T 0926/17 - (I) Software as such

Key points

•  Claim 15: " A computer program comprising instructions for carrying out all the steps of the method claim 14, when said computer program is executed on a computer system."
• Always useful to recall the basics: there is no need that a claimed product is a tangible product.
• Do we know if this claim 15 is permitted under Art.52 based on its wording? The answer is no. The computer system is recited but not actually part of the claimed subject-matter, of course, so that feature does not help. Moreover, the claim does not specify any computer-readable medium (T424/03).
• We have to apply T1173/97 headnote: "A computer program product is not excluded from patentability under Article 52(2) and (3) EPC if, when it is run on a computer, it produces a further technical effect which goes beyond the "normal" physical interactions between program (software) and computer (hardware)"."
• As also outlined in G-II, 3.6.
• In the case at hand, claim 14 is directed to "A method of detecting and cutting tough tissues such as bones, cartilage, and fat from food item pieces such as fish or meat fillets or poultry items, comprising imaging incoming food item pieces using at least one x-ray machine ... conveying, subsequent to said x-ray imaging, said food item pieces on a second porous conveyor belt ... cutting said tough tissues from said food item pieces"
• The method of claim14 clearly produces a further technical effect which goes beyond the "normal" physical interactions between software and computer.
• It seems that claim 15 hence passes the test of Art.52.
• The Board: "Claim 15 is directed to a computer program comprising instructions for carrying out all the steps of the method claim 14. As such, the above positive conclusions in respect of sufficiency, clarity, added subject-matter, novelty and inventive step in respect of claim 14 also hold for claim 15 for similar reasons."
• This is all fairly settled case law and there was no dispute about claim 15 in the opposition appeal case at hand.
• credits to Mr. Thomas for highlighting the decision - https://www.linkedin.com/pulse/92617-claims-computer-program-comprising-instructions-thomas/

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• EPO T 0926/17

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t170926eu1.html

7.5 The board thus confirms the decision's finding that the subject-matter of claims 1 and 14 involves an inventive step in the light of documents D1, D2 and D17, Article 56 EPC.

8. Claim 15 is directed to a computer program comprising instructions for carrying out all the steps of the method claim 14. As such, the above positive conclusions in respect of sufficiency, clarity, added subject-matter, novelty and inventive step in respect of claim 14 also hold for claim 15 for similar reasons.

9. As all the objections raised by the appellant-opponent fail the board confirms the findings of the Opposition Division.

Order

For these reasons it is decided that:

The appeal is dismissed.