T 0574/98 () of 22.10.2002

Summary of Facts and Submissions

1. The appellant (applicant) lodged an appeal, received on 18. March 1998, against the decision of the examining division, dispatched on 20 January 1998, refusing the European patent application No. 92 600 010.0 (publication No. EP-A-0 556 530). The fee for the appeal was paid on 18 March 1998. The statement setting out the grounds of appeal was received on 15 May 1998.

The appellant requests that the decision under appeal be set aside and a patent be granted on the basis of the following documents:

Claims:

No. 1 to 4 filed with the letter of 18 November 1996;

No. 5 filed with the letter of 18 June 1996;

Description:

Pages 1 and 1a filed with the letter of 18 June 1996;

Pages 2 and 3 as originally filed

Drawings:

Sheets 1 to 5 as published.

The claims read as follows:

"1. Method of manufacturing an exercise book consisting of sheets of normal paper upon which letters, numbers and drawings are a) printed and b) deeply indented and are useful to practice in learning handwriting and drawing,

characterized in that on normal writing paper in exercise book format on every left hand side page of the book, of paper or cardboard, large coloured letters, words, numbers and drawings are printed, that each right hand side page (1) of the book, of paper or cardboard, has upon it stamped out cylindrical indentations (2) which form letters, words, numbers or drawings (4).

2. The exercise book, according to claim 1, consisting of sheets of normal writing paper, characterized in that on the left hand side page of the book coloured letters, symbols and pictures with relevant word are printed, whereas on the right hand side page of the book are indentations of the letters, symbols or drawings in normal wriring [sic] paper.

3. A learning method, especially for dyslexic pupils and disabled children, characterized in that forms, i.e. letters, numbers and other symbols, can be recognized with the eyes, remembered and found on the opposite page with the eye or the fingertips and then formed with a pencil under handguiding by the indentations.

4. A learning method of handwriting, spelling, arithmetic and/or drawing by pupils, as in claim 1, characterized in that sheets (1) are used, whereby the pupil writes in pencil (3) directly whithin [sic] the non-coloured indentations (2) of the right hand side page of the exercise book.

5. The use of the exercise book according to claims 1-3 and of sheets as in claim 1 for learning handwriting, drawing and spelling bu [sic] students of all ages and different intellectual abilities or illiterates."

2. The examining division considered the subject-matter of claims 1 to 5 to lack an inventive step (Articles 52(1) and 56 EPC) in view of the teaching of document DT 24 44 751 A1, referred to as document D2 in the examination procedure, and the skilled person's general knowledge.

Moreover, with respect to claim 3, the examining division identified amendments which introduced subject-matter extending beyond the content of the application as originally filed (Article 123(2) EPC).

3. The appellant provided in substance the following arguments:

The inventive step compared to document D2 was that

(a) for the first time normal writing paper was used to manufacture the sheets and the invention did not require any kind of preparatory actions;

(b) the formation of an exercise book made of many sheets and the exercise book format were the result of the introduction of the technique to use normal writing paper and not obvious choices of design;

(c) only the exercise book format made the claimed relative arrangement of instruction and exercise areas possible.

Claim 3 did not contain undisclosed subject-matter.

The expression "students of all ages and intellectual abilities" as maximum contained the minimum, i.e. children, young people or old people, brilliant minds as well as retarded persons. Learning incapacities due to disability, dyslexia, all forms of learning difficulties were varieties of human intelligence and its abilities. It could therefore be directly and unambiguously derived from said expression that the present invention did indeed refer to such cases.

Furthermore, "developing his tactile and visual memory" namely meant more than just the tactile sensation arising when writing a letter by following the indentations. This sensation was indeed a development of the tactile sense itself, but the development of the tactile memory, the capacity of recalling and reproducing, achieved by searching and finding with the fingertips was much more. Moreover, the expression "forms [..] can be found with the fingertips" as the maximum contained the minimum, i.e. the development of tactile and visual memory, and could therefore be directly and unambiguously derived from said expression.

