T 803/17 - Planning a surgery using a statistical shape model - Is providing a computer model a technical task?

Decision T 803/17 from Board 3.2.02 is remarkable, in my opinion, not so much for what it considered important for the assessment of inventive step, but more for what the decision did not consider important.

The invention in this case relates to a computer implemented method of planning at least a part of a surgical procedure to be carried out on a body part of a patient. The method provides a "statistical shape model" of a body part and then "instantiat[es] the statistical shape model of the body part using data derived from the patient's real body part". When the method instantiates the statistical shape model, it "adapts the part of the planned surgical procedure to reflect the anatomy of the patient's real body part to automatically plan the part of the planned surgical procedure."

Claim 1 reads as follows:

"1. A computer implemented method (110) of planning at least a part of a surgical procedure to be carried out on a body part of a patient, comprising:
providing (112) a statistical shape model of the body part; and
instantiating (116) the statistical shape model of the body part using data derived from the patient's real body part, characterised in that, the statistical shape model incorporates data representing at least a part of a planned surgical procedure to be carried out on a corresponding real body part of the patient and wherein instantiating the statistical shape model of the body part also adapts the part of the planned surgical procedure to reflect the anatomy of the patient's real body part to automatically plan (118) the part of the planned surgical procedure."

While the official catchwords of the decision deal with the concept of reformatio in pejus in the case of an inadmissible opposition (if you are interested in this, please read here), I find more remarkable the manner in which the Board dealt with the question of inventive step, namely, the manner in which they dealt with "model"-related features and the question of whether such computer models have technical character.

T 489/14 - Pedestrians simulation claims not inventive after G 1/19 (preliminary opinion)

The technical board in T 489/14 referred questions to the Enlarged Board in  G 1/19. The technical board substantially asked whether a computer-implemented simulation of a technical system (claimed as such) had technical character and whether it could support inventive step under the COMVIK approach. 

Now that the Enlarged Board has handed down its decision in G 1/19, the technical board in T 489/14 has summoned to oral proceedings, and they have given their preliminary opinion on inventive step of the claims underlying the appeal.

Not surprisingly, the technical board concludes that the simulation of pedestrians movement through an "environment" is a non-technical task and it sees no inventive contribution of the claimed simulation steps.

T 42/10 - Assessing players' performance is not technical

This appeal is directed against the decision of the examining division to revoke EP app. no. 06270014.1.

Claim 1 was directed to:

"A computer-implemented method of determining an indication of the relative skill (205) of at least a first player and a second player of a game based on the outcome of one or more such games involving those players said method comprising the steps of: ... [various method steps including the use of a factor graph and calculation rules]"

In the assessment of inventive step, the Appeal Board had to assess in how far the features of the claim had technical character (and so could contribute to inventive step). 

T 944/15 - Computer program excluded as therapeutic method (Art. 53(c) EPC)

T 944/15 (Monitoring patient position / Brainlab) of 3.11.2020 is a remarkable decision, as it applies the exclusion from patentability for therapeutic methods (Art. 53(c) EPC) to computer programs. Should this approach be followed by other decisions, this would have significant impact on the patenting of computer-implemented inventions.

The appeal in this case is against the decision of the examining division refusing EP appl. 10711384.7. Claim 1 of the Main Request then on file related to a method for controlling a process of monitoring the position of a part of a patient's body during radiation therapy.  The method claim was not allowed under Art. 53(c), because - although it did not contain any features explicitly defining steps of therapeutic nature - it was regarded "indissociable linked" to a method of therapy.  The patent was revoked. The appeal was directed against this decision to revoke.

T 1371/17 - First application of G 1/19 in a Technical Board of Appeals case

In a preliminary opinion, the Technical Board of Appeals in T 1371/17 made comments, which may be the first-ever application of the principles of G 1/19 by a Technical Board of Appeals.

By adopting the strict view on the technicality of simulation methods, this first application of G 1/19 could be an indication of how the EPO will examine simulation-based inventions in the future.  

G 1/19 - Patentability of computer-implemented simulations

When G 1/19 was issued on 10 March 2021, it was long awaited, because one expected that it clarifies whether the simulation of a technical system is a proper technical task, or whether the features of such simulation methods must be ignored in the assessment of inventive step under the COMVIK approach of T 641/00.

