T 1749/06 – Brain Inspection Refused

The present decision deals with the refusal of an application by the Examining Division (ED).

Claim 1 of the main request read:

1. A computer-readable medium (54) encoded with a data structure for use in providing a graphical icon (12) for display on a display (14) of a portable communications device (10), characterized in that said data structure is encoded as digital data indicative of said graphical icon defined by alternating light and dark stripes (30, 32), that selected stripes of said light and dark stripes change from light to dark and back to light to indicate a shadow adjacent an edge of said icon and from dark to light and back to dark to indicate a highlight adjacent another edge of said icon, and that altogether said light and dark stripes with shadows and highlights provide said icon with a three-dimensional appearance.

The only difference with respect to the claim rejected by the ED was the addition of the reference numbers.

[4.1] The ED objected in the decision under appeal that some features of the claims were directed to the presentation of information, as they described the cognitive information of the icon, and could therefore not be considered when assessing inventive step.

[4.1.1] The Guidelines for Examination (C-IV 2.3.7, June 2005, the version in force at the time of the decision under appeal. The text has remained unchanged through to the April 2009 version currently in force) state that “a presentation of information defined solely by the content of the information is not patentable” and that “the arrangement or manner of representation, as distinct from the information content, may well constitute a patentable technical feature”. The present application relates to the manner of representation of the icon and not to its contents, i.e. whether the icon depicts a house or a butterfly.

[4.1.2] In decision T 1194/97 [headnote I], invoked by the ED to support their conclusion, the then deciding board held that “A record carrier characterised by having functional data recorded thereon is not a presentation of information as such and hence not excluded form patentability by A 52(2)(d) and (3)”. The converse, however, i.e. that from the lack of functional data the presentation of information as such can be inferred, is not true. Hence decision T 1194/97 does not support the conclusion of the ED.

4.1.3 The present board agrees with the finding of T 1194/97 and the statements of the Guidelines cited above. Presentation of information arises when “what is displayed” is claimed without specifying “how it is displayed”. Claim 1 comprises the feature of an icon formed of dark and white stripes having thus a three-dimensional effect, but does not comprise the icon’s cognitive content, i.e. its specific shape. The latter feature, i.e. the icon representing e.g. a butterfly, is a presentation of information, but not the former.

[4.1.4] The board finds for these reasons that the features of the characterizing portion of claim 1 do not fall under the category of presentation of information within the meaning of A 52(2)(d).

[4.2] The ED further invoked decision T 1121/02 for ignoring the features of the claim leading to an icon’s three-dimensional appearance when assessing inventive step, as these features depended only on the perception of the viewer (“happens in the brain of the viewer”) and were therefore not technical.

[4.2.1] Claim 1 of the application leading to decision T 1121/02 was directed to an elongate fencing element having along its surface contrasting markings resembling the warning pattern of an animal (e.g. a bee) which acted as a deterrent to another animal (e.g. a horse or cow). The then deciding board found that the contrasting markings were not technical features, as the explanation provided in the application for the deterring effect was only a theory (the animals had a built-in instinct which warned them that other creatures bearing dark and light colouring were harmful and should be avoided), although it provisionally accepted that the markings had an effect on the animal seeing them. The contrasting markings therefore did not contribute to the solution of any technical problem by providing a technical effect and hence had no significance when assessing inventive step (Summary of facts and submissions, points V and VII).

[4.2.2] The present board is aware of the difficulty of assessing whether or not a feature contributes to the technical character of a claim. It agrees, however, with the approach followed in decision T 258/03 [4.6] that even a so familiar activity such as the act of writing using pen and paper has technical character. Applying the same approach to the medium of claim 1, the board finds that the feature of modifying the edge of an icon with alternate dark and light stripes has technical character and should be considered when assessing inventive step.

[4.2.3] The board is further of the view that the test “happens in the brain of the viewer”, invoked by the ED, is not useful for deciding whether a feature contributes to the technical character of a claim or not. Inventions such as the cinematograph are based on an effect which only “happens in the brain of the viewer”, namely that the projection of a rapid succession of still images on a screen creates the illusion of fluent motion. Although the illusion of perceiving a real action is only created in the viewer’s brain, nobody would seriously contest that the cinematograph is an invention based on technical features. It may be argued that the apparatus of the cinematograph comprises technical elements with the ultimate purpose to create the illusion of motion in the viewer’s brain. However, in the present case the dark and light stripes are also technical elements which contribute to creating the three-dimensional illusion.

[4.3] For these reasons, the board considers that the features of the characterizing portion of claim 1 have technical character and should be considered when assessing inventive step.

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