The Board of Appeal compares a (patentable) technical process with a
mathematical method and with a computer program as such.
Mathematical method
In T208/84
r. 5 of the decision the Board of Appeal considers what
distinguishes a technical process from a mathematical method as such.
A mathematical process is only an abstract concept prescribing an
operation on numbers and with a numerical result. A technical process
however is carried out on a physical entity (possibly represented by
numbers) and results in a certain change in that entity, even if the
underlying idea may be considered to be a mathematical method (T208/84
r. 6), as long as the protection sought is not for the mathematical
method as such.
There is also no objection against the use of mathematical
expressions in a claim to describe the functions of the technical
features of the claim (T208/84
r. 8).
Computer program as such
A claim directed to a technical process which process is carried out
under the control of a program (be this implemented in hardware or in
software), cannot be regarded as relating to a computer program as
such, as it is the application of the program for determining the
sequence of steps in the process for which in effect protection is
sought. Consequently, such a claim is allowable (reason
12).
A computer of known type set up to operate according to a
new program cannot be considered as forming part of the state
of the art (reason
14).
Generally, claims which can be considered as being directed to a
computer set up to operate in accordance with a specified program
(whether by means of hardware or software) for controlling or
carrying out a technical process cannot be regarded as relating to
a computer program as such (reason
15).
Making a distinction between embodiments of the same invention
carried out in hardware or in software is inappropriate. Generally
speaking, an invention which would be patentable in accordance with
conventional patentability criteria should not be excluded from
protection by the mere fact that for its implementation modern technical
means in the form of a computer program are used. Decisive is what
technical contribution the invention as defined in the claim
when considered as a whole makes to the known art. Finally, it would
seem illogical to grant protection for a technical process controlled by
a suitably programmed computer but not for the computer itself when set
up to execute the control (reason
16).
Industrial applicability
The Examining Division did not explicitly deal with the industrial
applicability requirement. Appellants reasoned in their submissions that
the invention was cleary susceptible of industrial application as they
sell products covered by the claims. According to the Board of Appeal,
this reasoning is not sufficient to determine industrial applicability.
The Board of Appeal concluded that the invention is susceptible to
industrial application though. Obtaining an image of a physical or
simulated object may be used for investigating the object or for
designing the object, and is therefore susceptible of industrial
application. In that line, enhancing or restoring an image of an object
is susceptible of industrial application too.
The Board of Appeal compares a (patentable) technical process with a mathematical method and with a computer program as such.
Mathematical method
In T208/84 r. 5 of the decision the Board of Appeal considers what distinguishes a technical process from a mathematical method as such. A mathematical process is only an abstract concept prescribing an operation on numbers and with a numerical result. A technical process however is carried out on a physical entity (possibly represented by numbers) and results in a certain change in that entity, even if the underlying idea may be considered to be a mathematical method (T208/84 r. 6), as long as the protection sought is not for the mathematical method as such.
There is also no objection against the use of mathematical expressions in a claim to describe the functions of the technical features of the claim (T208/84 r. 8).
Computer program as such
A claim directed to a technical process which process is carried out under the control of a program (be this implemented in hardware or in software), cannot be regarded as relating to a computer program as such, as it is the application of the program for determining the sequence of steps in the process for which in effect protection is sought. Consequently, such a claim is allowable (reason 12).
A computer of known type set up to operate according to a new program cannot be considered as forming part of the state of the art (reason 14).
Generally, claims which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling or carrying out a technical process cannot be regarded as relating to a computer program as such (reason 15).
Making a distinction between embodiments of the same invention carried out in hardware or in software is inappropriate. Generally speaking, an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that for its implementation modern technical means in the form of a computer program are used. Decisive is what technical contribution the invention as defined in the claim when considered as a whole makes to the known art. Finally, it would seem illogical to grant protection for a technical process controlled by a suitably programmed computer but not for the computer itself when set up to execute the control (reason 16).
Industrial applicability
The Examining Division did not explicitly deal with the industrial applicability requirement. Appellants reasoned in their submissions that the invention was cleary susceptible of industrial application as they sell products covered by the claims. According to the Board of Appeal, this reasoning is not sufficient to determine industrial applicability. The Board of Appeal concluded that the invention is susceptible to industrial application though. Obtaining an image of a physical or simulated object may be used for investigating the object or for designing the object, and is therefore susceptible of industrial application. In that line, enhancing or restoring an image of an object is susceptible of industrial application too.