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.  

Claim 1 under examination reads as follows:

"1. A wire harness wiring path design aiding apparatus comprising: 

a designing unit which designs a wiring path of a wire harness by using body data on an object to which the wire harness is installed and three- dimensional data on an auxiliary device installed on a vehicle body; 

a storing unit which stores data on a minimum bending radius of the wire harness; and 

a checking unit which judges whether the wiring path data designed by the designing unit satisfies the minimum bending radius, and outputs, if the wiring path data does not satisfy the minimum bending radius, data on corrected wiring path data designed in light of the minimum bending radius, characterised in that

the storing unit stores, as the data on the minimum bending radius, a first minimum bending radius defined based on properties of material of the wire harness and a second minimum bending radius defined based on force of worker's hand, and 

wherein the apparatus includes a selecting unit which, when the first minimum bending radius differs from the second minimum bending radius, selects one of the first and second minimum bending radii which has larger minimum bending radius." (emphasis added)

The applicant argued that the differentiating features over the closest prior art document, D1, solved the technical feature of "providing a wiring harness design capable of being installed simply and effectively in circumstances where a design output by the system of D1 would not".

The Technical Board saw things differently. Inspired by G 1/19, they considered that the distinguishing features did not solve a technical problem at all. 

They stated:

"8.1 Claim 1 concerns an apparatus for computer aided design of a wire harness wiring path which outputs "data on corrected wiring path" as a final result. It therefore concerns a design process which uses computer-implemented simulation to produce numerical data describing a wiring path. The distinguishing features result in wiring path data being output by the apparatus which take into account the force of the worker's hand.

8.2 In decision G 1/19, the Enlarged Board explained that calculated numerical data reflecting the physical behaviour of a system modelled in a computer usually cannot establish the technical character of an invention in accordance with the COMVIK approach. Only in exceptional cases may such calculated effects be considered implied technical effects; for example, if the potential use of such data is limited to technical purposes (point 128).

8.3 In the present case, claim 1 does not explicitly specify any use of the output data. Non-technical purposes, such as informational or training purposes, are potentially within the scope of the claim. Since the data produced by the apparatus of claim 1 is not limited to technical purposes, it does not contribute to a technical effect for the assessment of inventive step."

As a result, in the preliminary opinion of the Board, claim 1 was not based on inventive step.

This case is - to my knowledge - the first-ever application of the principles of G 1/19 by a Technical Board of Appeals. The objection put forward under 8.1 - 8.3 of the preliminary opinion is rather strict, but also seems alarmingly applicable to a large number of cases pending before the EPO. If this preliminary opinion is indicative of how the EPO will apply the findings of G 1/19, then patenting simulation-related inventions before the EPO will become much more difficult in the future.

The full file history of this case can be accessed here.