Quick Navigation

 

Guidelines for Examination

 
 
4.13
"Apparatus for ...", "Method for ...", etc. 

If a claim commences with such words as: "Apparatus for carrying out the process etc..." this must be construed as meaning merely apparatus suitable for carrying out the process. Apparatus which otherwise possesses all of the features specified in the claims but which would be unsuitable for the stated purpose or would require modification to enable it to be so used, should normally not be considered as anticipating the claim.

Similar considerations apply to a claim for a product for a particular use. For example, if a claim refers to a "mold for molten steel", this implies certain limitations for the mold. Therefore, a plastic ice cube tray with a melting point much lower than that of steel would not come within the claim. Similarly, a claim to a substance or composition for a particular use should be construed as meaning a substance or composition which is in fact suitable for the stated use; a known product which prima facie is the same as the substance or composition defined in the claim, but which is in a form which would render it unsuitable for the stated use, would not deprive the claim of novelty. However, if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty. An exception to this general principle of interpretation is where the claim is to a known substance or composition for use in a surgical, therapeutic or diagnostic method (see G-II, 4.2). Similarly, in the data-processing/computer program field, apparatus features of the means-plus-function type ("means for ...") are interpreted as means adapted to carry out the relevant steps/functions, rather than merely means suitable for carrying them out. In this way novelty is conferred over an unprogrammed or differently programmed data-processing apparatus.

In contrast to an apparatus or product claim, in case of a method claim commencing with such words as: "Method for remelting galvanic layers" the part "for remelting ..." should not be understood as meaning that the process is merely suitable for remelting galvanic layers, but rather as a functional feature concerning the remelting of galvanic layers and, hence, defining one of the method steps of the claimed method (see T 848/93).

A distinction does however have to be made where the claim is directed to a method or process aiming at a certain purpose, when it comprises physical steps which result in the production of a product (i.e. the claim is in fact directed towards the production of a product). In this case, the purpose (intended use) is to be understood in the sense that the method or process has to be merely suitable for that use, rather than comprising the use as an integral method step. Consequently, a prior disclosure of a same (product production) method without an indication of the particular purpose, although the method is nevertheless suitable for it, will anticipate a claim to the method for that particular purpose (see T 304/08).