9. Beurteilung der erfinderischen Tätigkeit

Catchword:

Complementing automatisation with human intervention. Providing means enabling a skilled artisan to actively intervene in an automated process and provide a backup to pre-programmed procedures - Obvious measures - (yes) (Points 2.19 to 2.33)

Catchword:

The board came to the conclusion that a technical effect was achieved by the subject-matter of a claim defining a method of automatically controlling the performance of a recommender system in a communications system, the communications system including a client device associated with a user to which the recommendations were provided, on average, over substantially the whole scope of the claim (reasons, points 9.1 and 9.2, but see also point 7).

Catchword:

The implementation of non-technical requirements on a technical prior art system might require modifications which, at first glance, appear non-obvious, as there is no technical reason for them in view of the prior art alone. However, since according to the principles of "Comvik" non-technical features cannot contribute to inventive step, the non-technical requirements must be seen as a given, and the skilled person implementing them must make the necessary modifications to the prior art. (See point 17 of the reasons).

Catchword:

Decision T 1194/97 established at point 3.3 of the reasons that data was functional if its loss impaired the technical operation of a system in which it was used. ...It is self-evident that if a piece, either technical or non-technical, of any invention is taken out, it would not work as designed. In the Board's view, what T 1194/97 is saying is rather that the loss of functional data would make the system inoperable at the technical level. In contrast, if cognitive data is lost, the system would still work but possibly produce results that would be unintended for non-technical reasons. (See point 3.8 of the reasons)

Catchword:  see reasons 4.7 for exceptional cases in the sense of points 98 and 128 of G 1/19

Catchword:

The board is not convinced that there is a credible increase in the speed of the mapping of the retrieved data to a particular application type over the whole scope of the claim since a plurality of associations/catalogues are implicitly needed in the method in claim 1 compared to the single catalogue used in the acknowledged prior art, and the claim does not specify any implementation for which a speed can be determined over the whole scope of the claim. In the current case, the results of the acknowledged prior art appears to be quite different from that of the invention. The method of claim 1 attempts to identify applications for a database, whereas the prior art attempts to identify data formats for all kinds of applications, i.e. not limited to applications using databases comprising tables. Therefore a speed comparison with the speed of the mapping achieved by the prior art is not meaningful. One question that arises is whether the method of claim 1 has the potential to cause technical effects. But the mapping and display of the data record in a respective column of the user interface resulting from the claimed method is not specifically adapted for any technical use (see G 1/19, point 94). Since the board does not see any technical effect from the implementation of the claimed method in a computer system derivable over the whole scope of the claim, the claimed subject-matter does not achieve a technical effect over the prior art acknowledged in the application.

Catchword: 

A neural network defines a class of mathematical functions which, as such, is excluded matter. As for other "nontechnical" matter, it can therefore only be considered for the assessment of inventive step when used to solve a technical problem, e.g. when trained with specific data for a specific technical task.

Catchwords: 

No technical effect of the distinguishing features over the disclosure of document D1 can be derived over the whole scope of claim 1 (see decision G 1/19 of 10 March 2021, sections 82 and 95).

Catchword: 

The mere change, by an operator, of the degree of abstraction of a graphical view ("condensation") of a power grid does not credibly assist a user in performing a technical task by means of a continued and/or guided human-machine interaction process within the meaning of T 336/14 and T 1802/13 and thus cannot bring about a technical effect (see points 3.2 to 3.6 of the Reasons).

Catchword:

Die Verbesserung der Nutzerzufriedenheit z. B. bei einer TV-Live-Übertragung ist im Allgemeinen eine nicht-technische, administrative Aufgabe, für die üblicherweise ein TV-Stationsmanager als Fachperson zuständig ist (siehe Gründe 5.6 der Entscheidung).

Catchwords: 

If the claimed non-technical features do not interact with claimed technical features such that they produce a further technical effect, for the assessment of inventive step one may - either include the corresponding aim to be achieved in a non-technical field in the formulation of the problem as part of the framework of the technical problem that is to be solved, - or else take the corresponding business scenario as the starting point for the problem and solution approach (see reasons 3.2.2).

Catchword:

Improved patient compliance to a pharmaceutical formulation cannot be used to establish an overall technical effect if it is the result of a "broken technical chain", namely an alleged chain of technical effects starting with information provided to a patient which is then broken by the patient's mental activities (see points 2.4 and 2.5).

