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The story of surgical methods continues

In a recent decision of August 2011, T923/08, a Technical Board of Appeal (BoA) had to decide on a method for measuring parameters on a human or animal body, in particular measuring the length of a femur.

For this method a device is essential, which is connected to the body, for example to a hip bone, in a surgical step. As this step is completed before the measuring of the parameters, it is not part of the measuring method and thus, is not a feature of the claim. The BoA, however, counters that, as confirmed by the applicant, the measuring method would not be possible without the bone fixed device. Therefore, according to the BoA, the surgical step is an indispensable part of the claimed method and has to be incorporated into the claim; otherwise, the claim lacks clarity and is not allowable.

In consequence to incorporating the additional feature, the BoA rejected the amended claims with regard to Article 53 c), which excludes methods for treatment of the human or animal body amongst others by surgery, and granted only a claim directed to a device for performing the measuring method.

This decision was highly surprising for the applicant, because in former appeal proceedings of May 2011before another BoA, the other BoA decided very differently on a similar application of the same applicant. In T836/08, the BoA granted a claim referring to a method for measuring a parameter, i.e., the measuring of the position of a guide wire in a bone as the method does not comprise a surgical step. Thus, this BoA agreed on applicant´s line of argumentation that the surgical step, when the guide wire is fixed in the bone, is completed before the measuring and thus, is not part of the method.

Due to the discrepancy of these two – diametrically opposed – decisions, applicant requested the transfer of these decisions to the Enlarged Board of Appeal for review in T923/08. The BoA rejected this request and argued that both BoAs referred to and used the norms of G1/07 in their decisions. The reason for the different results of the decisions is the different interpretation of the features of the claim within the legal frame of G1/07 according to the BoA, and not a departure from the legal norms of G1/07. Therefore, the BoA did not see any need to propound any legal question based on the different decisions T923/08 and T836/08 to the Enlarged Board of Appeal.

Hopefully, a further decision in the field of surgical methods will come up in the near future, which might form the basis for a review by the Enlarged Board of Appeal, that results in clarification of the above mentioned decisions, which are not very satisfying for the applicants.