In T 0425/24 (Technical Board of Appeal 3.2.07, 17 November 2025) the Board confirmed the refusal of ABB Schweiz AG’s application for a method of optimising a robot work cycle. The decision is a reminder that, where claimed steps can be performed purely mentally, the applicant cannot rely on the description to “read in” a technical implementation, and that adding a generic computer-implementation feature may merely shift the debate to inventive step without improving the outcome.
Background
The examining division refused the application on the basis that the main request and auxiliary request 1 were excluded from patentability as mental acts (Article 52(2)(c) EPC). Regarding the lower-ranking requests, the examining division found that auxiliary requests 2 and 3 contained added subject-matter, did not admit auxiliary request 4, and considered auxiliary request 5 withdrawn. On appeal, the Board maintained the mental acts exclusion and found that the remaining auxiliary requests lacked an inventive step (Article 56 EPC), contained added subject-matter, or were inadmissible. The Board ultimately dismissed the appeal.
Key findings of the decision
Main request and auxiliary request 1: exclusion as mental acts
The appellant argued that the description made the use of a computer an “overriding requirement” and invoked earlier decisions on claim interpretation (T 416/87; T 717/98) to justify reading the computer into the claim. The Board rejected this approach in the context of Article 52(2)(c) EPC: it considered that the cited decisions did not concern exclusions from patentability, and that in the present case the claimed steps could “certainly be carried out purely mentally” in simple cases. The Board also noted that complexity is not necessarily incompatible with a finding of mental acts, referring to T 914/02.
For auxiliary request 1, the additional limitation that each manipulator is only allowed to operate in its allocated area did not change matters, because the claim still required only calculating cycle times rather than implementing any work cycle. The Board expressly reasoned that one could mentally divide the layout and calculate cycle times.
Auxiliary requests 2–4: technical means introduced, but no inventive step
Auxiliary request 2 added that defining the layout and/or work-area division is executed by a computer, which the Board accepted as sufficient to avoid exclusion under Article 52 EPC. The assessment then proceeded under Article 56 EPC following the COMVIK approach: only features contributing to technical character can support inventive step.
On the facts, the Board treated the newly introduced “executed by a computer” feature as the only technical feature and found it disclosed by D1. Furthermore, the alleged interaction with non-technical features (including an asserted reduction in computational resources) was not achieved over the whole scope of the claim. The Board noted that the claim encompassed scenarios, such as defining only a single layout by a computer while carrying out all other steps manually, where no such resource reduction would occur. The claim was therefore not inventive over D1 alone. Auxiliary request 3 did not change the analysis, and auxiliary request 4 fell for the same reasons.
Auxiliary requests 4a–6: non-admittance and added subject-matter
Auxiliary request 4a (filed on appeal) was not admitted under Article 12(6) RPBA because the Board considered it could and should have been filed during examination, given the time and opportunities available at oral proceedings before the examining division.
For auxiliary request 5, which was directed to a robot system rather than a method, the Board raised and decided an Article 123(2) EPC objection, finding no direct and unambiguous disclosure of the claimed combination (including at least two manipulators, at least three means for presenting components, and at least one fixture). As a result, it was unnecessary to decide whether the request had been implicitly withdrawn during examination.
Auxiliary request 6 was not admitted under Article 13(2) RPBA (and also failed prima facie under Article 123(2) EPC considerations), with the Board noting in particular that the alleged “exceptional circumstances” did not justify reverting again to a method claim.
Analysis and implications
T 0425/24 reinforces two practical drafting points. First, if a technical implementation (e.g. a computer or controller) is intended to be essential, it should be claimed explicitly: the Board’s message is that an applicant cannot avoid a mental-acts objection by relying on the description to supply “overriding” technical features absent from the claim.
Secondly, adding a generic computer-execution feature may only move the fight from Article 52(2)(c) EPC to Article 56 EPC. Where the only technical contribution is the use of conventional computing for an otherwise non-technical optimisation concept, D1-type disclosures may be sufficient to deny inventive step unless the claim specifies a further technical effect and the technical means that achieve it.
Conclusion
The Board dismissed the appeal because the method claims of the main request and auxiliary request 1 were excluded as mental acts, later requests failed for lack of inventive step over D1, and further auxiliary requests were not admitted or did not comply with Article 123(2) EPC. T 0425/24 illustrates the continued importance of aligning claim language with the intended technical implementation and any asserted technical effects.
