T 0641/00 - Mix of technical an non-technical features / "Comvik" - #5

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The "Comvik" decision (T 641/00) is concerned with the question of how to deal with claims containing a mix of technical and non-technical features.

The underlying invention in this opposition-appeal case related to the control of subscriber identities in a GSM mobile phone system, wherein at least two subscriber identities are selectively usable under one subscriber identity module (SIM), and wherein the selective activation of the subscriber identity is used for distributing the costs for service and private calls or among different users.

The Technical Board had to decide whether the claimed invention was inventive.

The Board firstly noted that it is generally legitimate to have a mix of technical and non-technical features within one claim, even if the technical was not the dominating part of the invention (point 4 of the reasons).

The Board also recalled that the problem-solution-approach is based on the technical character of the invention, e.g., the problem solved by the invention must be a technical one (point 5 of the reasons). The Board cited earlier case law (T 158/97, T 72/95, T 157/97, T 176/97, T 27/97) and confirmed that the approach taken in these decisions to ignore non-technical features when assessing inventive step was entirely consistent with the general requirement under the EPC that an invention must have technical character. This led to the conclusion that an invention in the sense of Article 52 EPC can only be made up of those features which contribute to said technical character (point 6 of the reasons).

Although it was accepted that the formulation of the problem should normally not contain any pointer to its solution provided by the claim, the Board found that this principle only applies to the technical features of the claim. They stated:

"Merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular 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 a constraint that has to be met."

Such non-technical constraints which can be used in the formulation of the technical problem are referred to as a "requirement specification" in the current Guidelines (2018) G-VII, 5.4.2.1.

In the specific case, the Board found that the distinguishing features requiring that "at least two identities are selectively usable", and "the selective activation being used for distributing the costs for service and private calls or among different users" were no technical features, as they merely defined a financial or administrative concept. These features were thus to be ignored when assessing inventive step.

As a result, the claim was considered lacking inventive step and the proprietor's appeal was dismissed.

Remark: The manner in which the EPO examines claims containing a mix of technical and non-technical features is described in Chapter G-VII, 5.4 of the current Guidelines (2018), including four illustrative examples.

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Headnote:

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The full text of the decision can be found here.