T 0051/84 (Coded distinctive mark) 19-03-1986
1. Procedural steps involved in applying a coded distinctive mark to an object, providing the object with characteristic data and forming the distinctive mark by coding the characteristic data, may be carried out in any desired manner.
2. If a claim focuses solely on such procedural steps without indicating or presupposing technical means for carrying them out, a process of this kind will come under the heading of matter excluded from patentability by Article 52(2)(c) and (3) EPC and will not therefore be regarded as an invention within the meaning of Article 52(1) EPC.
I. European patent application No. 80 901 066.3 filed on 30 May 1980 as an international application under the Patent Cooperation Treaty (PCT) claiming the priority of a patent application in the Federal Republic of Germany of 6 June 1979 and published under No. WO 80/02 757 was refused by decision of the Examining Division of the European Patent Office on 27 September 1983. The decision was based on independent Claims 1, 6 and 7, received on 29 September 1982, relating to a process for protecting sound- recording carriers and the labels and/or packages thereof against counterfeiting, a marking device for marking sound-recording carriers, the labels and/or packages thereof for the purpose of carrying out said process and a testing device for checking sound- recording carriers and the labels and/or packages thereof for the purpose of carrying out said process.
II. Previously, in a communication dated 15 June 1982, the primary examiner had raised objections to the original Claim 1 on the grounds of insufficient patentability of the claimed process according to Article 52(2)(c) EPC. Faced with counter-arguments communicated on 22 September 1982 he tacitly dropped these objections.
III. The application was refused on the grounds that the subject-matter of Claim 1 did not involve an inventive step since it was obvious to a person skilled in the art from citations US-A-3 990 558 and DE-A- (erroneously given as DE-B-) 2 545 580. Given the foregoing US citation, the subject-matter of Claims 6 and 7 likewise did not involve an inventive step.
IV. The applicants appealed against this decision on 28 November 1983, at the same time paying the appropriate fee, and on 27 January 1984 filed a statement of grounds.
V. In this they contested the Examining Division's view that the teaching of the US citation could be applied to subject-matters of the type covered by the DE citation, on the grounds that fundamentally different situations were involved in the specialist fields to which these citations related.
VI. Claim 1, which was received on 29 September 1982 and which the applicants continued to maintain, reads as follows: "Process for protecting sound-recording carriers and the labels and/or packages thereof against counterfeiting, in which a coded distinctive mark is recorded on the label, the package and/or the sound-recording carriers, characterised in that in addition to the distinctive mark the sound-recording carriers and the packages and/or labels thereof are provided with individual characteristic data of the sound-recording carrier that vary from carrier to carrier and in that the distinctive mark is formed by coding these individual characteristic data of the sound-recording carrier".
VII. In a communication dated 28 August 1985 the rapporteur likewise raised objections on the grounds of insufficient patentability according to Article 52(2)(c) EPC to the process claim. He left open the question of whether the application contained subjectmatter involving inventive step.
VIII. Without going into the substance of the objections raised, the appellant requested a decision based on the file on 19 September 1985.
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.
2. Claim 1 is to be regarded as admissible within the meaning of Article 123(2) EPC. This claim admittedly lacks features contained in the original Claim 1 which related to the manner of checking whether sound- recording carriers placed on the market or the packages or labels thereof were original goods marked by the producer in accordance with the teaching of the application or were counterfeits. However, from the other application documents, e.g. the original Claim 4 which likewise lacked corresponding features, it emerges that the process is to be regarded as separate and justifying an independent claim only if it includes the protective measures to be put in train by the producer.
3. The process according to Claim 1 concerns an act which under Article 52(2)(c) is not patentable, namely the activity as such referred to in Article 52(3) EPC. It cannot therefore be regarded as an invention within the meaning of Article 52(1) EPC. The claim identifies no technical means for carrying out the claimed procedural steps. A person may conceive characteristic data specific to the sound-recording carrier and may "provide" the goods with characteristic data without or at any rate with any desired means whatsoever, whether technical or otherwise. The coding of the characteristic data may take place cerebrally and the distinctive mark thus formed may be applied to the goods again without or at any rate with any desired means whatsoever, whether technical or otherwise. The use of means such as those mentioned in the communication received on 29 September 1982, e.g. a printer, is not presupposed; a "physical change" may be conceived as taking another form. In the final analysis the contested decision must therefore be upheld, even if for a completely different reason.
4. Under Article 113(2) EPC the Board must go by the text submitted by the applicants. Since, in requesting a decision based on the file, the applicants indicated that they were unwilling to amend or delete Claim 1 or to refute the objections made, the appeal must be decided on the basis of the grounds given and the patentability of Claim 1 must be rejected, notwithstanding the existence of claims to which these objections do not apply. Given these facts there is, furthermore, no scope for examining whether the application discloses a teaching which involves inventive step (Article 56 EPC).
For these reasons it is decided that:
The appeal is dismissed.