CITE: ET1194.97-00372238
CMON: March 2000
PLAIN: Koninklijke Philips Electronics N.V.
DEFND: European Patent Office
COURT: Technical Board of Appeal of the European Patent Office
DATE: March 15, 2000
HISTORY:
ET1194.97 - 00372238
Decision of Technical Board of Appeal 3.5.2 dated 15 March 2000
T 1194/97 - 3.5.2
Applicant: Koninklijke Philips Electronics N.V.
Headword: Data structure product/PHILIPS
Article: 52(2)(d) and (3), 54, 56, 84 EPC
Article: 31 Vienna Convention on the Law of Treaties
Rule: 39.1(v) PCT
Keyword: "Presentation of information as such - no" - "Clarity - yes"
- "Novelty - yes" - "Inventive step - yes"
Headnote
I. A record carrier characterised by having functional data recorded
thereon is not a presentation of information as such and hence not
excluded from patentability by Article 52(2)(d) and (3) EPC (reasons 3.3).
II. In this context functional data includes a data structure defined
in terms (here coded picture line synchronisations, line numbers, and
addresses) which inherently comprise the technical features of the system
(here read device plus record carrier)
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in which the record carrier is operative (extending T 163/85, Color
television signal/BBC, OJ EPO 1990, 379).
SUMMARY:
Functional data structures are technical and patentable.
JUDGE:
Composition of the board:
Chairman: W. J. L. Wheeler
Members: R. G. O'Connell
B. J. Schachenmann
DECISION:
Summary of facts and submissions
I. This is an appeal from the refusal by the examining division of European
patent application No. 91 919 380.5. The main request then on file was
refused for the reasons given in the annex to the communication under
Rule 51(4) EPC dated 18 March 1997. The applicant did not approve the text
of the auxiliary request as proposed for grant in the communication under
Rule 51(4) EPC.
II. The reasons given in the annex to the communication under Rule 51(4) EPC
for refusing the main request were inter alia that independent claim 4, which
was directed to a record carrier on which a coded picture is recorded in a
novel format, was not clear, and that the subject-matter of this claim
lacked novelty and was excluded from patentability by Article 52(2)(d) and
(3) EPC. The following prior art document was referred to:
D1: US-A-4 914 515.
III. Following a telephone interview with the rapporteur the appellant
filed amendments to the claims and description. Independent claims 1, 4
and 7 (main request) now read as follows:
1. "A picture retrieval system comprising a record carrier and a read
device, a coded picture composed of consecutive coded picture lines being
recorded in a contiguous track of the record carrier, which track has been
provided with addresses, the read device comprising a read head for reading
the recorded coded picture lines by scanning the track, means for moving
the read head to a track portion having a selected address, characterized
in that together with the coded picture lines line
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synchronizations and line numbers have been recorded on the record carrier,
each line number specifying the sequence number of the relevant coded
picture line in the coded picture, and each line synchronization specifying
the beginning of the relevant coded picture line, the coded picture lines
having a variable code length, addresses for a number smaller than the total
number of coded picture lines of the coded picture being also recorded on
the record carrier, which addresses specify where the relevant picture lines
have been recorded in the track, the device comprising means for selecting
a coded picture line within a selected coded picture, means for reading
recorded addresses for a number smaller than the total number of picture
lines of the selected picture, means for selecting on the basis of the
addresses thus read a track portion situated before the track portion where
the recording of the selected coded picture line begins, and means for
causing the read head to be moved to the selected track portion, and means
for subsequently detecting the read-out of the beginning of the selected
coded picture line on the basis of the read-out line numbers and line
synchronisation."
4. "A record carrier for use in the system as claimed in claim 1, a coded
picture composed of consecutive variable length coded picture lines being
recorded in a contiguous track of the record carrier, which track has been
provided with addresses, characterized in that together with the coded
picture lines line synchronizations and line numbers have been recorded on
the record carrier, each line number specifying the sequence number of
the relevant coded picture line in the coded picture, and each line
synchronization specifying the beginning of the relevant coded picture
line, the coded picture lines having a variable code length, addresses for
a number smaller than the total number of coded picture lines of the coded
picture being also recorded on the record carrier, which addresses specify
where the relevant picture lines have been recorded in the track."
