One of the more complex items on the non-exhaustive list of non-inventions set out in Article 52 (2) EPC is the exclusion of presentations of information. Neither in the Convention nor in its preceding travaux préparatoires is any explanation given of what has to be understood by a “presentation of information”.
Nor is the existing case law of the Boards of Appeal consistent in this respect: while presentation of information is seen by some Boards (see, e.g., decisions T 49/04-3.4.03 or T 1749/06-3.4.03) to relate only to the information contents but not to its layout (only “what” is excluded but not “how”), other Boards (see, e.g., decisions T 1143/06-3.5.01 or T 1741/08-3.5.06) are much stricter and base their argument on whether or not the effect of data visualization, including both contents and layout, is only on the mind of the user, in particular by easing a mental evaluation or lowering a cognitive burden. In this case, a technical effect is denied, more or less irrespective of whether such evaluation step may occur in an otherwise technical environment. Decision T 643/00-3.5.01 takes up an intermediate position by holding that even if an evaluation by the user on a mental level is involved in solving a technical task such as searching and retrieving images stored in an image processing apparatus in a more efficient or faster manner, the mere fact that mental activities are included does not necessarily qualify subject-matter as non-technical.
Since it goes without saying that visualization aspects play an ever increasing role in modern man-machine interactions which are most notably realized by graphical user interfaces, the current legal and judicial situation does not seem to be satisfactory.
In the recent case T 1214/09, Board 3.5.07 joined the club of more severe Boards. The underlying European patent application EP 0 977 132 A2, which had been refused by the Examining Division for lack of inventive step, related to an information managing device including an LCD display, storage means for storing image files and corresponding thumbnail files and input means for selecting and displaying a plurality of thumbnail files. By evaluating these files, a user could retrieve and display the image file corresponding to a desired thumbnail file.
The subject-matter of claim 1 according to the main request before the Board differed from the prior art by the information managing device being programmed to
- display the thumbnail file images partially overlapping and in a three-dimensional arrangement that was dependent on the number of displayed thumbnail file images, for which purpose
- a table was created using suitable software means specifying the screen coordinates for each thumbnail file image.
In the Board’s view, feature (i) concerned the manner in which the thumbnail file images were displayed and hence related to a presentation of information, excluded “as such” from patentability under Article 52 (2) (d) EPC. The Board therefore went on to determine the extent to which feature (i) might interact with the technical subject-matter of the claim for solving a technical problem.
The appellant argued that the arrangement of thumbnail file images defined by feature (i) contributed to improved evaluation of a large number of thumbnail file images by the user and thereby solved the problem of enabling more efficient image retrieval. Since feature (i) appeared to cover arrangements in which almost none of the thumbnail file images could be recognized, the Board questioned whether the alleged effect was actually achieved over the whole scope of the claim, however chose to first address the question whether the alleged effect was technical.
Referring to decisions T 643/00-3.5.01 and T 1143/06-3.5.01, both decided by one and the same Board, however in different compositions, Board 3.5.07 found that “feature (i) contribute/d/ only to improved search and retrieval in that it (allegedly) improve/d/ the cognitive evaluation of the displayed thumbnail file images by the user”, and that this situation was similar to that considered in T 1143/06, where the “direct effect” of the visualization was the impression it made on the user. The problem solved was therefore not concerned with the search for, and retrieval of, information, but was that of presenting information about data files to a person in such a manner that he or she could easily evaluate it. This wording demonstrated that the problem was not a “purely technical one”, so that a “direct technical effect” seemed to be absent.
In the Board’s opinion, decision T 643/00 admittedly held that arranging a predetermined plural number of images in a side-by-side manner at a low level of resolution and allowing selection and display of an image at higher resolutions contributed to the technical solution of the technical problem of an efficient search, retrieval and evaluation of images. However, in that case the cognitive evaluation of the displayed thumbnail file images formed an integral part of the solution to the technical problem of an efficient search, retrieval and evaluation of images, and this solution did not rely on an improvement in this cognitive evaluation, e.g., in the form of a lowered cognitive burden. The solution rather resided in an efficient (new) manner of inputting the selection of a desired image.
The appellant’s reference to decisions T 49/04 and T 1749/06 turned out to be not helpful because the Board, though acknowledging a different interpretation of the meaning of “presentation of information” applied, did not follow this case law without giving much reasoning as to why. Rather, the Board held that under the given circumstances any improvement in the efficiency of image retrieval could only be the result of the non-technical improvement in the user's evaluation of the displayed thumbnail file images. Hence, feature (i) did not contribute to a technical solution of the problem of enabling more efficient image retrieval and in consequence was disregarded for inventive step.
Since feature (ii) relating to the implementation of feature (i) in software was found obvious from the prior art, the subject-matter of claim 1 did not involve an inventive step and was thus not allowable.
The Board did not deny any contribution by the claimed arrangement to improved search and retrieval of stored images. However, in the Board’s judgment, the arrangement was not based on considerations other than those proper to the field of designing presentations of information for human viewing and hence was not
an expression of any technical principle.
Hence, it appears that with the new decision the case law moves in the direction of denying technical character of mental evaluation steps based on data visualization, even if these steps are included in otherwise technical subject-matter like methods for data retrieval. In this context, additional requirements for accepting a technical contribution have been established, in particular the necessities of a “direct technical effect” or an “unbroken chain of technical effects” and a “purely technical problem”.
In this context, it has, however, to be noted that Article 52 (2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded “as such”. Hence, as is normally accepted for other exclusions listed in Article 52 (2) EPC, non-technical features are ignored in assessing novelty and inventive step only to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem,i.e., do not provide a contribution to the technical character of the subject-matter claimed (see, e.g., decision T 154/04-3.5.01).
In the present case, it appears that a technical contribution of the thumbnail arrangement displayed has not entirely been ruled out by the Board when finding that feature (i) indeed contributed to improved search and retrieval, but “only” by an aspect of presentation of information. This finding therefore begs the fundamental question under what circumstances, and if at all, presentation of information, normally including a human mental interaction, can make a technical contribution. One might therefore have doubts whether such a strict approach is systematically correct and whether the standard to be applied should not preferably be along the lines of T 643/00 accepting technical interactions by visualization steps in an overall technical method.
In any case, taking account of the turn the case law is about to take, claims based on visualization aspects should at least be drafted such that a comprehensive set of features clearly defining an altogether technical subject-matter is included, and not only visualization steps are referred to.