T 0660/23 (Non-compliant test apparatus/HORIBA) of 12.3.2025

Summary of Facts and Submissions

I. The appeal is against the examining division's decision to refuse the present European application.

The examining division decided that the main request and auxiliary requests I and II did not comply with Articles 52(2)(c), 52(3) and 56 EPC and that auxiliary requests III and IV did not comply with Article 56 EPC.

II. In the present decision, reference is made to the following prior-art documents:

D1: WO 2017/073567 A1,

D3: Skeggs, "An Automatic Method for Colorimetric

Analyses", American Journal of Clinical

Pathology, 28, p. 311, 1957,

D4: Zagatto et al.: "Chapter 2 - Historical View" in

"Flow Analysis with Spectrophotometric and

Luminometric Detection", 2012.

For language reasons, in the following, the references made to D1 are to its late-published European family member EP 3 364 366 A1.

III. Oral proceedings were held before the board on 12 March 2025.

The appellant's final requests were that the decision under appeal be set aside and that a patent be granted on the basis of a main request or one of auxiliary Requests I to IV, all underlying the contested decision, or auxiliary requests IA (to be inserted between the main request and auxiliary request I), filed with the statement of grounds of appeal. Furthermore, the appellant requested reimbursement of the appeal fee and, in the auxiliary, remittal to the examining division for further examination and discussion of documents D3 and D4.

At the end of the oral proceedings, the board's decision was announced.

IV. Claim 6 of the main request reads as follows:

"A computer program causing a computer (10) to execute a test order processing to link each test result, sent from a test apparatus (44) to the computer, to a corresponding test order, wherein the test order comprises a test order ID and wherein the computer (10) is configured to be used in an on-line system for data communication and is connected to one or more test apparatuses (41, 42, 43, 44), the computer program making the computer (10) functions as:

a first display image output part (140) that displays mutually linked one or more test orders and one or more test apparatuses (41, 42, 43, 44) on a display device (20) in a displaying form showing which test order is linked to which test apparatus (41, 42, 43, 44),

a test apparatus determination part (150) that determines the test apparatus (41, 42, 43, 44) that should perform the test and one or more test orders linked thereto from the test orders and the test apparatuses linked thereto, which are displayed on the display device, by a user's input or by an automatic selection;

a test result receiving part (170) that receives each test result sent from the one or more test apparatuses connected to the test order processing apparatus (10); and

a test result/test order linking part (180) that links one or more test results to the one or more test orders linked to the test apparatuses, according to the input sequence or the automatic selection sequence determined by the test apparatus determination part (150), the test results being received by the test result receiving part from the test apparatus that should perform the test, and the test apparatuses being determined by the test apparatus determination part (150), wherein the test apparatus being determined is a test order ID send/receive non-compliant test apparatus (44)."

Claim 6 of auxiliary request IA differs from claim 6 of the main request as follows (with the additions underlined and the deletions [deleted: struck through]):

"[...]

a test apparatus determination part (150) that determines the test apparatus (41, 42, 43, 44) that should perform the test and one or more test orders linked thereto from the test orders and the test apparatuses linked thereto, which are displayed on the display device, by a user's input selection or by an automatic selection;

[...]

a test result/test order linking part (180) that links one or more test results to the one or more test orders linked to the test apparatuses, according to the user's input selection sequence or the automatic selection sequence determined by the test apparatus determination part (150) [...]"

Claim 6 of auxiliary request I differs from claim 6 of the main request as follows (with the additions underlined):

"[...];

wherein after the test apparatus that is a test order ID send/receive non-compliant test apparatus (44) is determined by the test apparatus determination (150), the test results received by the test result receiving part (170) from the determined test apparatus (44) as the first test result received after the determination are linked to the test order linked to the determined apparatus (44)."

Claim 6 of auxiliary request II differs from claim 6 of auxiliary request I as follows (with the additions underlined):

"[...]

a selection sequence storage part that stores a sequence of the user's input or a sequence of the automatic selection;

a test result receiving part (170) that receives each test result sent from the one or more test apparatuses connected to the test order processing apparatus (10); and

a test result/test order linking part (180) that links one or more test results to the one or more test orders linked to the test apparatuses, according to the input sequence or the automatic selection sequence determined by the test apparatus determination part (150), the test results being received by the test result receiving part from the test apparatus that should perform the test, and the test apparatuses being determined by the test apparatus determination part (150), wherein the test apparatus being determined is a test order ID send/receive non-compliant test apparatus (44);

wherein when plural test results are sequentially sent from the determined test apparatus (44), the test result/test order linking part (180) is configured to refer to the sequence of selection stored in the selection sequence storage part, the test result and the test order are linked to each other according to a sequence of reception and the sequence of selection corresponding."