7. "A read device for use in the system as claimed in claim 1, the read
device comprising a read head for reading the recorded coded picture lines
by scanning the
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track, means for moving the read head to a track portion having a selected
address, characterized in that the device comprises means for selecting a
coded picture line within a selected coded picture, means for reading the
recorded addresses for the number smaller than the total number of picture
lines of the selected picture, means for selecting on the basis of the
addresses thus read a track portion situated before the track portion where
the recording of the selected coded picture line begins, and means for
causing the read head to be moved to the selected track portion, and means
for subsequently detecting the read-out of the beginning of the selected
coded picture line on the basis of the read-out line numbers and line
synchronizations."
IV. The appellant's arguments in respect of the refused carrier claim 4
can be summarised as follows:
(i) Interpretation of Article 52(2)(d) EPC
(a) It was important to distinguish between presentation, which meant
"to bring into the presence of someone, to bring before the public" and
representation which meant "to serve as a symbol of". The exclusion under
Article 52(2)(d) and (3) EPC related to bringing information directly to
a human. The decisions of the EPO Boards of Appeal referring to this
article usually related to this interpretation, eg on a computer screen
as in case T 599/93 dated 4 October 1996, or visible marking of musical
keys as in decision T 603/89, Marker/BEATTIE ( OJ EPO 1992, 230). This
interpretation was also confirmed by the German text of Article 52(2)(d)
EPC: "die Wiedergabe von Informationen" (appellant's emphasis).
(b) In contrast representation was a normal technical measure in which
a physical signal represented information, eg an electrical charge in
a capacitor representing a logical 0 or 1. This complied with the literal
meaning of representation in that a meaning had been assigned to certain
physical parameter values, eg signal values
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taking the place of one's bank account. Hence, when discussing a technical
data processing system, it was automatically assumed that electrical or
logical signals represented information. Article 52(2)(d) EPC could not
be interpreted as excluding technical matter solely because it was a
representation.
(c) It should also be noted that some confusion as to the interpretation of
"presentations" was caused by the Guidelines for examination in the EPO,
C-IV, 2.3. There the text of Article 52(2)(d) EPC was paraphrased as:
"Any representation (appellant's emphasis) of information characterized
solely by the content of the information, is not patentable". This
broadened interpretation was illustrated by examples, some of which were
indeed presentations of information, eg a book or a traffic sign, and
others of which were in fact representations of information recorded on a
carrier, eg a gramophone record characterised by the musical work and a
magnetic tape carrying a computer program were mentioned. Whereas the book
may be excluded based on Article 52(2)(d) because it brought its content to
a human, the gramophone record should not be excluded under this head since
it constituted a carrier comprising physical phenomena to be interpreted
by a reading device as symbols. However the gramophone record could be
excluded because its contribution to the art was not technical, ie its
information content (the musical work) was novel but no technical
considerations were involved; cf decision T 769/92, General purpose
management system/SOHEI (OJ EPO 1995, 525). A further reason for exclusion
might be under Article 52(2)(b) EPC, because the musical work could be
considered an aesthetic creation. The example of a magnetic computer tape
characterized by the data or program recorded should not be excluded under
Article 52(2)(d) either, because it was not a presentation of information
for a human but a representation of a program readable by a suitable
computer. Hence such a tape could only be excluded under Article 52(2)(c)
EPC, whereas a listing of the same computer program on paper might
constitute a presentation of information excluded as such by Article
52(2)(d).
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(d) In the record carrier of claim 4 the information about the accessibility
of the coded picture was embodied in the picture access data structure, i.e.
a representation of information, while the content of the information had
a technical function. This representation of information was not directly
usable by a human, but needed to be processed by technical means, i.e. the
reading device, which could interpret the bits in the data structure.