The same also applied to the expressions "by means of the varying references to the variety of life and human society" and "correct learning in all cases" which were used in order to avoid endless lists of cases.

Reasons for the Decision

1. The appeal is admissible.

2. Inventive step

2.1. The closest prior art for a method according to claim 1 is considered to be provided by document D2. In particular, using the terms of claim 1, from document D2 (cf page 1, lines 30 to 37) a method is known of manufacturing exercise sheets of the size and thickness of postcards upon which letters or words and drawings are printed and deeply indented and which are useful to practice with learning handwriting and drawing, wherein on the cardboard sheets drawings are printed and wherein the cardboard sheets have "stamped out indentations" which form letters or words.

The subject-matter of claim 1 differs from this prior art in that:

an exercise book consisting of several sheets is manufactured rather than merely loose exercise sheets,

the sheets are made of normal writing paper, and

the drawings are printed in colour and provided on the left-hand side pages and the indentations are cylindrical and provided on the right-hand side pages of the book.

The objective problem associated with these differences is to be seen in the desire to provide printed exercise material in a form which is practical to use. This problem is commonly addressed by the skilled person in the technical field at issue, familiar with teaching aids in printed form.

Regarding the use of normal writing paper, it is noted that although the above-mentioned embodiment of document D2 uses sheets of the size and thickness of postcards, presumably of cardboard, document D2 also discloses the manufacturing of indented exercise sheets made of normal writing paper (cf page 1, lines 16 to 21). In particular, the paper sheets are placed on a surface with raised ridges forming a mirror image of the pattern and by means of a rubber roller and with the finger the ridges are pressed into the paper so as to form grooves. The grooves in the paper no longer appear as a mirror image and the writing exercise on the paper with the grooves can take place. Clearly normal writing paper is used in contrast to the transparent paper or thicker paper like cardboard used in the alternative embodiment discussed in document D2. It goes without saying that normal writing paper is also suitable for receiving printed drawings. Accordingly, at the filing date of the present application the aforementioned skilled person would have considered using normal writing paper as an alternative to the postcard-like sheets without the exercise of inventive skills.

Moreover, manufacturing an exercise book with several sheets rather than loose sheets must be considered obvious, as it was common to collect sheets in a book in order to keep them together. This finding is corroborated by the fact that claim 6 of document D2 already hints at collecting the sheets in the form of booklets. Also printing the drawings in colour must be considered obvious, as it was commonly used to improve the appearance.

As far as the shape of the indentations is concerned, it is noted that from the limited number of conceivable shapes, the cylindrical shape is both simple to obtain by indenting and clearly well-suited for guiding the tip of a pencil, and thus would have constituted an obvious choice for the person skilled in the art.

Finally, as pointed out by the first instance, when designing exercise sheets requiring an area with instructions and an area where the pupil can exercise, it is common, for right-handed persons, to put the area in which the pupil writes either to the right of the instructions or below them. These two arrangements offer the advantage that instructions remain visible while the pupil writes in the exercise area. In document D2 the indented exercise area is, by way of example, positioned below the printed drawing. However, when faced with the task of selecting a layout for a number of exercise sheets in book form, the skilled person would have considered alternative arrangements thereby taking due account of the above considerations as well as the space required for the instructions and the corresponding exercise areas as a matter of routine design practice. Thereby the claimed solution of providing the instruction on the left-hand side page and the exercise area on the right-hand side page would have readily occurred to him.

2.2. The arguments submitted by the appellant in support of the presence of an inventive step are not found convincing.

As regards the use of normal writing paper, claim 1 is ambiguous in that the sheets are defined to be of "normal paper" or "normal writing paper" as well as to be "of paper or cardboard". The same ambiguity is apparent from the description (see page 1, line 10; page 3, lines 8 to 9, 15 and 21). In this respect, the board also notes that the originally filed drawing sheets are made of cardboard rather than normal writing paper. But even if the subject-matter of claim 1 were limited to the use of sheets of normal writing paper, this feature would constitute an obvious alternative already hinted at in document D2 as discussed above.

