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Case Law of the Boards of Appeal

Statement of purpose of surgical use for a known instrument 

In T 227/91 (OJ 1994, 491) the board held that the purpose of a surgical use alone could not render novel the subject-matter of a claim relating to the use of the components of a known instrument for its manufacture, i.e. assembly. The claim under consideration related to the "use" of intercepting of a laser beam of substrate means and coating means in the manufacture of a laser surgical instrument (the use). The indication of the purpose, i.e. intercepting the laser beam, was a characteristic of the surgical use of the instrument and did not affect the structure or composition of the entity itself. This kind of functional reference could not normally impart novelty to an otherwise known article unless the function implied a necessary modification of the article itself. The only exceptions so far recognised were based on Art. 54(5) EPC 1973 and on a new therapy for a known medicament whose manufacture was also characterised by the new use of the product (i.e. second or further therapeutic indication - G 5/83). However, the surgical use of an instrument was not analogous to a therapeutic use in the above-mentioned cases, since the instrument was not consumed in the application and could be used repeatedly for the same or even for other purposes (T 138/02, T 1099/09).