Claim 4 of auxiliary request III differs from claim 6 of auxiliary request II as follows (with the additions underlined):

"A computer program causing a computer (10) to execute a test order processing to link each test result, sent from a test apparatus (44) to the computer, to a corresponding test order, wherein the test order comprises a test order ID and wherein the computer (10) is configured to be used in an on-line system for data communication and is connected to one or more test apparatuses (41, 42, 43, 44), the computer program making the computer (10) functions as:

a test order receiving part (110) that receives the test order further containing one or more test items from a sender of the test order (30);

a linking information-holding part (120) that holds information linking said one or more test items contained in the test order to a test apparatus (41, 42, 43, 44) corresponding thereto; and

a test order/test apparatus linking part (130) that refers to the linking information and test items in the test order and links the test order to one or more corresponding test apparatuses (41, 42, 43, 44);

[...]

as a test report sending part (190) that sends the test result, linked to the test order by the test result/test order linking part (130), to a given recipient as a test report or a part of a test report;

wherein when plural test results are sequentially sent from the determined test apparatus (44), the test result/test order linking part (180) is configured to refer to the sequence of selection stored in the selection sequence storage part, the test result and the test order are linked to each other according to a sequence of reception and the sequence of selection corresponding."

Auxiliary request IV includes the same claims 1 to 3 as auxiliary request III. Claim 1 of auxiliary request IV reads as follows:

"A test order processing apparatus (10) for linking a test result sent from a test apparatus (44) to a test order corresponding to the test result, wherein the test order processing apparatus (10) is configured to be used in an on-line system for data communication of a medical institution and is connected to one or more test apparatuses (41, 42, 43, 44) and comprises:

a test order receiving part (110) configured to receive the test order from a sender of the test order (30), wherein the test order contains a test order ID and one or more test items necessary for a medical diagnostic;

a linking information-holding part (120) configured to hold information linking said one or more test items contained in the test order to a test apparatus (41, 42, 43, 44) corresponding thereto; and

a test order/test apparatus linking part (130) configured to refer to the linking information and test items in the test order and link the test order to one or more corresponding test apparatuses (41, 42, 43, 44);

a first display image output part (140) configured to display mutually linked one or more test orders and one or more test apparatuses (41, 42, 43, 44) on a display device (20) in a displaying form showing which test order is linked to which test apparatus (41, 42, 43, 44),

a test apparatus determination part (150) configured to determine the test apparatus (41, 42, 43, 44) that should perform the test and one or more test orders linked thereto from the test orders and the test apparatuses linked thereto, which are displayed on the display device, by a user's input or by an automatic selection;

a selection sequence storage part configured for storing a sequence of the user's input or a sequence of the automatic selection;

a test result receiving part (170) configured to receive each test result sent from the one or more test apparatuses connected to the test order processing apparatus (10); and

a test result/test order linking part (180) configured to link one or more test results to the one or more test orders linked to the test apparatuses, according to the input sequence or the automatic selection sequence determined by the test apparatus determination part (150), the test results being received by the test result receiving part (170) from the test apparatus that should perform the test, and the test apparatuses being determined by the test apparatus determination part (150), wherein the test apparatus being determined is a test order ID

send/receive non-compliant test apparatus (44);

a test report sending part (190) configured to send the test result, linked to the test order by the test result/test order linking part (130), to a given recipient as a test report or a part of a test report;

wherein when plural test results are sequentially sent from the determined test apparatus (44), the test result/test order linking part (180) is configured to refer to the sequence of selection stored in the selection sequence storage part, the test result and the test order are linked to each other according to a sequence of reception and the sequence of selection corresponding."