Hence Article 52(2)(d) EPC was not applicable to the record carrier of
claim 4.
(ii) "Invention" within the meaning of Article 52(1) EPC
(a) Field of invention - problem and solution
Although the concept of invention used in Article 52(1) EPC was not
explicitly defined in a positive sense in the EPC, Rule 27 implied that
an invention should relate to a technical field and that the claimed
subject-matter should be a solution to a technical problem.
The record carrier according to claim 4 related to the field of picture
storage and retrieval. Clearly this was a technical field, because the
storage was realised in physical properties of the recording medium which
properties were to be detected by a technical device and to be decoded
and displayed by electronic means. The features of the storage and
retrieval system were technical in that the retrieval could not be
performed by a human and stored pictures could not be accessed directly
via his senses. Moreover the production of record carriers and their
information content was an industrial activity.
The technical problem to be solved by the invention was to provide
"recorded picture data suitable for easy access to any part (ie cut-out)
of a picture".
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The solution to the problem was the record carrier according to the
invention carrying the coded pictures and the picture access data
structure. This structure clearly was of a technical nature in that
its function was to control the operation of the retrieval device;
cf decision T 110/90, Editable document form/IBM (OJ EPO 1994, 557,
reasons 4), in which a technical nature was credited to printer control
characters, because such characters controlled the operation of the
printing device.
Hence, the record carrier of claim 4 comprising the picture access data
structure was a technical solution to a technical problem and constituted
an invention in the sense of Article 52(1) EPC.
(b) Technical character of the novel feature - the data structure
The novel technical feature of the invention of claim 4 within the meaning
of Rule 29(1)(b) EPC was the picture access data structure.
The technical nature of the data structure could in the first place be
derived from the fact that the system could not function without a record
carrier on which the data structure as specified in claim 4 was recorded.
Pictures on such a record carrier could only be reproduced on a device
according to claim 7 and, conversely, such a playback device could only
exercise its function (fast display of parts of the stored pictures)
using such a record carrier. The record carrier embodied the necessary
data structure and the retrieval device comprised means controlled
by this data structure. The essential elements of the inventive subject
matter were partly included in the player and partly in the record carrier.
So how could the system comprise technical features, and at the same time
the record carrier be devoid of any technical feature?
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Decision T 163/85, Colour television signal/BBC (OJ EPO 1990, 379) was
particularly relevant for classifying the content of the information as
technical or non-technical. Reason 2 of the decision was worded as follows
(appellant's emphasis):
... the TV signal as claimed could be considered as a presentation of
information, which, as such, is excluded from patentability according
to Article 52(2)(d) and (3) EPC. However, the TV signal as claimed seems
to be more than a mere presentation of information "as such". In fact,
the TV signal as claimed inherently comprises the technical features of
the TV system in which it is being used and if it is considered to
present information then it represents exactly that kind of information
which exhibits the technical features of the system in which it occurs.
The Board considers it to be appropriate to distinguish between
two kinds of information, when discussing its presentation.
According to this distinction, a TV system solely characterised by
the information per se, eg moving pictures, modulated upon a standard
TV signal, may fall under the exclusion of Article 52(2)(d) and (3) EPC,
but not a TV signal defined in terms which inherently comprise the
technical features of the TV system in which it occurs...."
The picture storage and retrieval system of the present invention clearly
was not characterised by the information per se, e.g. content of
still pictures. As with the TV signal the contents of the stored pictures,
e.g. scenery, colours, etc., were irrelevant and not the subject of the
invention.
Following T 163/85 the claimed data (information) structure
inherently comprised the technical features of the picture storage and
retrieval system, i.e. control data for controlling fast retrieval.
This second kind of picture information occurring in the picture
storage and retrieval system in question clearly had a technical nature.
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It should be noted that the board classified the TV signal as a
representation of information. Hence, the board did grant a carrier
characterised by a representation of information because its content
had a technical function in the TV receiver.
