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Case Law of the Boards of Appeal

2.5.3 Word-processing

In T 22/85 (OJ 1990, 12) the board had to decide on the patentability of a method for automatically abstracting and storing an input document in an information storage and retrieval system and a corresponding method for retrieving a document from the system. The board observed that the described method fell within the category of activities defined in Art. 52(2)(c) EPC 1973. It considered that the mere setting out of the sequence of steps necessary to perform the activity in terms of functions or functional means to be realised with the aid of conventional computer hardware elements did not import any technical considerations and could therefore neither lend a technical character to the activity nor to the claimed subject-matter considered as a whole, any more than solving a mathematical equation could be regarded as a technical activity when a conventional calculation machine is used (see also T 186/86, T 95/86).

In T 38/86 (OJ 1990, 384) the board first of all had to assess the patentability of a method for automatically detecting and replacing linguistic expressions which exceeded a predetermined level of understanding in a list of linguistic expressions. The board was of the opinion that a person who wished to carry out such a task using his skills and judgment would perform purely mental acts within the meaning of Art. 52(2)(c) EPC 1973; the schemes, rules and methods used in performing such mental acts were not inventions within the meaning of Art. 52(1) EPC 1973. The board stated that the use of technical means for carrying out a method, partly or entirely without human intervention, which, if performed by a human being, would require him to perform mental acts, might, having regard to Art. 52(3) EPC 1973, render such a method a technical process or method and thus an invention within the meaning of Art. 52(1) EPC 1973. Since patentability was excluded only to the extent to which the patent application related to excluded subject-matter or activities as such, it appeared to be the intention of the EPC to permit patenting in those cases in which the invention involved a contribution to the art in a field not excluded from patentability. In the case in point this condition was not satisfied: once the steps of the method for performing the mental acts in question had been defined, the implementation of the technical means to be used in those steps involved no more than the straightforward application of conventional techniques and had therefore to be considered obvious to a person skilled in the art. If a claim for an apparatus (here, a word processing system) for carrying out a method did not specify any technical features beyond those already comprised in a claim pertaining to said method and furthermore did not define the apparatus in terms of its physical structure, but only in functional terms corresponding to the steps of that method, the board stated that the claimed apparatus did not contribute anything more to the art than the method, in spite of the fact that the claim was formulated in a different category. In such cases, if the method was excluded from patentability, so was the apparatus (see also T 71/91, T 121/85).

In T 110/90 (OJ 1994, 557) the invention was for a method of transforming a first editable document form prepared using a batch word processing system into a second editable document form for use on an interactive or batch word processing system. Following T 163/85 (OJ 1990, 379) the board found that control items (e.g. printer control items) included in a text represented in the form of digital data were characteristic of the word-processing system in which they occurred in that they were characteristic of the technical internal working of that system. Such control items therefore represented technical features of the word-processing system in which they occurred. Consequently, transforming control items which represented technical features belonging to one word-processing system into those belonging to another word-processing system constituted a method of a technical nature.