In decision T 625/11, an EPO Technical Board of Appeal considered two different approaches to determining inventive step which produced opposite outcomes. The difference between the approaches consisted in whether the technical effect of a simulation method arose only from the interaction of the method with the computer system or whether (non-technical) aspects relating to the implementation of the method could contribute to technical character and thus support the presence of an inventive step.
The application in question related to a method and system for determining a threshold value of a nuclear reactor operating parameter. The Examining Division had refused the application on the ground of lack of inventive step pursuant to Article 56 EPC.
In particular, although the Examining Division had accepted that the subject matter of claim 1 ("a computer-implemented method for determining at least one threshold value of at least one nuclear reactor operating parameter") was technical in nature by virtue of the method being performed by a computer system, the Examining Division concluded that the claimed method did not involve any teaching that went beyond the routine practice of the person skilled in the art and, therefore, lacked inventive step.
In section 7.1 of its decision, the Board referred to Technical Board decision T 641/00, which sets out that "where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect, it has no significance for the purpose of assessing inventive step". Therefore, as the Board elaborated in the present case, it is only possible to determine a technical problem to be solved if at least one technical effect resulting from at least one claimed feature is acknowledged.
In the present case, the Board held that there was no doubt that steps b), c) and d) of the claimed method were performed by the computer system referred to in the claim and hence that, notwithstanding the technical character of the claim as a whole, steps b), c) and d) were themselves technical. However, the Board pointed out that this was not sufficient to establish whether or not the claim was inventive pursuant to Article 56 EPC.
The Board considered two approaches to determining the presence of an inventive step: the one taken by the Examining Division and the other favoured by the applicant. In the first approach, the technical effects of the claimed method were limited to the interaction between the claimed simulation method and the computer system. However, in the second approach, the aspects relating to the implementation of the method were also considered to contribute to the technical effect.
The Examining Division held that the method could not be considered inventive since the use of a computer system to implement the method was the sole technical aspect of the invention. The use of a generic computer system to calculate a value was considered obvious.
However, the Board recalled that, according to the precedent set in T 641/00, when a claim refers to an object to be achieved in a non-technical field, that object may legitimately be stated in the formulation of the problem to be solved, in particular as a constraint to be observed. Therefore, the Board formulated the technical problem to be solved by the invention as follows: "implementing a method enabling the determination of a threshold value of a nuclear reactor operating parameter, the determination including [the method steps]" [emphasis added].
The Board acknowledged that it was not possible to solve the posed problem by theoretical methods alone owing to the complexity involved. It added that the volume of data to be processed and the nature of the required calculations meant that the processing could not be done without suitable means. In consequence, the only option available to the skilled person would be to use a computer system with sufficient processing power.
The Board pointed out that, as a result of not taking into account the nature of the data to be processed or the object of the claimed method, the first approach would lead to the conclusion that the subject-matter of claim 1 of the main request lacked inventive step pursuant to Article 56 EPC. It was also noted that this approach is a priori independent of the technical field considered and almost systematically leads to the conclusion that a claimed method which is distinguished from the prior art only in being automated would not be inventive.
However, the applicant argued that the technical character of the present invention resulted not only from the use of the computer system but also from the data being processed and the objective targeted by the invention, even if the latter was not included in the claimed method. The applicant also argued that the Examining Division had not followed the precedent set by an earlier decision, T 1227/05, in which it was decided that features which, in isolation, were non-technical did, in the context of the invention, contribute to producing a technical effect serving a technical purpose.
In the present case, the Board stated that recognition of a technical character connected with the use of the threshold value resulting from the simulation for proper operation of a nuclear reactor would lead to a significantly more specific redefinition of the objective technical problem solved by the invention, namely determining at least one threshold value of a nuclear reactor operating parameter in order to allow better use of the reactor [emphasis added]. Since the claimed solution was not disclosed in any of the cited prior art documents, the Board considered that this second approach would lead to the conclusion that the claimed method did involve an inventive step.
After considering both approaches, the Board concluded that the determination of the value, being a threshold value of an operating parameter for a nuclear reactor, conferred a technical character on the claim and, further, that the technical character went beyond the mere interaction between the simulation algorithm and the computer system. Ultimately, the Board decided that the claimed method did involve an inventive step and, consequently, revoked the decision of the Examining Division to refuse the patent.
It is worth noting that an adaptation of the case concerned in the T 1227/05 decision has recently made its way into the Guidelines for Examination (Part G, Chapter VII, 18.104.22.168) as a successful example of the contribution of a mixture of technical and non-technical features of a claim in the determination of inventive step. The present decision appears to show that the Boards of Appeal are being consistent with the precedent set in T 1227/05 and it remains to be seen if the Examining Division will adapt their approach in future in light of the recently updated Guidelines.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.