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Case law 11 jan 2022

(Niet-)technische kenmerken

-Dit artikel is alleen in het Engels beschikbaar - The Board deals with a case wherein the Examining Division had refused an application on the basis of Art. 52(2) and (3) EPC, because the claims would have defined an administrative workflow without any technical means. The Board agrees with the Examining Division that the Main Request is not allowable, but considers that a first auxiliary request wherein explicitly a step of “manufacturing a product” is included, does have technical character. The first auxiliary request was filed after the summons, but considered admissible as exceptional circumstances would apply. The case is remitted to the Examining Division for the assessment of novelty and inventive step.

The applicant/appellant filed an appeal against the decision of the Examining Division to refuse European patent application No. 14178116.1 on the basis of Art. 52(2) and (3) EPC. Their requests, presented at the oral proceedings before the Board, were that the decision under appeal be set aside and that the case be remitted to the first instance for further prosecution on the basis of the main or first auxiliary request or, alternatively, that a patent be granted on the basis of either of these requests.

Main request

The Examining Division had been of the opinion that claim 1 of the main request defined an administrative workflow without any technical means. As a result, the subject matter would be excluded from patentability under Art. 52(2) and (3) EPC.

Claim 1 of the main request reads:

" 1.       A method for redesigning one or more product or process parameters of a first manufactured  article, in order to provide different product or process parameters of a second, transformed, manufactured article, wherein the method comprises the steps of:

i) associating a unique identifier with individual first manufactured articles, or with groups of first manufactured articles;

ii) capturing and recording product data and/or process data relating to the first manufactured articles;

iii) soliciting and recording consumer feedback relating to in use performance of the first manufactured articles;

iv) correlating consumer feedback with product data and/or process data of a specific, individual, first manufactured article by means of the unique identifier;

v) determining different product or process parameters for a second manufactured article; and

vi) applying one or more different product or process parameters to the first manufactured articles to transform them into second manufactured articles, the second manufactured articles being better adapted to meet consumer needs than the first manufactured article."

According to the Board, this claim essentially defines a method for collecting consumer feedback on the use of a product. This feedback is used to redesign the product such that it is better adapted to meet consumer needs. Nevertheless, this does not provide the claim with a technical character.

The Board presented the following arguments to explain why the respective features were to be rendered non-technical:

  1. “associating a unique identifier” does not relate to technical matter and does not necessarily involve technical data as, according to the Board “a business person would have the idea of keeping track of products such that consumer feedback can be collected for a specific product. Keeping track of products requires some sort of identifier. The "unique identifier" in step i), which according to the description can for example be a serial number or a bar code, is a self-evident implementation of this requirement” (reasons 5.1).
  2. “capturing and recording product data and/or process data relating to the first manufactured articles” is so broad that it also includes non-technical data such as a size label. Therefore the arguments provided by the appellant that said data could be used in a manufacturing process and thus, is technical, is not convincing.
  3. feedback relating to “in use performance” does not have a technical character for similar reasons.
  4. “correlating consumer feedback with product data and/or process data”  does not imply that a number of users’ feedback is statistically correlated to various parameters, it merely means a connection between two things is established, such as connecting certain product and/or process data to the unique identifier. This is therefore not necessarily technical.
  5. The feature “determining different product or process parameters for a second manufactured article;” is not linked to any of the previous steps and therefore also applies to non-technical examples such as “determining a different size”. Hence the feature does not need to have a technical purpose or effect.
  6. The final feature is according to the Board not clear enough to contribute to technical character either. The term “transform” does not specify what technical means would be needed for such a transformation and it cannot be assumed that there would be technical means needed that imply any technical effect either.

Accordingly, the Board concluded that claim 1 is not an invention under Art. 52(2) EPC.

First auxiliary request

The first auxiliary request was made during oral proceedings and in response of the discussion regarding the main request. The Board had clarified their objections and arguments during the discussion up to a point that they were sufficiently clear to the applicant, who then was able to formulate a more suitable auxiliary request. The Board stipulates that such requests should be possible, especially in ex parte cases,  as otherwise having oral proceedings would be pointless. Hence the request was admitted into the proceedings.

Claim 1 of the first auxiliary request reads:

“1.        A method for redesigning one or more process parameters of a first manufactured absorbent article, in order to provide different process parameters of a second manufactured absorbent article, and manufacturing the second manufactured absorbent article, wherein the method comprises the steps of:

i) associating a unique identifier with individual first manufactured absorbent articles, or with groups of first manufactured absorbent articles;

ii) capturing and recording process data relating to the first manufactured absorbent articles;

iii) soliciting and recording consumer feedback relating to in use performance of the first manufactured absorbent articles;

iv) correlating, by a controller, consumer feedback with process data of a specific, individual, first manufactured absorbent article by means of the unique identifier;

v) determining different process parameters for a second manufactured absorbent article based on the correlated consumer feedback and process data for the first manufactured absorbent articles;

vi) applying, by the controller, the one or more different process parameters to a converting apparatus configured to manufacture absorbent articles; and

vii) manufacturing, by the converting apparatus, the second manufactured absorbent articles, the second manufactured absorbent articles being better adapted to meet consumer needs than the first manufactured absorbent article."

The Board considered this claim has technical character. Importantly, the claim is now directed to a method for redesigning process parameters and manufacturing articles according to the redesigned process. In addition, the claim includes a step vii) related to the explicit manufacture of the articles.

As novelty and inventive step had not been discussed yet at the first instance, the Board remits the case to the Examining Division for further prosecution.

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