Catchword: 

If non-technical features have both a technical and a non[1]technical effect, the technical effect must be taken into account when assessing inventive step, but the technical effect must be clearly derivable from the application as a whole (Reasons 3.6.4 (1)).

Catchword: 

While a feature might, in certain contexts, be seen as technical, the technical effect of a feature must be assessed as a whole and in the context of the claimed invention (reasons 2.7.4).

Catchword:

The business person sets the framework of the problem to be solved by their business model (insurance conditions) and thus reduces - by setting specific boundary conditions - the degrees of freedom of the skilled computer specialist. The technically skilled person, who has to solve the objective technical problem of implementation, therefore has no latitude in selecting the corresponding (physical) parameters (reasons 3.6.10).

Catchword:

According to the Comvik approach the non-technical features of a claim may be incorporated into a goal to be achieved in a non-technical field. Subsequently, the approach invokes what might be described as the legal fiction that this goal, including the claimed non-technical features, would be presented to the skilled person, who would be charged with the task of technically implementing a solution which would achieve the stated goal. The question whether the skilled person would "arrive" at the non-technical features does not therefore arise, as these features have been made known to the skilled person, as part of the goal to be achieved. The relevant question for the assessment of inventive step is whether it would be obvious for the skilled person to implement a technical solution corresponding to the claimed subject-matter (Reasons, point 3.12).

Catchword:

In case T 625/11, the board concluded that the determination, as a limit value, of the value of a first operating parameter conferred a technical character to the claim which went beyond the mere interaction between the numerical simulation algorithm and the computer system. The nature of the parameter thus identified was, in fact, "intimately linked to" the operation of a nuclear reactor, independently of whether the parameter was actually used in a nuclear reactor (T 625/11, Reasons 8.4). The board is of the opinion that, in the case at hand, no technical effect is achieved by the method's functionality as the method merely produces a test rod pattern (i.e. a fuel bundle configuration) design and data "indicative of limits that were violated by the proposed test rod pattern design during the simulation". Contrary to case T 625/11, no parameter is identified that is "intimately linked to" the operation of a nuclear reactor. A rod pattern design appears to have non-technical uses such as for study purposes. These are "relevant uses other than the use with a technical device", and therefore a technical effect is not achieved over substantially the whole scope of the claimed invention (G 1/19, points 94 and 95). The data "indicative of limits that were violated by the proposed test rod pattern design during the simulation" do even not, or at least do not entirely, reflect the physical behaviour of a real system underlying the simulation (see G 1/19, point 128). The board notes that, due to the breadth of the wording of claim 1 of the main request, the obtained rod pattern design might violate any number of limits by an almost unlimited amount. Hence, this is not an "exceptional case" in which calculated effects can be considered implied technical effects (see decision G 1/19, points 94, 95 and 128).

Catchword:

The appellant argued that the claimed features relating to the abstract business concept neither could have been provided by the business person to the technical expert for programming, nor would the technical expert have corresponding knowledge starting from a networked standard computer system. The appellant thereby alleged that there was to be considered an imaginary third person who came up with the concept of the invention to be implemented on a computer system. The Board notes that when assessing inventive step in the field of computer implemented business related inventions following the COMVIK approach and the corresponding case law, there is no room for such a third expert. When analysing the features of a claim and answering the question of whether they provide a technical contribution, each such feature has to be judged to be either a contribution of the technical expert or of the non‑technical business person in order to conclude whether there is an inventive technical contribution.

Catchword:

Während eine Fachperson im Allgemeinen Dokumente nicht kombinieren würde, wenn dies zu einem Verzicht auf eine wesentliche Funktion der Erfindung im nächstliegenden Stand der Technik führen würde, gilt dies in der Regel nicht für Kombinationen, bei denen ein wesentliches Merkmal durch ein dieselbe Funktion erfüllendes alternatives Merkmal ersetzt wird (Punkte 1.3.2 und 1.3.3 der Gründe).

Catchword:

An encoding or compression algorithm contributes to the technical character of the claimed compression method if it is used for the purpose of reducing the amount of data to be stored or transmitted (reasons 7).

