In decision T 0336/14 (Presentation of operating instructions/GAMBRO), the EPO’s Technical Board of Appeal has offered some guidance in how “mixed inventions” involving presentations of information should be examined for inventive step.
The decision concerned an appeal against the interlocutory decision of the opposition division to maintain the opposed European patent EP1668556 in amended form. The patent was previously opposed on multiple grounds, including lack of novelty and inventive step. The appellant requested that the decision under appeal be set aside and the patent revoked on the ground of lack of inventive step with respect to a single prior art document.
At appeal, claim 1 of the main request directed to “a user interface for an extracorporeal blood treatment machine”. The user interface in question uses a touch screen to display a sequence of pre-treatment preparation steps for a blood treatment machine. Touch keys associated with individual steps allow the user to display an image of the machine in different configurations alongside the sequence of preparation steps.
The prior art cited against the claim also concerned displaying configurations of a blood treatment machine. The Board held that the claim was distinguished from the prior art by displaying “operating instructions for readying the machine for use”, rather than tab identifiers for controlling the machine’s configuration parameters. The Board decided that the claim was at least novel and followed the well-established approach of considering the technical character of the claim under the umbrella of inventive step.
Does the display of operating instructions for a machine constitute a presentation of information as such? The Board noted that the technical contribution of a feature must not be decided in isolation and instead by determining the effect brought about by adding the feature to an object which did not comprise the feature before.
The Board considered the technical contribution arising from the presentation of information in terms of three honest serving-men, “how” and “what” and “why”. As to “how” the information is displayed, the board noted that the manner of presentation was already known from the prior art. The “what” relates to the operating instructions and images of the machine displayed on the screen and the board determined that this information was of a cognitive rather than a functional nature and addressed only the human mind of the user. The Board was therefore left with considering the question “why” (ie “for what purpose?”) the content is presented.
In assessing whether the user interface and the content presented credibly assist the user in performing a technical task the Board first summarised the approach which it inferred from several previous decisions. The test, according to the Board, is whether the cognitive information presented constitutes “an operation state, a condition or an event internal to the underlying technical system, prompting the system user to interact with it in a continued and/or guided way for enabling its proper functioning” or whether it represents “a state of a non-technical application run on that technical system”.
In other words, it is necessary to determine whether the information is “technical information” concerned with an underlying system state or “non-technical information”, which is exclusively aimed at the mental activities of the user.
In the present case, the information displayed on the touch screen is entirely divorced from the operating state of the blood treatment machine; the user can select any of the operating instructions at any time and be presented with an image of the machine irrespective of its current configuration. At most, the Board concluded, the user may be led to better understand or remember how to set up the machine, but such an effect only addresses the human mental process of an “average user”. On this basis, the distinguishing features were held to be presentations of information as such, leading the Board to set aside the previous decision and to revoke the patent.
In reviewing decisions cited during the oral proceedings, the Board agreed that the “mere fact that mental activities on the part of the user are involved does not necessarily qualify subject matter as non-technical”. It was also noted, however, that “an action (possibly) performed by a user in response to a message concerning the technical functioning of an apparatus does not necessarily render technical the information conveyed”. It therefore appears that the information must do more than merely instruct a user; there must be some connection to a technical system.
In conclusion, this decision helps clarify when presentations of information may contribute to inventive step for inventions which comprise technical and non-technical features. The Board of Appeal has made a distinction between inventions where the distinguishing features relate to “how” something is presented rather than “what” is presented and “why”. It seems that, to avoid being regarded as presentations of information as such, features directed towards providing a user with information must be shown to have a technical effect outside the mind of the user. To this end, the features should credibly support “a continued and guided human-machine interaction process” and preferably be associated with an underlying state of the technical system.