Thursday, 23 June 2011

T 494/07 – A 64 Billiards

This decision is in no way spectacular but it deals with a rather unexpected use of A 64 and contains some other noteworthy statements.

The applicant filed an appeal after the Examining Division (ED) had refused its application.

Claims 1 and 20 to 22 read as follows:
1. A method of classifying an item of currency (2) using a currency tester (50), the method comprising sensing variable characteristics of a currency item (2) and deriving a data vector (X) using values of the sensed characteristics, characterised by transforming the data vector so that the variables represented by at least first and second sets of components (Y1, Y2) of the transformed vector are substantially independent, so that the mahalanobis distance of X is substantially equivalent to the sum of the mahalanobis distances of the components (YI, Y2), and calculating a mahalanobis distance in at least two parts using said first and second sets of components.

20. A method of programming a currency tester (50) comprising storing data for executing a method as claimed in any preceding claim in a currency tester.

21. A method as claimed in claim 20 comprising deriving an acceptance threshold for a currency item using a Hotelling test.

22. A currency tester comprising means for executing a method as claimed in any one of claims 1 to 19.
The ED gave the following reasons for the refusal:

The applicant argued that claims 20 and 21 related to a method of programming a currency tester rather than to a program for computers and were therefore not excluded from patentability. Claim 22 referred to method claims 1 to 19 in a “short format” which was regarded to be clear in the decision T 410/96 of the boards of appeal. Furthermore, the language regarding the claim dependencies in claim 22 was conventional and clear.

Refund of the appeal fee was requested because the decision T 410/96 was not followed even though the relevant facts were the same, which amounted to a substantial procedural violation.

Unsurprisingly, the Board smashes the A 52 argument, but it also has something to say on the claim drafting and the alleged procedural violation.

NB: All legal provisions refer to the EPC 1973.

Patentable inventions (A 52)

[2] According to A 52(1), European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. Patent protection is thus available for technical inventions of all kinds. The term “invention” in A 52(1) is therefore to be construed as “subject-matter having technical character” (see Case Law of the Boards of Appeal of the EPO, 6th edition, section I.A.1.1).

Claim 20 relates to a method of programming a currency tester. The claimed method therefore involves technical means, namely a currency tester, and is therefore regarded to have technical character (see the decision T 258/03 [4]). In particular, the claimed method involves the step of storing data in a currency tester, with the effect that the data are in fact stored in the currency tester once the step has been carried out. This is to be contrasted to a sequence of computer-executable instructions, i.e. a computer program, which merely have the potential of achieving an effect when loaded into and executed by a computer. Thus, the claim category of the claimed method is distinguished from that of a computer program.

The question whether A 64(2) should be taken into consideration when assessing whether the claimed subject-matter is an invention in the sense of A 52(1) does not appear relevant as the result of performing the method of claim 20 is not a computer program but a programmed currency tester, which is a technical device.

Claim 21 is dependent on claim 20 and as such includes all features of claim 20, so that the comments above also apply to that claim. The method defined in claim 21 is therefore also considered as an invention within the meaning of A 52(1).

Therefore the board considers the method defined in claims 20 and 21 as an invention within the meaning of A 52(1).

Clarity (A 84)

[3] The features of the independent apparatus claim 22 are defined by reference to method claims 1-19 (see T 410/96 [7 to 11]). It might be argued that claim 22 allows different interpretations, namely on the one hand that a single means carries out all steps and on the other hand that respective means are provided. This is however also the case for a claim directed to an apparatus and including as features explicit “means for” carrying out each of the specified steps, as such a formulation does not exclude the possibility that it is in fact the same means which carry out several or all steps. The above-mentioned possibility of different interpretations is therefore regarded to be a sign of adequate scope of protection rather than indicating a lack of clarity.

The manner in which the reference to claims 1-19 is formulated is also regarded to be adequate as shorthand for 19 separate references to claims 1-19, respectively.

Therefore the board considers claim 22 to be clear.

Remittal to the department of first instance (A 111(1))

[4] The board notes that the novelty and inventive step of the subject-matter of claims 20 and 22 depend on the novelty and inventive step of the subject-matter of claims 1-19. The ED has indicated in the appealed decision as obiter dictum that claims 1-19 seemed to fulfil the requirements of the EPC. However, the board has doubts regarding inventive step of the subject-matter of claim 1 in view of document D1 (EP 0 924 658 A2), specifically paragraph [0057].

In order to preserve the right of the appellant to argue before two instances, the board considers it therefore appropriate under these circumstances to remit the case to the department of first instance for further prosecution, as requested by the appellant.

Reimbursement of the appeal fee (R 67)

[5] A 111(2) states that the department whose decision was appealed is bound by the ratio decidendi of the Board of Appeal, if the Board of Appeal remits the case for further prosecution to that department. However, the strict legal obligation to follow the ratio decidendi of a decision of a board is limited to the same application and the same instance whose decision has been contested in the appeal, but does not extend to other applications (or even to other instances in the same application). This is so even if the subject-matter of the two applications is highly similar (see J 27/94 [3]). At most, it can only be regarded as an error of judgement if two apparently similar case constellations are decided differently. Not following T 410/96 does therefore not constitute a substantial procedural violation within the meaning of R 67 and reimbursement of the appeal fee is not justified.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Myshkin said...

I'm surprised that the Board did not simply state that the idea that Art. 64(2) could play a role in the assessment of patentability of a method claim is based on a fundamental misunderstanding.

A product is protected under Art. 64(2) only if it resulted from an actual application of the patented method. The reason for giving the proprietor this protection is that there was a preceding act of performing the method (even though that act might not be an infringement, e.g. because it was performed in another jurisdiction).

It does NOT matter one bit if the product per se satisfies the requirements of Art. 52(1). It does not matter if this thing is not new (and I suppose it would never even cross the mind of the ED to object to a method only because the entity produced by it is not new), and it does not matter if this thing lacks technical character.

(Of course, once a technical method can be said to produce a product, it is hard to see how that product could lack all technical character. But that is beside the point.)

Dr Z said...

I am frankly amazed that the ED which falls under 3.4.3 (which is no stranger to computer related inventions -like computer games) raised a Art 52(2) objection.