Regarding the argument that the invention did not require any preparatory action, it is noted that also the postcard-like exercise sheets of document D2 are printed and indented, and ready for use. This is not altered by the fact that normal writing paper may be used as an alternative.

Regarding the argument that the formation of an exercise book made of many sheets was not an obvious choice of design but rather the result of the introduction of the technique to use normal writing paper, it is noted that at the filing date books were also commonly made of materials other than paper, such as cardboard. Accordingly, the skilled person would have already considered providing the postcard-like exercise sheets of document D2 in book form as an obvious design option. Replacing the postcard-like sheets by normal writing paper would have rendered the option of forming a book equally obvious.

Moreover, the argument that only the exercise book format would make the claimed relative arrangement of instruction and exercise areas possible, is based on the assumption that the formation of a book would not have occurred to the skilled person. However, as argued above, this assumption is unfounded.

Accordingly, the subject-matter of claim 1 does not involve an inventive step in the sense of Article 56 EPC, contrary to the requirements of Article 52(1) EPC.

2.3. Claims 2, 4 and 5, in spite of the fact that they could have been worded more clearly by taking due account of the category and the designation of the subject-matter of the claim(s) they refer to, do not define any subject-matter which could be considered to involve an inventive step with respect to document D2 in substance for the reasons already given above with respect to claim 1.

3. Claim 3 contains information which extends beyond the content of the application as originally filed. In particular, the original application does not disclose that the learning method is especially for dyslexic pupils and disabled children, and that the letters, numbers and other symbols can be found on the indented page with the fingertips.

Regarding the suitability of the method, it is noted that the originally filed application documents refer to the "correct execution of learning exercises in all cases" (cf original description, page 1, line 34) but only mention pupils in general and specifically "students of all ages and intellectual abilities" (cf original claim 3). There is no disclosed information allowing to adapt the learning method to be particularly beneficial to dyslexic pupils and disabled children. The reference to the "variety of life and human society" (cf original description, page 1, lines 18 to 19) relied upon by the applicant seems rather to refer to the nature of the depicted objects.

As regards the use of the fingertips, it is noted that the originally filed application documents only refer to the "developing" of the "tactile memory" of the pupil (cf original description, page 2, line 4). This may indeed involve memorising the tactile sensation arising when following the indentations with a pencil, or when directly contacting the indentations with the fingertips or other body parts. However, there is no information disclosed in the application of a learning method specifically adapted to find symbols etc. with the fingertips.

The appellant seems to argue, although not fully consistently when referring to the use of the fingertips, that a general feature as a maximum contained a more limited feature as the minimum and that therefore the more limited feature could be derived directly and unambiguously from the general feature.

The board disagrees with this view. Typically a more limited feature provides a selection from the multiplicity of possibilities covered by the more general feature and thus provides the additional information that the selection is to be preferred.

Furthermore, where the selection is directed to the subject-matter being suitable for a particular purpose, like in the present case, certain measures required for this purpose may be implied for which the original disclosure provides no basis. Adding such information after the filing date of the application typically gives the applicant an unwarranted advantage, which Article 123(2) EPC is meant to preclude.

In the present case, the contested features are selections, which as such are not directly and unambiguously derivable from the more general features which were originally disclosed, but rather require some judicious considerations.

Accordingly, claim 3 contains information which extends beyond the content of the application as originally filed, contrary to the requirements of Article 123(2) EPC.

Moreover, as far as originally disclosed, the subject-matter of claim 3 does not involve an inventive step with respect to document D2 in substance for the reasons already given above with respect to claim 1.

4. Consequently, the appellant's request is not allowable.

ORDER

For these reasons it is decided that:

The appeal is dismissed.