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Case Law of the Boards of Appeal

 
 
d)
New use of functional feature in a known process 

In T 848/93 the application claimed a process which differed from the prior art only in its use (remelting instead of vapour phase soldering). The examining division had understood the claim to mean that the process claimed was suitable for the use described, and had considered that it lacked novelty because the process known in the prior art was also suitable for that use, even if this was not expressly stated.

The board did not agree - if a claim concerned e.g. an apparatus which differed from a known apparatus only as regards the use indicated, then the use was not an apparatus feature. This meant that the two pieces of apparatus were identical in terms of structure. If the known apparatus was suitable for the claimed use, the application lacked novelty. If the claim was directed to an object, a substance or a composition, the same applied. If however the claim was for a process, the situation was not comparable. In such a case, the use feature was a functional process feature comparable in category with the other features (steps) of the process. The teaching of T 69/85 was therefore not applicable to the case before the board.

In T 1049/99 the board took the view that the criteria set out in decisions G 2/88 and G 6/88 (OJ 1990, 93 and 114) could not simply be transferred to process claims. The board pointed out that, according to those decisions, a new purpose related to a new technical effect could render novel the claimed use of a product already known, even though the means of realisation making it possible to achieve the new purpose was identical to the known means of realisation, given that a use claim in reality defined the use of a particular physical entity to achieve an effect. The board distinguished this situation from that of a process claim which defined the use of a particular physical entity to achieve a product and, therefore, fell within the scope of Art. 64(2) EPC 1973. An extension of the criteria set out in the decisions of the Enlarged Board referred to above would result in protection of a product obtained by a process already known on the basis of the new effect discovered in the process itself, even though that process was identical to that already known (see also T 910/98).

In T 1092/01 the claimed subject-matter consisted of a process with technical features encompassing those disclosed in prior art documents D2 and D3, but which was applied for a use not disclosed in these documents (isolmerization of lutein to zeaxanthin). In more general terms, claim 1 related to a known process with which a previously unknown technical effect was achieved (yet which might have inherently occurred in the course of carrying out the process). The board applied the rationale of G 2/88 (OJ 1990, 93) where the claim related to the use of a known compound, which use was based on a previously unknown technical effect of the known compound. Thus, according to the board, the question was whether a new effect which was brought about by known means could be found novel. The board concluded from G 2/88 that, if the newly discovered effect led the skilled person to a new activity which was not connected with the means known before, such an effect could confer novelty on a claim which was directed to the new activity, i.e. a use or a process. If this was not so, novelty could not be acknowledged.