T 0135/92 15-05-1992

Reasons for the Decision

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

2. As has been made clear above, the Appellant has added a feature to Claim 1 (last paragraph) and a corresponding feature to the independent Claim 7, which features were not present in the refused Claims 1 to 4. These features try to make it clear that the method and apparatus according to the invention are arranged to work in different "stages" of operation (cf. Figure 3 of the application) i.e. in the first stage, different sets of logic tests are used for the identification of the characters. Were a character, however, not to be identified by the said logic tests, the character would be tested in the second stage by logic tests which are discrete from the tests of the first stage.

Thus the intention of the Appellant was to let the independent Claims 1 and 7 define the system as shown in Figure 3, with different stages or levels. The Board in this analysis does not investigate whether the said claims meet the requirements of clarity - Article 84 - or any other requirements of the EPC, but concludes that the refused claims as well as the cited reference D3, however, clearly relate to one stage only (corresponding to the first line of Figure 3).

The new feature introduced into the independent claims corresponds partly to Claims 3 and 9 of the original claims. It is true that the Examining Division in paragraphs 5.2 and 5.4, of a communication, dated 30 July 1990, stated that the subject-matter of these claims did not contain an inventive step. It was said that these claims defined "additional sets of tests which corresponded to character tests lower down in the priority table in D3".

Apart from such an interpretation of the said original Claims 3 and 9 made by the Examining Division in the said communication the Board finds that having regard to the wording of the said original claims, the new feature is clearly distinguished from the teaching of D3 as it is stated now clearly therein that the tests of the second stage logic tests are discrete from the first stage logic tests, e.g. the first stage may be designed to recognise well-written and the second may be designed to recognise poorly-written characters (see paragraph IV above).

Thus, it appears that the Examining Division has neither considered the patentability of a method corresponding to new Claim 1, nor of an apparatus corresponding to new Claim 7. The Examining Division has not rectified the decision under Article 109 EPC. Nor is it obliged to explain the grounds on which it based its refusal to rectify the impugned decision. For this reason, the Board is unable to examine the said refusal.

However, the Board finds that substantial amendments have been made which require a further examination of the application. The Board, therefore, deems it appropriate to remit the case to the first instance for further prosecution (Article 111(1) EPC).

3. As the Examining Division has not explicitly dealt with the issues arising under Article 52(2) and 52(3) with regard to the refused set of claims, it is to be understood that it considered the subject-matter of these claims as not excluded from the patentability under Article 52(2) EPC. Having regard to the valid claims, the Board does not see any reason to investigate whether the subject-matter of the refused claims met those requirements or not. The new claims clearly do.

Under preceding reason 2, the Board has stated in the second paragraph that it has not investigated whether Claims 1 and 7 meet the requirements of Article 84 or any other requirements of the EPC, since this was not necessary to arrive at the conclusion presented there. As an exception to this the Board thinks it appropriate in this particular case to deal with the exclusions under Article 52(2) EPC and 52(3) EPC.

The alleged invention relates to a technical field, i.e. the automatic scanning and identification of unknown characters.

Starting from the closest prior art according to D3, the teaching of which discloses the use of one "stage" only, and comparing this known art with the subject-matter of Claims 1 and 7, it can be seen immediately that the invention provides that characters which could not previously be identified by the known system now can be identified. The main problem to be solved (for investigating whether the problem is a technical problem an exhaustive analysis of the problem-solution aspect appears to be superfluous) therefore appears to be to identify characters that could not be identified by the known system of D3. This problem is clearly technical.

The solution is also of a technical character, as the addition of additional stages to a first stage clearly represents a technical measure (cf. Figure 3 of the present application).

The solution moreover is defined by said last paragraphs of the said Claims 1 and 7, which define technical functions and activities, although parts of the features may relate to mental acts. However, the EPC does not prohibit patenting of inventions consisting of a mix of excluded and non-excluded features. In this case, the subject-matter of Claims 1 and 7 clearly make a contribution to a field outside the range of matters excluded from patentability under Article 52(2) in connection with Article 52(3) EPC (cf. T 22/85, OJ EPO 1990, 012).

4. Since the appeal is not being dismissed (cf. paragraph V above), there is no need to hold oral proceedings.