T 2612/19 - Medical method - omitting step does not avoid Art. 53(c)

Key points

• Is Article 53(c) EPC to be examined on the basis of the claims, or on the basis of the overall description?
• The Board: "if essential features of the invention are missing from the claim, these must be read into the claimed method when assessing whether it falls under the exceptions of patentability in accordance with Article 53(c) EPC."
• "It must therefore be clarified whether the claimed invention is fully and completely defined by the features of claim 1. For this purpose, the description, among other elements, must be consulted."
• Turning to the case at hand: "Claim 1 concerns a method of managing delivery of an orthodontic treatment plan [M1]. As argued by the appellant, the claim only mentions steps effectively performed before (features [M2] to [M4]) and after (features [M5] to [M7]) the actual treatment, i.e. the application of the appliances to the patient's teeth. However, as conceded by the appellant, the treatment step is a prerequisite for the claimed method to be applicable. This is not only evident from the wording of the claim and in particular from the step of comparing a digital representation of an actual arrangement of the patient's teeth following administration of a set of appliances to a planned arrangement (feature [M6]). For this step to be carried out, it is inevitable that the appliances have been applied to the patient's teeth beforehand. It is also evident from the flowchart in Figure 3A and the corresponding description (A-Publication, paragraphs [0021] to [0023]). Omitting the step 210 of administering appliances would render the step 212 of progress tracking meaningless since there would be no progress that could be tracked."
• "It follows that administering a set of appliances (the application of the appliances to the patient's teeth) is an essential feature of the invention. This method step must therefore be seen to be encompassed by the claimed method because otherwise the claimed invention would not be fully and completely defined by the features of the claim (see G 1/07, point 4.3.1 of the Reasons)."
• "The subject-matter of claim 1, therefore, is excluded from patentability under Article 53(c) EPC."
• 
  

EPO T 2612/19 -

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/t192612eu1.html

Reasons for the Decision

1. Exceptions to patentability (Article 53(c) EPC)

1.1 It is correct that the claimed method does not explicitly refer to a method for orthodontic treatment of a patient but instead to a method of managing delivery of an orthodontic treatment plan (see feature [M1]). Furthermore, the wording of claim 1 does not explicitly mention a method step which would be considered a step for treatment of the human or animal body by therapy within the meaning of Article 53(c) EPC.

1.2 However, it is not necessary for a claim to explicitly refer to a therapeutic method or to explicitly mention a therapeutic method step for the subject-matter of the claim to be excluded from patentability. It is sufficient that the claimed method encompasses such a step (see G 1/07, grounds 4.1 to 4.3, for surgical method steps).

Decision G 1/07 states the following under point 4.3.1 of the Reasons:

"Article 84 EPC in conjunction with Rule 43 EPC requires that the claims shall define the matter for which protection is sought. Hence, the claim should explicitly specify all of the essential features needed to define the invention. Furthermore, the claim must be clear (G 1/04, point 6.2 of the Reasons). Under Article 84 EPC, whether or not a step being or encompassing a surgical step excluded from patentability can be omitted either by using positive wording for such omission like "pre-delivered" or by simply leaving it out from the claim depends on whether the claimed invention is fully and completely defined by the features of the claim without that step. That requires an assessment of the individual case under consideration."

1.3 In the case at hand, no objection under Article 84 EPC had been raised by the examining division. However, irrespective of such an objection, if essential features of the invention are missing from the claim, these must be read into the claimed method when assessing whether it falls under the exceptions of patentability in accordance with Article 53(c) EPC.

It must therefore be clarified whether the claimed invention is fully and completely defined by the features of claim 1. For this purpose, the description, among other elements, must be consulted.

1.4 The invention relates to orthodontics. An objective of orthodontics is to move a patient's teeth to positions where function and/or aesthetics are optimised. Traditionally, appliances such as braces are applied to the patient's teeth by an orthodontist or dentist, and the set of braces exerts continual force on the teeth and gradually urges them toward their intended positions (A-publication, paragraph [0003]).

1.5 Claim 1 concerns a method of managing delivery of an orthodontic treatment plan [M1]. As argued by the appellant, the claim only mentions steps effectively performed before (features [M2] to [M4]) and after (features [M5] to [M7]) the actual treatment, i.e. the application of the appliances to the patient's teeth. However, as conceded by the appellant, the treatment step is a prerequisite for the claimed method to be applicable. This is not only evident from the wording of the claim and in particular from the step of comparing a digital representation of an actual arrangement of the patient's teeth following administration of a set of appliances to a planned arrangement (feature [M6]). For this step to be carried out, it is inevitable that the appliances have been applied to the patient's teeth beforehand. It is also evident from the flowchart in Figure 3A and the corresponding description (A-Publication, paragraphs [0021] to [0023]). Omitting the step 210 of administering appliances would render the step 212 of progress tracking meaningless since there would be no progress that could be tracked.

It follows that administering a set of appliances (the application of the appliances to the patient's teeth) is an essential feature of the invention. This method step must therefore be seen to be encompassed by the claimed method because otherwise the claimed invention would not be fully and completely defined by the features of the claim (see G 1/07, point 4.3.1 of the Reasons).

1.6 The appellant argued that the administration of appliances to a patient as a prerequisite for performing the claimed method does not per se exclude the claimed method from patentability under Article 53(c) EPC. The appellant referred to decision G 1/07, point 4.3.2 of the Reasons, and in particular to decision T 329/94 mentioned there. In T 329/94, it was held that if the claimed subject-matter is confined to operating an apparatus for performing a method with the technical aim of facilitating blood flow towards a blood extraction point, the operating method has no therapeutic purpose or effect and, therefore, is not excluded from patentability. This view was confirmed by G 1/07, even in light of the fact that the application of the device as such needed a surgical step to be practised on the body (G 1/07, point 4.3.2 of the Reasons). The appellant concluded that the prerequisite of a surgical step could not be considered different from the prerequisite of a treatment by therapy, meaning that in the case at issue the administration of appliances as a prerequisite for the claimed method could not lead to the claimed method being excluded from patentability.

1.7 It is to be noted that point 4.3.2 of the Reasons of decision G 1/07 deals exclusively with cases in which the invention only concerns the operating of a device without any functional link between the claimed method and the effects produced by the device on the body. These cases are different from the current case where the claim is not directed to the operation of a device. The principles developed for these cases, therefore, cannot be applied offhand to the current case.

Moreover, decision G 1/07 stated under point 4.3.2 of the Reasons why these cases are considered particular (emphasis added):

"Methods which are merely directed to the operating of a device without themselves providing any functional interaction with the effects produced by the device on the body are teachings in which the performance of a physical activity or action that constitutes a method step for treatment of a human or animal body by surgery or therapy is not required in order for the teaching of the claimed invention to be complete."

In the case at issue, however, the teaching of the claimed invention is not complete without the step of administering a set of appliances to the patient. In fact, claimed method steps [M5] to [M7] are interwoven and therefore functionally linked with the administration of appliances as they deal directly with its result, namely the actual arrangement of the patient's teeth following administration of a set of appliances.

Hence, the principles developed by the case law cited under point 4.3.2 of the Reasons of G 1/07 cannot be applied to the current case.

1.8 The subject-matter of claim 1, therefore, is excluded from patentability under Article 53(c) EPC.

Order

For these reasons it is decided that:

The appeal is dismissed.