CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 2 931 143 B1 relates to an implant and guide for maxillofacial surgery.

Brief outline of the case

The OD decided revocation as some requests were not compliant with Art 123(2) or (3) lacked N over D2.

The proprietor appealed.

The proprietor filed new requests in appeal, which were admitted but did not allow maintenance. The patent was thus revoked for good.

The case is interesting in the way the claims filed in appeal were interpreted, cf. MRn, and that an extention of protection, cf. AR1, was also hindering maintenance.

Claim 1 of the MRn relates to a computer-implemented method for configuring a surgical guide (9, 28, 34, 44) and an associated implant (5, 27, 33, 43) for maxillofacial osteosynthesis. Claim 11 of the MRn relates to a maxillofacial surgical guide (9, 28, 34).

N and IS were discussed with respect of D2. Claim 1 of the MRn lacked IS over D2.

Feature F is about determining a monolithic three-dimensional structure for the implant in order to obtain the desired post-operative orientation of the bones.

In the present blog entry we will deal with the MRn and claim interpretation.

The proprietor’s point of view

The three-dimensional (3D) models referred to in claim 1 were virtual computer models, and all steps of the computer-implemented method defined in the claim were carried out virtually on a computer. This was the only claim interpretation to be taken into account in the assessment.

Although D2 started from a pre-operative computer model and involved a virtual osteotomy, the subsequent steps relied on a modified 3D model constituted by a physical resin model and not a virtual model as required by the claim.

Although non-technical in isolation, feature F contributed to the technical character of the method of claim 1. The claimed method was explicitly limited to a technical application, namely the configuration of a tailor-made implant for maxillofacial osteosynthesis.

For the proprietor the subject-matter of claim 1 of the MRn was novel and inventive.

The opponent’s point of view

In D2, the rearrangement of the bone portions was likewise performed virtually on a computer before generating a modified 3D model on which the attachment points were defined by producing a physical resin model based on that simulation.

Even if feature F were to be considered novel over D2, it could not render the subject-matter of claim 1 of the MRn inventive.

Feature F, which was non-technical in isolation, did not contribute to the technical character of the claimed method and consequently could not support the existence of an IS in accordance with G 1/19.

The board’s decision on claim interpretation

General principles of interpretation

The board concluded from G 1/24, that as first principle of interpretation, the claims define the subject-matter for which protection is sought in terms of the technical features of the claimed invention, and referred also to G 1/16, Reasons 12.

It follows  that it is the claims themselves which are being interpreted. Accordingly, the claims, on the one hand, and the description and the drawings, on the other hand, are not on the same footing.

The second principle of claim interpretation endorsed by the EBA in G 1/24, Reasons 11 ff,, is that the description and drawings must always be consulted to interpret the claims.

It further follows that the same claim interpretation step which, in accordance with G 1/24, must be carried out when assessing e.g. N, must, for reasons of consistency, also be carried out when e.g. assessing added subject-matter, sufficiency of disclosure or extension of protection.

In the view of the present board, the requirement “to interpret patent claims” pursuant to G 1/24 implies that the correct interpretation of a claim cannot – if decisive for the outcome – be left open.

Application to the present case

The board considered that, in the context of the method defined in claim 1, the expression “computer-implemented” requires the method, i.e. all steps of the method, to involve a computer.

This is particularly so since the claimed method involves the generation and use of 3D models of a patient’s anatomy, especially one generated using data, the simulation of an osteotomy and the repositioning of bone portions in these 3D models, as well as the determination, in these 3D models, of 3D structures for an implant and a surgical guide.

When consulting the patent specification, the skilled person finds that it likewise consistently describes the use of a computer to carry out the various method steps, in particular to generate and manipulate the virtual 3D models.

This is shown, for example, in paragraphs [0016], [0018], [0020] (“carrying out, still in a virtual manner”), [0029], [0030] and [0094].

The expression “computer-implemented method” does not rule out that the steps of the method carried out by the computer may involve input from a user. Thus, the fact that some of the claimed steps may rely, at least implicitly, on input from a user does not contradict this interpretation.