Finally it was to be noted that no distinction regarding patentability
should be made between the claim categories of a signal and a
record carrier. In an (analog) signal a meaning was assigned to
(continuous) physical parameters, which assignment constituted the a priori
knowledge required for representation, e.g. an amplitude of an
electromagnetic field at a specific moment after some sync pulse was
deemed to mean a certain intensity of a pixel on the TV screen. In a
digital signal 'frozen' on a record carrier a meaning was assigned to
(discrete) physical parameters, e.g. the reflectivity or lack of
reflectivity of a small part of a track on a CD was deemed to mean a
specified amount of sound pressure to be reproduced by an audio system.
In a signal or a record carrier the data (information) structure
represented a functional, technical feature.
From each of the above arguments it should be concluded that the novel data
(information) structure according to the invention had a technical nature
and therefore was an 'invention' within the meaning of Article 52(1) EPC.
It was also to be noted that the World Trade Organization (WTO) required its
members via the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) to offer protection "for any inventions, whether products or
processes, in all fields of technology, provided they are new, involve an
inventive step and are capable of industrial application". All contracting
states of the EPC were member states of the WTO, so the harmonising effect
of the treaty should be taken into consideration by the EPO; cf decision
G 5/83, Second medical indication/EISAI (OJ EPO 1985, 64, reasons 5 and 6).
The United States Patent and Trademark Office (USPTO) in particular had
developed a workable criterion for patentability for record carriers,
i.e. under the condition that the recorded data structure be functional,
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which clearly covered the present invention. Furthermore, if the record
carrier were to be excluded from patentability it would essentially be
unprotected, because it would clearly not be covered by copyright law
(which basically covered presentations of information which were original
creations).
(iii) Clarity and novelty
The examining division's finding that claim 4 was not clear and that it
lacked novelty resulted from its disregarding the characterising features
of the claims, which defined the picture access data structure on the
record carrier, on the grounds that this data structure was (a) not
technical and (b) ambiguous in the sense that it was capable of an
unlimited number of interpretations. The examining division had come to the
wrong conclusion because it had not given due weight to the function
of the picture access data structure recorded on the record carrier, which
was to enable fast access to any selected part of the coded picture, e.g.
for zooming in on a selected area of the picture. In order to enable it to
carry out its function the picture access data structure had to be accessed
with, ie interpreted by, an appropriate access means, namely the reading
device of the picture retrieval system of claim 1. The phrase "for use in
the system of claim 1" specified the appropriate interpretation of the
picture access data structure realised on the record carrier of claim 4.
V. The appellant's main request is that the decision under appeal be set
aside and that a patent be granted on the basis of:
Claims: 1 to 8 (main request) faxed on 29 February 2000;
Description: page 1 with insert page 1a, filed with letter of 23 October
1995, received 25 October 1995, pages 2 to 34 and 36 as originally filed,
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page 35 as originally filed but with the deletion of lines 14 to 19 as
per fax of 29 February 2000.
Drawings: sheets 1 to 16, as originally filed.
Reasons for the decision
1. The appeal is admissible.
2. Clarity
2.1 This patent application concerns a two-part picture retrieval
system comprising a record carrier and a read device, ie two separate
but co-operative articles which may be sold separately, but each of which
is specially adapted to implement complementary aspects of the same
inventive idea. Claim 1 is directed to the system while claim 4 seeks to
protect the record carrier per se. In accordance with a standard claiming
practice with inventions of this kind - colloquially referred to as
"bow and arrow" or "plug and socket" inventions but which will be
referred to in this decision as distributed inventions - the record carrier
of claim 4 is specified as being "for use in the system as claimed in
claim 1"; cf Guidelines for examination at the EPO, C-III, 3.3 and 3.7a.
2.2 The board does not completely agree with the examining division's
finding in the decision under appeal that the for use phrase does not
limit claim 4. The standard interpretation in EPO practice (apart from
well-defined exceptions such as Article 54(5) EPC) is that for use means
suitable for the specified use. In the present case this means that the
record carrier must be readable by the read device specified in claim 1.
