In his commentary on Romans, Origen asserts that “ipsa etiam novitas innovanda est” (“novelty itself also is to be renewed”). The appellant in the present examination appeal appears to have been inspired by the Church Father. It tried to establish the novelty of a method on the basis of a new use. Well, this is a renewed attempt, rather than a new one, as we will see.
Claim 1 of the main request before the Board read:
1. A method for the purpose of producing bovine milk having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids by:(a) determining which cows of a herd produce milk containing only beta-casein having a proline at position 67, where the herd comprises cows that produce milk containing beta-casein having a proline at position 67 and cows that produce milk containing beta-casein having a histidine at position 67, by genotyping and/or phenotyping bovine cows on the basis of the amino acid located at position 67;(b) selecting cows that have DNA encoding only beta-casein having a proline residue at position 67 or that produce milk containing only beta-casein having a proline at position 67; and(c) milking the selected cows to give milk having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids compared with milk obtained from the herd.
Here is what the Board had to say on novelty:
[2] Claim 1 is directed to a method for the purpose of producing bovine milk having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids.
[3] According to established case law of the Boards of Appeal (Case Law, 6th edition 2010, section I.C.5.3.1) a claimed invention lacks novelty unless it includes at least one essential technical feature which distinguishes it from the state of the art. Therefore, when deciding upon the novelty of the subject-matter of claim 1, its technical features have to be determined first.
[4] In accordance with decision G 2/88 [2.5], the technical features of a claim directed to a physical activity (e.g. method, process, use) are the physical steps which define such activity. The method of claim 1 comprises three steps (a) to (c) […] as follows: in step (a) cows are geno- or phenotyped on the basis of the amino acid located at position 67 of beta-casein to determine which cows of a herd produce milk containing only beta-casein having a proline at position 67; in step (b) the cows that have DNA encoding only beta-casein having a proline residue at position 67 or that produce milk containing only beta-casein having a proline at position 67 are selected and in step (c) the selected cows are milked.
[5] Document D3 discloses […] a method for producing milk which comprises identification of cows homozygous for the beta-casein variant A1 and A2 genes (beta-casein AlAl and A2A2 phenotype cows) by polyacrylamide gel electrophoresis (PAGE) of milk samples from individual cows which corresponds to step (a) of claim 1. From a total of 3183 cows located on 25 large farms in the Manawatu and Waikato regions of New Zealand, approximately 400 cows were selected and placed on a single farm as a mixed herd such that the beta-casein AlAl and A2A2 phenotype cows in this herd were subjected to identical farm management and feeding practices which corresponds to step (b) of claim 1. Finally, milk supplied from either beta-casein AlAl or A2A2 phenotype cows was collected separately, in accordance with step (c) of claim 1. Document D3 also discloses (see claims 1-9) a method of producing bovine milk comprising the steps of testing milk from identified cows for the presence of variants of beta-casein (which corresponds to step (a) of claim 1) and selecting those cows whose milk contains the A2 (or A3, D or E) variant and does not contain any A1 variant (which corresponds to step (b) of claim 1), and milking separately the A2 variant milk producing cows and recovering and maintaining their milk separately from milk from any other source (which corresponds to step (c) of claim 1). The beta-casein A2, A3, D and E variants contain a proline at position 67 whereas in the beta-casein variants A1, B, C and F proline-67 is substituted by a histidine (see page 13, lines 24 to 27). Accordingly document D3 discloses methods of producing milk which comprise the three physical steps (a) to (c) specified in present claim 1.
[6] That the physical steps of the claimed method are the same as in the prior art is not disputed by the appellant. However it was submitted that in the present case the purpose of the method, namely producing bovine milk having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids, was also a technical feature to be taken into account in the assessment of the novelty of claim 1.
[7] In a first line of argumentation the appellant relied on decision T 848/93 and submitted that it was established case law that a method claim was limited by the purpose of the method.
[8] The board notes that in the case underlying decision T 848/93 a method was claimed which differed from the method disclosed in the prior art only in its use (remelting instead of vapour phase soldering). The then competent board considered that the intended use feature was a functional technical feature which limited the claim (see points [3.1-2] of the reasons). While the claim underlying decision T 848/93 related to the new use of a method to achieve a particular effect, the claim at issue in the present case relates to a known method for a particular purpose, namely the production of a product, wherein the product is the necessary result of the known method and indistinguishable from the product obtained in the prior art. In the board’s judgement decision T 848/93 […] is for this reason alone not relevant to the present case and cannot be relied on to justify the view that the purpose of the claimed method should be considered a limiting technical feature of claim 1.
