tag:blogger.com,1999:blog-5574479.post3730532751095039701..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: T 784/06 - "technical effect" reaches bioinformaticsVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-5574479.post-87410650451989555802010-11-02T08:08:02.077+00:002010-11-02T08:08:02.077+00:00Mathematical methods are only excluded as such (A ...Mathematical methods are only excluded as such (A 52(3). If they are part of something else, it has to be assessed whther they contribute to the technical character of the invention (whatever this may be).<br /><br />For long, mathematical methods have been patented when applied eg to cryptography or signal processing (noise reduction or computer tomography).<br /><br />I cannot see why in the present case this should be different. A mathematical treatment of the data is in principle patentable if it leads to something having a technical character (whatever this may be).<br /><br />Insufficient disclosure of the method's steps is something that falls under A 100(b) EPC and has in my eyes nothing to do with technicality. If the method produces merely an educated guess or not, is also that has nothing to do with it being sufficiently disclosed.<br /><br />I see this decision as mixing two different aspects of patentability which should be kept clearly separated.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-44053601312127487472010-10-30T23:34:48.787+01:002010-10-30T23:34:48.787+01:00As code, it's not so bad - I assume COND_NEG_P...As code, it's not so bad - I assume COND_NEG_PROB is a macro rather than a function - but we don't really have enough detail of what the actual calculations are to make a decision on obviousness.<br /><br />Compare <a href="http://www.bailii.org/ew/cases/EWHC/Ch/2010/1829.html" rel="nofollow">SAS v World Programming</a>, para 81, which is a _dreadful_ bit of code. There are so many things wrong with it, but the worst bit is highlighted in orange - the section with the handwritten amendment will never be executed (which is probably why there's a handwritten amendment). If this is the sort of material that people go to court over...Tevildohttps://www.blogger.com/profile/04769687740240529112noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-89554626746645398822010-10-30T18:39:29.348+01:002010-10-30T18:39:29.348+01:00"The IPKat, who also could not make much sens..."The IPKat, who also could not make much sense of the invention as disclosed in the specification, wonders whether a different outcome could have been obtained if it had been more fully described or simply better explained."<br /><br />Art. 52(1) EPC is a requirement on the scope of the subject-matter claimed, not on how the subject-matter within this scope is disclosed in the application. So providing more details in the description can normally not overcome an objection under Art. 52(1) EPC. (I know of one exception: it may help if the description mentions the technical effect of a feature or a combination of features. But mentioning technical effects is not the same as providing implementation details.)<br /><br />So I fully agree that the reasoning of Board 3.3.08 is unusual. Maybe what the Board is trying to say is that even the description does not disclose an embodiment in which the mathematical steps contribute to a technical effect?<br /><br />Regarding claim 1 of the main request, clearly step A is technical ("reacting the material"). The value produced in step A is then mathematically manipulated (in a rather undefined way) to determine the genotype.<br /><br />I wonder whether better defined mathematical manipulations could have resulted in a technical contribution, since all they do is provide a cognitive interpretation of the value produced in step A.<br /><br />However, maybe it could be said that the mathematical processing may in certain cases add some technical information in the sense that the reaction value itself does not uniquely determine the genotype, but the mathematical processing provides some kind of educated guess of the correct genotype based on technical (i.e. biological) principles. In that case, I suppose the claim should somehow reflect the application of these technical/biological principles.<br /><br />But is an educated guess a technical result? For example, given a set of biological measurements of a patient, does the diagnosis of a particular condition based on these measurements achieve a technical result? Or is it merely a (non-technical) mental act? Does G 1/04, r. 5.2 not say the latter?Czentovicnoreply@blogger.com