Although it might appear that claim 4 specifies explicitly all the features
of the carrier implied by readability, in particular the format in which
the picture information is recorded, for use nevertheless explains by
reference to claim 1
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how this format is used, i.e. the rationale underlying the format, and
thus clarifies the subject-matter for which protection is sought. In so
far as for use excludes interpretations which would be incompatible with
this use it limits the claim.
2.3 The examining division also found that claim 4 did not specify
unambiguously anything apart from a record carrier with an addressable
contiguous track, since the significance of the remaining features
(line numbers, coded picture lines and addresses), considered as physical
characteristics, was a matter of interpretation and therefore ambiguous
and hence unclear since it would not be possible to assess the technical
merits on the basis of the record carrier alone. In this connection the
examining division pointed to the analogy of the ambiguity of a written
word which differs in meaning according to the language of interpretation.
If the characterising features were to be considered as purely logical
characteristics the actual physical representation on the medium would
not be defined and no additional limitations would be imposed on the
carrier.
2.4 The board disagrees with this finding because it fails to take account
of the special characteristics of distributed inventions which by their
nature involve co-operative articles which may be "ambiguous" or even
"meaningless" when considered in isolation. The effect of the for use
phrase in claim 4, whereby the claim is to be interpreted with reference
to the system defined in claim 1, should not be ignored when examining
whether the claim meets the clarity requirement of Article 84 EPC. The
line numbers, coded picture lines and addresses and synchronisations of
the record carrier of claim 4 are "interpreted" in use by the reading,
addressing, selecting and detection means of the read device specified in
claim 1 as unambiguously as a sprocket wheel in a camera "interprets" the
sprocket holes in a reel of film. It is true that the variety of possible
physical implementations of the characterising features of claim 1 makes
the claim very general but this simply reflects the fact that the features
are specified in functional terms and that consequently the relation
between the record and the reader is one of co-operative
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functionality. The principles governing the permissibility of functional
features in claims apply equally to distributed inventions and the
resulting combinational generality is not per se a symptom of a lack of
clarity. In the judgment of the board, the present invention is made at
a general functional level and it is therefore appropriate for it to be
claimed at that level.
2.5 As is explained below at point 3.3 the characterising features of
claim 4 define functional data which are materialised in particular
physical structures of the record carrier distinguishing the latter from
other record carriers not embodying the invention. Thus the claim meets
the requirements of Article 84 EPC in that it clearly defines an
(ostensibly new) physical entity in functional terms.
3. Presentations of information as such (Article 52(2)(d) and (3) EPC)
3.1 The examining division interpreted claim 4 as specifying a known
record carrier having data stored thereon, said data having no unambiguous
technical function, and concluded, with reference to Article 52(2)(d) EPC,
that "for the purposes of assessing the technical merits of the record
carrier, what is stored on the record carrier is effectively a mere
presentation of information". As indicated above, the board regards the
examining division's interpretation of claim 4 as a misconstruction of
the effect of the for use phrase. On a proper construction of this phrase
the record carrier of claim 4 has technical functional features - line
numbers, coded picture lines and addresses and synchronisations - which
are adapted to cooperate with corresponding means in the read device to
provide a picture retrieval system.
3.2 Although the decision under appeal does not refer to the Guidelines
for examination at the EPO in applying Article 52(2)(d) EPC to claim 4,
it appears likely that the examining division was reluctant to acknowledge
that data recorded on a carrier could constitute technical features in
view of the statement in the guidelines at C-IV, 2.3, under the heading
"Presentations of information" that
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"Any representation(sic) of information characterised solely by the content
is not patentable" and the examples given there of excluded matter
including "magnetic computer tapes characterised by the data or programs
recorded".