In the board’s view, these claimed steps include the steps of selecting the cuts that define the simulated osteotomy and arranging the bone portions to place them in the 3D modified model in their “desired” post-operative orientations.

The skilled person understands the term “desired” in claim 1 as referring to the intention of a user using the computer. Nevertheless, it is still, in the end, the computer that carries out, “simulates”, the osteotomy and moves, “arranges“, the data representing the bone portions in the computer’s memory in accordance with the user’s instructions.

In view of this interpretation, the board held that the subject-matter of claim 1 of the MRn was novel in view of D2 but did not involve an IS starting from D2.

It is common ground that feature F is non-technical when considered in isolation since it merely corresponds to the generation of abstract data representing a 3D structure for an implant. A non-technical feature as such may, however, still contribute to the technical character of the claimed invention as a whole, see G 1/19, Reasons 32.

Manufacturing an implant having the 3D structure determined in accordance with feature F would undisputedly allow this feature to have an impact on physical reality and thus to contribute to achieving a technical effect,

However, the outcome of the claimed method is not a physical implant but merely abstract data defining a 3D structure for such an implant, as claim 1 of the MRn does not refer to any manufacturing step.

In accordance with the established way of interpreting the term “for” in the expression “method for“, the step of “configuring” an implant mentioned in feature A is to be considered part of the claimed method, the skilled person does not understand, in the context of claim 1, the configuring of an implant to mean, or to include, manufacturing it.

The board noted that the step of configuring the implant may involve further processing of the 3D structure determined in accordance with feature F. However, even in that case, the configuring step would still merely produce further data defining the configured implant.

A central issue was whether feature F contributes to the technical character of the method defined by claim 1. Only if this is the case, and only to this extent, can it be considered for inventive step, following the COMVIK approach, see G 1/19, Reasons 84.

The physical object remains purely hypothetical as long as an implant having this structure is not manufactured. Hence, in the absence of a manufacturing step in claim 1, the data remains, first and foremost, mere data, which can be used in many different ways, see G 1/19, Reasons 98.

In accordance with G 1/19, Reasons 124, only those technical effects that are at least implied in the claim should be considered in the assessment of IS. If the claimed process results in a set of numerical values, whether a resulting technical effect can be considered in the assessment of IS depends on the further use of such data. If such further use is not, at least implicitly, specified in the claim, it is to be disregarded for this purpose.

The claimed method is directed to configuring the implant, not to manufacturing it. Although the open wording of claim 1 may encompass more limited methods comprising an additional manufacturing step, the use of the data for manufacturing the implant is not specified, either explicitly or implicitly, as part of the claimed method.

It follows that claim 1 of the MRn lacked IS over D2.

Comments

The case is interesting in that it reminds of the general principles of interpretation according to G 1/24, and that the claims and the description and the drawings, are not on the same footing.

The case is further interesting as it reminds of the considerations set in G 1/19 as to when a technical character is to be acknowledged when a CII simulation is used. It is only if the result of the simulation ends in the real world that a technical character can be used when assessing IS.

Art 53(c) is looming in the background

The proprietor was actually caught in a dilemma. Claiming a method for manufacturing a bone implant based on the data representing a real patient as well as simulating some osteotomy practised on the patient, would end up in a non-patentable method according to Art 53(c).  

The present case reminds of T 1005/98. Claim 1 was directed to a method for manufacturing a knee prosthesis, which is prima facie not falling under the prohibition of Art 53(c), at the time Art 54(2) EPC 1973. The method involved a surgical step which was not claimed, but necessary. In order to  customise the knee prothesis, the method comprised taking two X-ray pictures, one before and one after the resection of the knee. In the present case, the simulation allows an osteotomy to be practiced on the patient.  

There was thus a further reason for which claim 1 of the MRn was potentially not allowable if it comprised the manufacturing step. This reason could however not be brought in the procdure by the board pursuant to G 9/91 and G 10/91.

T 0847/24