings in point 82 of the Reasons as a "general principle" and this confirmed that a technical effect must be achieved over the whole scope of a claim to be considered as the basis for the objective technical problem. The respondent further argued that the expressions "substantially all embodiments" in G 1/19 and "substantially the whole scope of the claims" in T 814/20 allowed for a more lenient application of the test "credibly achieved over the whole scope claimed". However, the board noted the concept of "substantially over the whole scope claimed" appeared to provide merely a "narrow safe harbour" for well-defined inventions that may have isolated, peripheral flaws; it could not rescue a claim that was fundamentally deficient such that the distinguishing features were considered to have no effect at all.

The respondent also raised specific doubts in view of the board "terminating" the problem-solution approach after the conclusion that there was no credible technical effect over the whole scope claimed. Reflecting on the two paths provided for in the established practice to overcome such an objection: amendment of the claim to a narrower scope by the patentee, or reformulation of the objective technical problem to a less ambitious one by the board, the board noted that in some instances there may be no credible technical effect whatsoever that could be attributed to the distinguishing features. In such a case, the board considered these distinguishing features to be an arbitrary or non-functional modification of the prior art, which cannot support an inventive step. Consequently, this particular way of applying the problem-solution approach did not represent a "failure" or an "incomplete application" of the problem-solution approach, rather it was its logical endpoint: the demonstration that the claimed differences provided no technical effect at all, i.e. no contribution over the prior art, constituted the very proof of their "obviousness". Overall, the board stated that if there was no technical effect that was credibly derivable from the wording of a claim on the basis of its distinguishing features, it was usually unnecessary to – artificially – formulate an (unsolved) objective technical problem, such as finding an "alternative way to achieve a (non-existent) technical effect". In such cases, the distinguishing features simply constituted arbitrary or non-functional modifications of the available prior art which could not involve an inventive step within the meaning of Art. 56 EPC.

In T 1650/23, the invention concerned controlling the display of content items provided by a website or an application. In the system according to the invention, the content of a content item to be displayed is reduced to an amount that enables a user "to understand the target content item within the display duration".

According to the board, the distinguishing features related in part to the way information was displayed (i.e. presented) to the user. Presentation of information is as such not patentable under Art. 52(2) and (3) EPC. According to the case law of the Boards of Appeal, presentation of information as such, as non-technical subject-matter, cannot contribute to inventive step. Where a claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met (T 641/00).

The appellant had argued that the distinguishing features related to technical concepts directed at determining in advance how and which information to provide in accordance with the display duration. Hence, these features were directed at the internal processing of the claimed information processing system and not at the mere presentation of information. The distinguishing features achieved the technical effect of reducing processing loads, quickly changing the content amount of the target content item, and causing the target content item to be displayed, as was recited in the description. By storing in advance multiple content variants corresponding to possible display durations, the processing was improved.

The appellant had further argued that all the distinguishing features contributed to these technical effects, since they were involved in the steps leading to the improved processing. They could thus not be considered to be mere "constraints" included in the objective technical problem. The objective technical problem had to be formulated as how to improve the processing of displaying a target content item, possibly with the addition of "such that it enables the visitor to understand display content thereof" to take into account the board's assessment that the present invention contained a part that was based on non-technical considerations.

The board could not recognise any improved processing compared to the conventional prior-art system, since changing the displayed information involved additional processing. The only effect of this additional processing was in the mind of the user, who was presented with different information than in the conventional prior-art system.

The concept of the invention was that of displaying, for a display duration below a threshold, a version of the target content item with a reduced content amount that enabled the visitor to visually understand the target content item within the display duration. The versions to be displayed should be "mutually related in display content but mutually different in content amount". This concept of the invention was based on non-technical considerations about a reduction of the cognitive burden of the user. It was thus a non-technical concept that could be included in the formulation of the technical problem.

In view of this, the distinguishing features solved the technical problem of modifying the conventional prior-art system to display, for a display duration below a threshold, a version of the target content item with a reduced content amount that enabled the visitor to visually understand the target content item within the display duration. The board held, that the skilled person facing the above formulated technical problem would immediately recognise the need to estimate the display duration and change the version of the target content item to be displayed if the estimated display duration is below a threshold. The board found that this was obvious and the subject-matter not inventive within the meaning of Art. 56 EPC.

