Résumé de Article 056 EPC pour la décision T1249/22 du 13.01.2025

See also abstract under Article 54 EPC. 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). Such an approach had been applied in several 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, it was 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.