T 0038/86 (Text processing) 14-02-1989

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.

2. As can be seen from the opening words of Claim 1, the claim is directed to a method for automatically detecting and replacing linguistic expressions which exceed a predetermined understandability level in a list of linguistic expressions.

3. The "understandability level" of a linguistic expression refers to the difficulty which a human being may have in understanding the exact meaning of the expression in question, depending on, for example, his level of education, experience and age. One may, for example, think of an expression like "prima facie", which for many people may be difficult to understand, being detected and replaced by, say, "at first sight". According to page 1 of the description of the present application it has been discovered that improved text proofing for the purpose of reviewing word content against educational level of the intended audience can be achieved by coupling a specialised dictionary of words including grade level data to a text processing system for automated text review and recomposition to meet a desired grade level, and, according to page 6, the grade level codes assigned to the text words in the dictionary list may be based either on the extensive testing of students or on the analysis of required text books by grade to determine at what grade level a given word has been sufficiently introduced into a student's lexicon to assume that it is known. The Applicant has recognised that generally a score of 67% is sufficient when placing a word in a grade level category.

4. Claim 1 goes on to specify that the method is carried out in a text processing system comprising a processor with a memory including a dictionary section storing the linguistic expressions each with an appended grade level code and a synonym section storing a list of synonymic expressions for said dictionary section each with an appended grade level code, a keyboard including cursor control keys and a display for displaying said linguistic expressions stored in either memory section to the operator. The Appellant does not dispute the fact that the hardware specified in this part of Claim 1 is conventional. The information stored in the memory sections is purely abstract linguistic information.

5. In step a) of Claim 1, namely "inputting into said text processing system by means of said keyboard, a code representing a predetermined understandability level, said code being stored in said memory", information required solely for linguistic purposes is entered and stored in a manner which is conventional from a technical point of view.

6. In step b) of Claim 1, namely "comparing in said processor, each member of said list of linguistic expressions to said dictionary of linguistic expressions", signals representing only linguistic information are compared in a manner which is conventional from a technical point of view.

7. In step c) of Claim 1, namely "comparing in said processor the grade level code of the dictionary linguistic expression which compares equal to said member of linguistic expressions, to said stored understandability level code", signals representing only linguistic information are compared in a manner which is conventional from a technical point of view.

8. In step d) of Claim 1, namely "highlighting on said display said member of linguistic expressions when the grade level code of the dictionary linguistic expression is greater than said stored understandability level code", the result of steps a) to c) is displayed to the operator in a manner which is conventional from a technical point of view.

9. In step e) of Claim 1, namely "retrieving in said synonym section of the memory the linguistic expressions which are synonyms of said member of linguistic expressions", information required solely for linguistic purposes is retrieved in a manner which is conventional from a technical point of view.

10. In step f) of Claim 1, "displaying a set of synonyms on said display when at least one of them has an appended grade level code which does not exceed said stored understandability level code" involves only the comparison of grade level codes to determine whether at least one of the synonyms retrieved in step e) meets the linguistic requirement of being easier to understand than the expression highlighted in step d), followed by the display of information required solely for linguistic purposes, namely to enable the operator to replace the highlighted linguistic expression with a member of said displayed synonyms by positioning the display cursor underneath said synonym member by means of said keyboard. The selection of one of several displayed options by positioning the cursor under it is conventional from a technical point of view.

11. It seems to the Board that a person who wishes to detect and replace linguistic expressions which exceed a predetermined understandability level in a list of linguistic expressions, doing everything by himself with pencil and paper, would have to proceed in a similar way and follow the same sequence of steps a) to f) as described in Claim 1, but without using the technical facilities indicated there:

(A) he would for himself define a predetermined understandability level and, in order not to forget it, write it down somewhere if necessary;

(B) he would compare by himself each member of said list with a specialised dictionary, such as the one referred to on page 6 of the present application or one that he had himself compiled beforehand;

(C) look up the value of the understandability level (grade level) of each said member which he found in the dictionary,

(D) note for himself when that grade level is greater than the level he had defined in step (a),

(E) then look in the dictionary for synonyms

(F) which have a grade level which does not exceed the level defined in step (a), and, if he found such a synonym, replace the member of the list by that synonym.

Proceeding in this way, the said person would only use his skills and jugdment and would consequently perform purely mental acts within the meaning of Article 52(2)(c) EPC. The schemes, rules and methods, i.e. the steps as enumerated under the foregoing items A-F for performing these mental acts are not inventions within the meaning of Article 52(1) EPC.

12. The Board recognises that the use of technical means for carrying out a method, partly or entirely without human intervention, which method, if performed by a human being, would require him to perform mental acts, may, having regard to Article 52(3) EPC, render such a method a technical process or method and therefore an invention within the meaning of Article 52(1) EPC, i.e. one which is not excluded from patentability under Article 52(2)(c) EPC. This is because paragraph 3 of Article 52 EPC makes it clear that patentability is excluded only to the extent to which the patent application relates to excluded subject-matter or activities as such. In the opinion of the Board, while it follows that the EPC does not prohibit the patenting of inventions consisting of a mix of excluded and non-excluded features (in conformity with T 26/86, OJ EPO 1988, 19), it does not necessarily follow that all such mixes are patentable. Since patentability is excluded only to the extent to which the patent application relates to excluded subject-matter or activities as such, it appears to be the intention of the EPC to permit patenting only in those cases in which the invention involves a contribution to the art in a field not excluded from patentability.