In T 2010/22, the opposed patent concerned a headphone. It aimed at providing a headphone that does not completely shield the wearer off from the outside acoustic environment (referred to by the appellant as an "open headphone"). Given that the appealed decision only concerned novelty in relation to claim 1 of the main request, the board conducted its own inventive-step analysis.

The technical problem as formulated by the parties could not, according to the board actually be derived from effects directly and causally related to the technical features of the claimed invention.

The technical problem as formulated by the opponent relied on the implicit assumption that the closer "high-frequency driver" position as per feature (d1) directly translated to a closer acoustic source as perceived by the user’s ear. This assumption was reasonable in a basic, direct-radiating open headphone, but this was not explicitly required by claim 1.

In relation to the technical problem as formulated by the appellant, the board found that none of the other features specifically concerned an open headphone, contrary to the proprietor’s allegations. The proprietor claimed that some limitations that both drivers are located "off of the ear" of the user necessitated an open arrangement.

While the board acknowledged that it was a plausible understanding that there may be an open arrangement, it was not the only one that was technically sound. The skilled reader would in particular be aware that the phrase "off of the ear" did not necessarily exclude the presence of circumaural or supra-aural earcups. The board wished to clarify that the derivability of a credible technical effect (for the purposes of assessing inventive step) from the original description may, if at all, only be seen as a necessary requirement but not a sufficient one in view of e.g. G 1/19, point 124 of the Reasons (in particular the sentence: "[...] only those technical effects that are at least implied in the claims should be considered in the assessment of inventive step"). This means that the conclusions of G 2/21 cannot be used to bypass the fundamental requirement that the claimed features must credibly achieve the asserted technical effect: the decisive question remains whether the claimed features themselves, as understood by the skilled person, credibly bring about the technical effect over the entire scope claimed.

The board found it difficult to discern a technical effect which feature (d1) would credibly achieve over the whole scope claimed. As indicated by the board during the oral proceedings before it, this feature provided, at most, a practical arrangement of the high- and low-frequency acoustic drivers in terms of their relative positions. This meant however that the objective technical problem could, at best, be formulated as "how to practically arrange the high- and low-frequency acoustic drivers in the 'alternate embodiment' of D1 in terms of their relative positions". After its assessment of obviousness, the board concluded that the claims lacked inventive step.

In T 1468/21 the differentiating features solved the technical problem of providing a fully autonomous locker. Feature [C] related to a particular way of creating or determining the opening code and of storing it in the locker. Features [E], [F], [G] and [H] related to the specific set-up of an autonomous locker and its relationship with the remote server / central control system in order to correctly distribute the valid opening code to the user and synchronise the autonomous locker with the central control system. Although the locker was autonomous with respect to other structural units like a telecommunication network or the central control system, the opening codes in the locker and the remote server needed to be updated and synchronised after the delivered goods had been collected from the autonomous locker (or delivered to the locker). The new opening codes had to be generated and synchronised in both the locker and the remote server.

The five differentiating features [C], [E], [F], [G] and [H] were at least partially linked to the objective technical problem of rendering the locker autonomous; however, according to the board these features solved three separate technical "sub-problems" related to the cited technical problem. The first sub-problem related to the question of how the opening codes are created or selected. The second sub-problem related to the question of how to provide the same opening codes in the locker and the remote server. The third sub-problem related to the question of how to synchronise both separate units.

With regard to the examining division's reasoning regarding the "broken technical chain fallacy", the board held that it was true that the locker and the "one or more terminals (4, 4')" were not technically linked to each other. The user's intervention was required to inform the remote server, via the "one or more terminals (4, 4')", that the locker door had been opened and/or closed; however, in the present case, contrary to cases T 1670/07 and T 1741/08, there was no "broken technical chain", since the user only enters a single piece of objective information on the "one or more terminals (4, 4')" without any subjective choice or specific mental activity on their part.

In contrast to this, case T 1670/07 concerned optimising a shopping itinerary in which the vendors visited are selected according to the customer's user profile. The deciding board found that "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". In the deciding board's view, the technical effect, if present at all, depended on the user's reaction to the itinerary. The deciding board further explained, with reference to T 1741/08, that a user's reaction to a piece of (non-technical) information was considered to be a "broken technical chain fallacy".

