T 0026/86 (X-ray apparatus) of 21.5.1987

Summary of Facts and Submissions

I. The respondents are proprietors of European patent No. 0 001 640 (application No. 78 101 198.6).

II. Oppositions filed by the appellants Siemens (0I) and Philips (0II) (opponents) were rejected by the Opposition Division. ...

IV. Appellants 0I and 0II appealed against this decision.

V. Oral proceedings were held, at which no one was present on behalf of appellant 0I ....

VI. Appellant 0I requested in the notice of appeal that the contested decision be set aside and the patent revoked.

VII. Appellant 0II requested in oral proceedings that the contested decision be set aside and

1. the patent revoked (main request);

2. the matter referred to the Enlarged Board of Appeal (alternative request).

VIII. The respondents (patent proprietors) requested in oral proceedings that the appeals be dismissed.

IX. Claim 1 in its current form is worded as follows:

"1. X-ray apparatus for radiological imaging having an input unit (20) both for selecting one of several X-ray tubes (46, 48, 50) with adjustable focal spot size and rotating anode speed and for selecting X-ray tube current and exposure time, said apparatus also having a data processing unit (12) which stores the X-ray tube rating curves for different exposure parameters and uses these to set the tube voltage values for the exposure parameters selected, characterised in that in order to ensure optimum exposure with sufficient protection against overloading of the X-ray tube within any given routine the data processing unit (12): (a) initially maintains both the X-ray tube voltage and the product of tube current and exposure time constant, while decreasing the tube current from the maximum permissible value until the relevant rating curve permits an exposure, (b) where no exposure is possible and the maximum permissible exposure time has been reached, increases the tube voltage and decreases the tube current as a function of the secondary requirement of constant density until the relevant tube rating curve does allow an exposure, and (c) determines the exposure parameters, firstly on the basis of the rating curve of the smallest focal spot optimum for image resolution and of the standard speed of the rotating anode, and, where exposure is not permitted, compares the exposure parameters selected with the nearest-to-optimum rating curves for image resolution for different focal spot values and with the anode rotation speed, starting with the curves for the smallest focus spot and a faster anode rotation speed, and in that means are also provided to transmit the exposure parameter values obtained from the data processing unit (12) under the given routine, via appropriate selection circuits (58/60 or 64) to an operating and supply circuit (52) in order to set the high-voltage generator." Claims 2 to 5 are dependent upon Claim 1.

X. Appellant 0I took the view that the subject-matter of the contested patent was not patentable, being covered by Article 52(2) EPC. The only difference between its subject- matter and the state of the art, particularly as represented by US-A- 4 035 648(D1), consisted in using a new program for a known computer. ...

XI. Essentially, appellant 0II confirmed that features (a), (b) and (c) of the routine technically influenced the functioning of the X-ray apparatus as a whole as claimed in Claim 1 of the contested patent and that, following the Guidelines for Examination and Decision T 208/84 "VICOM", OJ EPO 1/1987, p. 14, the subject-matter of Claim 1 was to be regarded as an invention within the meaning of Article 52(1) EPC. This, however, would have the effect of undermining Article 52(2) EPC, since it would mean that any computer program designed for a general-purpose computer would meet the patentability requirements because of the technical effect of generating electric signals. The expression "subject-matter or activities as such" in Article 52(3) EPC should not be interpreted too narrowly. In other words, Article 52(2) EPC should be regarded as applying whenever the essence of the subject-matter was not of a technical character (as when the essence of the teaching was a computer program). This interpretation was in line with the case law of the German Federal Court of Justice. The essence of the subject-matter in Claim 1 of the contested patent was a pure computer program without any constant interaction with the X-ray apparatus "hardware". Under Article 52(2) and (3) EPC, therefore, the subject-matter of Claim 1 was not patentable.

XII. The respondents disputed these statements. It was not possible to split the subject-matter of Claim 1 into a technical and a non-technical part. The invention produced atechnical effect so that the subject-matter of Claim 1 was patentable. ...

Reasons for the Decision

1. The appeal is admissible. ...

3.Invention within the meaning of Article 52(1) EPC.

3.1 To decide whether the subject-matter of Claim 1 is or is not an invention within the meaning of Article 52(1) EPC, it is necessary to determine whether or not it is a computer program as such and hence falls under Article 52(2)(c) and (3) EPC. Claim 1 relates neither to a computer program on its own and divorced from any technical application, nor a computer program in the form of a recording on a data carrier, nor a known, general-purpose computer in combination with a computer program. It is in fact an X-ray apparatus incorporating a data processing unit operating in accordance with a routine which produces a technical effect in the X-ray apparatus. This emerges clearly from the characteristics (a), (b) and (c) of Claim 1, which states that the X-ray tubes are controlled by the routine so that by establishing a certain parameter priority, optimum exposure is combined with adequate protection against overloading of the X-ray tubes. The subject-matter of Claim 1 is therefore an invention within the meaning of Article 52(1) EPC and patentable irrespective of whether or not the X-ray apparatus without this computer program forms part of the state of the art.