13. However, this seems not to be the case here. Once the steps of the method for performing the mental acts in question (enumerated under the foregoing item 11) have been defined, the implementation of the technical means to be used in those steps, at least at the level of generality specified in Claim 1, involves no more than the straightforward application of conventional techniques and must therefore be considered to be obvious to a person skilled in the (technical) art, so that the method according to Claim 1 of the present application does not contribute to the art anything involving an inventive step within the meaning of Article 56 EPC in a field not excluded from patentability by Article 52(2)(c) EPC.

14. Although a computer program is not expressly recited in Claim 1, it is clear to a reader skilled in the art that the claim covers the case in which a computer program is used and, indeed, in the only embodiment disclosed in the application the text processing system is controlled by a set of programs and data stored in the memory.

15. It can be seen from the analysis in paragraphs 4 to 10 above that the operations performed in the method claimed in Claim 1 of the present application do not go beyond the processing of data relating to a list of linguistic expressions and codes representing their understandability level. The overall effect of the method is that signals representing one linguistic expression in the list are replaced with signals representing another linguistic expression. These signals are not different from a technical point of view. They differ only in that they represent different linguistic expressions, which are purely abstract expressions without any technical significance. The overall effect of the method is thus not technical.

16. The fact that the claimed method involves a new method of operating, as pointed out by the Appellant, cannot by itself confer patentability on the method, since the specified hardware is conventional, the data processed has no technical significance and the processing of this data involves only conventional techniques of entering, storing, retrieving, comparing, displaying, highlighting and selecting from a menu. The Board cannot find anything in the claimed method, considered as a whole, or in any of its details, which could involve an inventive step in a field which is not excluded from patentability by Article 52(2) EPC.

17. The present case is therefore distinguishable from the previous decisions T 208/84 (VICOM, OJ EPO 1987, 14) and T 26/86 (X-ray apparatus, OJ EPO 1988, 19). In T 208/84 the claimed method is patentable, even though it could be carried out by known hardware suitably programmed, because it makes a contribution in a field not excluded from patentability, namely a more efficient restoration or enhancement of the technical quality of an image. Similarly, in T 26/86 the claimed apparatus is patentable, even though the X-ray apparatus without the computer program was known, because it makes a contribution in a field not excluded from patentability, namely controlling the X-ray tubes so that optimum exposure is obtained with adequate protection against overloading of the X-ray tubes.

18. In contrast to this, the method claimed in Claim 1 of the present application merely makes use of a computer program, running on conventional hardware, which it controls to perform conventional operations, governing a method for the performance of a mental act. The claim does not include anything which could involve an inventive step in a field which is not excluded from patentability by Article 52(2)(c) EPC.

19. It follows that Claim 1 cannot be accepted.

20. Claims 2 to 5 concern further details of steps b) and f) of the method according to Claim 1, in which only conventional operations are performed on non-technical data. These claims do not include anything which could involve an inventive step in a field not excluded from patentability by Article 52(2)(c) EPC. 21. Claim 6 will now be considered. Apart from the hardware features mentioned in the preamble, which the Appellant does not dispute are conventional, this claim does not define the system in terms of its physical structure, but only in functional terms, corresponding to the steps of the method claimed in Claim 1. Notwithstanding the fact that Claim 6 is drafted as an apparatus claim, the contribution to the art is the same as in Claim 1.

22. It follows that Claim 6 cannot be accepted for analogous reasons, namely that the claim does not include anything which could involve an inventive step in a field not excluded from patentability by Article 52(2)(c) EPC.

23. Claims 7 to 9 merely specify in functional terms means for carrying out the steps specified in Claims 2 to 4 and do not include anything which could involve an inventive step in a field not excluded from patentability by Article 52(2)(c) EPC.

24. As far as the disclosed embodiment is concerned, some of its hardware is explicitly acknowledged to be conventional. Near the bottom of page 3, it says: "The microprocessor may be an IBM Series 1, INTEL model 8086, or any of the functionally equivalent, currently available microprocessors." On page 4, line 11, it says: "The printer may be any suitable printer known in the art." The description of the remaining hardware is not very detailed and does not mention any feature which is not conventional, it being assumed in the application that a person skilled in the art would know of suitable devices which may be used. The manner in which the hardware devices are interconnected is indicated only in a very general way. The required functions and interactions are achieved by means of programs and data stored in the memory.

25. While it cannot be denied that there is an interaction between the programs and the hardware, since the programs without the hardware or the hardware without the programs could do nothing, but together they make it possible to perform the method claimed in Claim 1, this fact alone cannot confer patentability on either the method or the apparatus. Since the only conceivable use for a computer program is the running of it on a computer, the exclusion from patentability of programs for computers would be effectively undermined if it could be circumvented by including in the claim a reference to conventional hardware features, such as a processor, memory, keyboard and display, which, in practice, are indispensable if the program is to be used at all. In the opinion of the Board, in such cases patentability must depend on whether the operations performed involve an inventive step in a field not excluded from patentability by Article 52(2) EPC.

26. In the present case, all the operations performed are conventional from a technical point of view and amount to no more than the processing of abstract data, for a non- technical purpose, by means of computer programs running on conventional hardware. The Board has found nothing in the claims, description and drawings of the present application which could be regarded as making a contribution to the art in a field which is not excluded from patentability by Article 52(2)(c) EPC.

27. In the opinion of the Board, therefore, the present application must be refused.