T 1741/08 concerned a graphical user interface (GUI) designed to assist the user in making choices on the GUI. The user's reaction is not a simple confirmation of a status quo by the user to the technical system, but instead the user responds subjectively to the information provided on the GUI. The board in the case in hand found that in contrast to these decisions, it becomes evident that a "user's reaction to information" is more than simple "feedback" in response to an actual situation. A "user's reaction to information" involves a subjective mental act performed by the user that is clearly distinct from simple feedback. Moreover, the user will recognise the simple feedback as an essential element for correctly using a technical system, as in the present case in which the user has no choice (apart from deciding whether or not to provide the expected input). For example, case T 1741/08 was in contrast to this, in which a user's reaction to information consisted of a selection from several given and offered possibilities. It could be argued that the entire process is stopped by a missing or incorrect user input (i.e. simple "feedback"); however, in the present case, this process interruption should not be interpreted as a possible "broken technical chain" since it is not the technical chain that is broken by subjective intervention of a user involving its reaction to information; the technical chain is merely broken by the claimed technical system being incorrectly used by the user.

Therefore, inputting a single piece of information, which represents feedback on a factual, objective situation from a user within a technical process and does not require any mental activity on the part of the user, i.e. no specific reaction by the user to information, does not immediately lead to a "broken technical chain fallacy". The board therefore concluded that the examining division's decision was incorrect and that the subject-matter defined in claim 1 was inventive.

In T 2412/22 the invention related to continuous learning of a deep learning model for a specific autonomous vehicle and the appeal lay from the decision of the examining division to refuse the application for lack of inventive step over D1. In its communication the board indicated to the appellant that it tended to agree with the examining division that all differences were obvious starting from D1.

The appellant argued that the examining division's (and the board's) analysis was ex post facto. Without knowledge of the invention the skilled person had no reason to modify D1 in a way so as to arrive at the claimed invention. D1 and the claimed invention were conceptually different and pursued different objectives. The claimed invention focused on continuous learning for a specific autonomous vehicle, the model retrained with specific video data and stored in a library for efficient fine-tuning. The selection step ensured the proper model was selected and updated. In contrast, D1 focused on real-time adaptation, where a (single) generic stock model was adapted to a driver on the vehicle itself during operation of the vehicle. The appellant disputed that storing a stock model implied a library, and even if that were the case, there was no need for a selection step from a "library" with a single entry.

The board noted that the appellant's description of the invention differed from the claimed invention, which was broader and less detailed. The continuous learning aspect was not part of the claim, and the library's content was not defined as dynamic. The selection of a model from the library was broadly formulated, including methods such as basing selection on vehicle type alone. The claim therefore covered providing a deep learning model to an autonomous vehicle based on a static library, where a managing device selected and retrained a model using vehicle video data before transmitting it to the vehicle. Although the library might not be strictly necessary, it was something that the person skilled in the art would certainly consider.

For inventive step, however, the question was not what D1 disclosed, but how the person skilled in the art would modify it, e.g. in order to improve it. In general, the person skilled in the art would consider well-known alternatives and in the case in hand the board was convinced that the person skilled in the art would consider the alternative of performing the adaptation on a central server rather than onboard the vehicle. It concluded that the person skilled in the art would arrive in an obvious manner at subject matter falling within the scope of the claimed invention. Therefore, claim 1 of the main request lacked inventive step.

With regard to the auxiliary requests, the appellant had also submitted that to arrive at the invention starting from D1 a number of modifications were needed. There was no reason for the person skilled in the art to perform all of them. The added features, in particular in the fourth auxiliary request, further increased the already large number of differences over D1.

The board remarked that the number of differences over a certain piece of prior art was neither decisive nor a reliable indicator for the presence of an inventive step.

First, the number of differences itself might be deceiving. One modification might imply or make obvious several other differences. For instance, as in the case in hand, performing the computations on a server instead of on the user vehicle, implied data transmission, and with it a host of other associated "differences" which might or might not be specified in a claim, like an antenna, a transmission protocol, etc. A library implied storage, indexing, a retrieving mechanism and so forth. Also, in complex systems it was very easy to accumulate a large number of individual differences while simply considering the different options available to the person skilled in the art.

Secondly, whether several modifications combined to provide an inventive overall contribution did not depend on their number. For instance they might be obvious solutions to independent, "partial problems".

Ultimately, the board held that the claimed invention had to contain a (new and) non-obvious technical teaching, which it did not see reflected in any of the requests on file. The abord thus concluded that the auxiliary requests, as the main request, were not allowable for lack of inventive step.

In T 356/22 the invention sought to provide dosage forms of pomalidomide having advantageous physical and pharmaceutical properties, amongst these being stability. Starting from the pomalidomide composition of claim 22 of closest prior art D1, the differentiating feature was the presence of both mannitol and starch. The decision under appeal was that of the opposition division finding that the patent in suit met the requirements of the EPC.