Catchword: 
If a claim is unduly broadened with respect to the scope of the examples used to illustrate a technical effect, particularly when this broadening concerns the feature/s allegedly providing that effect, the burden of proof might shift back to the proprietor to prove that the effect observed in the examples would also be obtained throughout the entire scope of the claims. If no evidence is provided in this respect, a conclusion may have to be drawn on the basis of plausibility arguments (reasons 2.2.5-2.2.7).

Catchword:

However, the question is whether the mere idea of mapping this acceleration data to gait category is technical, involving any technical considerations or having any overall technical effect. This question arises in many inventions that involve mappings and algorithms. In T 1798/13 (Forecasting the value of a structured financial product/SWISS REINSURANCE COMPANY LTD), points 2.7 to 2.9, the present Board essentially held that it was not enough that an algorithm makes use of a technical quantity in the form of a measured physical parameter (weather data). What matters is whether the algorithm reflects any additional technical considerations about the parameter, such as its measurement. In that case there were none. This was contrasted with T 2079/10 (Steuerung von zellulär aufgebauten Alarmsystemen/ SWISSRE) where the invention was seen to lie in the improvement of the measurement technique itself, which involved technical considerations about the sensors and their positions. Such a situation is conceivable in the present case, if the algorithm were to somehow enhance the input data using considerations of e.g. the placement of the sensors. However, the claim only specifies that the data "includes a time series of acceleration vectors" and that this data is "analyzed". There are no further details that could constitute technical considerations about the data or the sensors. (See points 2.11 to 2.13 of the reasons)

Catchwords: 

A similarity [of the claimed subject-matter] to a business or administrative solution is not a sufficient reason for denyinCatchwords:  A similarity [of the claimed subject-matter] to a business or administrative solution is not a sufficient reason for denying a technical contribution of a claim feature applied in a technical context and involving technical considerations. Put another way, technical considerations in the technical context cannot be negated merely on the basis of a non-technical analogy. ... The analogy to a post office, essentially invoked by the contested decision, is used in technical literature in order to describe functionality of the transport layer (layer 4) of the OSI model. However, in the Board's view, it would not be sound to assert, only based on this analogy, that communication protocols implementing this layer's functionality lack technical character. (See points 3.2.7 and 3.2.8 of the reasons).

Catchword:

In the Board's judgement it is part of the non-technical requirement specification to keep keys (be it analog or electronic keys) away from people one does not trust. This does not require technical considerations of a technically skilled person. The Board does not consider this to be a technical difference, but to be an administrative consideration within the sphere of a business person when contemplating a secure tender process. It is not regarded as a technical innovation, but a natural choice for the bidders to use individual keys, keep the keys back as long as possible and furnish them as late as possible. And even if this was considered technical, it would, in the Board's view, be obvious to do so. Furthermore, the Board considers that implementing a functionality in the networked e-tender system corresponding to D1 would be, at the claimed level of generality, obvious in view of the above business related requirement specification. The Board notes that the implementation is claimed in functional terms and neither the claim nor the application as a whole provide details on how encryption/decryption is achieved on a technical level. The application apparently relies in this respect on the skilled person's common general knowledge. The Board notes in this regard that if providing necessary software and data structures were beyond the skilled person's skills, the invention would not be sufficiently disclosed (Article 83 EPC). Even if the appellant is correct that using different keys for different bidders is a difference over D1, this would in the Board's view imply - in the light of bidders creating their own individual keys for unlocking/decrypting being obvious - that the keys of different bidders are different, too. Therefore creating individual keys/pass-phrases would inherently require the use of multiple keys for implementation. (See points 4.2 to 4.4 of the reasons)

Catchword:

Claim not allowing a distinction between the ingredients which prevent obesity and those which do not prevent or can even induce it. Identification of the protein hydrolysate as an active ingredient for preventing obesity not distinguishing the claimed subject-matter from the disclosure of the prior art. See reasons, points 1.4 to 1.8.

