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Case Law of the Boards of Appeal

 
 
e)
Claim directed to the use of a known process for a particular purpose 

In T 210/93 the originally claimed process for the production of a rubber product was held not to be novel by the examining division because the claimed temperature range was already disclosed in D1. With reference to G 2/88 (OJ 1990, 93) and G 6/88 (OJ 1990, 114), the applicants thereupon claimed the use of this known process for the purpose of preparing the rubber product having a certain maximum ratio of constituent X. They argued that in the absence of a disclosure of this mole ratio in D1, this constituted a "specific technical purpose of achieving the previously unknown chemical structural arrangement". The board observed that decisions G 2/88 and G 6/88 related to claims to the use of a known compound for a particular purpose, in contrast to the appellants' claim, which was directed to the use of a known process for a particular purpose, the purpose being the preparation of a particular product naturally resulting from such process. In the board's view, the use of a process for the purpose of preparing its product(s) could be said to be nothing but that very same process, and the scope of protection appeared to be the same for a claim to the process as such and a claim to such use.

In T 684/02 in the context of the issue of novelty of the subject-matter of the claims, reference was repeatedly made by both parties to decisions G 2/88 and G 6/88. The board stated that the Enlarged Board of Appeal limited its orders in G 2/88 and in G 6/88 explicitly to "a claim to the use of a known compound" in which a technical effect should be interpreted as a functional technical feature. In the board's view, this left no room for further expansion of this ruling to claims worded otherwise. The claims at issue were not, however, directed to the use of a chemical compound or chemical composition for a particular purpose, as considered by the Enlarged Board of Appeal in its above decisions. Instead, they were directed to the use of a process, a wording chosen by the applicant during the examination procedure. The board stated that this fact could not be disregarded or ignored. The board could not accept the opinion of Appellant 1, that the considerations in G 2/88 and G 6/88 would also be valid for the present claims to the use of a process, because by this process products would be obtained which showed the improved feature.

The board noted that Claim 1 was directed to the use of the fluorination reaction process in order to remove the unstable end groups from the starting polymer. The effect of this process manifested itself in its result, i.e. in the product together with all its internal characteristics and the consequences of its particular history of origin (see T 119/82; OJ 1984, 217, in particular point 11 of the Reasons), but not in an effect observed in a particular use of the product. Moreover, in the board's view, a claim to the use of a process or to the process itself addressed the producer of a product, irrespective of any conceivable later applications, methods of further processing or uses of the product, whilst a claim to the use of a product clearly addressed the customer/user of that product. In other words, the asserted advantage or purpose could not be taken into account as a functional technical feature in Claim 1 because of the jurisprudence of the boards of appeal as well as for technical reasons, because the asserted advantage or purpose was related only to the product (manufactured in some process or other) when used in certain circumstances and marginal conditions. Finally, the board stated that it shared the view expressed in point 3.2.3 of the Reasons in T 210/93 that the use of a process for a particular purpose was "nothing but that very same process". Consistent therewith, the board held that the request did not fulfil the requirements of Art. 52(1) and 54 EPC 1973.

The criteria set out by the Enlarged Board of Appeal in G 2/88 and G 6/88 may only be applied to claims directed to the use of a substance for achieving an effect and cannot be extended to claims to a process for producing a product characterised by process steps wherein the purpose of carrying out said process steps is indicated in the claim (cf. T 1140/09; see decisions T 1179/07, T 1343/04, T 304/08 and T 1049/99).

In T 304/08 the board noted that decision G 6/88, as well as G 2/88 (OJ 1990, 93), pertained to claims directed to the use of a known substance for a novel purpose. The two decisions contained no finding concerning claims to a method (or process, these two terms being used synonymously in this decision) wherein the purpose of carrying out the method was defined in the claim. However, G 2/88 stated that there were basically two different types of claim, namely a claim to a physical entity (e.g. product, apparatus) and a claim to a physical activity (e.g. method, process, use) and that the technical features of a claim to an activity were the physical steps which defined such activity. Decision G 2/88 further distinguished, in the context of defining the extent of protection conferred under Art. 64(2) EPC, between claims which defined the use of a particular physical entity to achieve an "effect" and the use to produce a "product" and concluded that, providing that the use claim in reality defined the use of a substance to achieve an effect and did not define such a use to produce a product, the use claim was not a process claim within the meaning of Art. 64(2) EPC. Thus, the criteria set out by the Enlarged Board of Appeal in the aforementioned decisions could only be applied to claims directed exclusively to the use of a substance for achieving an effect.

In T 1179/07 the board found that the central findings in G 2/88 und G 6/88 (see Headnote, point III) concerned a claim to the use of a known compound for a previously unknown purpose. No findings were made in those decisions with respect to process claims for a specific use. Although the "use of a compound" could be regarded as a process including the compound use as a procedural step, a use claim could not normally be treated as equivalent to a process claim because Art. 64(2) EPC was not, as a rule, applicable to use claims. According to the Enlarged Board in G 2/88, Art. 64(2) EPC was generally not directed to patents whose claimed subject-matter was the use of a process to achieve an effect (this normally being the subject of a use claim) but rather to European patents whose claimed technical subject-matter was a process of manufacture of a product.

Despite the indicated purpose, the process claimed in this case was clearly aimed at manufacturing a product: a procedural treatment of the source product resulted in an end product differing from the source product. Were the board to extend the findings made in G 2/88 and G 6/88 to the granted process claim, this would confer fresh protection under Art. 64(2) EPC on the product resulting from granted process claim 1 even though that product was already known from D1 and obtained by precisely the same process as that described in D1. It could not, however, be in keeping with the object and purpose of Art. 64(2) EPC to extend its protection to a product obtained by a known process. It was, in particular, this difference in the treatment of process and use claims in the context of Art. 64(2) EPC which, in the board's view, left it no scope to extend the principles laid down by the Enlarged Board in G 2/88 and G 6/88 with regard to the use of a known compound for a previously unknown purpose to process claims (see also T 684/02, T 910/98 and T 1049/99).