T 2102/12 30-04-2013

I. The applicant lodged an appeal against the decision, dispatched on 10 July 2012, refusing European application No. 08 866 761.3. The Examining Division held that the subject-matter of all requests were surgical methods excepted from patentability under Article 53(c) EPC.

II. The notice of appeal with the statement of grounds of appeal was received on 14 September 2012 and the appeal fee was paid on the same day.

III. The Board presented its provisional opinion in a communication dated 17 January 2013 raising objections regarding the patentability of the method claims under Article 53(c) EPC, as well as their compliance with Articles 84 and 123(2) EPC.

IV. Oral proceedings took place on 30 April 2013.

The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request or, in the alternative, of one of the first to third auxiliary requests, all filed with letter dated 14 March 2013, the fourth auxiliary request filed during the oral proceedings or the fifth auxiliary request filed with letter dated 14 September 2012.

V. Claim 1 of the different requests reads as follows.

Main request:

"1. A method for determining and displaying information of an operator indicated distance using a medical robotic system (100), the claimed method being performed contemporaneously with an unclaimed surgical procedure in which a tool (600, 800, 1200) is being robotically manipulated by a slave manipulator (200) in response to operator manipulation of an input device (108, 109), the claimed method comprising:

capturing images indicating movement of the tool (600, 800, 1200);

sensing joint positions of the slave manipulator (200);

determining a distance moved by the tool (600, 800, 1200) using the sensed joint positions and forward kinematics of the slave manipulator (200); and

displaying the captured images and information of the distance on a monitor (104) of the medical robotic system (100) so as to indicate movement of the tool (600, 800, 1200) and visually associate the information of the distance with the movement of the tool (600, 800, 1200)."

First auxiliary request:

"1. A method, performed by a medical robotic system (100), for determining and displaying information of an operator indicated distance using the medical robotic system (100), the claimed method being performed contemporaneously with an unclaimed surgical procedure in which a tool (600, 800, 1200) is being robotically manipulated by a slave manipulator (200) in response to operator manipulation of an input device (108, 109), the claimed method comprising:

capturing images indicating movement of the tool (600, 800, 1200);

sensing joint positions of the slave manipulator (200);

determining a distance moved by the tool (600, 800, 1200) using the sensed joint positions and forward kinematics of the slave manipulator (200); and

displaying the captured images and information of the distance on a monitor (104) of the medical robotic system (100) so as to indicate movement of the tool (600, 800, 1200) and visually associate the information of the distance with the movement of the tool (600, 800, 1200)."

Second auxiliary request:

"1. A method, performed within a medical robotic system (100), for determining and displaying information of an operator indicated distance using the medical robotic system (100), the claimed method being performed contemporaneously with an unclaimed surgical procedure in which a tool (600, 800, 1200) is being robotically manipulated by a slave manipulator (200) in response to operator manipulation of an input device (108, 109), the claimed method comprising:

capturing images indicating movement of the tool (600, 800, 1200);

sensing joint positions of the slave manipulator (200);

determining a distance moved by the tool (600, 800, 1200) using the sensed joint positions and forward kinematics of the slave manipulator (200); and

displaying the captured images and information of the distance on a monitor (104) of the medical robotic system (100) so as to indicate movement of the tool (600, 800, 1200) and visually associate the information of the distance with the movement of the tool (600, 800, 1200)."

Third auxiliary request:

"1. A method, performed within a medical robotic system (100), for determining and displaying information of an operator indicated distance using the medical robotic system (100), the claimed method being performed contemporaneously with an unclaimed surgical procedure in which a tool (600, 800, 1200) is being robotically manipulated by a slave manipulator (200) in response to operator manipulation of an input device (108, 109), the claimed method comprising:

receiving captured images indicating movement of the tool (600, 800, 1200);

receiving sensed joint positions of the slave manipulator (200);

determining a distance moved by the tool (600, 800, 1200) using the sensed joint positions and forward kinematics of the slave manipulator (200); and

displaying the captured images and information of the distance on a monitor (104) of the medical robotic system (100) so as to indicate movement of the tool (600, 800, 1200) and visually associate the information of the distance with the movement of the tool (600, 800, 1200)."

Fourth auxiliary request:

"1. A method, performed by a processor within a medical robotic system (100), for determining and displaying information to an operator, the claimed method comprising:

receiving signals representative of captured images indicating movement of a tool (600, 800, 1200);

receiving signals representative of sensed joint positions of a slave manipulator (200);

determining a distance moved by the tool (600, 800, 1200) using the signals representative of the sensed joint positions and forward kinematics of the slave manipulator (200); and

outputting a signal to cause the captured images and information of the distance to be displayed on a monitor (104) of the medical robotic system (100)."

Fifth auxiliary request:

"1. A medical robotic system (100) comprising:

a tool (600, 800, 1200);

a robotic arm having a plurality of joints to move the tool (600, 800, 1200) and having a plurality of sensors to sense movement of the plurality of joints;

an image capturing device (140) positioned to capture an image of the tool (600, 800, 1200);

a monitor (104);

an input device (108, 109); and

a processor (102) configured to move the robotic arm and the tool (600, 800, 1200) in response to operator manipulation of the input device (108, 109), display images received from the image capturing device (140) on the monitor (104), determine a distance moved by the tool (600, 800, 1200) using data received from the plurality of sensors and forward kinematics of the robotic arm, and display information of the determined distance on the monitor (104) so as to indicate movement of the tool (600, 800, 1200) and visually associate the information of the distance with the movement of the tool (600, 800, 1200)."

Claims 2 to 8 of the fifth auxiliary request are dependent claims.

VI. The arguments of the appellant are summarised as follows:

(i) Main and first to third auxiliary requests

The appellant's intention was not to encompass the operator-performed surgical step in the claims. Rather, the method the appellant was seeking to protect was a method performed by a device for determining and displaying distance information, the method being performed contemporaneously and in parallel with a non-claimed surgical process. This was expressed in claim 1 of the main and first to third auxiliary requests by specifying "the claimed method being performed contemporaneously with an unclaimed surgical procedure in which a tool is being robotically manipulated by a slave manipulator in response to operator manipulation of an input device" (emphasis added).

While it was recognised that the formulation of the independent method claims was "a little unorthodox", the claims were clear and met the requirements of Article 84 EPC. The claims made it clear that the essence of the methods was the determination of the distance moved by the tool, and not the surgical process of moving it. The claims clarified beyond any doubt that the claimed method did not include the contemporaneously performed surgical procedure in which the tool was being robotically manipulated by a slave manipulator in response to operator manipulation of the input device. In accordance with G 1/07 (in particular, Reasons point 4.3.2) and T 836/08, such a method claim should be allowable as the claimed method had no functional link to an effect on the body, the claimed method performed by the device having no effect on the body. Its effect was to display information. The mere fact that the method was performed during a surgical intervention did not render it unpatentable, as explicitly stated in the third paragraph of point 5 of the Reasons of G 1/07.

(ii) Fourth auxiliary request

Given the constraints of the EPC regarding the patentability of surgical methods, the appellant should be allowed to just claim the measuring method as performed within the processor described in paragraph [0090] et seq. in relation to the flow diagram of Figure 19, and in paragraph [0039] relating to Figure 4. There was consequently no extension of subject-matter beyond the content of the original application.

(iii) Fifth auxiliary request

The fifth auxiliary request included only the apparatus claims which the Examining Division considered to be allowable.