Case 3: Touch Clarity Limited BL O/198/06
This application concerns a system which takes an action based on an assessment of a number of possible actions. The system can be one of a wide range of possibilities - highlighted examples are a greetings card website where the customer is presented with a number of choices based on previous selections, and control of a robot vacuum cleaner. Independent claims 1 and 15 claim the system and method in full generality; independent claims 20 and 32 are the system and method restricted to a robotic operating system.
Applying the four-step test from Macrossan/Aerotel
1. Construe the Claim:
The system claims 1 and 20 are somewhat obscure as they contain a mixture of system features and method features. However, they are clearly intended to correspond to the method claims 15 and 32 which are clearer. The system claimed is as described above.
The claimed invention covers previously known monitoring and store means, together with a known assessing means used to run a new algorithm.
2. Identify the actual contribution:
The difference between the prior art and claims 1 and 15 is that the known assessing means uses the new algorithm to determine the best next action for the "operating system” (which encompasses a number of possibilities as noted above). Therefore the contribution in these claims is a better way of determining what next action would be the best for this "operating system” to take. Alternatively, the contribution can be seen as a computer program which better determines the next best action.
Claims 20 and 32 are further restricted by the requirement that the operating system is a "robotic operating system". The contribution in these claims is therefore a better way of determining what next action a robot should perform. Again, alternatively, it can be seen as a computer program which better determines a robot’s next action.
3. Ask whether it falls solely within the excluded field:
For claims 1 and 15, there is nothing beyond the determination of a "next action” as the operating system is unrestricted. This determination is solely mathematical method and thus falls squarely within that exclusion. The determination as implemented on a computer program also falls squarely within that exclusion. Therefore the contribution in these claims lies wholly within excluded fields.
For claims 20 and 32 there is the additional limitation of the next action being performed by a robot. The controlling of a robot lies outside the scope of mathematical method or computer program and therefore the contribution in these claims is not solely within excluded fields.
4. Check whether the actual or alleged contribution is actually technical in nature:
For claims 1 and 15, the previous step has already determined that the claimed invention is excluded; this check does not seem to add anything.
In claims 20 and 32, there is a contribution which is technical in nature in that we have a robot being controlled.
Conclusion
Claims 1 and 15 are excluded from patentability by section 1(2) while claims 20 and 32 are not so excluded.
This is the same conclusion as reached by the original hearing officer, and follows the same basic reasoning as used by the hearing officer re the CFPH test (in a slightly different order), but without the need to consider the range of arguments raised by the agent attacking it from different angles based on other case law.
