Pages 798-806

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

DE Germany

Decision of the Bundesgerichtshof (Federal Court of Justice), Xth Civil Senate, of 11 June 1991 (X ZB 24/89)^*

Headword: Chinesische Schriftzeichen (Chinese characters)

Section: 1(1), 1(2), point 3, 1(3) Patent Law 1981

Article: 52(1), 52(2)(c), 52(3) EPC

Keyword: "Technicality of an invention - insignificant features of a teaching have no bearing on its technical character" -"Examination of sub-claims for technical content"

Headnote:

A teaching for which patent protection is sought lacks technical character if its success depends entirely on the mentalacts involved in arranging the data to be processed.

Summary of Facts and Submissions

I. Examining Division (...) at the German Patent Office refused patent application No. P 31 42 171.7-53 of 23 October 1981 relating to a method of storing data and control criteria in the memory unit of a device for recording Chinese characters. It argued that the claimed method did not fall within the realm of technology.

In appeal proceedings the applicants continued to request the grant of a patent, arguing on the basis of six reworded claims and a partially amended description. (...)

The Bundespatentgericht (Federal Patent Court) dismissed the appeal.

In their admissible further appeal the applicants contend that the claimed method's technicality was wrongly denied. (...)

Excerpts from the Reasons

II. (...)

III. The further appeal is unsuccessful.

1. The Federal Patent Court refused a patent on the ground that at the core of the inventive idea was an essentially non-technical rule in the form of a program for organising and processing data in a word processing system. The mere fact that use of the program in a computer saved memory space, reduced access times and increased the speed of the processing operation as a whole did not turn a non-technical program into a technical one. The present teaching did not therefore represent a novel, inventive computer structure, nor did the method provide a means of using a computer in a new, hitherto unusual and non-obvious way. All that was involved was information processing without any effect on the physical environment. The application's subject-matter extended merely to the logical concept of using the phonetic features of the Chinese language to identify Chinese characters in a computer using as little memory as possible and with the shortest possible access times. These logical mental instructions were not made technical simply by using technical means to carry them out in a computer; they remained a program as such within the meaning of Section 1, paragraphs 2 and 3, of the Patent Law 1981.

2. The further appeal claims that the normal criteria for assessing technicality do not provide adequate protection for intellectual property. Moreover, the contested decision had deviated from the jurisprudence of the Senate hearing the case. Its definition of the core of the claimed teaching had been too abstract and had paid too little attention to the detailed presentation of the memory configuration, the search and address operations and the means of transmitting data to the printing device. It had also failed to realise that the term "logical mental instructions" had no legal validity. The court had not questioned the technical effect obtainable by using the claimed method, but had assessed the method unfairly as a conventional word processing system. In fact it was more efficient for use on computers than existing methods, which required several features to be entered before the desired character could be printed. Finally, the Federal Patent Court had failed to realise that it was precisely the new organisation of the memories and their contents which contributed to the teaching's technical character. The method made use of electronics - i.e. controllable natural forces - to achieve the desired result of reducing memory space, etc. There was no qualitative difference between a method controlled by inputting phonetic symbols individually and one in which the activation of a brake pedal while travelling along a particular kind of surface triggered control pulses - the subject-matter in the Senate's Antiblockiersystem judgment (GRUR 1980, 849). A further argument in favour of the present method's technicality was the fact that it could be carried out using a fixed-wire circuit.

Finally, the further appeal takes issue with the Federal Patent Court for failing to examine the sub-claims.

3. The further appeal is held to be without foundation. (...) The Federal Patent Court was right in denying the technical character of this teaching.

(a) The teaching relates to a method of entering Chinese characters in word processing systems. The description on which the application is based refers to earlier suggestions for entering characters or character sequences (words) using the phonetic symbols for the initial sound and the ending and - if necessary to avoid ambiguity - adding further information in the form of the phonetic symbols for the marginal sign, the tone symbol and the symbol depicting the character's graphic structure. This made it unnecessary to use a fixed code and thereby reduced the operating requirements for the input device. Moreover, the fact that a display field provided continuous communication between the operator and the input device speeded up input and hence increased typing speed. An important factor was a cut in the number of ambiguities which could occur when characters were captured phonetically. Such ambiguities arose because Chinese script included about 10 000 different characters forming some 50 000 words, and characters pronounced in the same way (homophones) could have many meanings distinguishable by marginal signs, tone and graphic depiction. Tone symbols, like graphic depiction, could be captured via the keyboard. Much of the ambiguity was avoided simply by entering these symbols, but a further improvement could be achieved by entering whole words. Memory space presented a problem because of the large amount of data involved, particularly when such equipment was used for typing. A total memory capacity of 1230 KB was needed, which apart from the considerable cost also affected the circuitry and processing speed.

