We previously reported three EPO Technical Board of Appeal (TBA) Decisions T1463/11, T1658/15, and T0144/11 which related to the assessment of inventive step for inventions covering a mix of technical and non-technical features. In the first two decisions, the EPO introduced the concept of a "notional business person". The third decision provided additional guidance on the use of its meaning.
We now write to report a follow up on this subject and discuss the further development of the notional business person. In a recent Decision, T 0344/19, TBA 3.4.03 introduced "the notional pedagogue", as a generalisation of the concept developed in the previous Decisions. For ease of reference, a pedagogue is defined as a teacher, particularly a pedantic one!
The Notional Business Person
The introduction of the notional business person saw a slight change in how the objective technical problem is formed when assessing inventive step by the well-known problem and solution approach – and particularly for claims defining a business method by way of a mix of technical and non-technical features.
In the three cases initially mentioned above, the TBA introduced the concept of the notional business person to help separate business considerations from technical considerations. The business person might formulate business requirements, but would not include any technical matter. This approach was employed to try and ensure that, in line with the COMVIK approach, all the technical matter, including known or even notorious matter, could contribute to inventive step and was therefore considered for obviousness [T 0288/19, Reasons 3.4.1].
The main point of note with the introduction of the so called notional business person was the clarification that a (business) person requesting someone to design a system for them, could not restrict, which may reasonably be extended to not direct, the technical choices of the technical designer.
In those cases, it was determined that the implementation of the constraints or directions that were set by the notional business person were against business prejudice at the priority date and so contributed to an inventive step.
The Notional Pedagogue
Turning now to the recent case T 0344/19, the invention was defined by claims relating to an interactive, computer-implemented training method and system. The training method aimed to prepare a trainee to respond appropriately in various situations involving other persons' reactions. An example was given as a doctor's discussion with a patient about their condition and possible cures Reasons. The trainee's response is recorded and analysed to give a score indicative of how well they handled the situation. The application described that the recording may include "speech disfluencies" such as "umm, ahh, er" etc and the invention looks to identify these and remove them from the analysis and scoring of the trainee's response.
In the first instance, the examination division refused the application on the ground that the claims lacked inventive step as a mere implementation of a speech recognition program on a well-known computer [Reasons, 3.2].
During oral proceedings, the applicant introduced the idea of the "notional psychologist" in their response to the inventive step objections. The TBA did not object to this notion and responded that it would be analogous to the notional business person, but more appropriately named the notional pedagogue because they are specialists in training.
The applicant submitted that the notional pedagogue would provide the skilled person with instruction to discard disfluencies, and beyond that it was up to skilled technical person to decide how to technically implement that test. The applicant further alleged that the use of templates of lists of key elements of speech which could be compared with the recorded speech of the trainee removed the need for detailed speech analysis. The applicant said that this would arrive at the meaning of the uttered speech, instead of recognising the words and sounds themselves and thus reduced the processing power required. The TBA however was not convinced as set out in paragraph 3.6 of the Decision.
The TBA was not persuaded that a person skilled in the art would be the person choosing to use the lists of templates because that would be provided to them by the notional pedagogue. They stated that it would be the notional pedagogue who would design the training method to be implemented and they would provide the list of templates including the definition of what a disfluency is because that is their expertise [Reasons 3.4].
The applicant argued that the technical implementation of the requirements of the notional pedagogue would not be obvious because they provide a technical effect [Reasons 3.5]. However, even if this were true, the TBA noted that the implementation of these constraints was not the decision of the person skilled in the art as they are constraints initially set by the notional pedagogue [reasons 3.6.2].
Comments
While this particular TBA decision did not result in the grant of the application or remittal back to the examining division, it does provide an example of how the original decisions introduced the notional business person can be used in other fields of technology. The introduction of the notional business person was to separate business considerations and technical considerations; and in the present case the notional pedagogue was introduced to separate training considerations from technical considerations.
It remains to be seen what other notional experts will be introduced for other areas of technology which include a mix of technical and non-technical features. Could there be a notional graphic designer for cases that would be considered to be a presentation of information or perhaps a notional doctor who instructs a person skilled in the art to design a software system related to treatment and therapy?