The respondent (patent proprietor) effectively considered that, since there were no stable dosage forms shown in D1 which could serve as comparator, the achievement of a certain level of stability independently of any comparison with the prior art could be taken into account for the assessment of inventive step. The board did not agree; the circumstances of the case did not justify that the respondent be exonerated from their burden to properly demonstrate that the purported technical effect of the claimed invention had successfully been achieved in comparison with the prior art. That the disclosure of D1 was generic in some respects did not mean that it was speculative or insufficient, nor allowed the assumption that the formulations of D1 suffered from a lack of stability. The mere fact that D1 did not contain any prepared and tested specific formulations of pomalidomide did not change this conclusion; for the purposes of inventive step, the teaching of the prior art is not limited to prepared and tested examples.

The board confirmed that an inventive step could be acknowledged to a selection if this selection was connected to a particular technical effect, and if no hints existed leading the skilled person to the selection. This however supposed that this particular technical effect was convincingly shown for the entire selected subset of formulations by a meaningful comparison with other formulations falling within the ambit of D1.

The respondent cited several decisions to support their view that, when the prior art was unspecific, the achievement of a technical effect per se could be taken into account for the assessment of inventive step. The board firstly noted that in all the cited cases, experimental data were presented in respect of a differentiating feature (citing T 1193/18, T 2342/19, T 2200/17, T 1126/19). But more importantly, the board did not agree that D1 was unspecific; the claimed active ingredient and two excipients were explicitly recited and part of a limited number of emphasised alternatives in D1.

It had to thus be assessed whether the evidence on file convincingly demonstrated that the selection was associated with a technical effect over the pomalidomide formulations of D1, and whether this effect credibly arose over the whole claimed scope. The board did not consider that the application as filed credibly demonstrated the technical effects of improved stability or improved suitability for clinical use for the claimed selected formulations in comparison with D1.

The problem to be solved was thus seen in the provision of an alternative pomalidomide oral dosage form. Since the claimed selection was not shown to be associated with any technical effect, the board found that this selection was arbitrary and did not involve an inventive step. The board noted that considering the problem was only formulated as the provision of an alternative, the lack of preference expressed in D1 for the features selected in present claim 1 did not establish an inventive step, because the chosen alternative was not shown to be any more suitable than the others considered in D1.

In T 746/22 both the opponent and the patentee had appealed against the interlocutory decision of the opposition division maintaining the European patent in amended form.

Regarding independent claim 15 of the main request, both parties agreed with the board's finding that feature F2 was the only distinguishing feature in view of the objective lens described in table 1 of D4 (closest prior art). F2 defined a mathematical relation between the focal length of a "first rear positive lens" (f3) and the total focal length (f) of the five lenses of the claimed objective lens system.

The board was unable to see any effect of feature F2 other than to arbitrarily define a mathematical relationship between the focal length f3 of one of the lenses of the objective lens system with respect to the total focal length f of the objective lens system. However, in the present case, where the optical parameters of the claimed objective lens system were only very incompletely defined, the selection of a maximum value of f3 when f was fixed, or the selection of a minimum value of f when f3 was fixed, did not provide a technical effect relevant to the claimed invention.

In view of the absence of any relevant technical effect related to the feature F2, the board found that no objective technical problem solved by feature F2 could be defined, and as was explained in T 176/97 , if the distinguishing feature of a claim has no effect of technical relevance on the claimed subject-matter and does not credibly solve an objective technical problem, then no inventive step can be based on it. In the present case, the objective lens system of claim 15 was considered to be no more than an arbitrary modification of the objective lens system of D4, which did not involve an inventive step within the meaning of Art. 56 EPC.

The patentee argued that starting from the precise lens design in Table 1 of document D4, a skilled person would have a “perfect” lens design and thus no reason to modify any parameters without using hindsight from the invention. However, the board found this argumentation unconvincing because it assumed that, starting from the objective lens system disclosed in table 1 of D4, the skilled person would need a concrete incentive to modify it in a certain direction. This overlooked the point that the difference between the lens systems of claim 15 and of D4 was only an arbitrary modification of the lens design of D4. The question of whether there was a motivation to change the lens design of D4 did not arise in the present case. An arbitrary change to the lens design resulting in no relevant technical effect was in itself devoid of any inventive step.

