Decision in T 336/07

is therefore admissible.

1. Before considering the present case in detail, the Board

   wishes to review briefly the methodology applied by the

   Boards of Appeal of the EPO in dealing with “mixed”

   inventions, which are inventions having both technical

   and non-technical features. Technicality is a

   fundamental requirement of a patentable invention

   implicit in Article 52(1) EPC, and the matter listed in

   Article 52(2) EPC is generally understood as failing to

   meet this implicit requirement, see the Case Law of the

   Boards of Appeal of the EPO, 5th edition, 2006 (“CLBA”

   hereinafter), I.A.1 and the decisions cited therein. It

   is also generally recognized, that an invention may

   legitimately be so “mixed”, as long as it possesses

   technical character as a whole, cf. CLBA, I.D.8.1.1, see

   in particular T 641/00 (OJ EPO, 2003, 352).

2. The inventive step requirement of Articles 52(1) and 56

   EPC is assessed using the well-established

   problem-solution approach, which is fundamentally

   technical in nature. When applied to “mixed” inventions

   as above, such an approach must necessarily

   differentiate between an invention’s technical and

   non-technical features, cf. CLBA, I.D.8.1.2. In the

   approach adopted by T 641/00, head-note I, an “invention

   consisting of a mixture of technical and non-technical

   features and having technical character as a whole is to

   be assessed with respect to the requirement of inventive

   step by taking account of all those features which

   contribute to said technical character whereas features

   making no such contribution cannot support the presence

   of inventive step”. This principle is recognized also by

   the present Board.

3. The Board adds that the principle as expressed in

   T 641/00 may also reformulated as follows: an invention

   which as a whole falls outside the exclusion zone of

   Article 52(2) EPC (i.e. is technical in character)

   cannot rely on excluded subject matter alone, even if

   novel and non-obvious (in the colloquial sense of the

   word), for it to be considered to meet the requirement

   of inventive step. The Board is of the firm belief, that

   it cannot have been the legislator’s purpose and intent

   on the one hand to exclude from patent protection such

   subject matter, while on the other hand awarding

   protection to a technical implementation thereof, where

   the only identifiable contribution of the claimed

   technical implementation to the state of the art is the

   excluded subject-matter itself. It is noted that here

   the term “contribution” encompasses both means (i.e.

   tangible features of the implementation) and effects

   resulting from the implementation. In that case

   Article 52(2) EPC would be reduced to a mere requirement

   as to form, rather than of substance, and thus easily

   circumvented.

4. It follows from the above that the mere fact that

   excluded subject-matter is technically implemented

   cannot per se form the basis for inventive step. The

   Board concludes that inventive step can be based only on

   the particular manner of technical implementation. To

   this end it is therefore necessary to ask *how the per

   se excluded subject-matter (e.g. a game or business

   method) is implemented*. In the context of the

   problem-solution approach this can be rephrased as a

   fictional technical problem in which the per se excluded

   subject-matter appears as an aim to be achieved, cf.

   T 641/00 head-note II.

5. A consideration of the particular manner of

   implementation – from the point of view of the relevant

   skilled person under Article 56 EPC, who may be

   identified on the basis of the invention’s technical

   character – must focus on any further technical

   advantages or effects associated with the specific

   features of implementation over and above the effects

   and advantages inherent in the excluded subject-matter.

   The latter are at best to be regarded as incidental to

   that implementation. The explicit requirement of a

   “further” technical effect has been first formulated for

   computer-related inventions in decisions T 1173/97 (OJ

   1999, 609), see head-note and point 9.4 of the reasons,

   and see also T 935/97, but the same principle holds also

   for other categories of excluded subject-matter which

   may inherently possess some “technical” effect. In fact,

   inherent and arguably technical effects may be easily

   identified for practically all excluded subject-matter,

   for example such a simple one as time savings due to a

   more efficient order or scheme of actions. This is why

   it needs to be stressed that the “further” technical

   effect can not be the same one which is inherent in the

   excluded subject-matter itself.