The problem to be solved by means of the teaching claimed here as an invention consists in reducing the storage requirement, increasing operating speed, particularly by reducing access times (cf. pages 3 and 4 of the description), and at the same time avoiding ambiguities.

(b) To solve this problem a particular configuration of the word processing system is suggested, including a control and memory unit with at least four memories in addition to a keyboard, a display unit and/or a printing device. The method provides for specific information to be recorded in a particular order in the first, second and third memories, the first memory containing the character symbols, the second memory the character sequences (words) and the third the sub-characters making up the characters. Also included are the procedural steps involved in data input, data processing (search, identification, designation, addressing and retrieval) and data output.

(c) The subject-matter of the teaching claimed in Claim 1 is a method of capturing Chinese characters in word processing systems, according to which

(1) the word processing system has at least the following

features:

(1.1) an input keyboard,

(1.2) a control and memory unit with

(1.2.1) a first memory (SP1),

(1.2.2) a second memory (SP2),

(1.2.3) a third memory (SP3),

(1.2.4) a fourth memory (SP4),

(1.3) a display unit (D)

(1.4) and/or a printing device (DW),

(2) and the following information is stored in the memories:

(2.1) - in the first memory (SP1) -

(2.1.1) character symbols in the form of

(2.1.1.1) phonetic symbols

(2.1.1.2) and if necessary graphic symbols (G)

(2.1.2) as addresses assigned consecutive ordinal numbers (1 to 10⁴)

(2.1.3) according to the frequency of their occurrence in the Chinese language,

(2.2) - in the second memory (SP2) -

(2.2.1) character sequences (words) made up of characters stored in the first memory (SP1)

(2.2.1.1) with at least two characters,

(2.2.1.2) arranged according to the frequency of the first character,

(2.2.2) and the character sequences compiled as groups (G1 to G4) in each memory area addressed,

(2.2.2.1) the groups being arranged as follows:

(2.2.2.1.1) G1 containing two-character sequences,

(2.2.2.1.2) G2 containing three-character sequences,

(2.2.2.1.3) G3 containing four-character sequences,

(2.2.2.1.4) G4 containing five-character sequences

(2.2.2.2) and the character sequences within each group arranged according to frequency,

(2.2.2.3) as a combination of the ordinal numbers (1 to 10⁴) forming the addresses in the first memory, and

(2.3) - in the third memory (SP3) -

(2.3.1) information (TZN, TZL) for the part-characters (TZ) making up a character,

(2.3.2) among the addresses (1 to 10⁴) in the first memory (SP1),

(3) using the following procedural steps:

(3.1) using keys on the input keyboard (ET), individual characters and character sequences making up words are entered in the form of

(3.1.1) phonetic symbols (PV, PE, B),

(3.1.2) and/or graphic symbols (G);

(3.2) in the first memory a search is made for characters

associated with the symbols entered (PV, PE, B, G);

(3.3) the addresses (ADR) of the characters thus retrieved are assigned ordinal numbers (1 to 10⁴);

(3.4) using this address (1 to 10⁴) the second and third memories (SP2, SP3) are designated,

(3.5) after an area has been addressed in the second memory (SP2) using the number (e.g. 99) assigned to the first character in a group (G1 to G4)

(3.5.1) each combination of characters making up a group (G1 to G5) is selected and

(3.5.2) compared successively with the addresses of other characters (e.g. 99/13) retrieved

(3.5.2.1) in the first memory (SP1)

(3.5.2.2) by successively entering further symbols (PV, PE, B, G),

(3.6) if the comparison is positive, the combination retrieved (e.g. 99/13) is used to address the third memory (SP3),

(3.7) the information (TZN, TZL) selected from the addressed areas (e.g. 99, 13) in the third memory (SP3) is used to address the fourth memory (SP4)

(3.8) and via the fourth memory (SP4) the information (DI) corresponding to the combination retrieved (e.g. 99, 13) is fed

(3.9) to the display unit (D)

(3.10) and/or the printing device (DW).

