The assessment of inventive step can only be based on those elements and aspects of the invention in respect of which a technical effect can be established. Whether an invention causes a technical effect is essentially a question of fact (T 1461/12).
In T 1958/13 board was not satisfied that they could be regarded as objectively credible technical effects for the purpose of formulating the objective problem to be solved (with reference to T 1567/05, T 1841/06 and T 407/11; see also T 336/14). While the EPO has a duty to determine such facts in examination proceedings, the onus is upon the applicant to cooperate in said determination, in particular in the event of doubt (T 258/97, point 7 of the Reasons; see also T 27/97, T 953/04 and T 1044/07).
Claim 1 was directed to a terminal made up of a touch-screen display and a controller configured for detecting gestures on that device. The appellant argued that the so-called "single-drag gesture" according to claimed feature had the effect of making text editing more convenient or simpler for the user and thus better compared to the solution of D2. The board regarded such gesture definition – whether deemed to be technical or non-technical – as a preliminarily obtained precondition, i.e. a user-specific fact, to be taken into account in the user interface design as belonging to the conception or motivation phase normally preceding an invention (see e.g. T 482/02 of 13 December 2005 date: 2005-12-13; T 1284/04). Although the board deemed those effects, in principle, to be technical effects, since in the end they aim at providing tools which serve or assist user activities (see e.g. T 643/00), the question whether they were actually achieved depended exclusively on subjective user skills or preferences. Therefore, the board was not satisfied that they could be regarded as objectively credible technical effects for the purpose of formulating the objective problem to be solved (see also T 1567/05, T 1841/06 and T 407/11; see also T 77/14 on gesture-based functions).
In T 953/04 the board followed decision T 258/97 and noted that it is incumbent on the appellant to cooperate in the determination of the relevant technical features of an invention in the event of doubt. If not, these features are to be ignored in assessing inventive step if the doubts regarding their technical character cannot be resolved (see also decision T 27/97). Against the background of continuing doubts regarding the technical content of the invention and lacking cooperation of the appellant in clarifying the issue, the board considered itself barred from arriving at a positive judgment on inventive step so that the appeal could not be allowed.
In T 823/07 the board, following decision T 1143/06, stated that the manner how cognitive content is presented to the user may only contribute to the technical solution of a technical problem if the manner of presentation (exceptionally) shows a credible technical effect (see also T 1575/07, T 1741/08, T 1562/11). Non-technical features and aspects of an invention should not be given any weight in assessing inventive step. If they belong to the general framework in which the invention evolves, they may be used in formulating the relevant technical problem (see decision T 641/00, OJ 2003, 352; see also T 77/14). In the present case, however, there was no proof of any such technical effect of the concept of presenting information, beyond the alleged advantages which concern the mental and cognitive activities of the user. The only credible technical effects result from the computer implementation of this concept. This circumstance distinguishes the case from the decisions cited by the appellant in support of its arguments (T 643/00, T 928/03 and T 333/95). In all these decisions, the board concluded on the existence of a technical contribution over the prior art. The technical contribution resulted from overcoming physical limitations of the size and resolution of computer screens (T 643/00, T 928/03) and from the functions of a "new input device" conferring technical character (T 333/95). None of the decisions derives the technical character of a feature or activity from the mental effort required or any similar effect; these are only secondary considerations. Moreover, the board noted that in the context of inventive step, caution is required in applying old decisions concerning non-technical subject-matter like decision T 333/95 since the relevant case law has experienced some important development as explained in decision T 154/04. In the case at issue, the only relevant technical aspects of the invention were standard programming features for implementing the idea of displaying search results in connection with supplier logos on a computer system. The programming and implementation of this idea was obvious in the light of the prior art. For these reasons, the invention did not meet the requirement of inventive step.
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.