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

Zusammenfassung

In T 1465/22 the appellant (opponent) had contested the opposition division's findings that although the method steps of claim 1 could be carried out manually, this did not render them non-technical, as the performance of a manual activity was not a purely mental act. According to the appellant, the method steps in features 1.2 to 1.8 of claim 1 were merely instructions to a user that could be carried out manually. In particular features 1.5.1 and 1.7 did not require that the steps were actually carried out, so that they remained instructions which were purely mental acts and therefore non-technical (Art. 52(2)(c) EPC). The appellant had argued that only feature 1.1 could be considered to be a technical feature and that this feature was well-known from the skilled person's common general knowledge (as shown in D1), so that the subject-matter of claim 1 of the main request was not inventive.

The board agreed with the opposition division that at least some of the method steps of claim 1 might be carried out manually, but that this did not lead to these method steps being "schemes, rules and methods for performing mental acts" as set out in Art. 52(2)(c) EPC. A method for performing mental acts requires that the method be performed entirely within the human brain. According to the established case law, subject-matter is excluded from patentability if the claim is not restricted to physical, technical implementations, i.e. if it is not excluded that the claimed invention may be carried out mentally. As the respondent (patent proprietor) argued, the features of claim 1 inter alia of "inserting, extracting, transferring, juxtaposing and capping" could not be considered to be purely mental acts. They required concrete handling of containers, nests, a transport tub, a substance, a stopper and a cap. It could not be seen how any of these steps could possibly be achieved purely through mental activity.

The appellant's further argument that a user might not actually carry out the steps of the method, as the method steps were merely instructions, was not convincing either. The board noted that claims to methods were clearly allowed under the EPC (G 2/88). Any method claim requires that the steps are indeed carried out (whether manually, automatically or in a combination of both) and not just given to a user as instructions, otherwise the user would not be working within the scope of the claim. The board held that this applied also to method steps 1.2 to 1.8 of claim 1. Therefore, the appellant had not convincingly demonstrated that the subject-matter of claim 1 was not inventive in view of the skilled person's common general knowledge alone.