CABINET CHAILLOT

T0647/21 remittance to Examining Division, Clarity, Inventive step

Remittance to Examining Division, Clarity, Inventive step

T0647/21
The appeal is against the Examining Division's decision to refuse the application on the grounds that the main request and auxiliary requests did not meet the requirements of Articles 84 and 56 EPC.
Claim 1 of the main request and of auxiliary requests refers to a method of assessing a diabetes treatment protocol by utilizing a processor.
The Examining Division objected that claim 1 of the main request and auxiliary requests was unclear, as the features of "determining a protocol complexity level" and "determining a patient proficiency level" were defined in terms of the result to be achieved; however, the disputed terms "protocol complexity level" and "patient proficiency level" are defined in claim 1 of the requests as the degree of difficulty of a diabetes treatment protocol for a patient and the patient's skill level in conducting the diabetes treatment protocol ("determining a protocol complexity level corresponding to a degree of difficulty of completing the diabetes treatment protocol"  and "determining a patient proficiency level corresponding to a skill set of the patient in conducting the diabetes treatment protocol"). The board is not convinced that simply assigning two numbers to these two levels would involve any difficulty for the skilled person in order to justify an objection that they were defined in terms of the result to be achieved.
The appellants requested that the case be remitted to the Examining Division if the board found that the requirements of Article 84 EPC were met.
In accordance with Article 11 RPBA 2020, the board must not remit a case to the department whose decision was appealed for further prosecution unless special reasons present themselves for doing so. As a rule, fundamental deficiencies apparent in the proceedings before that department constitute such special reasons.
In the case at hand, the appellants argued that the inventive-step objections in the contested decision were not sufficiently reasoned, contrary to Rule 111(2) EPC, which was a fundamental deficiency in examination proceedings.
The board does not agree. The fact that the clarity objections in the contested decision were not upheld by the board has no bearing on whether or not the inventive-step objection in the contested decision was sufficiently reasoned. From the structure of the inventive-step objection in the contested decision, it is sufficiently clear that the Examining Division could not identify any technical contribution in view of the same clarity objections.
There are no special reasons for a remittal, and the request for remittal cannot be allowed.
D1 discloses a PDA with a medical device and diabetes software, which can be used as a suitable starting point for assessing inventive step. All the steps of the method in claim 1 of the main request are novel over D1.
The technical effect achieved by the distinguishing features of claim 1 of the main request was that of improving the safety of diabetes treatment. The success of a diabetes treatment protocol was dependent on the patient's adherence to the diabetes treatment protocol. Adherence may be prevented when the diabetes treatment protocol or the tasks of the diabetes treatment protocol are too complex for the patient. A patient may lack the required skill set to perform tasks of the diabetes treatment protocol. Moreover, the patient may be unaware that they lack the required skill set to perform the diabetes treatment protocol.
Accordingly, claim 1 of the main request tells ("instructing" in the language of the claims) the patient to commence a diabetes treatment protocol only if they are skilled enough to perform it; however, giving a patient a specific treatment protocol or telling them to commence a treatment protocol are intellectual exercises devoid of technical character.
Therefore, the method in claim 1 of the main request does not have any technical character beyond its implementation using a processor.
Claim 1 of auxiliary requests gives additional details of the calculation of the "protocol complexity level" and the "patient proficiency level". The way these parameters are calculated is immaterial for the technical character of the claimed method and does not change the assessment of inventive step.
Therefore, the subject-matter of claim 1 of the main request and of auxiliary requests does not involve an inventive step (Article 56 EPC).
The appeal is dismissed.

 

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