The application relates to the configuration of malfunction prediction for components and units of technical entities.
Brief outline of the case
The ED refused the application for lack of IS and the applicant appealed.
Prior to the refusal, the EPO published a non-search report under R 33.3 and 39PCT.
The board remitted the case to the ED for further prosecution including a search.
The ED’s point of view
The ED held that in claim 1 of all requests the technical features were notorious, and the non-technical features did not provide a technical effect. No prior art was cited – neither in the search report nor in the decision under appeal.
The division held that calculating the probability of a malfunction in a mechanical or electrical component constituted a non-technical modelling and forecasting process, which was an abstract intellectual activity. The calculated probability was deemed a piece of information, which lacked a technical effect in itself. Any effect depended on human decision-making.
The ED also considered that the choice of parameters, components and malfunctions in claim 1 of the then AR4 was not based on technical considerations. Therefore, these limitations could not confer technical character to the mathematical probability calculations. This led to the conclusion that claim 1 lacked an IS over notorious processing means.
The applicant’s point of view
The applicant requested that the decision under appeal be set aside and that a patent be granted on the basis of one of four requests, essentially corresponding to four of the refused AR.
Following a communication of the board annexed to the summons, the applicant withdrew all previous requests and limited its sole request to the malfunctioning of a gas turbine, a transformer or a diesel engine.
The board’s decision
The board admitted the new request into the proceedings because it was filed in response to IS and clarity objections raised for the first time by the board. In the board’s judgement, these were cogent reasons that justify the exceptional circumstances required by Art 13(2) RPBA.
AR4 considered by the ED essentially corresponds to the AR2 filed with the grounds of appeal. In its preliminary opinion, the board essentially agreed with the ED that not all of the parameters listed in claim 1 were suitable to predict the claimed malfunctions. Therefore, the board tended to consider that the effect of predicting a malfunction, even if considered technical, was not credibly achieved.
After further limitations in claim 1 to specify how the conditional probability distribution is obtained and deletion of some of the previously claimed malfunctions and parameters, the board arrived at a different conclusion.
Beyond the server-based processing, the method in claim 1 comprises a number of technical features.
Firstly, the method involves measuring specific parameters, e.g. temperature and lubricant condition in the bearings of a gas turbine, which is inherently technical, cf. G 1/19, Reasons 85, 99. Furthermore, these measurements are used to predict specific malfunctions in particular components, e.g. a bearing defect in a gas turbine or an insulation defect in a transformer.
The board considered that the choice of parameters for predicting the specified malfunctions reflects technical considerations about the functioning of the claimed mechanical or electrical components, e.g. gas turbine, transformer, and diesel engine
On the other hand, the mathematical calculations, when considered in isolation, are non-technical. These computations generate numerical data, i.e. the conditional probability of a future malfunction in an electrical or mechanical component.
The key question was thus whether these calculations contribute to the technical character of the invention, i.e. whether they contribute to the solution of a technical problem by providing a technical effect.
If they do, they must be examined for obviousness. If not, they can be incorporated into the formulation of the technical problem, cf. T 641/00 – Comvik.
G 1/19 identifies two main situations in which numerical calculations contribute to the technical character of the invention.
- First, when the calculated numerical data provide a technical effect, which is at least implied in the claim. This is the case when their potential use is limited to technical purposes, cf. G 1/19, Reasons 124 and 128.
- Second, when the calculated numerical data represent an indirect measurement of the physical state or property of a specific physical entity, cf. G 1/19, point 99, and T 3226/19, Reasons 2.5 to 2.7. In this case, technicality is independent of the data’s use.
The board considered that the first situation does not apply here since the calculated conditional probability might be used for non-technical purposes. For example, it can be used to assess financial loss or determine insurance premiums due to potential component downtime.
However, the board saw the conditional probability obtained by the method of claim 1 as an indirect measurement of the physical state, i.e. a particular failure, of a specific physical entity, i.e. a specific mechanical or electrical component. This conclusion is based on the following observations:
- Firstly, the claimed method involves taking a measurement of a specific physical entity at a first point in time and estimating the state of this physical entity, i.e. its probability of failure, at another point in time. This is similar to the example in G 1/19, point 99, where the measurement of a specific physical entity at a specific location is obtained from measurements of another physical entity and/or measurements at another location.
- Secondly, the estimate of the component’s future state is based on a mathematical framework that credibly reflects reality. The board considered this to be an essential factor in deciding whether the calculated numerical data can be seen as an indirect measurement. Arbitrary or speculative models and algorithms that are not grounded in reality are not capable of predicting the physical state or property of a real physical entity. Such abstract calculations cannot be regarded as (indirect) measurements.
In claim 1, however, the probability is calculated from the transition matrix T, the conditional probability distribution P(M|a), and the current measurement of the parameter a. The mathematical framework in the claim is rooted in stochastic modelling and simulation, specifically Markov chains, which are recognised for credibly capturing and predicting the transition dynamics of systems based on empirical data.
The fact that the result is a probability does not detract from its ability to provide a technically meaningful estimate of the component’s state. Making accurate predictions in the real world, given all its uncertainties, is rarely possible.
Lastly, there is a credible causal link between the measured parameters and the predicted malfunctions. For instance, a bearing defect in a gas turbine is likely to generate more heat, degrade lubricant, and cause vibrations in the shaft and/or casing. Therefore, temperature, lubricant condition, and shaft or casing vibrations are suitable parameters for predicting a bearing defect.
In summary, the board was satisfied that the calculated probability provides a credible estimate of the future physical state of a specific physical entity and, therefore, can be seen as an indirect measurement.
For these reasons, the board judged that the mathematical steps in claim 1 are part of a technical measurement method. Consequently, all features in the claim contribute to the technical character of the invention and must be examined for obviousness.
Notoriously known technical means are not an appropriate starting point for the examination. Hence, the board deemed a search necessary. This was a special reason for remitting the case under Art 11 RPBA.
Comments
The board first essentially agreed with the ED that not all of the parameters listed in claim 1 of AR4 were suitable to predict the claimed malfunctions, but came to a different conclusion: the effect of predicting a malfunction, even if considered technical, was not credibly achieved. One notes that the word “plausibility” was carefully avoided by the board.
The board made clear that arbitrary or speculative models and algorithms that are not grounded in reality are not capable of predicting the physical state or property of a real physical entity.
It is interesting to note that neither the applicant nor the ED wanted to stay the procedure in view of the pending G 1/19.
By dealing in its claim with technical matters, specific technical parameters, e.g. temperature, allowing to predict the malfunction of a specific technical items, i.e. the failure of a gas turbine, a transformer or a diesel engine, the applicant opened the door to the application of G 1/19.
The present decision shows once more, the usefulness of G 1/19. A direct link with a the tangible technical world is sufficient to consider the result of a potentially abstract method as being technical.
What is interesting is that the board added that the search results must be documented and made accessible in the public file, and referred to e.g. T 0929/18, Reasons 3.13.
https://www.epo.org/en/boards-of-appeal/decisions/t200182eu1
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