Wednesday, 16 September 2009

T 1179/07 - A New purpose Cannot Impart Novelty to a Known Process

D1 discloses all the process features of claim 1. The only difference with respect to D1 is that the process of D1 has a different purpose. In D1 the urea is not added in order to reduce the aldehyde content but it serves to reduce a viscosity increase through ageing. Therefore, it remains to be examined whether the indication of the purpose in the claimed process can impart novelty with respect to D1. [2.1.1]
The patentee considered this indication of purpose to be a functional technical feature within the meaning of G 2/88 and G 6/88, which had to be taken into consideration for the determination of novelty. [2.1.2]
The headnote of G 6/88 is as follows : “ A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under A 54(1) provided that such technical feature has not previously been made available to the public.” It follows that the relevant considerations of G 2/88 and G 6/88 aim at a claim that is directed to the use of a known compound for a hitherto unknown purpose. These decisions do not elaborate on claims for processes having a particular purpose (zweckgebundene Verfahrensansprüche). Although the ‘use of a given substance’ can be considered to be a process containing the step of using the substance, a use claim should not be in general equated to a process claim as A 64(2) is not as a rule applicable to a use claim. According to G 2/88 [5.1], A 64(2) is not as a rule directed to a patent whose claimed subject-matter is the use of a process to achieve an effect (this being the normal subject of a use claim), but rather to a European patent whose claimed technical subject-matter is a process of manufacture of a product. In the present case the claimed process is – notwithstanding the indication of the purpose – clearly directed towards the manufacture of a product. In this process a given nitrogenous compound is added to certain compounds, which reduces the C1-C2-aldehyde content. In other words, the process produces the end product by means of a process step applied to the initial product, which is different from the end product. If the Board applied the conclusions of G 2/88 and G 6/88 to the granted process claim, this would entail that the product of claim 1 were protected via A 64(2) although the product is known from D1 and is produced by the very process of D1. However, it cannot be the deeper purpose of A 64(2) to extend the protection provided under this article to a product obtained by a known process. In particular, the fact that process and use claims relate differently to A 64(2) does not leave any margin for extending the principles developed by the Enlarged Board of Appeal (EBA) in G 2/88 and G 6/88, concerning the use of a known compound for a hitherto unknown purpose, to process claims. The opinion that the criteria set up by the EBA in the cited decisions are valid only in the context of the use of a known compound for a hitherto unknown purpose and cannot be extended to process claims is also found in decisions T 682/04 [5.3.4-5], T 910/98 [2.2.2], and T 1049/99 [8.4.4-8.5]. [2.1.3]
To read the whole decision (in German), click here.