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Case law 23 nov 2022

Incorporation of non-technical claim features in the objective technical problem according to the Comvik approach

-Dit artikel is alleen in het Engels beschikbaar - In case T 0351/19 of the European Patent Office (EPO) the Board of Appeal refused a patent application with a claim on a method for automated session closing upon location-sensed departure. The method could for instance be implemented at retail outlets (e.g., restaurants, salons, stores, etc.) to automatically charge a customer account for ordered items upon an automated detection of a customer retail outlet departure. In the decision, the Board argues lack of inventive step using the Comvik approach. In their argumentation the following statement is provided regarding the incorporation of non-technical features in the objective technical problem following the Comvik approach:

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).

This article is about case T 0351/19.

T 0351/19

Background

The appeal is against a decision of the Examining Division to refuse European Patent application No. 15 183537 because of a lack of inventive step (Art. 56 EPC). The refused patent contains claims related to a method for automated session closing upon location-sensed departure. The method is performed on a server-based system and includes receiving first data that indicates that a mobile device has departed a retail outlet. The method then generates, from stored retail session data, a final bill including an amount payable and then charges an amount payable from the final bill to a payment account associated with the customer account.

Document D1, which deals with a method to alert staff members when a customer (and their wireless communication device) is leaving a restaurant, was identified as closest prior art. The aim of D1 is to alert staff members in case a customer would leave without payment. It is undisputed that D1 discloses feature (i) of claim 1 of the main request (enumeration added):

"A method (200) comprising:

  1. receiving, via a network (118) from a mobile device (116) associated with a customer account, first data indicating the mobile device (116) has departed a retail outlet (step 208),
  2. and upon receiving the first data;
    1. generating, from stored retail session data, a final bill including an amount payable (step 210); and
    2. automatically charging the amount payable to a payment account associated with the customer account (step 212), the automatic charging including transmitting payment account data and the amount to be charged to a transaction processing system."


Moreover, it is acknowledged by the Board that feature (ii) is not disclosed by D1, nor that any hint or suggestions for automatic payment upon departure are provided in D1.

Inventive step

The Board assesses the inventive step of claim 1 of the main request and considers that only feature (ii)(a) comprises technical features, whereas (ii)(b) is non-technical as it relates to a business consideration. Because of the mixture of technical and non-technical features, the Comvik approach is applied.

Where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as constraint that has to be met.

According to the Comvik approach, “where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as constraint that has to be met”. The Board considers this is applicable here and formulates the objective technical problem as follows, including the non-technical features of the claim in the problem formulation:

“[how] to implement the automatic charging of the final amount to the customer when they leave the outlet”

According to the Board, it would be plausible that feature (ii)(a) represented a solution to the objective technical problem, at least at a very high level. Starting from D1, however, it would be obvious to generate a final bill from stored retail session data upon departure to solve the objective technical problem. As such, claim 1 would lack inventive step withing the meaning of Art. 52(1) and 56 EPC.

The Board therefore refuses the main request on the basis of lack of inventive step.

Admissability of auxiliary requests

The applicant had filed three auxiliary requests at a late stage in the appeal proceedings, i.e., after the summons to oral proceedings and the Board’s communication under Art. 15(1) RPBA). No reasons were provided for this late submission, other than the applicant’s argument that it was normal to be allowed to amend the claims by introducing features from the dependent claims and/or the description.

The Board disagreed with this argumentation and pointed out that there had been a negative opinion towards the presence of an inventive step at much earlier stages of the proceedings for the Examining Division. Therefore the auxiliary requests could and should have been filed earlier. Moreover, the plurality of new features introduced in the auxiliary requests would contribute to a degree of complexity which is inappropriate at a late stage in the appeal proceedings. The Board argues that:

“If the first auxiliary request were admitted into the proceedings it would require the Board either to perform, for the first time, a detailed examination of this subject-matter or to remit the case to the Examining Division for further prosecution under Article 111(1) EPC, neither of which would be a procedurally efficient course of action.”

Decision

As the main request was not inventive and the auxiliary requests were not admitted into the proceedings, the appeal was dismissed and the patent finally refused.

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