6. This is analogous to the approach of T 928/03, which

   considers the actual contribution of each feature to the

   technical character by, for each feature, stripping away

   its non-technical content leaving its technical residue

   so to speak. Thus, see reasons 3.2, “the extent to which

   the characterizing features contribute to the technical

   character … in relation to the effects achieved by

   those features” must be determined.

1. The present invention relates to a method of operating

   an electronic video poker machine in a sequence of

   display, detection and determination steps. In

   particular, two rows of cards or hands are displayed on

   a display screen, one face-up, the other face-down.

   Player selection of cards to be held (kept) from the

   face-up hand is detected, and the detected cards, if

   any, are then duplicated on the display into the other

   hands; the display of any remaining (non-selected)

   cards is terminated. Each hand is then completed by

   dealing new cards, using different decks for different

   hands, and displaying these. The resultant hands are

   ranked and a payout determined.

   The central feature is that of duplication. This

   requires a player to make only a single selection for

   multiple hands, from the face-up hand, any selected

   cards being copied into the other hands. As a result

   the player can play several hands quicker.

2. Following the approach of T 258/03, OJ EPO 2004, 575,

   see points 4.1 to 4.4 of the reasons, the use of an

   electronic video poker machine as technical means, in a

   number of technical steps pertaining to its operation,

   in terms of display, detection and determination,

   bestows a clear technical character on the claimed

   method.

3. However, the claim also includes non-technical aspects,

   in that the various steps of operation of the video

   poker machine are carried out in accordance with rules

   of playing a video poker game, where rules for playing

   games are explicitly mentioned in Article 52(2)© EPC

   as excluded from patentability.

   1. The Board reads “game” in its general sense as

      meaning “a diversion of the nature of a

      contest, played according to rules, and

      displaying in the result the superiority either

      in skill, strength, or good fortune of the

      winner or winners” (from the Oxford English

      Dictionary or OED). A game in the usual sense

      of the word is characterized by a goal or goals

      (either final or intermediate), and its rules

      of play which govern the conduct and actions of

      the players during game play. Here, “rule” in

      the context of a game, is read as “a regulation

      determining the methods or course of a game”

      (OED). The set of game rules thus determines

      how game play evolves from beginning to end in

      response to player actions and decisions. It

      specifies initial setup; how a player may or

      must act as the game unfolds from one game

      situation to another; and finally the goals to

      be achieved to conclude game play. A set of

      rules thus defines a regulatory framework

      agreed between players and concerning conduct,

      conventions and conditions that are meaningful

      only in a gaming context. It is important to

      note that it is normally so perceived by the

      players involved, and as serving the explicit

      purpose of playing a game. As such an agreed

      framework it is a purely abstract, mental

      construct, though the method and means for

      carrying out game play in accordance with such

      a set may well be technical in nature.

   2. Such an agreed framework is readily

      recognizable in claim 1. For example, steps a),

      b), and d) to h) relate to the individual

      stages of game play of initial deal, holding

      cards, completion, ranking and payout as

      determined by the rules of play. Their

      correspondence with the scheme of play of

      classical draw poker games – which (see for

      example in D2, see column 1, lines 22 to 24)

      also involve initial deal, hold, completion and

      ranking and payout – is evident. In fact the

      stages of game play encompassed by steps a), b),

      d), f) are identical to those of a classic draw

      poker game for the first hand, those of e) and

      7. to the endplay of classical draw poker for

      the second hand, all followed by a standard

      ranking as in step h).

   3. What sets the method of claim 1 apart is

      duplication step c). By requiring cards held

      from the first hand to be duplicated into a

      second hand, this step in effect prescribes that

      *the player use the same held cards for that

      second hand* (which is subsequently played

      according to classical draw poker). The two

      hands are thus linked by a single initial deal

      of face-up cards that are shared or common

      between them. This notion of shared or common

      cards pertains to how further hands are

      established or initiated, and thus represents an

      agreed convention in game play. In the Board’s

      opinion it is thus to be considered as a game

      rule.

