T 0980/22 - A purely mental design method

Key points

• Claim 1 is directed to a design process, in translation: "Claim 1: Design process for the manufacture of long-body railway carriages with different seating capacities, comprising:"
• The claim is rejected under Article 52(2)(c) as a purely mental activity.
• The Board, in translation: "claim 1 does not include a computer, nor a feature that is implemented (explicitly or implicitly) by a computer program."
• "The understanding that the manufacture itself is not a step of the construction process is also supported by the granted, independent claim 6. This is directed to the manufacture of the rail vehicle using the construction process. No further restriction would arise from claim 6 if the construction process already included the manufacture."
• It is an opposition appeal; a patent was granted with this claim 1.
• In auxiliary claim 3, claim 1 is deleted, and claim 6 is the new claim 1. Only Article 123(2) is examined. The Board reverses the OD and finds that the requirement has been complied with.  The case is remitted. 
• It seems there was no attempt to amend claim 1 into a computer-implemented design method.

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t220980du1

Translation

Claim 1:

1.1 Design process for the manufacture of long-body railway carriages with different seating capacities, comprising:

1.2 - Defining a basic type of railway vehicle (100) of long construction type with a maximum number of seats and a permissible wheel load;

1.3 - Specifying a maximum length of the basic type of a long-type rail vehicle and a seat divider (151);

1.4 - Constructing a Car Body (160)

1.5 including supporting structures for the basic type of railway vehicle (100) of long construction type,

1.6 wherein the car body (160) has a base segment (110) which is designed to accommodate a plurality of rows of seats corresponding to the seat divider (151),

1.7 and at least one window segment (120) for extending the base segment (110),

1.8 where the length (x) of a window segment corresponds approximately to the seat divider (151)

1.9 - Determining the required cross-section and strength design of the supporting structures for the body (160) of the long-type rail vehicle (100); and

1.10 - Designing, i.e. constructing, a rail vehicle (100, 101, 102) as a whole

1.11 in at least two different length variants

1.12 while maintaining the cross-section and strength design of the body and supporting structures of the basic type of long-body railway vehicle,

1.13 wherein in the construction of the shortened rail vehicle (101, 102) the length of the car body is reduced by one or two window segments and

1.14 - wherein the construction, ie the design, of the structure of the rail vehicle (100) is modular, but the actual manufacture of the rail vehicle can be module-independent.

1. Main request - Article 52(2)(c) EPC

1.1 The Board confirms the decision of the Opposition Division that the construction process claimed in granted claim 1 involves a purely mental activity and is therefore excluded from patentability.

1.2 Contrary to the opinion of the appellant (patent proprietor), claim 1 does not fall under the case of computer-implemented inventions (CII) discussed in G1/19. According to established case law, 10th edition, chapter IA2.4.1, a CII covers claims that include a computer, computer networks or similar, where at least one feature is implemented by a computer program. However, claim 1 does not include a computer, nor a feature that is implemented (explicitly or implicitly) by a computer program.

1.3 It is also quite conceivable that feature 1.9, cited by the appellant, which would supposedly be understood by the skilled person as computer-aided, is only carried out "purely mentally". In fact, the construction process does not require any technical means and is therefore not limited to physical, technical implementations. The claimed process therefore also extends to subject-matter excluded by Article 52(2)(c) EPC and is therefore not patentable (cf. established case law, 10th edition, IA2.5.2).

1.4 Furthermore, contrary to the appellant's view, manufacturing is not included in granted claim 1. In fact, claim 1 is directed to a method for constructing a rail vehicle suitable for (optional, later) manufacturing. A construction method may include the construction itself as a process step - as accordingly stated in T1931/14 cited by the appellant - but not implicitly also the later, downstream process of manufacturing.

1.5 The understanding that the manufacture itself is not a step of the construction process is also supported by the granted, independent claim 6. This is directed to the manufacture of the rail vehicle using the construction process. No further restriction would arise from claim 6 if the construction process already included the manufacture.