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

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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; 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.

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". receiving (310) a request for creation of an action item (300), the action item (300) comprising a record of proposed future action; 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.In relation with the business constraints the appellant argued that the following two features a) and b) defined in claim 1 were technical and should not be part of the formulation of the administrative business scheme: receiving a request for creation of an action item, the action item concerning proposed future action of a user; 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 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. triggering (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,

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: 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. Therefore, the board concludes that the amendments of claim 1 of the third auxiliary request represent a "fresh case". triggering (1102) the 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, I. The appeal is against the decision of the examining division to refuse European patent application No. 12 174 629 on the grounds that the subject-matter defined in the independent claims of the then main request and the then first and second auxiliary requests did not involve an inventive step (Article 52(1) EPC in combination with Article 56 EPC).The Case Law of the Boards of Appeal of the European Patent Office is a book, published by the European Patent Office (EPO), which summarizes the body of case law on the European Patent Convention (EPC) developed by the Boards of Appeal of the EPO since the EPC entered into force at the end of the 1970s. Its tenth edition was published in 2022. [1] The book is also known as the "White Book", [2] and it was reported to be in 2012 the best-selling publication of the EPO. [3] The White Book is published every three to four years. In the meantime, a special edition of the EPO Official Journal is issued each year summarizing the most recent case law of the boards of appeal. [4] The subject-matter of claim 1 comprised a combination of technical and non-technical features. However, it involved an inventive step because 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.

Therefore, in view of the above the board decides not to admit the third auxiliary request into the appeal procedure (Article 12(4) RPBA 2007). 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). 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 business person does not provide any technical input but only the above cited business method including only non-technical, administrative constraints and that

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Josefsson, Carl (11 August 2022). "The tenth edition of the "Case Law of the Boards of Appeal of the EPO" is now available online". www.epo.org. Haar: European Patent Office . Retrieved 12 August 2022.