9 May 2018

T 1931/14 - Preamble of method claim

EPO Headnote
In the context of a method it is important to differentiate between different types of stated purpose, namely those that define the application or use of a method, and those that define an effect arising from the steps of the method.
Where the stated purpose defines the specific application of the method, in fact it requires certain additional steps which are not implicit in the remaining features, and without which the claimed process would not achieve the stated purpose.
On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, such a technical effect has no limiting effect because it is not suitable for distinguishing the claimed method from a known one.

Comments
  • The Board indicates that the holding of T 848/93, that the feature "for remelting" was a distinguishing feature, does not contradict the finding in T 304/08, that the feature "for reducing malodor" was not limiting a method claim. In T 304/08, the "for" feature indicated a technical effect. In T 848/93, the "for" feature "required that the method actually be carried out by melting a galvanic layer on a circuit board."
  • Compare the different approach in recent decision T 2170/13

EPO T 1931/14 -  link


Reasons for the Decision
1. The appeal is admissible.
2. Main request - Novelty
2.1 Claim 1 as granted defines a process for producing oxygen to fuel an integrated gasifier combined cycle power generation system. Thus the process concerns the production of oxygen for the purpose of fuelling a power generation system of the integrated gasifier combined cycle type, commonly referred to by its acronym IGCC.
The impugned decision concluded that the process defined in claim 1 lacked novelty on the consideration that claim 1 is merely related to a "process for producing oxygen" that is restricted to the production of oxygen in a cryogenic air separation system, while the stated use "for fuelling an IGCC plant" did not limit the claimed method but merely indicated its suitability for that purpose.
2.2 Claim 1 explicitly refers to a process and therefore belongs to the category of method claims that define their subject-matter in terms of physical activities (cf. G 2/88, OJ EPO 1990, 93, Reasons 2.2).


2.2.1 According to established case law, where a claim concerns an apparatus differing from a known apparatus only as regards the use indicated, then the use is not an apparatus feature, meaning that two apparatuses (differing only in the intended use) are identical in terms of structure. If the known apparatus is suitable for the claimed use, the claimed invention lacks novelty. If, however, the claim is for a process, the situation is not comparable. In such a case, the use feature is a functional process feature comparable in category with the other features (steps) of the process (Case Law of the Boards of Appeal, 8th edition 2016, I.C.8.1.3 c); T 848/93, point 3.2 of the Reasons). In that respect it should be observed that the passage F-IV 4.3 of the Guidelines for Examination in the EPO referred to by the respondent is also based on the same case law, and also emphasises that a method claim is to be interpreted differently from a product claim. The Guidelines base their example on the method that was decided upon in T 848/93, namely a method for remelting galvanic layers, and state that the part "for remelting ..." should not be understood as meaning that the process is merely suitable for remelting galvanic layers.
2.2.2 The respondent also refers to decision T 304/08, that concluded the purpose of a claimed method not to be a functional feature thereof. Pointing at this apparent contradiction, the respondent also stated that there may be an occassion for a referral to the Enlarged Board of Appeal, but did not submit any formal request to this end. The Board however is unable to identify any contradiction between the two decisions. T 848/93 decided that a method for remelting galvanic layers on circuit boards encompassed a functional step of the method (T 848/93, point 3.2), in other words the claimed purpose "for remelting galvanic layers on circuit boards" required that the method actually be carried out by melting a galvanic layer on a circuit board. In that case the claimed purpose defined the specific application or use of the method, and such application or use in itself represented a limitation of the method.
2.2.3 The situation in T 304/08 is quite different. There the method concerned application of a particular surface active agent to a specified absorbent product and defined its purpose "for reducing malodor " in terms of an intended technical effect. That effect would distinguish the claimed method from the prior art, all other features being known therefrom. The Board however held, reasons 3.3.2, that such an effect might represent a limiting functional technical for the use of a substance as in G2/88 and G6/88 (OJ EPO 1990, 93) but that this did not apply to a method for producing a product. It could at best be interpreted as meaning suitable for (producing that effect); in any case (reasons 3.3.5) the effect was found to be inherently present in the prior art.
2.2.4 The two decisions demonstrate that in the context of a method it is important to differentiate between different types of stated purpose, namely those that define the application or use of a method, and those that define an effect arising from the steps of the method and implicit therein. Where the stated purpose defines the specific application of the method, in fact it requires certain additional steps which are not implied by or inherent in the other remaining steps defined in the claim, and without which the claimed process would not achieve the stated purpose (e.g. no actual re-melting of a galvanic layer would occur). In this manner the stated application represents a genuine technical limitation of the method and the claimed method must be applied in that manner. On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method (e.g. the malodor is inherently reduced) and is thus inherent in those steps, such a technical effect has no limiting effect because it is not suitable for distinguishing the claimed method from a known one.
2.2.5 In view of the different situations treated in both decisions, the Board does not regard them as reaching divergent conclusions for a similar factual condition. The Board therefore sees no need for a referral to the Enlarged Board of Appeal under Article 112(1)(a) EPC. Apart from that, the a referral is also not necessary because the Board does not require it for its decision, given that the novelty of the claim is apparent on the basis of other features as well, see point 2.3 below.
2.2.6 The Board further concludes that in a manner analogous to the case underlying T 848/93, in the present case the stated application to fuel an IGCC represents a functional limitation of the claimed method.

No comments:

Post a Comment

PLEASE DO NOT USE Anonymous. Do not use hyperlinks in comment text or user name. Comments are welcome, though are moderated. Moderation can take up to 3 days.