3.3 In decision T 163/85, Colour television signal/BBC (OJ EPO 1990,
379, reasons point 2), the deciding board considered it appropriate to
distinguish between two kinds of information, when discussing its
presentation. According to this distinction, a TV signal solely
characterised by the information per se, eg moving pictures, modulated
upon a standard TV signal, may fall under the exclusion of Article 52(2)(d)
and (3) EPC but not a TV signal defined in terms which inherently comprise
the technical features of the TV system in which it occurs. The present
board regards a record carrier having data recorded thereon as being
in this respect analogous to a modulated TV signal and considers it
appropriate to distinguish in a corresponding way between data which
encodes cognitive content, eg a picture, in a standard manner and
functional data defined in terms which inherently comprise the technical
features of the system (reader plus record carrier) in which the record
carrier is operative. The significance of the distinction between
functional data and cognitive information content in relation to
technical effect and character may be illustrated by the fact that in
the present context complete loss of the cognitive content resulting in
a humanly meaningless picture like "snow" on a television screen has no
effect on the technical working of the system, while loss of functional
data will impair the technical operation and in the limit bring the
system to a complete halt. In particular the board sees no reason to
ascribe less technical character to a synchronisation signal recorded
as digital data, eg a predetermined binary string, than to an analog
synchronisation signal transmitted or recorded as a pulse having a
distinctive shape. Both the binary string and the analog synchronisation
pulse could be interpreted in an infinite number of different ways in
other technical or human contexts, but this does not detract from their
technical function of synchronisation in the relevant context, in
particular when the record carrier of claim 4 is considered in
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the context of the picture retrieval system of claim 1. The same applies
mutatis mutandis to the other functional data features recorded
on the record carrier.
3.4 Applying and extending the ratio decidendi of T 163/85 by analogy,
the record carrier of claim 4 is not excluded by Article 52(2)(d) and (3)
EPC, since it has functional data recorded thereon, in particular a data
structure of picture line synchronisations, line numbers and addresses.
3.5 This view of the patentability of a record carrier bearing a functional
data structure also follows unpublished decision T 378/88 dated 22 March
1990. Although that decision only decided the issue of novelty, the claim
concerned related to a record carrier whose technical features related to
the format in which a TV programme had been recorded with technical
consequences for the way in which it had to be played back (cf reasons
2.3 and 2.4).
3.6 Although in decision T 1173/97, Computer program product/IBM (OJ EPO
1999, 609), the issue was the exclusion of computer programs as such under
Article 52(2)(c) and (3) EPC, the observation made in that decision at
point 9.4 of the reasons to the effect that the predetermined potential
technical effect of a program recorded on a carrier could endow such
a product with technical character sufficient to overcome the exclusions
under Article 52(2) and (3) EPC is also regarded by the instant board as
lending additional support to the view taken in the present decision in
relation to a data structure product.
3.7 Finally, before leaving this point, it appears to the board that in
so far as the passage in the Guidelines for examination at the EPO cited
at point 3.2 above does not distinguish between presentations of
information which are characterised by cognitive content and recordings
of information which comprise functional data in the sense of points
3.3 to 3.6 above, the passage concerned extends unduly the exclusion
from patentability contained in Article 52(2)(d) and (3) EPC.
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3.7.1 In this context the board refers to the entry under information,
sense 3d, in the Oxford English Dictionary, 2nd edition on compact disc,
which includes the following quotation from the seminal publication by
Claude E. Shannon and Warren Weaver, The Mathematical Theory of
Communication (1949): "The word information, in this theory, is used in
a special sense that must not be confused with its ordinary
usage. In particular, information must not be confused with meaning. In
fact, two messages, one of which is heavily loaded with meaning and the
other of which is pure nonsense, can be exactly equivalent, from the present
(information technology) viewpoint, as regards information. Information
in communication theory relates not so much to what you do say, as to
what you could say. That is, information is a measure of one's freedom
of choice when one selects a message."
3.7.2 In the last half-century the growth of information technology has
been such that this special sense has almost usurped the
ordinary usage prevailing at the time of drafting of the EPC which
nevertheless remains the relevant sense for the interpretation of Article
52(2)(d) and (3) EPC; cf Article 31 Vienna Convention on the Law of
Treaties. It is particularly important to note that this special
sense of information encompasses more than "printed matter" which also
conveys information in the ordinary (cognitive content) sense.