Claim 1 of the first auxiliary request also lacked an inventive step in view of D1 in combination with D4. The patentee had argued that D1 already disclosed a perfectly optimised lens system and that the objective lens system of D4 was no better than that of D1. Again, the board was unable to follow the patentee’s argument that only with hindsight would the skilled person consider replacing the lens of D1 with the lens of D4. D1 merely disclosed a general lens without further details of its optical characteristics. Thus, it was not hindsight, but simply the fact that the teaching of D1 was put into practice that leads the skilled person to search for a specific lens design and eventually find the objective lens system of D4. As with claim 15, the feature at issue in claim 1 provided no technical effect other than arbitrarily modifying the lens design of D4. Therefore, this distinguishing feature did not contribute to inventive step. The subject-matter of claim 1 of the second and the third auxiliary requests lacked an inventive step in view of D1 in combination with D4 for the same reasons.

In T 1272/22 the appellant (opponent) and respondents (patent proprietors) disputed whether there was a synergistic effect between the distinguishing features, even if it were considered they served the same purpose. The board, applying Headnote II of G 2/21, could not see that the skilled person would have derived the synergistic technical effect referred to by the respondents when considering the application as originally filed. There was no explicit mention of any relationship between the two features and the position of the critical section for the efficiency of the connection, which the respondents had also relied on in its arguments in support of there being synergy, was not defined in the contested patent. The alleged synergy did not appear to the board to be derivable by the skilled person from the application as originally filed and it therefore held the partial problem approach was thus justified in the case in hand.

In T 201/21, the prior art disclosed a system for verifying authentication and ownership of a physical article. Each article included a label having a unique authentication code, pre-stored on a server database. The authentication code can be used to verify authenticity of an item by sending a query to a manufacturer's server. When a transaction takes place, the merchant registers ownership of the item by sending a registration request to the server including the article's unique code and a generated unique number. The registration only takes place if the code and number are not already associated with another sale.

Claim 1 differed from the prior art essentially in that card numbers are pre-stored in the central database and provided to the merchant on a brand property card (BPC), in that the database is populated with point of sale data upon entry of the numbered cards at a point of sale, in that a BPC card is provided to the user and its number is combined by the merchant with the unique identifier code in a registration request, and in that the registration is only possible if both the BPC card number and unique identifier code match a number and a code stored on the server and not associated with a sold physical article.

The appellant had argued that these features increased the security of the authentication method by providing a second authentication factor. In particular, it was argued that "... the combination of ... pairing [of the unique card and article numbers] in the database and the use of numbered cards that are not initially paired with particular physical items, results in ... strong authentication of physical articles". Moreover, they guarantee that the merchant has the authority to register the sold articles in the database.

The board found these arguments unconvincing. It regarded the general idea of protecting a transaction, here a registration, with a password as non-technical and also well known. The board further considered that the idea of using a predefined set of one-time passwords for user or merchant authentication also lacked technicality. Even when considered technical, this feature could not support an inventive step, as it corresponded to the well-known transaction authentication number (TAN) authentication procedure commonly used in online transactions. Making use of a server to store and verify the passwords or TAN numbers and of cards for distributing these to the merchant and customers was a straightforward implementation of this known procedure on well-known means.

The appellant had argued that the invention addressed the sales of luxury goods where customers appreciate tangible objects, such as certificates on elegant cards, and formulated the objective problem as "how to make the use of security tokens more attractive to a given population".

The board did not consider this an objective technical problem, as its formulation depended on the user's subjective preferences or expectations. From a technical point of view, the cards of claim 1 were merely a support for providing the merchant with the unique numbers to be used for the registration procedure. This was considered to be an obvious implementation possibility. Accordingly, the board concluded that claim 1 of the sole request lacked an inventive step over the prior art.

In T 1439/21 the application related to an automated elderly insurance scheme. The board emphasised that for deciding whether a feature is technical or not for assessing inventive step under the EPC, it is not relevant which person makes the contribution in real life. In real life, a person skilled in financial mathematics will have some notions of technical aspects, and the computer expert working for an insurance company will have some notions of business aspects of insurance schemes.

Instead, it is relevant whether the feature provides a technical effect and thus contributes to the solution of a technical problem or not or, in other words, whether it falls into the realm of the fictitious business person or the fictitious technically skilled person.

