T 0305/12 - Method claim novel by purpose

EPO T 305/12

For the decision, click here. 


Key point

• The Board: "The purpose of a method claim is an inherent technical feature of the claim" 
• As a comment, this specific wording does not seem to be present in the chapter of the Case Law Book cited by the Board. The rule was so far more clearly accepted for second non-medical use claims, not so much for method claims. 

Reasons for the Decision

[...] 20. The purpose of a method claim is an inherent technical feature of the claim (Case Law of the Boards of Appeal, 7th edition, 2013, I.C.6.3.1, p. 154).

The purpose of the methods disclosed in documents D16 and D17 was to establish whether Iloprost has an inhibitory effect on embryo development which is different from the purpose of claim 1.

21. None of the prior art documents on file discloses a method of enhancing in vitro development of a mouse embryo comprising the addition of Iloprost during the morula to early blastocyst stage in order to promote complete hatching.

Claims 1 to 5 of the sixth auxiliary request are therefore novel and meet the requirements of Article 54 EPC.
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