T 2215/08 – Useful?

This is an appeal of the opponent after the Opposition Division had decided to maintain the opposed patent in amended form.

The decision is a * useful * reminder of the way in which the Boards apply the teachings of G 2/88 in the context of process claims.

Claim 1 of the main request before the Board read:

Process for improving the stability of the hue of a granulated product of potassium sorbate, including the step of adjusting

(i) the overall pore volume to equal to or less than 0.4 ml/g and the Na content to equal to or less than 1000 ppm.

Claim 4 of the fourth auxiliary request read:

Use of a process for improving the stability of the hue of a granulated product of potassium sorbate, including the step of adjusting

(i) the overall pore volume to equal to or less than 0.4 ml/g and the Na content to equal to or less than 1000 ppm. (my emphasis)

The Board first examined whether the public prior used alleged by the opponent was sufficiently substantiated and found this to be the case:

[2.1.8] The Board thus comes to the conclusion that potassium sorbate granulate having a sodium content of 690 ppm (±20%) and an overall pore volume of 0.17 ml/g has been made available to the public before the priority date of the patent in suit by its sale. This potassium sorbate thus has all the structural characteristics required for the product prepared by the process according to claim 1.

This paved the way to the finding that the main request lacked novelty:

[2.2] Claim 1 is a “process” claim with the single process step of “adjusting” the overall pore volume and sodium content.

The [patent proprietor] argued that the sale of potassium sorbate did not make the process by which it was made also available to the public.

In the present case, however, the sole process step specified in claim 1 is the step of “adjusting” the overall pore volume and sodium content to the values indicated in the claim. A product having an overall pore volume and sodium content falling within the values indicated in the claim has necessarily been made by a process in which the pore volume and sodium content have been “adjusted” to within these desired values.

[2.2.1] For these reasons, the Board holds that in the present case, the sale of potassium sorbate granulate having a sodium content of 690 ppm (±20%) and an overall pore volume of 0.17 ml/g, also implicitly makes available to the public that it has been prepared by adjusting the sodium content and overall pore volume to these values.

[2.3] Thus not only all the structural characteristics, but also the process feature of claim 1, were made available to the public before the priority date of the patent in suit by the prior use. For these reasons the process according to claim 1 is not novel.

[2.4] The [patent proprietor] argued that the purpose of improving the stability of the hue was a functional technical feature of the claim in the sense of the decisions G 2/88 and G 6/88, the considerations underlying these decisions relating to the use of products also being applicable to process claims. Said functional technical feature rendered the claimed process novel over the prior use, which did not disclose that adjustment of the sodium content and overall pore volume had an effect on the stability of the hue of the granulated product.

[2.4.1] In the present case, claim 1 relates to a process which includes the physical step(s) of adjusting the overall pore volume and the sodium content of a potassium sorbate. Said claim is thus a “process” claim within the meaning of A 64(2), since it specifically includes physical steps which result in the production of a product, namely a granulated potassium sorbate, and is not a “use” claim in the sense of decisions G 2/88 and G 6/88, which relate exclusively to claims directed to the use of a substance for achieving an effect. Thus, the purpose of the process in present claim 1, namely for “improving the stability of the hue”, cannot be regarded as a functional technical feature, and hence cannot distinguish the subject-matter of the claim from the prior use. The criteria set out by the Enlarged Board of Appeal in the aforementioned decisions may only be applied to claims directed to the use of a substance for achieving an effect and cannot be extended to claims to a process for producing a product characterised by process steps, wherein the purpose of carrying out said process steps is indicated in the claim (see decisions T 1179/07 [2.1.3], T 1343/04 [2] and T 1049/99 [8.4.4,8.5]).

[2.5] For the above reasons, the Board concludes that by virtue of the sale of the product, a process according to claim 1 is disclosed, such that the subject-matter thereof is not novel.

Auxiliary requests 1 to 3 were found to lack inventive step.

Auxiliary request 4 suffered the same fate as the main request:

[7.1] Claim 1 of auxiliary request 4 differs from claim 1 of the main request in that the “Process for improving the stability of the hue” has been reformulated as “Use of a process for improving the stability of the hue”.

[7.2] The [patent proprietor] argued that this claim was now clearly a “use” claim in the sense of decision G 2/88, such that the subject-matter thereof was thus novel over the prior use in view of the technical effect of “improving the stability of the hue”.

[7.3] However, claims to the use of a process are, in fact, directed to the preparation of a product, i.e. in the present case, potassium sorbate granulate having an overall pore volume of equal to or less than 0.4 ml/g and a sodium content of equal to or less than 1000 ppm. The use of the process for improving the stability of the hue comprises as technical feature only the step of adjusting the overall pore volume and sodium content which has as result the product defined in the claims. This Board thus shares the view expressed in decisions T 210/93 [3.2.3] and T 684/02 [5] that the use of a process for a particular purpose is “nothing but that very same process”. Thus, as in the case of the main request, the purpose of the use of the process in claim 1, namely for “improving the stability of the hue”, cannot be regarded as a functional technical feature in the sense of decisions G 2/88 and G 6/88, and hence cannot distinguish the subject-matter of the claim from the prior use.

[7.4] Thus, the subject-matter of claim 1 of auxiliary request 4 is not novel for the very same reasons that the subject-matter of claim 1 of the main request is not novel […].

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