The board also noted that the use of technical terminology did not confer technical character. The terms "components", "measurement parameters" or "triggers" may sound technical. Similarly, the "dynamic monitoring" of these parameters or triggers by means of "measurement systems" conveys the impression that physical parameters are measured by technical devices.

In the context of the application, however, these terms do not represent any technical features. For instance, the "risk exposure components" are, in the context of the application, insured persons. In a similar manner, the "measurement systems" are not technical measuring devices. Instead, they may simply be hospital entities reporting patient data to the insurer.

Thus, the terms used in the application that in a technical context would have had a technical meaning instead have, in the insurance context of the application, a non-technical meaning. Therefore, the "technical" terminology used in the application for some aspects of the insurance scheme does not lend any technical character to the respective features in substance. Instead, it only creates a misleading appearance or perception of technical character.

As a result, the board could not see any interaction between the features defining the dynamic insurance scheme and the networked computer system used to automate it. However, an interaction between these features such that a technical problem is solved would have been required in order to acknowledge a contribution to technical character by non-technical features (G 1/19).

It follows from the above that the networked computer system is the only technical feature of claim 1.

In T 1249/22 the application related to the development – including the training – of an analytical model (e.g. a machine learning model) and the deployment of the trained analytical model on a "compute engine" so as to process live incoming data. The examining division had not selected a particular piece of prior art as starting point for the assessment of inventive step. The board did not find fault with this and in the case of an invention that amounted to a technical implementation of a non-technical method (provided the "non-technical method" did not contribute to the technical character of the invention), considered it to be a valid approach to

– identify, on the one hand, the non-technical method underlying the invention, and, on the other hand, the features of its technical implementation,

– define as "technical problem" to provide a technical implementation of that non-technical method, provided to the (technically) skilled person as a "non-technical requirement specification" which is part of the technical problem,

– assess whether the skilled person would have solved this technical problem by providing the claimed technical implementation (if so, the claim is not inventive).

The board stated that such an approach had been applied in several board of appeal decisions (e.g. T 1027/06).

In this approach, the choice of the IT infrastructure on which the non-technical method is to be implemented is considered to be part of the technical solution and the assessment of inventive step includes assessing whether it would have been obvious to the skilled person to select this IT infrastructure to implement the non-technical method. This is in contrast to starting from that IT infrastructure as "closest prior art" and formulating the (objective) technical problem as to provide an implementation of the non-technical method on that IT infrastructure.

In cases where the IT infrastructure used in the invention is a computer system that is commonly used to implement methods of the same kind as the non-technical method (e.g. a generic computer for most applications or a generic client-server architecture for e-business applications), there will be no difference in result between both approaches. There could however be a difference where the choice of a specific IT infrastructure might not have been a straightforward one for the given non-technical method (as noted in T 1325/17).

In any case, whichever approach is used, according to the board it is essential to be clear from the reasoning – at least implicitly – what the technical problem and the non-technical requirements included in it are. The examining division's argumentation was deemed deficient in this respect, mainly due to the fact that the examining division had identified "technical features" of the claimed subject-matter merely by underlining parts of the text of claim 5 and implying that the remainder of the claim were its "non-technical features". According to the board, this was normally not sufficient to clearly identify the technical and non-technical features of the claimed subject-matter.

The board also considered the examining division’s reasoning to be deficient, inter alia in respect of the technical features. It held that it is normally not possible to perform a meaningful obviousness analysis by completely disregarding the non-technical aspects of the claim, as they are normally the raison d'être for the claimed combination of technical features relating to their implementation. This is taken account of by including these non-technical aspects in the technical problem as non-technical requirements (in accordance with T 641/00, headnote II).

In T 688/05 similar considerations were expressed by saying that features making no technical contribution "may well form the only logical link between technical features resulting from their implementation" and that "they must therefore be taken into consideration for the examination as to inventive step while at the same time not being permitted to contribute to it" (see also e.g. T 1027/06).

In some cases, it is possible to treat groups of technical features separately from each other, but this requires a proper definition of the respective partial technical problems solved by them and an explanation of why this approach is justified in the case at hand. It may also be possible to argue that a skilled person confronted with the general technical problem of providing a technical implementation of a given non-technical method, after having selected a particular IT infrastructure in a first step towards a solution, would necessarily have been confronted with several separate sub-problems arising when having to implement the non-technical method on that IT infrastructure (see e.g. T 1158/02). But none of this had been argued by the examining division. In summary, the board considered that for these reasons inter alia, the decision was not sufficiently reasoned within the meaning of R. 111(2) EPC.