Tuesday, 24 November 2009

T 1855/06 – Wanna Be Swiss ? You Better Be Medic !

This decision deals with Swiss-type claims outside the medical realm.

Claim 1 of the opposed patent is directed to the “Use of finely dispersed hydrotalcite […] for manufacturing elastane fibres having improved resistance against […] hydrocarbons.” D1 and D2 disclose the use of hydrotalcite in the manufacture of elastane fibres but do not mention that the resulting fibres have an improved resistance. The Board comes to the conclusion that the claim is not novel as the allegedly distinguishing feature does not allow to establish a novel use according to the principles laid out in G 2/88 or G 6/88. The Board then adds some interesting considerations concerning the claim wording.

[…] For the sake of completeness, in order not to give the impression that the claim wording is acceptable to the Board, the following is noted. [5]

The decisions G 2/88 and G 6/88 refer to the novelty of second non-medical applications and concern claims that are directed to the use of a known substance for a particular purpose. In the present case, this purpose is formulated as the production of elastane fibres having a particular property (improved resistance against hydrocarbons), so that the wording of claim 1 rather corresponds to the “Swiss claim” wording as proposed by decision G 1/83, which is considered appropriate for a novel second medical application. [5.1]

In G 1/83 such use claims worded according to the “Swiss claim” formulation have only been considered novel in the particular case that the intended purpose of the manufacturing of the product consists in its subsequent use for a surgical or therapeutic treatment of the human or animal body or in a diagnostic method. This exception was provided in order to compensate for the limitation of patent protection resulting from A 52(4) EPC 1973 (cf. A 53 c) EPC 2000). Such compensation is not needed in other domains. [5.2]

If, as in the present case, the alleged novel use concerns without doubt a non-medical use, the novelty of the use of a known composition for the known manufacturing of a known product cannot be derived from a novel property of the manufactured product. In such a case the use of a composition for manufacturing a product is to be interpreted as a method of manufacturing the product using the composition. It can be considered to be novel only if the method of manufacturing has not been made accessible to the public before, which is not true for granted claim 1, taking into consideration the disclosure of documents D1 and D2. In order to correspond to G 2/88 and G 6/88, the claimed use would then have to refer to a novel way of exploiting the novel property, and not merely to the manufacturing of a product which has this property. [5.3]

Therefore the Board follows the opinion expressed in decision T 292/04 [1-8, in particular 3 and 7] that a use claim worded in the “Swiss claim” wording, which encompasses both uses in methods referred to in A 52(4) EPC 1973 and uses that are not concerned by this provision, cannot be novel in view of the principles of decision G 1/83, in so far as the claim refers to a use of a known composition for the known manufacturing of a known product for a non-medical purpose. This is all the more true in the present case where medical uses are not even mentioned. [5.4]

Moreover, it should be noted that the Board is of the opinion that the subject-matter of claim 1 could not be considered to be novel also because, differently from the cases under consideration in G 2/88 and G 6/88, the purpose as formulated (“for improving the resistance against hydrocarbons”) does not refer to a novel technical activity that can be distinguished from the known purpose. Rather this purpose only aims at the improvement of a property of the elastane fibres that can be obtained by adding hydrotalcite. The claim does not require that this improvement be used in any way whatsoever. This is nothing but the realization that a known product has a certain property. Such a realization represents a mere discovery (cf. T 279/93 [5.4]). In order to transform it into a patentable invention and to derive the features of a novel technical effect under G 2/88 and G 6/88, the claimed use would have to be a novel use of the product which makes use of the discovery that the resistance against hydrocarbons is improved. In the present case no such novel use is expressed in the claim. As a consequence, the mere discovery of the improvement of a product property cannot justify the novelty of the use claim. [6]

Last, but not least, the Board wishes to point out that in such a case, where the alleged new effect is at best the realization of an improvement of an already known property of a product, and not the first realization of a hitherto unknown property of this product, a use claim for any use of this improvement, formulated according to G 2/88 and G 6/88, is not appropriate at all to distinguish the claimed subject-matter from the prior art. In such a case it cannot be sufficient to vaguely direct the claim to an undetermined use of the improved property, but the use should be specified on the claim, so that it is clear what the use contains and that it is novel. [7]

To read the whole decision (in German), click here.