8.1.5 Novelty criteria for product claims with purpose characteristics

It is long standing office practice that a formulation such as "apparatus for" is to be interpreted as meaning an apparatus which is suitable for the stated use, see for example Guidelines F‑IV, 4.13 – November 2018 version; T 1389/10). As explained in the Guidelines, as e.g. in the case of a mould for molten steel, the stated use may imply certain physical limitations (size, material) without which the apparatus could not be used for that purpose. Any prior art apparatus which, in addition to features expressly mentioned in the claim also possesses these implicit physical features and can thus reasonably be used for the stated purpose will then take away novelty of the claimed apparatus. This is irrespective of whether or not the prior art mentions the stated use or purpose or whether the stated use is obvious or not. This is because the claim is directed at the apparatus, not its use. Nor can stating a use that is new and not-obvious render an apparatus which is already known novel and inventive.

In T 215/84 the board held that the discovery that the known equipment might be used in a new manner could not render the entity itself novel.

In T 523/89 a particular prior art document disclosed a container having all the structural features defined in claim 1 of the contested patent. Hence, the only outstanding issue was the fact that D1 nowhere indicated that the container disclosed therein was intended to be used for ice-cream. The board noted that the question of anticipation of a claim to an article for a particular use was dealt with in the Guidelines (Guidelines F‑IV, 4.13 – version 2018), from which it was clear that, with the exception of medical uses of known substances, the indication of intended use was only to be seen as limiting to the extent that the article had to be suitable for that use. In other words, disclosure of an equivalent article without an indication of the particular use claimed – although the article was nevertheless suitable for it – would cause lack of novelty of a claim to the article for that particular use. The board saw no reason to disagree with this general principle of interpretation laid down in the Guidelines.

In T 15/91 the board ruled that, according to the case law of the boards of appeal, the discovery that known apparatus could be used in a manner not hitherto described did not substantiate the novelty of that apparatus, if the hitherto unknown use did not require any modification to the technical design of the known apparatus (see T 523/89).

In decisions T 303/90 and T 401/90 the main claims related to a contraceptive composition comprising known pharmaceutical compounds. The board was of the opinion that the composition as claimed could not be considered novel and the added word "contraceptive" did not change the product claim into a use claim. Only in the case of first medical use could the addition of a purpose characteristic render a product claim new, if the product as such was known in other technical fields (see also T 1200/03).

In T 637/92 the board held that, according to established case law, the statement of purpose of a claimed device (or product) was to be interpreted as meaning that the device was suitable for the stated purpose and that a known device that served another purpose but otherwise possessed all the features listed in the patent claim was not prejudicial to the novelty of the subject-matter of the claim if the known device was unsuitable for the purpose referred to in the claim (see also T 287/86). In the case in question, however, these conditions had not been met since the device known from the citation did not possess one of the features of claim 1.

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