Catchword: 
The appellant's wish for the Board to define criteria that the examining division should use to prove that a feature is not technical is tantamount to defining the term technical, which the Boards have consistently declined to do. However, as stated in e.g. T 2314/16 - Distributing rewards/RAKUTEN at points 2.6 to 2.8, over the years the case law has provided guidance on the issue of technicality. Recently, the Board has tended to use the framework for discussion given in the CardinalCommerce decision (T 1463/11 - Universal merchant platform/CardinalCommerce) to help classify whether borderline features of a claim are on the technical or the non-technical side. It is thus clear that some discussion can and ought to take place. However, rather like objections against added subject-matter, one is essentially trying to prove a negative which tends to be a rather short exercise. On the other hand, the appellant is trying to prove a positive which involves more argument. Thus an objection from the division should probably start with a prima facie assertion that the feature in question is non-technical, perhaps because it is in one of the exclusions listed in Article 52(2) EPC, or a related or analogous field. If this is uncontested then this would be enough. However the Board considers that it is then up to the appellant to provide arguments why there is a technical effect or that some technical considerations are involved. The division should consider these arguments and give reasons why they are not convincing. As mentioned above, the Board is satisfied that this happened in the present case. One final piece of advice for examining divisions would be where possible to search for and start from a document that already discloses some of the alleged non-technical features, thus avoiding the discussion for these features (see for example, T 756/06 - Displaying a schedule/FUJITSU, point 5 or T 368/05 - Integrated account/CITIBANK, point 8). (See points 3.3 to 3.5 of the reasons)

Catchword:

Application of decision G 1/19 to
- simulation methods (Reasons, point 2)
- design methods (Reasons, point 4)
- measurement methods (Reasons, point 7)

Zusammenfassung

In T 1594/20 bezweifelte die Kammer, dass überhaupt eine Simulation eines technischen Gegenstands vorlag. Eine mathematisch rechnerische Optimierung bewirke nicht zwangsläufig auch eine Simulation des zugrunde liegenden physikalischen Vorgangs (hier Warentransport), sondern es seien vom hier vorliegenden Anspruchsgegenstand auch rein deterministische mathematische Optimierungen umfasst. Die optimierte Aufteilung eines Kommissionierauftrags nach rein kaufmännischen Kostenbetrachtungen (z.B. break-even-point) sei ebenso umfasst wie mathematische Optimierungsalgorithmen analog zum bekannten travelling-salesman-problem. Dabei werden kognitive geschäftsbezogene Daten verarbeitet und es liegen keine technischen Überlegungen zugrunde, die zu einer erfinderischen Tätigkeit nach Art. 56 EPÜ beitragen könnten.

Die Beschwerdeführerin argumentierte, dass mit dem beanspruchten Gegenstand eine Reduktion der Anzahl von Fahrten erreicht werde und damit eine Energieeinsparung verbunden sei. Die Kammer war davon nicht überzeugt. Eine geltend gemachte Energieeinsparung sei rein spekulativ und könne nicht ohne weiteres zur Annahme eines technischen Effekts führen. Dazu wäre erforderlich, dass ein solcher Effekt mit technischen Mitteln erreicht werde. Beim beanspruchten Gegenstand wäre eine Energieeinsparung (sofern tatsächlich erzielt) aber Folge einer rein organisatorischen oder algorithmischen Optimierung, die im Wesentlichen auf einer gedanklichen Tätigkeit basiere. Daraus könne kein technischer Effekt zur Berücksichtigung einer erfinderischen Tätigkeit abgeleitet werden. Die Kammer stimmte daher der angefochtenen Entscheidung zu, dass die objektive technische Aufgabe darin bestand, das mathematische Verfahren zur Warenkommissionierung, welches vom Geschäftsmann der Logistik als Spezifikation vorgegeben wurde, auf einem Computersystem zu implementieren. Bei der Implementierung sah die Kammer keinen technischen Effekt, welcher über die reine Automatisierung hinausging.

Zusammenfassung

In T 672/21 the appellant (opponent 2) had provided submissions on obviousness based on the assumption that any improved property was absent, so that the objective technical problem was the mere provision of a further polymorph. It relied in this respect on decision T 777/08.

The board, however, defined the objective technical problem in a more ambitious way. For this reason alone, the board held the appellant's submission on obviousness had to fail. The objective technical problem as defined by the board was the provision of a crystalline form of selexipag with a balance of beneficial properties, namely an intermediate stability and at the same time improved industrial processability and improved purity in terms of reduced amounts of residual solvents and residual impurities.