   4. This is best demonstrated by a comparison with

      game play of two separate hands of classical

      draw poker. There the game rules would require

      that a separate initial deal be made for the

      second hand, and that the player then hold cards

      from these for the second hand. In game play

      following the method of claim 1 these two stages

      in the playing of the second hand are dispensed

      with and replaced by duplicating the results

      from the first hand initial deal. From the

      player’s viewpoint the way he plays the second

      hand has however changed as he no longer needs

      to separately “hold” cards for that hand as

      would have been required by the classical game

      rules; his choice of cards for the first hand

      now serves that purpose. This change pertains

      to the actions required of the player during

      game play by virtue of the game rules, and thus

      represents a change in the game rules

      themselves. The Board stresses that this change

      is meaningful to the player only within the

      agreed framework of game play, and will be

      perceived by the player as part of that

      framework.

   5. The game rule underlying duplication step c) and

      based on the notion of shared cards can be

      formulated as: “the same cards held for the

      first hand are used as held cards of a second

      hand”. The set of game rules contained within

      the steps of claim 1 may then be drawn up to

      read as follows:

      (i) a first hand of face-up cards is dealt to

      the player from a first deck (step a));

      (ii) the player selects (or holds) cards from

      the first hand discarding the non-held cards

      (step b));

      (iii) the cards held in step (ii) are also used

      as held cards for a second hand (step ©);

      (iv) the first hand is completed by dealing

      further cards from the remaining cards of the

      first deck (step (d));

      (v) the second hand is completed by dealing

      further cards from a second separate deck from

      which the initial face-up cards are removed

      (step (e));

      (vi) the completed hands are ranked (steps f)

      and g));

      (vii) a payout is determined on the basis of

      both rankings (step h)).

   6. This set of rules defines a new variant of draw

      poker, which allows two hands to be played from

      a single deal. It is distinct from playing two

      draw poker hands as in D2 as discussed

      previously. It also differs from multi-player

      draw poker games such as Texas Hold’em, which,

      though showing a form of common or community

      cards, use these for the hands of different

      players.

   7. Rules (iii) and (v) (removing the initial cards

      from the second deck) make this game

      particularly suitable for play as a video poker

      machine. However, it is by no means limited

      thereto, and is easily conceivable as a

      classical table card game. Page 1, lines 15 to

      16, of the description as filed, on page 1 in

      fact suggests as much, albeit in a more general

      context (“invention … features … may apply

      to casino table games”). Rule (v) in particular

      could be carried out in a table card game by

      either removing the initial face up cards from

      the second deck before completing or discarding

      them as they are dealt during completion of the

      second hand.

      The fact that steps (a) to (h) of claim 1 can be

      reformulated as rules that are playable as a

      classical table card game supports the Board in

      its conviction that they concern game rules.

      However, this fact is not decisive. The Board

      recognizes that some games may only be played

      sensibly on such a machine, just as traditional

      poker games were conceived originally for

      conventional paper-based decks of cards of

      various suits. What is crucial in this regard is

      determining which parts of the claim reflect the

      agreed framework of actions as part of game play

      and are thus meaningful only in that context.

4. In conclusion, the Board finds that claim 1 includes

   both technical and non-technical features and is thus of

   “mixed” nature. The central duplication step © in

   particular, even if technical in execution, is seen to

   incorporate a game rule.

1. In that the method of claim 1 relates to the operation

   of a video poker machine as a (new) video poker game is

   played thereon and in accordance with its rules of play,

   the Board sees it as directed at the technical

   implementation of those rules. Following the principle

   of T 641/00 (see section 2.2 above) as reformulated in

   section 2.3, inventive step can however not be based on

   their mere technical implementation, but must rather

   reside in the particular manner of implementation. It is

   therefore necessary – see section 2.4 to 2.6 above –

   to consider more closely how the rules are implemented

   in the claimed method of operation. This question is to

   be considered from the point of view of the skilled

   person – here a gaming software engineer – who is

   given the task of implementing the above set of rules on

   an electronic video poker machine. That the general idea

   of implementing this game on such a machine is trivially

   obvious behoves no further comment, given the explicit,

   known purpose of such machines.