(d) With regard to patentability, Section 1 of the Patent Law 1981 governs the present patent application filed in 1981 (Article XI, Section 1, of the Law on International Patent Treaties). Under that provision, which equates with Article 52, paragraphs 1 to 3, of the European Patent Convention (EPC), patents are granted for inventions which are new, involve an inventive step and are susceptible of industrial application (Section 1, paragraph 1, of the Patent Law 1981). Schemes, rules and methods for performing mental acts, and computer programs perse, are not regarded as inventions (Section 1 paragraph 2, point 3, and paragraph 3, of the Patent Law 1981). The Senate hearing this case has not had to consider the application of these regulations before.

Like Section 1 of the Patent Law 1968, the provision governing the present patent application does not mention the fact that patents are only granted for inventions in the field of technology. This Senate repeatedly upheld this principle in the judgments it issued before the harmonised patent law took effect (BGHZ 52, 74 et seq. - Rote Taube; BGHZ 67, 22, 27 et seq. -Dispositionsprogramm; BGH GRUR 1986, 531, 533 - Flugkostenminimierung). It did so on the ground that the term "technology" is the only usable criterion for eliminating other types of human endeavour from patent protection (BGHZ 67, 22, 33 - Dispositionsprogramm). The Patent Law 1981 did not change this in any way.

The EPO Boards of Appeal share this view; they require the subject-matter for which patent protection is sought to solve a technical problem by technical means or make a technical contribution to the state of the art (Computer und Recht 1991, 21 et seq. - Character form/SIEMENS1; GRUR Int. 1990, 465 et seq. -Document abstracting and retrieving/IBM2).

The subject-matter of the present application is compatible with neither the definition of a technical invention according to previous German law nor the conditions which the Boards of Appeal require a technical invention to fulfil.

(e) No decision is needed as to whether the claimed teaching relates to a computer program per se within the meaning of Section 1, paragraph 2, point 3, and paragraph 3 of the Patent Law, because the teaching lacks a technical character for other reasons.

(f) The subject-matter of the present application relates primarily to assigning Chinese characters to particular areas according to their symbols, character sequences and part-characters, and within those areas according to further criteria, by selecting, sorting and classifying their contents (addresses). This sorting system is of a mental nature and does not use any means within the realm of technology and outside the scope of human intellectual activity.

The other features included in the claim - such as the input keyboard, control and memory unit, display and printing device, input, storage system, and the searching, selecting, comparing, displaying and transmitting of characters to the printing device - are of secondary importance for the teaching's success, which depends entirely on the mental acts involved in arranging the data to be processed.

Unlike the subject-matter in the Seitenpuffer case of the same date (X ZB 13/88), the teaching of the present application does not relate to the operability of a computer per se, because it does not consist in enabling its various elements to work together. The features of the computer mentioned in Claim 1 do not give the teaching its intrinsic character, which resides entirely in the mental acts involved in arranging the data to be processed. The features mentioned in Claim 1 contribute only indirectly to the desired result. That is not sufficient to confer a technical character on the claimed teaching.

The Senate's present ruling accords with the case law of the EPO Boards of Appeal (see EPO decision, GRUR Int. 1990, 465, 467 = OJ EPO 1990, 12 - Document abstracting and retrieving/IBM; EPO decision, GRUR Int. 1991, 118, 120 et seq. = OJ EPO 1990, 384, 391 et seq. - Text processing/IBM; decision T 121/85 of 14 March 1989, supplement to OJ EPO 6/1990, p. 17; decision T 52/85 of 16 March 1989, loc. cit., p. 17 et seq.; decision T 65/86 of 22 June 1989, loc. cit., p. 18; EPO decision, Computer und Recht 1991, 21 et seq. - Character form/SIEMENS; decision T 603/89 of 3 July 1990, supplement to OJ EPO 6/1991, p. 15; decision T 95/86 of 23 October 1990, loc. cit., p. 15 et seq.). The subject-matter in the EPO's VICOM case (OJ EPO 1987, 14 et seq.), which the Appeal Senate believes could be patented, bears no relation to the present case.

4. There are no grounds for contending that the Federal Patent Court failed to consider the sub-claims separately to see whether they were of a technical nature. Sub-claims are not examined for independent inventive content (cf. BGH GRUR 1983, 171 Schneidhaspel). (...) Similarly, examining them separately to establish whether they contain a technical teaching, even though the main claim does not, is only necessary if the applicant so claims and requests the grant of a patent - at least in the alternative - for the subject-matter of one of the sub-claims. The present further appeal does not make it clear that this was the case (Section 102 paragraph 4, point 3, of the Patent Law). (...)

DE 2/92