The board noted that according to T 777/08 "in the absence of any technical prejudice and in the absence of any unexpected property, the mere provision of a crystalline form of a known pharmaceutically active compound cannot be regarded as involving an inventive step" (headnote 1) and "the arbitrary selection of a specific polymorph from a group of equally suitable candidates cannot be viewed as involving an inventive step" (headnote 2). However, in the present case there was no absence of unexpected properties and the selection was not arbitrary, since the selected Form I had a balance of beneficial properties in terms of stability, industrial processability and purity in comparison with Form II and Form III. There was nothing in the prior art which pointed to the fact that the claimed Form I would have this balance of beneficial properties and they were thus not expected. The present case thus differed from the situation at issue in decision T 777/08.

The board also distinguished T 41/17, relied upon by the appellant for its further argument that the alleged stability of Form I was not a surprising technical effect because the skilled person always looked for the most thermodynamically stable polymorph in order to avoid the problem of interconversion within the dosage form. In T 41/17 it was concluded that the skilled person would have performed screening of the different polymorphs disclosed in the closest prior art, which could exist in order to isolate and identify the most thermodynamically stable form thereof. By doing so, the skilled person would have arrived at the claimed polymorph, which was the most thermodynamically stable form and which, for this reason, was expected not to convert to other forms under mechanical stress. However, unlike in T 41/17, in the present case the stability was not the only property, but rather part of a balance of beneficial properties. Hence, even if the stability of Form I (which is at an intermediate level) had been expected, the same would not apply to the balance of various beneficial properties.

The board also noted that the mere fact that the skilled person would have carried out routine screening for polymorphs as such did not render the claimed Form I obvious. As set out in T 1684/16, the fact that the skilled person was taught in the prior art to investigate polymorphs in order to isolate the crystalline form having the most desirable properties was in itself not necessarily sufficient to consider a specific polymorphic form having a certain desired property or, as in the present case, balance of properties obvious.

Thus the subject-matter of claim 1 of the main request, and by the same token of claims 2 to 13, which included the subject-matter of claim 1, involved an inventive step in view of D10 as the closest prior art.

Zusammenfassung

In T 1994/22 the appeal lay from the opposition division's decision to reject the oppositions filed against the European patent. Claim 1 of the main request related to Form II of selexipag, an agonist of the prostaglandin receptor PGI2. The appellant (opponent) objected to the inventive step of the subject-matter of claim 1 of the main request in view of D10 as the closest prior art. The distinguishing feature of claim 1 of the main request in view of example 84 of D10 was the crystalline form, namely Form II of selexipag.

In view of the available experimental results, the board concluded that Form II exhibited the best stability but only intermediate industrial processability, intermediate residual solvent content and an intermediate amount of residual impurities. Contrary to the situation in T 672/21 there was no balance of beneficial properties for Form II according to the main request. The objective technical problem could therefore only be considered that of providing a crystalline form of selexipag which is the best for one property, but only intermediate for all other tested properties.

The respondent submitted that, in line with T 1684/16, there was no reasonable expectation based on the prior art that a suggested investigation in terms of polymorph screening would be successful in finding a form of selexipag having a balance of beneficial properties in terms of stability, industrial processability, solvent content and purity.

The board disagreed. Based on T 1684/16 and in line with T 777/08, an inventive step can be acknowledged if the claimed polymorph has an unexpected property meaning that its selection is non-arbitrary. In the present case, the board saw nothing unexpected in finding a polymorph that was optimum for one property but only intermediate for several other properties. If this were unexpected and thus gave rise to an inventive step being acknowledged, an applicant or proprietor having identified a new polymorph would simply need to carry out tests for long enough to find one single property for which the identified polymorph performed best. This might result in a situation in which almost any polymorph in the world becomes inventive, which would render Art. 56 EPC meaningless.

Therefore, the selection of Form II is an arbitrary selection from the host of alternatives covered by the closest prior art. Such an arbitrary selection without any unexpected balance of properties being produced cannot contribute to inventive step. The subject-matter of claim 1 of the main request therefore does not involve an inventive step in view of D10 as the closest prior art.

Zusammenfassung

In T 182/20 the invention concerned predicting future malfunctions of mechanical or electrical components based on the current values of one or more parameters.

Beyond the server-based processing, the method in claim 1 comprised a number of technical features. Firstly, the method involved measuring specific parameters (e.g. temperature and lubricant condition in the bearings of a gas turbine), which the board considered to be inherently technical (G 1/19, points 85 and 99 of the Reasons). Furthermore, these measurements were used to predict specific malfunctions in particular components (e.g. a bearing defect in a gas turbine or an insulation defect in a transformer). The board considered that the choice of parameters for predicting the specified malfunctions reflected technical considerations about the functioning of the claimed mechanical or electrical components.

