Zusammenfassung von Article 054 EPC für die Entscheidung T1913/21 vom 17.10.2024

See also abstract under Article 12(4) RPBA. In T 1913/21 claim 1 read: "Use of an inhibitor of cysteine degradation for reducing the formation of trisulfide bonds in proteins, wherein the inhibitor of cysteine degradation is selected from pyruvate, methyl pyruvate, ethyl pyruvate, glyceraldehyde, and glyoxylic acid; and wherein the use comprises: culturing cells expressing said proteins in the presence of an effective amount of the inhibitor of cysteine degradation, whereby trisulfide linkage formation in said proteins is reduced relative to cells cultured in medium without the inhibitor of cysteine degradation." The parties disagreed about whether the stated effect of "reducing the formation of trisulfide bonds in proteins" was a functional technical feature limiting the claimed use. In the decision under appeal, the opposition division had taken the view that the claim was formulated as a second non-medical use claim, namely as the use of a known compound for a particular purpose, which is based on a technical effect. In its view the claim was therefore subject to the rationale of decisions G 2/88 and G 6/88. The board recalled that in G 2/88 the Enlarged Board distinguished between categories of claims, namely between a use of a physical entity for achieving an effect on the one hand and a process for the production of a product on the other. The Enlarged Board emphasised that a claim directed to the use of a known compound for a particular purpose is not a process claim within the meaning of Art. 64(2) EPC. While a process claim extended its protection to "the product directly obtained by such process" by virtue of Art. 64(2) EPC, a "use" claim of the type considered by the Enlarged Board did not result in a product and therefore no protection under Art. 64(2) EPC arose. The board emphasised that claims which when correctly construed are directed to processes resulting in products referred to in Art. 64(2) EPC are not subject to the special treatment established under G 2/88 and G 6/88, even if they contain the word "use". The board had to determine whether or not the "use" of claim 1 was in fact a process to produce a product or if it was a use to achieve a (new) technical effect. On the facts, the board held that the claimed subject-matter comprised carrying out process steps, which result in the production of a product. Following G 2/88 and G 6/88, the claimed subject-matter had to be regarded as a process for the production of proteins with a "reduced" number of trisulfide linkages, regardless of the fact that the claim was drafted as the "use" of a chemical compound. The technical effect stated in the claim of "reducing the formation of trisulfide bonds in proteins", could not occur except as part of a process for the production or manufacture of proteins and as such was inextricably linked to the production process. The new technical effect recited in the claim of reducing the formation of trisulfide bonds in proteins pertained to the product (the protein produced) and could not be considered a technical limiting feature of the "use" according to G 2/88. Assessing novelty in this case therefore had to be done by answering the question of whether or not there was a disclosure forming part of the state of the art of a process having the same physical steps (culturing cells expressing said proteins in the presence of an effective amount of a compound that may act as an inhibitor of cysteine degradation) and leading to the production of the product defined in the claim. The board concluded that this was the case and claim 1 therefore lacked novelty over the prior art considered in the proceedings.