2. Rules (i), (ii), and (iv) to (vi) are implemented by

   assigning all those actions and operations not carried

   out by the player (and which in a casino table card game

   would be carried out by the dealer) to the machine for

   automatic execution using its basic features of

   interaction, namely display and input means, as well as

   implied processor. These are precisely those functions

   that the gaming software engineer would assign as a

   matter of course to the machine, if he were given the

   task to implement the game rules thereon. Thus the

   machine deals the face-up non-player cards, detects the

   cards held, completes the two hands, ranks the completed

   hands and determines payout. This corresponds to steps

   a), b), d), e), f), g) and h). The particular way in

   which the hands are displayed (in vertically arranged

   rows) is just one of a limited number of possibilities

   of displaying hands that are traditionally laid out in

   rows, and for this reason itself obvious.

   Steps a), b) and d) to h) are thus the obvious result of

   straightforward implementation of the set of game rules

   of section 3.3.2.

3. Rule (iii) is realized by the duplication of step c),

   which, as carried out on the machine is undoubtedly of

   technical nature. However, for the purpose of

   establishing the invention’s technical contribution the

   Board must differentiate between the underlying purely

   abstract, and thus non-technical notion of sharing as

   game rule, and its technical expression by duplication

   as in step c). This enables the Board to identify any

   effects inherent in sharing per se, and those further

   effects which result purely from its technical

   implementation by duplication. In reference to section

   2.5 above only the latter are of importance in the

   technical assessment of inventive step.

   1. At this juncture the Board notes that the

      application is concerned only with the general

      idea of duplication rather than any specific

      implementation, for which it provides no

      detail. In its deliberations the Board can thus

      consider only effects associated with

      duplication in this general context.

   2. As regards the underlying notion of sharing

      held cards between hands, this inherently

      minimizes the number of player selections to be

      made for first and further hands. The time

      required to play a hand is thus reduced,

      allowing more hands to be played per unit time.

      Applied to an electronic video poker machine it

      makes the machine more efficient in the sense

      that less user input is required and machine

      processing is reduced, allowing a “higher

      volume of play per unit time”. These effects

      and associated problems as identified by the

      Appellant, though undoubtedly technical in the

      present context, are inherent in sharing *as a

      game rule*. Even if these effects and problems

      acquire technical character when applied in a

      technical context, i.e. by duplication, they

      can nevertheless not be dissociated from

      sharing as a game rule. This view finds support

      in the fact that duplication without

      affecting the rules (without sharing) is nowhere

      disclosed in the application; hence it is not

      apparent from the application itself that these

      effects might be the result of duplication per

      se. Therefore, the board concludes that the

      technical effect of “higher volume of play per

      unit time” – even if recognized as a valid

      technical aim to be achieved – must be

      disregarded in the evaluation of inventive

      step, as it is attributable to the modified

      game rules (i.e. playing two separate hands

      with only one selection), and not to its

      technical execution by duplication.

   3. The effect of the duplication step *over and

      above* that associated with sharing is to

      present to the player the shared cards on a

      display screen in a more readable format, as has

      additionally been suggested by the Appellant.

      Without visual duplication, e.g. as the game

      would be played as a table card game, the player

      must mentally combine the cards in the further

      hands with the shared cards. Displaying the

      shared cards in each of the hands relieves the

      player of this mental task, enabling him to

      comprehend the game results for each hand

      quicker. Following the approach of T 049/04,

      see e.g. reasons 4.6.3, the Board accepts that

      such an improvement in readability, which

      relates to how “cognitive content” is

      presented, constitutes a technical contribution.

      The corresponding technical problem may then be

      formulated as improving readability.