Before G 1/19, it was common practice at the EPO to accept that computer-implemented simulations have technical character, as long as the underlying simulated system was a technical one. This practice was mainly based on T 1227/05 (Circuit simulation I/INFENION), which found that:

"[s]imulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method functionally limited to that purpose" (Headnote 1). 

The Board in T 1227/05 found this rather applicant-friendly approach justified, because simulations are nowadays part of the engineer's toolset and frequently applied in the engineering cycle. The Board stated:

"Simulation performs technical functions typical of modern engineering work. It provides for realistic prediction of the performance of a designed circuit and thereby ideally allows it to be developed so accurately that a prototype's chances of success can be assessed before it is built." (T 1227/05, point 3.2.2 of the reasons)

This applicant-friendly interpretation of the technicality requirement of the EPC was fundamentally put into question by decision T 489/14 (Pedestrian simulation/CONNOR) of 22 February 2019.

T 0886/15 -Technical considerations required when extracting features from drawings

The appeal in this case is against the decision of the Opposition Division to revoke European Patent EP-B-2012388. The patent was revoked under Art. 100(c) EPC, extension of subject matter.

Claim 1 of the Main Request in appeal included the added feature:

"wherein a first portion of the coil element does not overlap with the radiation plate (20) in a plan view of the power supply circuit board (10; 50)".

This feature was not literally disclosed in the claims nor in the description of the application as-filed. The applicant argued that the feature found basis in the figures, e.g., could be taken from Figure 23.

The Board disagreed. They were sceptical as to the technical significance of this feature, because the description emphasised that the radiation plate (20) was made of a non-magnetic material, such as copper or aluminum, which have a magnetic permeability close to the one of air. Hence, the technical relevance of the added feature was questionable. Also the description did not state any effect of the extracted feature.

T 2277/15 - Information displayed on user interface supports inventive step

In T 2277/15 the independent claim defined a power injection apparatus with a user interface, the user interface showing a plurality of screens (ref. 230), each screen including a status window (ref. 266) at a particular place, and the status of the apparatus is shown in the status window at all times when the device is powered on.

The opponent had argued that the display of status information, as  a distinguishing feature, was non-technical and could not support inventive step.

The Board, however, saw it differently. They found the claim was inventive. In particular, the status screen allowed monitoring of the status of the apparatus so that an operator could intervene, if the status window indicated an error. The Board considered that this would make the apparatus safer. The technical problem was thus formulated as providing an injection apparatus, which is safer to use. Since the prior art did not teach a status window which provides status information at all times when the apparatus is powered on, the claim was regarded inventive.

This decision is in line with a number of earlier decisions, including T 1091/17, which held that presentation of information on a user interface can exceptionally contribute to the technical character of an invention if it "credibly assists the user in performing a technical task by means of a continued and guided human-machine interaction process”. See also T 1741/08, T 336/14, T 1802/13.

 

The full text of the T 2277/15 can be accessed here.

T 264/17 - Synthetic lubricant as a synovial fluid replacement

Art. 54(5) EPC provides for protecting the second or further medical indication for compounds which are otherwise (i.e., structurally) known. The proper claim format is the purpose-limited product claim format (e.g., "Compound X for use in medical method Y.", see G 2/08).

Traditionally the Boards have held that the  "substance or composition" of Art. 54(4) and (5) must be an "active agent or ingredient", in the sense of a pharmaceutically active agent. Chemicals which merely acted physically, such as injected collagen agents, were considered more a "device" rather than a "substance or composition" (see, e.g., T 1758/15). 

T 264/17 takes a different view on the issue.

T 1798/13 - Weather modeling regarded a "scientific theory", Art. 52 EPC

Art. 52(2)(a) EPC excludes "scientific theories" from the patentable inventions. For example, the physical theory of semiconductivity is not patentable. However, a new semiconductor device based on that theory may be patentable (EPO Guidelines, G-II, 3.2).

 

In T 1798/13 the Board regarded methods of forecasting the weather to be a mere "scientific theory" rather than a technical invention.

 

The appeal in this case is against the decision of the examination division to refuse EP 05796344.9.

Claim 1 of the Main Request reads:

"1. A method for forecasting a value of a weather-based structured financial product for steering of an optimal weather derivative portfolio based on specified weather measures comprising temperature and/or precipitation and/or hours of sunshine and/or heating degree days and/or cooling degree days and/or wind speed retrieved from a weather data measuring and monitoring system comprising: [...]"

According to the Examining Division