EP 3 182 283 A1 relates to the development – including the training – of an analytical model (e.g. a machine learning model) and the deployment of the trained analytical model on a “compute engine” so as to process live incoming data.
Brief outline of the case
The ED found that the independent claims of the MR lacked IS in view of CGK evidenced by D5.
The board considered the ED’s reasoning to be insufficient within the meaning of R 111(2) EPC as regards what the alleged CGK is that is being relied upon.
Since the decision was not sufficiently reasoned within the meaning of R 111(2), the ED committed a SPV.
The case was remitted to the ED for further prosecution.
We will concentrate in this blog to what is representative of CGK.
The board’s decision
As far as the SPV is concerned, the board clearly saw two major aspects.
Identification of the technical and non-technical features
The board expressed its views in Point 2 of the catchword:
“Underlining words in the text of a claim to identify what is considered “technical” is normally not sufficient to clearly identify the technical and non-technical features of the claimed subject-matter”.
CPA=D5 used by the ED
As far as the CPA is concerned, the ED took D5=Grid computing: Making the global infrastructure a reality, Wiley, 2003, ISBN: 978-0-470-85319-1.as CPA.
The ED did not explain why the skilled person would have chosen grid computing, the topic of book D5, as the IT infrastructure for the implementation.
D5 as common general knowledge
For the ED, D5 was representative of CGK.
The board agreed with the applicant that in the present case a priori each of the “chapters” of D5 represent a separate piece of prior art, as they appear to be self-contained papers which do not build on each other, unlike chapters of a textbook.
Definitions given in one of these papers do not necessarily apply to the others.
D5 rather resembles a conference proceedings volume including a collection of separate papers related to a common topic. The mere fact that the papers are published in the same book, which has a single ISBN, does not imply that the whole content of such a book forms a single piece of prior art.
The board noted that, not everything that is written in a book or even a textbook was necessarily CGK at the time of its publication. It is true that information often appears in a textbook because it was CGK when the book was drafted.
This does not mean that any information contained in a textbook must have been CGK before the textbook was written, nor even that it must have become CGK with the publication of the textbook.
For instance, a textbook may comprise a section in which the author presents a particular software that has been developed in their research group. The details of this software disclosed in the book will not necessarily have been “CGK” beforehand, nor will they become CGK merely due to the publication of the textbook.
On the other hand, a statement in the background section of a scientific paper explaining that something was a common measure to achieve a particular effect may, depending on circumstances, be considered to establish that this measure was CGK, even though the cited evidence is not a textbook. This may also be case if that same measure is used for the same purpose in several papers by different authors.
For the board, the deciding body will judge whether the cited evidence establishes that the teaching in question was CGK by applying the principle of free evaluation of evidence on a case-by-case basis, as is generally the case for evaluation of evidence in proceedings before the EPO, cf. see G 2/21, Reasons 27 et seq. This means that while it may be relevant whether the cited evidence is a “book” or a “textbook”, this fact cannot be on its own decisive, as there cannot be firm rules according which certain type of evidence are, or are not, convincing, cf. G 2/21, Reasons 34.
The ED referred in its decision to the Guidelines G-VII, 3.1, in which CGK of the skilled person is defined.
The board concentrated on the following sentence: “This means that the information in such a publication must have already become part of common general knowledge some time before the date of publication“
The board noted that the considerations expressed in defining what represents CGK, are consistent with those made in the board of appeal decision cited in the Guidelines, namely T 766/91, which only describe what is “normally” accepted and what is “usually” the case.
The board also noted, in accordance with Art 20(2) RPBA, that the Guidelines have lost this nuance when saying “must” in the corresponding passage.
The board noted in Point 3 of the Catchword that pertinent passage of the Guidelines, G-VII, 3.1, needs nuance.
Comments
By referring to Art 20(2) RPBA, the board implicitly considered that the Guidelines should be amended.
I can be agreed that not every book is representing CGK.
It is manifest that that D5 considered by the ED as representing CGK, is actually not representing CGK. The board is correct in view of the fact that the “book” is a collection of different papers or chapters. Each of the “chapters” represent a separate piece of prior art, as they appear to be self-contained papers which do not build on each other, unlike chapters of a textbook.
D5 rather belongs to the category “specialized journals”, cf. T 1997/11 or “scientific papers”, cf. T 1651/13, which both do not represent CGK.
By declaring D5 as CPA, the ED actually created a kind of mosaic of pieces of prior art as CPA. According to the Guidelines G-VII, 6, “it is permissible to combine the disclosure of one or more documents, parts of documents or other pieces of prior art with the closest prior art”. This sentence implies that there can only be one piece of prior art to held to be the CPA and not a mosaic.
In T 1117/14, Reasons 3, 2d paragraph, a declaration by a specialist was accepted, in which he explained that he had developed a new method for producing specific ceramic bodies.
The board accepted that the method had been published in the scientific (see D13) as well as in the patent literature (see D11) and formed part of the CGK in the field because – at the time of filing – the method had not yet made its way into textbooks or monographs, those skilled in the art relying on articles and patent documents with respect to such production methods.
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