3.2 Appellant OII believed there was no constant technical interaction between the program and the X-ray apparatus but that a technical effect was produced only at the end of a computing operation, so that the conventional X-ray apparatus and the computer program had to be looked at quite separately. The Board of Appeal is unable to share this opinion. When the technical effect occurs is irrelevant to the question of whether the subject-matter claimed constitutes an invention under Article 52(1) EPC. The only fact of importance is that it occurs at all.

3.3 Appellant 0II objects that the position taken in the Guidelines (C-IV, 2.2) and in Decision T 208/84 delivered by Board 3.5.1 (OJ 1/1987, p. 14, VICOM) would render Article 52(2)(c) EPC totally ineffectual because even an ordinary computer program used in a general-purpose computer could then be regarded as an invention under Article 52(1) EPC since each computing operation is carried out with the aid of natural, i.e. electromagnetic, forces. The Board takes the view that, while an ordinary computer program used in a general-purpose computer certainly transforms mathematical values into electric signals with the aid of natural forces, the electric signals concerned amount to no more than a reproduction of information and cannot in themselves be regarded as a technical effect. The computer program used in a general-purpose computer is thus considered to be a program as such and hence excluded from patentability by Article 52(2)(c) EPC. But if the program controls the operation of a conventional general-purpose computer so as technically to alter its functioning, the unit consisting of program and computer combined may be a patentable invention.

3.4 To support the contention that the invention is not of a technical nature and cannot therefore be patented, appellant 0II has adduced the case law of the German Federal Court of Justice and in particular Decision X ZR 65/85 of 11 March 1986 (GRUR 1986, p. 531, Flugkostenminimierung). The appellant company holds, in the light of the principles underlying this and earlier relevant decisions of the Federal Court of Justice (cf. BGH GRUR 1978, p. 102, Prüfverfahren; BGH GRUR 1977, p. 96, Dispositionsprogramm; GRUR 1981, p. 39, Walzstabteilung), that the subject-matter is not patentable because the invention essentially consists of the program, which is excluded from patentability by Article 52(2)(c) EPC. According to the case law of the Federal Court of Justice referred to above, the principal factor determining whether an invention is of a technical nature is the substance of the claimed teaching, that is the main field involved. To the Federal Court of Justice a teaching is not technical if in its essence it states a rule that can be carried out without employing controllable natural forces other than human brainpower, even if the use of technical means appears expedient or indeed the only sensible and hence the necessary procedure, and even if reference is made to these technical means in the claims or description. The Board is unable to share this view because it makes the field in which an invention essentially lies crucial to the issue of whether that invention is or is not technical in nature. The Board holds that an invention must be assessed as a whole. If it makes use of both technical and non-technical means, the use of non-technical means does not detract from the technical character of the overall teaching. The European Patent Convention does not ask that a patentable invention be exclusively or largely of a technical nature; in other words, it does not prohibit the patenting of inventions consisting of a mix of technical and non-technical elements. Apart from the fact that the Board fails to find any legal basis in the European Patent Convention for the theory of the Federal Court of Justice concerning the essence of inventions, it also sees practical objections to a need to give a weighting to technical and non-technical aspects because according to the Federal Court of Justice the criterion to be applied is which aspect makes the essential contribution to the invention's success. Not only is such a decision fraught with difficulties in practice; it also has the effect of making the teaching unpatentable in its entirety if the greater part is non-technical and even though the technical aspect which is found to be subordinate is in fact judged to be novel and to involve inventive step. The Board therefore regards it as unnecessary to weigh up the technical and non-technical features in a claim in order to decide whether it relates to a computer program as such. If the invention defined in the claim uses technical means, its patentability is not ruled out by Article 52(2)(c) and (3) EPC and it can be protected if it meets the requirements of Articles 52 to 57 EPC.

4.Novelty. ...

4.5 The subject-matter of Claim 1 is therefore novel (Article 54 EPC).

5.Inventive step. ...

5.4 Accordingly, the subject-matter of Claim 1 cannot be arrived at by an obvious route and therefore fulfils the relevant requirement of Article 52(1) in conjunction with Article 56 EPC.

5.5 Dependent Claims 2 to 5 relate to particular embodiments of the X-ray apparatus as claimed in Claim 1 and are therefore also allowable.

6.The Board is unable to comply with the request by appellant 0II that the matter be referred to the Enlarged Board of Appeal. Under Article 112 EPC the Board of Appeal, to ensure uniform application of the law, or if an important point of law arises and it considers that a decision is required, refers questions to the Enlarged Board of Appeal on request. The above conditions do not obtain in the present case since the Board's decision is in line with the earlier Decision T 208/84 of 15 July 1986 by Board 3.5.1 (OJ EPO 1/1987, p. 14, VICOM), so that uniform application of the law in the important matter of the patentability of inventions using a computer program is assured. The Board therefore considers a decision by the Enlarged Board of Appeal unnecessary.

ORDER

For these reasons, it is decided that:

1. The appeals are dismissed.

2. The request that the proceedings be referred to the Enlarged Board of Appeal is refused.