On the other hand, the mathematical calculations in steps 3) and 4), when considered in isolation, were non-technical. These computations generated numerical data, i.e. the conditional probability of a future malfunction in an electrical or mechanical component and the question remained, whether these calculations contributed to the technical character of the invention. With reference to G 1/19 the board saw the conditional probability obtained by the method of claim 1 as an indirect measurement of the physical state (i.e. a particular failure) of a specific physical entity (i.e. a specific mechanical or electrical component). The mathematical framework in the claim is rooted in stochastic modelling and simulation, specifically Markov chains, which are recognised for credibly capturing and predicting the transition dynamics of systems based on empirical data. The fact that the result is a probability does not detract from its ability to provide a technically meaningful estimate of the component's state. Making accurate predictions in the real world, given all its uncertainties, is rarely possible. The board also saw a credible causal link between the measured parameters and the predicted malfunctions. For instance, a bearing defect in a gas turbine is likely to generate more heat, degrade lubricant, and cause vibrations in the shaft and/or casing. Therefore, temperature, lubricant condition, and shaft or casing vibrations are suitable parameters for predicting a bearing defect. In summary, the board was satisfied that the calculated probability provided a credible estimate of the future physical state of a specific physical entity and, therefore, could be seen as an indirect measurement.

For these reasons, the board judged that the mathematical steps in claim 1 were part of a technical measurement method. The board remitted the case for further examination.

Zusammenfassung

In T 2086/21 the board found that, as stated by the respondents (patent proprietors), the effects of improved hygroscopicity, high thermodynamic stability and high polymorphic stability represented a beneficial combination of properties possessed by Form B of apalutamide compared to the physical forms disclosed in D1 and D2. The objective technical problem underlying claim 1 starting from either of D1 or D2 was therefore the provision of a form of apalutamide with a beneficial combination of these mentioned properties.

On obviousness, the appellants (opponents) submitted that in view of the fact that apalutamide was the subject of an Investigational New Drug (IND) filing before the filing date of the patent, the skilled person would have been motivated to perform routine polymorphic analyses or screening, especially given apalutamide's development stage. They cited various documents to support the argument that polymorphic screening and stability testing were part of common general knowledge and that following such routine guidance the skilled person would have arrived at the claimed Form B in an obvious manner.

The board disagreed, emphasising that the appellants' submissions failed to take into account the formulation of the objective technical problem in accordance with the problem-solution approach. Specifically, that Form B displayed a beneficial combination of properties which could not have been expected by the mere provision of a crystalline form per se. The implication from the landmark decision T 777/08 was that when the advantages or effects of the claimed crystalline form were unexpected, i.e. they were not arbitrary and did not follow merely by virtue of being crystalline, then an inventive step was present. In the present case the board held there was no absence of unexpected properties, and that the selection of Form B was not arbitrary, since it possessed a beneficial combination of properties. Although the skilled person could have carried out a polymorphic screening, there was nothing in the prior art motivating the skilled person to have taken a particular path in the expectation of solving the aforementioned objective technical problem. The respondents further relied on T 325/16: "Only if the prior art either contains a clear pointer ...or at least creates a reasonable expectation that a suggested investigation would be successful, can an inventive step be denied", which supported the board's conclusion.

The board also addressed the appellants' argument that any unexpected effects associated with Form B, such as improved hygroscopicity, amounted to mere bonus effects. The board clarified that the objective technical problem solved by the claimed subject-matter was the provision of a beneficial combination of properties, not just a single property, and there was no reason for the skilled person to assume that the thermodynamically most stable form would at the same time be also polymorphically stable and in addition display improved hygroscopicity, and no such reason was provided by the appellants.

Distinguishing the case in hand from T 41/17, in which the solution was considered obvious because the skilled person would have performed a screening to identify the most thermodynamically stable form, the board highlighted that in the present case, in contrast, thermodynamic stability was only one property from a beneficial combination of properties displayed by the claimed Form B of apalutamide. Even if the effect of thermodynamic stability were to have been considered obvious, the same did not apply to the beneficial combination, since, for example, there was no teaching in the prior art that the effect of lower hygroscopicity could be obtained with the thermodynamically most stable form of apalutamide. 