[9] In a second line of argumentation the appellant submitted that document D3 did not disclose the technical effect of reducing saturated fatty acid levels. Therefore, following the reasoning of decision G 2/88 [10] the purpose limitation was a technical feature providing novelty.
“with respect to a claim to a new use of a known compound such new use may reflect a newly discovered technical effect described in the patent. The attaining of such a technical effect should then be considered as a functional technical feature of the claim (e.g. the achievement in a particular context of that technical effect). If that technical feature has not been previously made available to the public by any of the means as set out in A 54(2), then the claimed invention is novel, even though such technical effect may have inherently taken place in the course of carrying out what has previously been made available to the public.”
“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.” (Emphasis added).
[11] Unlike the case underlying decision G 2/88 the claim under consideration in the present case is not directed to a new use of a known compound for a particular purpose but to a known method for the purpose of producing a product and so the question arises whether the principles developed in decision G 2/88 can be applied to the present situation at all. In this context it is of relevance that decision G 2/88 [5.1] distinguishes clearly between claims directed to the use of a product to achieve an effect (this being the normal subject of a use claim) and claims directed to a process of manufacture of a product. Decision G 2/88 is however silent on the issue of whether the purpose can be considered a functional technical feature of a claim directed 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.
[12] The appellant took the view that the principles developed in decision G 2/88 could be applied to the present case and relied in this context on decision T 1092/01 [17]. It submitted that in decision T 1092/01 [14] the present board noted that it was the information content of any prior art document that was critical, and not what might inherently have occurred if a method described in the prior art had been carried out. In the present case, although saturated fatty acid levels would have been reduced when the selection method was applied in the methods of document D3, this was completely unrecognised and was in no way discernable by the skilled person from the teachings of document D3 and was therefore not disclosed in the sense of A 54(2). Moreover, in its view decision G 1/92 was not relevant because the claim under consideration was directed to a method and not to a product.
[13] The board agrees with the notion that it is the information content of the (any) prior art document that is critical. In the present case it is uncontested that document D3 makes available a milk which is indistinguishable from the milk obtained according to the method of claim 1. Moreover, as also pointed out by the appellant, the fatty acid composition of the milk could be analysed and quantified very simply using standard chemical tests and is a readily identifiable property.
[14] Decision G 1/92 is of course relevant to the present situation because the issue to be decided is what has been made available to the public by document D3. In accordance with decision G 1/92 [headnote 1] the chemical composition of a product belongs to the state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.
[15] Applied to the facts at hand this means that the chemical composition of the milk produced in document D3 and thus also its fatty acid composition was available to the public from document D3, even though it is not explicitly disclosed in document D3. Therefore, and regardless of whether or not the principles of decision G 2/88 can be applied to the claim under consideration at all, in the board’s judgement the hitherto undetected saturated fatty acid composition of the milk obtained by the process known from document D3 can in any case not be considered a functional technical feature in the sense of decision G 2/88 that would establish the novelty of the method of claim 1 over document D3 because it has previously been made available to the public.
[16] As regards decision T 1092/01 it is noted that this board (in a different composition) had held that the rationale of decision G 2/88 was applicable to a claim directed to a known process with which a previously unknown technical effect (conversion of lutein to its isomeric form zeaxanthin) was achieved. The board considered that the relevant question to be answered was whether the skilled person would use the claimed process for a purpose different from that for which the processes of the prior art were used. In the board’s judgement, in view of its starting material and its procedural steps, the claimed process could only serve the same final purpose of production of pigments for food industry. The disclosure of the purpose did not open the way to a new activity and occurred inherently when carrying out the process of the prior art. Hence the board concluded that the statement of such an effect could not confer novelty to the claimed process (see points [18-21] of the reasons).
[17] Similarly, in the board’s judgement the skilled person would not in the present case use the process for any purpose other than the production of its inevitable product, namely milk containing only beta-casein having a proline at position 67 and therefore also having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids.
[18] The board notes that, according to more recent case law of the Boards of Appeal, the criteria set out in decision G 2/88 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 such process steps is indicated in the claim (see Case Law, 6th edition 2010, section I.C.5.3.1.e and f; and decisions T 1343/04 [2]; T 1179/07 [2.1.3]; T 304/08 [3.3.2-3], T 2215/08 [2.4.1]).
[19] The final argument of the appellant, namely that in the light of the present invention new and commercially significant uses for the milk have emerged, is quite irrelevant to the subject-matter claimed which does not relate to the use of the milk but to its production.
[20] The board concludes from the above that the relevant technical features for the purpose of assessment of the novelty of the method of claim 1 are its physical steps and that document D3 which discloses these physical steps anticipates the subject-matter of claim 1 of the main request.
Should you wish to download the whole decision, just click here.
The file wrapper can be found here.
0 comments:
Post a Comment