T 0847/24 - (I) Non-technical CAD method

Key points

• Claim 1 as granted is directed to "A computer-implemented method for configuring a surgical guide".
• "The Board considers 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. "
• "feature 1.6, interpreted as set out in point 5.2.4 above, is the only feature distinguishing the subject-matter of claim 1 of the main request from the method disclosed in D2. 
•   It is common ground that feature 1.6 is non-technical when considered in isolation since it merely corresponds to the generation of abstract data representing a 3D structure for an implant. "
• The question is whether the method has a further technical effect, as required by G 1/19 for inventive step under the Comvik-approach.
• "Contrary to the appellant's view [proprietor's view], it is not decisive that the data produced by the claimed method, in defining the 3D structure of the configured implant, may reflect the properties of a physical object that may exist at some later point, namely the implant once manufactured. Rather, this 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)."
• "The Board acknowledges that manufacturing the implant is a possible use of this data. As also pointed out in the decision under appeal (see Reasons 33.8.3), this may even be regarded as a probable use of the data. However, a possible, or even probable, technical use is not sufficient for the data to contribute to the technical character of the claimed method. What is required, in accordance with G 1/19, Reasons 137, is that the technical use be at least implicitly specified in the claim.
• the Board agrees with the respondent [opponent] and the opposition division that although manufacturing the implant is a possible and even probable use of the 3D implant structure determined in accordance with feature 1.6, other uses which do not have any technical effect can also be realistically envisaged. ... For example, a user may simply want to compare the configured implant with existing implants, such as off-the-shelf implants. At least in such a case, no impact on physical reality would result from carrying out the claimed method.
• Compare T 799/24, not cited in the present decision.
• " It follows that feature 1.6 does not contribute to the technical character of the claimed method, certainly not over substantially the whole scope of claim 1. This feature thus cannot support the presence of an inventive step starting from D2."
• The above discussion was not specifically about feature 1.6. G 1/19 seems to consider whether the claimed method as a whole provides a 'further technical effect'.  Feature 1.6 is "determining a monolithic three-dimensional structure for the implant"  and could also be done mentally (it seems to me).
• The TBA includes the statement that "A feature that is non-technical as such may, however, still contribute to the technical character of the claimed invention as a whole (see G 1/19, Reasons 32; see also order of the UPC Court of Appeal of 17 April 2026 in Abbott v. Sinocare, UPC_CoA_901/2025, Headnote 1 and Reasons 112). A central issue is therefore whether this feature 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).".
• It may be observed that feature 1.6 does not contribute to the technical character of the claimed method as required by Article 52 (Article 52 is complied with by the claim reciting "computer implemented" in a different feature).
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EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t240847eu1