It also encompasses physical interactions within and between machines
which do not convey any humanly understandable meaning and are therefore
outside the original ordinary meaning of the term and
hence not reasonably interpretable as coming within the exclusion of
Article 52(2)(d) and (3) EPC.
3.7.3 The legislative history confirms that the ordinary meaning of the
term is the relevant one. The phrase "presentations of information" in
Article 52(2)(d) EPC was adopted from PCT Rule 39.1(v), the word "mere"
being presumably dropped in view of the "as such" qualification of all
Article 52(2) EPC exclusions expressed in Article 52(3) EPC. The records
of the PCT Washington Conference 1970, page 572, show that the intention
of the provision was to remove from what an International
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Searching Authority had to search, tables, forms, writing styles and the
like; cf Schulte, Patentgesetz, 5th edition, page 29, section 3.6. In the
view of the board this is subject-matter which merely conveys cognitive
or aesthetic content directly to a human.
3.7.4 The only decision of an EPO board of appeal known to the present
board which appears to extend the interpretation of "presentations of
information" to include that aspect of the special sense of
information technology which is outside the ordinary usage is
T 26/86, X-Ray apparatus/ KOCH & STERZEL (OJ EPO 1988, 19). According to
this decision (reasons 3.3), the electrical signals within a computer
were subsumable under "Wiedergabe von Informationen" (German text of
Article 52(2)(d) EPC, German being the language of the proceedings in
that case) and hence could not in themselves be regarded as a technical
effect. However, this observation was made in the context of a discussion
of the exclusion of computer programs as such under Article 52(2)(c) and
(3) EPC and is strictly obiter as far as Article 52(2)(d) EPC is concerned.
4. Novelty (Article 54 EPC)
4.1 It is not contested by the appellant that the closest prior art D1
discloses a record carrier having the features specified in the
pre-characterising portion of claim 4.
4.2 The examining division's finding of lack of novelty over D1 was based
on disregarding the features referred to above as functional data. There is
no suggestion in the file that these features, which the board, for the
reasons stated above, considers should not be disregarded, are known in
combination with the record carrier known from D1. The record carrier as
claimed in claim 4 is accordingly new.
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4.3 The examining division also took the view that data features could be
accidentally anticipated since a given data pattern might arise in so many
different contexts; cf point 2.3 above. Apart from the fact that a mere
speculative possibility is not a disclosure of an anticipation and
therefore cannot found an objection of lack of novelty, the probability
of accidental anticipation of a complete data structure such as is involved
in the present invention is so vanishingly small that in practice the
present claim would not restrict legitimate unrelated third party
activities.
5. Inventive step (Article 56 EPC)
The board agrees with the examining division's finding that the system
(read device plus record carrier) of claim 1 and the read device of claim
7 each involve an inventive step. It further judges that the record carrier
of claim 4 also embodies this inventive teaching in the sense that it
would not be obvious for the person skilled in the art to provide the
record carrier of D1 with the novel data structure specified in the
characterising portion of claim 4 so as to constitute in co-operative use
with the read device specified in claim 1 and claim 7 a solution to the
problem solved by the system of claim 1. The board concludes therefore
that the subject-matter of each of the independent claims 1, 4 and 7
involves an inventive step within the meaning of Article 56 EPC, having
regard to the closest prior art D1.
6. In the judgment of the board, the application in accordance with the
main request meets the requirements of the EPC.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
- 19 - T 1194/97
2. The case is remitted to the department of first instance with the order
to grant a patent on the basis of:
Claims: 1 to 8 (main request) faxed on 29 February 2000;
Description: page 1 with insert page 1a, filed with letter of 23 October
1995, received 25 October 1995,
pages 2 to 34 and 36 as originally filed,
page 35 as originally filed but with the deletion of lines 14 to 19 as
per fax of 29 February 2000.
Drawings: sheets 1 to 16, as originally filed.