T 1487/09 – Disruptive Forces

This is an examination appeal.

Claim 29 of the main request read:

A method of imparting disruptive forces onto a target surface (57), comprising:
using a moisture output to dynamically place a first layer of moisture in form of fluid particles and/or mist above a plurality of points of the target surface so that different parts of the first layer of moisture are simultaneously disposed over different ones of the plurality of points; and
automatically scanning electromagnetic energy via a scanner relative to the moisture output being attached to a scanning housing of the scanner, the electromagnetic energy being scanned by a motor assembly for scanning an optical fiber of an electromagnetic energy output or by reflectors and focusing optics or dynamically controlled deflectors for scanning collimated or non collimated electromagnetic energy above a plurality of points of the target surface; whereby at least portions of the electromagnetic energy above the plurality of points are at least partly absorbed by the moisture above the plurality of points.

The Board found this claim to be unpatentable under A 53(c):

[2.1] Independent claim 29 seeks protection for a method for imparting disruptive forces onto a target surface.

Although the claim does not explicitly mention the nature of the target surface, the disclosure of the patent application as a whole makes clear that said target surface may include hard and soft tissues which are part of the human or animal body. As some examples of such tissues, inner vital organs of the body such as the heart, the liver, the kidney and the brain are given […].

It follows that the method according to claim 29 encompasses embodiments in which disruptive forces are imparted on such vital organs. Therefore, these embodiments are associated with an invasive step involving a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise.

Moreover, paragraphs [0057], [0061] and [0063] for example, explicitly refer to preferred embodiments which involve the delivery of medication to a patient.

For these reasons, in accordance with decision G 1/07 [order 1 and 2a; point 4.1], the Board considers that such embodiments are excluded from patentability as methods for treatment of the human or animal body by surgery and therapy pursuant to A 53(c). A claim which comprises a step encompassing such embodiments cannot be left to encompass them.

  

[2.2] As regards the appellant’s argument that claim 29 does not include any feature that constitutes a method step for treatment of a human body by surgery, the Board notes that it is not decisive whether such features are explicitly defined in the claim, as long as the subject-matter of the claim encompasses embodiments which constitute such method steps.

In order to establish whether said embodiments are encompassed in the claimed method, not only the wording of the claim is of importance. Rather, the description and the figures are also to be considered. As a matter of fact, the usual practice is that particular embodiments of a claimed invention are only disclosed in detail in the description and drawings.

[2.3] Hence, the main request cannot be allowed as it does not comply with A 53(c).

The applicant then introduced a disclaimer the wording of which was inspired by G 1/07. Claim 29 of the first auxiliary request read:

A method of imparting disruptive forces onto a target surface (57), with the exception of such uses that comprise or encompass an invasive step representing a substantial physical intervention on the body of a human or an animal which requires professional medical expertise to be carried out and which entail a substantial health risk even when carried out with the required professional care and expertise, comprising:
using a moisture output to dynamically place a first layer of moisture in form of fluid particles and/or mist above a plurality of points of the target surface so that different parts of the first layer of moisture are simultaneously disposed over different ones of the plurality of points; and
automatically scanning electromagnetic energy via a scanner relative to the moisture output being attached to a scanning housing of the scanner and formed as a mist disk, the electromagnetic energy being scanned by a motor assembly for scanning an optical fiber of an electromagnetic energy output or by reflectors and focusing optics or dynamically controlled deflectors for scanning collimated or non collimated electromagnetic energy above a plurality of points of the target surface; whereby at least portions of the electromagnetic energy above the plurality of points are at least partly absorbed by the moisture above the plurality of points. (my emphasis)

The Board objected a lack of clarity:

[3.1] Compared to claim 29 of the main request, claim 29 of auxiliary request I comprises a disclaimer aiming at excluding uses that “comprise or encompass an invasive step representing a substantial physical intervention on the body of a human or an animal which requires professional medical expertise to be carried out and which entail a substantial health risk even when carried out with the required professional care and expertise.”

[3.2] However, the uses excluded are not explicitly defined, but rather must be derived from a condition which is to be fulfilled. Whether this condition is fulfilled or not would have to be established by the reader of the claim.

In particular, it would be left to the reader’s own evaluation to establish whether a particular use potentially falling within the scope of the claim was thus excluded.

This evaluation contains several subjective aspects, such as establishing whether the physical intervention and the health risk are to be considered “substantial”.

Leaving room for such an assessment by the reader inevitably introduces uncertainty as to the matter for which protection is sought. Hence a lack of clarity arises, which is in breach of A 84.

Moreover, it is not clear how suitable the wording of the disclaimer is for excluding the embodiments relating to therapy as described in paragraphs [0057], [0061] and [0063].

[3.3] The Board can follow the appellant’s arguments regarding the introduction of a disclaimer in view of decision G 1/03. In particular, it is accepted that in the present case introducing a disclaimer for excluding subject-matter which would not be patentable under A 53(c) may not contravene A123(2). However, as also affirmed in said decision G 1/03 [3] and in decision G 1/07 [point 2b of the order], all the requirements of the EPC have to be considered when examining said disclaimer, in particular those of A 84.

The fact that the wording chosen for the disclaimer is the same as the one used in decision G 1/07 for describing a surgical method does not mean that the claim fulfils the clarity requirements of A 84.

In decision G 1/07 said wording is used in the general context of the explanation that if a method in which maintaining the life and health of a subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, then said method is of surgical character for the purposes of A 53(c). Consequently, an acceptable disclaimer would have to exclude all methods fulfilling this condition. However, why this is the case for a specific method should objectively be clear from the wording of the disclaimer. In the present case, simply introducing the condition in the disclaimer does not enable the reader to objectively assess whether said condition is fulfilled or not. As a matter of fact, the difficulty often involved in this assessment is also explicitly mentioned in decision G 1/07 itself: under point [3.4.2.6] of the Reasons it is stated that “in many situations it will not be an easy task to determine whether or not an invasive step constituting a substantial physical intervention on the body comprised or encompassed by a claim requires professional medical skills to be carried out and involves a substantial health risk even when carried out with the required care and expertise [ and ...] such a criterion could be expected to be handled on a case-by-case basis [...].”

A similar situation may occur when a disclaimer aiming at establishing novelty over subject-matter of a conflicting application under A 54(3) is to be introduced. If the disclaimer merely comprised general wording mentioning the conflicting application (e.g. “except what is already known from European application No. [...]”), without explicitly and precisely excluding the features anticipated by the conflicting application, then a lack of clarity could also arise.

As regards the reference to the filed application allegedly making clear that the claimed method was not intended to encompass uses on “problematic” soft tissues of a human or animal body, the Board is firstly of the opinion that, in general, the claims should be clear in themselves. Moreover, no clear distinction between “problematic” or non-problematic tissues can be found in the filed application. As a result, not even the content of the application as a whole gives assistance in interpreting the disclaimer.

[3.4] Hence, auxiliary request I cannot be allowed as it does not comply with A 84.

The applicant finally overcame the objections by filing a request containing only apparatus claims.

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