Reasons for the Decision

1. Main request

1.1 Claim 6 of the main request contains the following features (the examining division's labelling):

a. A computer program causing a computer to execute

a test order processing to link each test result,

sent from a test apparatus to the computer, to a

corresponding test order,

1. wherein the test order comprises a test order

ID and

2. wherein the computer is configured to be used

in an on-line system for data communication

and is connected to one or more test

apparatuses,

b. the computer program making the computer

functions [sic] as:

1. a first display image output part that

displays mutually linked one or more test

orders and one or more test apparatuses on a

display device in a displaying form showing

which test order is linked to which test

apparatus,

2. a test apparatus determination part that

determines the test apparatus that should

perform the test and one or more test orders

linked thereto from the test orders and the

test apparatuses linked thereto, which are

displayed on the display device, by a user's

input or by an automatic selection;

3. a test result receiving part that receives

each test result sent from the one or more

test apparatuses connected to the test order

processing apparatus;

4. a test result/test order linking part that

links one or more test results to the one or

more test orders linked to the test

apparatuses, according to the input sequence

or the automatic selection sequence

determined by the test apparatus

determination part,

a. the test results being received by the

test result receiving part from the test

apparatus that should perform the test,

b. the test apparatuses being determined by

the test apparatus determination part,

c. wherein the test apparatus being

determined is a test order ID send/receive

non-compliant test apparatus.

1.2 The examining division raised an objection under Article 52(2)(c) and (3) EPC against claim 6.

1.3 The board cannot endorse this objection, since claim 6 includes technical features such as a "computer" in communication with "test apparatuses" and therefore clearly overcomes the first hurdle (i.e. the "any hardware test"; see e.g. T 258/03, headnote I) according to the established case law of the Boards of Appeal. Rather, the issue to be discussed should have been whether the subject-matter of claim 6 involves an inventive step within the meaning of Article 56 EPC.

1.4 The appellant submitted that the subject-matter of claim 6 differed from D1 in features b2, b4 and b4.c and solved the technical problem of how to use a "[test order ID send/receive] non-compliant test apparatus" in an environment in which test orders include an ID.

1.5 The examining division and the appellant disagreed on whether or not feature b4.c is a technical feature.

In the board's view, this discussion misses the point that feature b4.c is not a feature of the "computer program" of claim 6. Instead, it is a feature of the "test apparatuses" from which the "computer" on which the "computer program" of claim 6 runs receives test results, which causes a problem in linking received test results to corresponding test orders. Thus, feature b4.c is the problem itself (as the appellant indeed incorporated in its own formulation of the technical problem: "how to use a non-compliant test apparatus"), and not a feature of the "computer program" of claim 6 which contributes to the solution of a technical problem.

1.6 Regarding feature b2, the appellant argued that, in the system of D1, there was no "user's input" selection.

However, this is one of the two options ("by a user's input or by an automatic selection") provided in feature b2, the other being an "automatic selection" of the "test apparatuses" that should perform the tests. Document D1 does however disclose the second option of an "automatic selection". Therefore, feature b2 cannot establish novelty.

1.7 Thus, the only distinguishing feature that allegedly solves the objective problem of how to use a "[test order ID send/receive] non-compliant test apparatus" in an environment in which test orders include an ID is feature b4, namely linking the test results to the test orders "according to [...] the automatic selection sequence determined by the test apparatus determination part".

1.8 The board agrees with the appellant that documents D3 and D4 are not relevant for this matter. The real question is indeed whether feature b4 solves the underlying technical problem at all. In the board's view, the answer to this question is in the negative.

It would be appropriate to discuss this on the basis of the only example in the application as filed which illustrates a case in which "test results" are linked to a plurality of "test orders", i.e. Figure 4. In Figure 4, test apparatuses 41 and 44 were selected as the test apparatuses to perform test items for the test order with "ID A1001". If test apparatuses 41, 42 and 43 were then selected to perform test items of "test order A1002" and test apparatuses 42 and 44 were selected thereafter to perform test items of "test order A1003", a linking according to feature b4 would in fact link the results of test apparatuses 41 and 44 for "test order A1001" with the results of test apparatuses 42 and 43 for "test order A1002" together, as they are in the same first "selection sequence". It would then link the results of test apparatus 41 for "test order A1002" with the results of test apparatuses 42 and 44 for "test order A1003" together, as they are in the same second "selection sequence". In other words, no technical effect can be derived from the mere linking of some "test results" to "test orders" which are in turn linked to the respective "test apparatuses" according to any determined sequence. Therefore, feature b4 does not credibly solve the above-mentioned technical problem.

1.9 The appellant argued that the board's understanding of a "selection sequence" did not correspond to what was intended by that term in the application. Referring in particular to paragraphs [0038] and [0042] of the description, it argued that the term "selection sequence" was not intended to include a "horizontal" selection of a plurality of test apparatuses selected for a particular test order but rather as the sequence of test items assigned to a particular non-compliant test apparatus.

However, the claim wording, even if interpreted according to the passages of the description, is not restricted to a particular "sequence" of selecting test apparatuses.