The board also disagreed that the skilled person starting from the amorphous apalutamide of D1 would have been in a "try and see" situation, which is predicated on the existence of a pointer to the solution, the existence of such the board had ruled out.

In view of the above the board concluded that the subject-matter of claim 1 of the main request (and by extension dependent claims 2-6) involved an inventive step starting from each of the cited documents (D1 and D2). It thus ruled that the appellants' appeals were to be dismissed.

Zusammenfassung

In T 1741/22 the board referred to G 1/19 to show that it is generally acknowledged that measurements have technical character, since they are based on an interaction with physical reality, such as the human or animal body (see also G 1/04). However, the board went on to find that in the case at hand, features (c) and (d) did not involve the actual measurement of the respective glucose level in a bodily fluid. Instead, they processed already measured and received continuous glucose monitoring data to generate and display further "new data", namely a plurality of minimum/maximum glucose values, in order to support a physician in their purely intellectual deductive decision phases of diagnosis and therapy. Such subsequent processing of certain measurement data collected from the human or animal body is predominantly of a non-technical nature. Thus, it could not contribute to the technical character of the invention. The board also referred to its earlier decisions T 1091/17, T 1910/20, T 335/21.

At the oral proceedings before the board, the appellants referred to T 2681/16 and to the Guidelines for Examination in the EPO in support of their view. In particular, the appellants considered the case in T 2681/16 to be analogous to the case at hand. The competent board in that case had dealt with distinguishing features related to an algorithm to process already acquired, i.e. measured, blood glucose data points. The board had acknowledged that these features, when taken in isolation, were non-technical, and could support the presence of an inventive step only if they credibly contributed to producing a technical effect serving a technical purpose. However, the board had then accepted the technical effect alleged by the appellant, namely "providing an overall measure of the glucose variability (i.e. equally sensitive to both hypo- and hyperglycemic events) and a prediction of glycemic events that were better than, or at least alternative to, those used in [the closest prior art]".

This board was not in agreement with and therefore deviated from the interpretation of the Convention given in T 2681/16. In particular, the board disagreed with the finding in T 2681/16 that providing an overall "measure" of the glucose variability and a prediction of glycemic events amounted to a technical effect. The board was well aware of the tendency of applicants to use the word "measure(ment)" liberally in order to give inventions the veneer of technicality. This was mainly because it is generally acknowledged in the jurisprudence of the Boards of Appeal that "measurements" have technical character. Admittedly, the applicants' use might well correspond to the meaning of the word in common parlance. However, a prerequisite for a "measurement" with technical character, within the meaning of the jurisprudence of the Boards of Appeal, is an interaction with "physical reality" for the calculation of the physical state of an object, even if the measurement could be carried out indirectly, e.g. by means of measurements of another physical entity (G 1/19). In the present case and in the case underlying T 2681/16, where the "physical reality" was typically the "patient's blood", the interaction with the physical reality ended once blood glucose measurements were carried out, either directly on the relevant physical entity "blood", or indirectly e.g. on another bodily fluid. The provision of overall glucose variability and a prediction of glycemic events were mathematical steps or intellectual activities which took place in the absence of this interaction with the physical reality and were therefore not "measurements" in this sense. In other words, the taking of a sample from the patient is an interaction with "physical reality". Generating new data as a consequence of this interaction may result in "measurements" of a technical nature. But generating (and displaying) further data by an evaluation or interpretation of these measurements (as done according to features (c) and (d) here) amounts to "measurements" generated merely by a cognitive or mathematical exercise that is inherently non-technical.

As to the Guidelines for Examination in the EPO (in its applicable version of March 2022 and also in its current version of March 2024), section G-II, 3.3, which relates to the technical contribution of mathematical methods, lists "providing a medical diagnosis by an automated system processing physiological measurements" among "examples of technical contributions of a mathematical method". As providing a "medical diagnosis" – whether done by a physician or by an automated system – is devoid of any technical character (G 1/04), the board found this example to be erroneous. As there was no further explanation, let alone a reference to any case law, the board saw no reason to speculate on how the Guidelines had come up with this example. In view of the above, the board held that the subject-matter of claim 1 of auxiliary request 10 did not involve an inventive step (Art. 56 EPC).