6. Nichterfindungen nach Artikel 52 (2) und (3) EPÜ

In T 425/24 the claimed invention concerned a method for optimising a work cycle in a robot system comprising at least two manipulators with a common work area. The examining division had found that the subject-matter of claim 1 of the main request and auxiliary request 1 was excluded from patentability as it related to a method of performing mental acts (Art. 52(2)(c) EPC). The examining division reasoned that the method steps of claim 1 could be carried out exclusively mentally.

The appellant had argued that the description as filed clearly set out that the use of a computer was an "overriding requirement" of the claim as defined by decisions T 416/87 and T 717/98, so that the method did have a technical implementation due to the use of a computer.

The board however agreed with the examining division that claim 1 of the main request was excluded from patentability. As the examining division noted, it is established case law that if a method may be exclusively carried out mentally, i.e. if it is not confined only to a technical implementation, then it is not entitled to patent protection under the EPC (see CLB, 11th ed. 2025, I.A.6.6.2).

In decisions T 416/87 and T 717/98, referred to by the appellant, it was reasoned that if features are indicated in the description to be of overriding importance, they must be read into the claim, for the purposes of claim interpretation. The board however was of the view that these decisions were not relevant here because any conclusion on overriding importance has to be determined according to the circumstances of the specific case and neither of the two cases cited deals with exclusions to patentability.

In the present case a computer is not an overriding requirement, in simple cases the method steps can certainly be carried out purely mentally. The board noted further that even complexity of a solution may not necessarily be a bar to a finding that a method consists of performing mental acts, see for example decision T 914/02. If an appellant has no intention of seeking protection for purely mental implementations, then the technical implementation means should be included in the claim (see T 914/02).

The board held that the appellant had not convincingly demonstrated that the decision under appeal was incorrect on this point.

On auxiliary request 1 the examining division had found that the amendment made to claim 1 of auxiliary request 1 did not overcome the issue relating to the main request. The appellant had argued that the introduction of the feature "each of the at least two manipulators is allowed to operate only within that part of the common work area that is allocated to the respective manipulator" required technical means as it required control of the manipulators. This meant that the "work area division" could not be a purely mental idea. The board disagreed since this understanding of the newly introduced feature presupposes that a work cycle was actually implemented. Claim 1 of auxiliary request 1 however only required that cycle times are calculated, not that any cycle is in fact carried out. It is possible to mentally divide a layout into two areas, creating a work area division and then calculate cycle times. The appellant had therefore not convincingly demonstrated that the decision under appeal was incorrect on this point.

Claim 1 of auxiliary request 2 differed from claim 1 of auxiliary request 1 in that the feature "wherein the step of defining the layout (150) and/or the step of defining the work area division is executed by a computer" was introduced. The board held that this step now required technical means and the claim as a whole was no longer excluded from patentability under Art. 52 EPC.

In T 799/24 the invention concerned a method and device for analysing optimisation of vehicle body joint position. The aim of the invention was to provide an analysis apparatus for determining an optimal location of an additional welded point to be added to a portion to join a part to an assembly of parts in consideration of the load acting on the automotive body and of the inertia force acting on a fitting or lid component of the automobile during driving. Claim 1 of the main request concerned an "arithmetic processing unit" or a CPU together with a display device including elements which were computer-implemented or performed a "computer-implemented" method. The board noted that the first hurdle mentioned in decision G 1/19, which requires that the claimed subject-matter as a whole must not fall under the "non-inventions" defined in Art. 52(2) and (3) EPC, was overcome since claim 1 related to an "arithmetic processing unit" together with a display device.

The second hurdle, mentioned in decision G 1/19, is where, as part of the inventive step assessment, it must be established which features of the invention contribute to its technical character, by providing a technical effect in the context of the invention as a whole..

According to the board, the formulation in claim 1 of the main request that additional welded point(s) were "to be added" to the automotive body to improve its stiffness during driving at least implicitly specified a further technical use. The board considered it implicit from claim 1 that the additional welded points of which the locations were determined would be added to the automotive body.

In the board's view, since the use of the analysis results was defined in the claim as being "for automotive body designing", leaving it open which further steps, technical or not, were to be performed with the analysis results, a potential further selection of a particular automotive body might also be based on the visual characteristics or appearance of the automotive body. However, the board was of the opinion that the selection of the automotive body was, in addition, also restricted to the selected additional welded points to be added to the automotive body.

The board noted that the optimisation analysis on the welding candidates applied at least one of the load, of which magnitude and direction were different at each joining portion. An additional welded point or an additional welded location that satisfied the optimisation analysis conditions, including maximising absorbed energy, was selected.

The analysis results used in the automotive body designing were, for example, "automotive body displacement amount". The possible use by the user of the displayed analysis results might be a cognitive exercise such as selecting the automotive body corresponding to the lowest displacement amount (G 1/19), but the board considered that the step of selecting the additional welded points contributed to the technical character of the invention.

The board further noted that the additional welded points of which the locations were determined or selected were "to be added to the automotive body" ("to improve the stiffness of the automotive body during driving"). In the board's view this wording at least implicitly specified a further technical use (G 1/19)..

The board considered that, even if the automotive body was a "prototype" and the additional welded points were added to this "prototype", this "prototype" would still be a physical object having at least some of the features of an automotive body.

The board noted that the Enlarged Board in G 1/19 required a simulation to be "accurate enough" or a simulation that reflects "reality" "accurately enough". In the present case, the automotive model constituted by the automotive body frame model and the chassis model together with the welded points at the joining portion(s) was considered by the board to reflect an automotive body (as "reality") "accurately enough". The board concluded that the subject-matter of claim 1 and dependent claim 2 of the main request involved an inventive step.