1.10 For this reason, no technical effect is derivable from the claim wording. As a consequence, the subject-matter of claim 6 (and of the corresponding apparatus claim, i.e. claim 1) of the main request does not involve an inventive step (Article 56 EPC).

2. Admittance of auxiliary request IA

2.1 The contested decision is not based on auxiliary request IA filed with the statement setting out the grounds of appeal, contrary to Article 12(2) RPBA. Thus, this request is an "amendment" within the meaning of Article 12(4) RPBA, which can only be admitted at the board's discretion.

2.2 The appellant argued that it only became clear to them having studied the contested decision that the examining division did not sufficiently appreciate that the phrase "input sequence" in claim 1 of the main request should be understood as a "user's selection".

2.3 However, if claims are apparently prone to any misunderstanding, appropriate amendments should be made already in the examination proceedings. The appellant cannot then use appeal proceedings as a continuation of the examination proceedings in order to make good what should have been addressed before, but has not been. Consequently, such a request should indeed have been submitted already during the examination proceedings (cf. Article 12(6), second sentence, RPBA).

2.4 Therefore, the board did not admit auxiliary request IA into the appeal proceedings (Article 12(6) RPBA).

3. Auxiliary requests I to IV

3.1 Claim 6 of auxiliary request I differs from claim 6 of the main request in that it includes the following additional features:

(i) wherein after the test apparatus that is a test order ID send/receive non-compliant test apparatus is determined by the test apparatus determination,

(ii) the test results received by the test result receiving part from the determined test apparatus as the first test result received after the determination are linked to the test order linked to the determined apparatus.

3.2 Claim 6 of auxiliary request II differs from claim 6 of the main request in that it includes the following additional features:

(iii) a selection sequence storage part that stores a sequence of the user's input or a sequence of the automatic selection;

(iv) wherein when plural test results are sequentially sent from the determined test apparatus, the test result/test order linking part is configured to refer to the sequence of selection stored in the selection sequence storage part, the test result and the test order are linked to each other according to a sequence of reception and the sequence of selection corresponding.

3.3 These features indeed reflect the scenario elaborated above when assessing the main request and do not remedy the fact that a linking based on the selection sequence does not solve the technical problem at hand.

3.4 Regarding auxiliary request II, the appellant argued at the oral proceedings before the board that this request could clarify the intended meaning of a "selection sequence" according to the invention, which assigned "test results" to the correct "test order".

However, the additional features of claim 6 of auxiliary request II merely state that the selection sequence is stored and used thereafter while linking the received results to test orders. They do not restrict how the term "selection sequence" is to be interpreted.

3.5 Claim 4 of auxiliary request III differs from claim 6 of auxiliary request II in that it has the following additional features:

(v) a test order receiving part that receives the test order further containing one or more test items from a sender of the test order;

(vi) a linking information-holding part that holds information linking said one or more test items contained in the test order to a test apparatus corresponding thereto;

(vii) a test order/test apparatus linking part that refers to the linking information and test items in the test order and links the test order to one or more corresponding test apparatuses;

(viii) a test report sending part that sends the test result, linked to the test order by the test result/test order linking part, to a given recipient as a test report or a part of a test report.

The board agrees with the contested decision that these features are already disclosed in D1. The appellant argued that D1 does not disclose a "test order/test apparatus linking part". The board cannot accept that conclusion since the "test order sending part 130" in document D1 exactly performs this function referring to the "linking information-retaining part 120".

3.6 Auxiliary request IV includes the same claims 1 to 3 as auxiliary request III. The appellant only deleted claims 4 and 5 of auxiliary request III to a "computer program" to address the examining division's objections under Article 52(2)(c) and (3) EPC, which was however not necessary to address them after all (see point 1.2 above).

3.7 Therefore, the subject-matter of the independent claims of auxiliary requests I to IV does not involve an inventive step either (Article 56 EPC).

4. Request for reimbursement of the appeal fee

The appellant did not substantiate its request for reimbursement of the appeal fee and the board could not see any legal basis for it. Therefore, the board rejected this request.

5. Request for remittal to the examining division

5.1 The appellant argued that it did not have a chance to comment on documents D3 and D4 in the examination proceedings and requested that the case be remitted to the examining division for "further examination and discussion of documents D3 and D4".

5.2 However, the board did not consider documents D3 and D4 to be relevant to assess the allowability of the present claim requests. Therefore, the board sees no merit in this request for remittal.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is refused.