   4. However, the claimed solution to this common

      problem merely reproduces in straightforward

      visual format what is necessarily already

      present at processing level (e.g. as input to

      the ranking step), as well as in the mind’s eye

      of the player when completing and ranking

      hands. Moreover, each hand and its ranking must

      ultimately be communicated to the player for

      verification, and simultaneous display provides

      the highest level of verifiability. For these

      reasons duplicating the cards in each hand and

      thus showing each hand in its entirety is an

      obvious measure. The Board concludes that the

      duplication step b) also follows in obvious

      manner from the implementation of the game rules

      set out under section 3.3.2.

   5. As regards further arguments concerning reduced

      processing, the Board finds that these are based

      on features of video poker machines and their

      random generator(s) which are not present in

      claim 1. Nor are these effects and features

      deducible by the skilled person from the

      originally filed application documents.

      Consequently, the Board must disregard such

      arguments in the assessment of inventive step.

   6. The fact that the present invention may actually

      have required some form of ingenuity – in the

      colloquial sense of the word – is not disputed

      by the Board. Such ingenuity however resides in

      a modification of the game rules, which is

      non-technical in nature by virtue of Article

      52(2)© EPC and, for this reason, cannot

      contribute to the “technical” inventive step

      required by Article 56 EPC. This fundamental

      deficiency cannot be remedied by the claimed

      invention’s commercial success. This factor may

      play a role as secondary indicia in cases of

      doubt where novel subject-matter rests squarely

      in the technical domain, as for example in

      T 1212/01. However, in the Board’s view, it is

      unsuitable for demonstrating inventive step

      where the contested finding of lack of inventive

      step is based solely on the exclusion under

      Article 52(2) EPC of subject-matter that may

      otherwise represent a genuine mental

      achievement. Thus, for example, a paperback

      novel is no more inventive in the sense of

      Article 56 EPC for being a bestseller.

4. In summary, the Board finds that claim 1 relates to the

   technical implementation of excluded matter in the form

   of game rules. Disregarding any effects and advantages

   inherent in the game rules themselves, the Board is

   unable to identify any further technical effects in the

   particular manner of technical implementation that might

   render it non-obvious to the skilled person. In

   conclusion therefore, the Board finds that the

   subject-matter of claim 1 of the main request does not

   involve an inventive step.

1. The additional feature of the vertical alignment of the

   duplicated cards in the display (first and fourth

   auxiliary request) addresses the technical problem of

   improving readability of the hands on the display. It is

   obvious from general considerations that readability is

   best served by preserving the main attributes of the

   cards to be duplicated, in particular order and size. In

   this context the vertical placement of the hands as

   opposed to the hands being displayed side-by-side is

   marginally improved as it allows the relationship

   between the cards to be grasped by the user quicker than

   in the latter case. Nevertheless, such a layout is one

   of a limited number of options available to the skilled

   person in displaying simultaneously played hands, and

   from his consideration of these options this marginal

   benefit would be immediately obvious and thus motivate

   his choice. Consequently, the method of claim 1 of the

   first auxiliary request also lacks inventive step.

2. The above arguments in respect of the main and first

   auxiliary request hold irrespective of the number of

   hands simultaneously displayed and played on the

   machine, which may be three as in the second and fifth

   auxiliary requests. Likewise, the number of cards in

   each deck, which in the third to fifth auxiliary

   requests corresponds to that of a conventional deck of

   cards for the initial decks (taking into account the

   five face-up cards removed from the first deck), is

   immaterial to the question of inventive step. This

   feature belongs within the realm of game rules. That the

   number of hands and number of cards in the decks are

   such as to allow continued use of a classical random

   number generator is immaterial as the latter feature is

   not derivable from the originally filed application

   documents, nor can this effect be deduced by the skilled

   person from a consideration of this subject-matter in

   relation to the prior art of D2. Consequently, the

   subject-matter of this claim also lacks inventive step.

independent claim 1 of the main, and first to fifth auxiliary

requests does not involve an inventive step, and therefore does

not meet the requirements of Article 52(1) in combination with

Article 56 EPC.