Case Law of the Boards of Appeal of the European Patent Office

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The argument that the appellant, in response to the telephone conversation, wanted to react to the examining division's decision in a calm and reflected manner without any time pressure is also not convincing. On the one hand, if the appellant/applicant had attended the oral proceedings, it would have had the opportunity to file this request, whereby the available time would have been considered sufficient. On the other hand, even prior to the telephone conversation the appellant/applicant could have considered exactly which request(s) it wanted to pursue, since the negative opinion of the examining division was known prior to the above-mentioned telephone conversation. Already in the summons to oral proceedings the examining division indicated its negative opinion with regard to the main request.

Claim 1 was amended compared to claim 1 of the main request by adding after the "receiving" step and prior to the "obtaining" step the following wording: Since the result of the straightforward implementation of the above cited business scheme is the method defined in claim 1, the board concludes that the subject-matter of claim 1 of the main request does not involve an inventive step (Articles 52(1) and 56 EPC). The addition of a feature from the description in the wording of a claim normally changes the overall focus of the claimed subject-matter and is considered a "fresh case". Subject-matter relating to a "fresh case" was not taken into account with certainty when searching the application and should therefore have been filed during the first instance proceedings. According to established case law of the Boards of Appeal (see Case Law of the Boards of Appeal of the EPO, 10th edition 2022, V.A.5.2.2 and V.A.5.11.4 a); T 1212/08) it was common practice under the RPBA 2007 not to admit a request filed for the first time with the statement setting out the grounds of appeal if this request constitutes a "fresh case" (i.e. using features taken from the description). The reasons therefore are that the board either would have to examine and decide on the amended subject-matter for the first time during appeal, or that the board would have to remit the case to the department of first instance for further prosecution thereby considerably prolonging the proceedings. Both procedural options are generally to be avoided (see also Article 11 RPBA), as the primary objective of the appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020). the business person does not provide any technical input but only the above cited business method including only non-technical, administrative constraints and thattriggering (1102) a reminder of the action item based on the two or more reminder conditions when conditions corresponding to the two or more reminder conditions are determined to exist, wherein a visual, audible or vibratory reminder is generated on the electronic device (201) when the reminder is triggered,

receiving (310) a request for creation of an action item (300), the action item (300) comprising a record of proposed future action; Sir Robin Jacob (23–24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, The perception of the role and function of the EPO's BoA by the national judges, Part 2: Specific aspects of EPO practice. Munich, Germany: European Patent Office. 4:45 to 5:40 minutes in . Retrieved August 3, 2012. [ permanent dead link] The further definitions of the identifying step as defined in claim 1 of this request related to the technical improvement of the functionality of the electronic device. It was not rendered obvious by the available state of the art and was therefore inventive. VIII. The appellant's arguments, insofar as they are relevant to the present decision, may be summarised as follows: II. At the end of the oral proceedings before the board the appellant requested that the decision under appeal be set aside and a patent be granted on one of the main request or first to third auxiliary requests, all submitted with the statement setting out the grounds of appeal. The main request and the first and second auxiliary requests are identical to the corresponding requests underlying the impugned decision.The technical advantages as argued by the appellant, namely the reduction of wear and tear, the reduction of power consumption and the reduction of time when accessing the stored content are technical advantages which are inevitable side effects of the computer implementation itself. These side effects cannot be considered as further special technical effects since they derive inherently from the computer implementation of the desired business aim. The third auxiliary request was submitted for the first time with the statement setting out the grounds of appeal. The board therefore has the discretion not to admit this request into the proceedings under Article 12(4) RPBA 2007 (which here applies according to Article 25(2) RPBA 2020), if it considers that it could and should have been filed during the first instance proceedings. wherein the request for creating of the action item (300) is a request to create the action item (300) based on stored content (301) and wherein a reminder of the action item provides access to the stored content (301), wherein the stored content (301) is one of: a video; an audio file; a word-processor document; an electronic book; or an image;" When starting from a notorious computer system, like a PDA, the business person provides the following purely administrative/business scheme as business constraints to the technically skilled person for implementation on the notorious computer system: defined technical means which should not be part of the non-technical business constraints. The separation between the technical and the non-technical features should be drawn differently from what was done by the examining division. The use of an external service like a "location sharing service" provided an inventive contribution in particular in combination with an additional location sensor. Including these features in the business constraints raised the question how "smart" the business person was and which technical information were known to the business person. Therefore, the use of both a location sensor and a location sharing device could not be considered as being part of the business constraints. The processor had to consult two different sources, the location sharing service and the location sensor and bring the corresponding information together. This combined use of a location sharing service and a location sensor were technical and not obvious. Both features were also nowhere disclosed in combination in the prior art. Hence, the two features a) and b) as defined in claim 1 involved an inventive step.

The board is of the opinion that these amendments do not to change the non-technical nature of the underlying problem nor do they provide any further technical effect. These newly introduced features represent further non-technical business constraints of the underlying administrative/business method. They are handed over to the skilled person, who implements them in a straightforward manner without any difficulty. A word should be said here about I.D.4.5 in the ‘White Book’, ..." in David Rogers, "Patents: Inventive step (alternative formulation of problem) and ‘old’ closest prior art: whether to admit an auxiliary request filed at the end of the oral proceedings", Journal of Intellectual Property Law & Practice (2007) 2(4): 210-211 doi: 10.1093/jiplp/jpm021 receiving a request for creation of an action item, the action item concerning proposed future action of a user; As to the appellant's argument in this regard, the board notes that the automatic determination of the "identification" of appointments, communications or planned travel are inherent side effects of the computer implementation and automation of the process. This automation is not considered as a further special technical effect that may establish inventive step. It is a foreseeable effect of the computer implementation of the underlying business constraint. This business constraint is clearly not of a technical nature and falls within the normal realm of a business person, who has no technical knowledge. Contrary to the appellant's doubts, the board does not consider the possible technical knowledge of a notional business person to be relevant for the present case, because the technical parts are notorious or obvious to the technically skilled person.

receiving (310) a request for creation of an action item (300), the action item (300) comprising a record of proposed future action; wherein the request for creating of the action item (300) is a request to create the action item (300) based on stored content (301) and wherein a reminder of the action item provides access to the stored content (301), wherein the stored content (301) is one of: a video; an audio file; a word-processor document; an electronic book; or an image; The board is of the opinion that, contrary to the appellant's assertion, the newly added features taken from the description, paragraph [0137], indeed constitute a "fresh case".