T 1372/24 - Second non-medical method claim (?)

Key points

• Is the preamble of a method claim limiting if it recites a technical effect? I.e., is the method anticipated by a prior art disclosure of the active steps of the method? What if the claim preamble recites a purpose that is not an implicit further limitation of the method?
• Claim 1 at issue: "A method of reducing spotting on dishware during automatic dishwashing, the method comprising the step of subjecting the dishware to a wash liquor comprising [a certain compound]"
• There is also a second non-medical use claim (claim 10). 
• D2 concerns biodegradable complexing agents and their use in products such as dishwashing detergents. The method is the same as in the patent, but D2 does not mention the effect of reduced "spotting". 
• "The board came to the conclusion that, in the present case, novelty is established by the purpose-related features alone.  "
• According to the opponent, "a reduction of spotting was inevitably achieved when dishware was subjected to a wash liquor free of phosphate and dispersant polymer and comprising at least 700 ppm MGDA. Therefore, as set out in T 1931/14 (point 2.2.4 of the Reasons), the stated purpose had no limiting effect on the method claim. 
• See my blog post about T 1931/14. The case is followed in the GL (F-IV, 4.13.3 "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, this technical effect has no limiting effect on the subject-matter of the claim."
• "However, the board does not agree with this for the following reasons. 
• "the board does not follow the approach taken in T 1931/14 "
• The Board observes that under G 2/88, the purpose provides novelty for use claim 10 (this seems correct to me). 
• The Board: "The same applies to method claim 1. The Enlarged Board of Appeal regards use claims and method claims as belonging to the same category, namely claims to a physical activity (G 2/88, point 2.2 of the Reasons). Whether one and the same teaching is expressed as a method of reducing spotting (claim 1) or as a use for the reduction of spotting (claim 10) is merely a question of wording and not of substance. There is therefore no reason why the considerations developed in G 2/88 and G 6/88 for use claims should not also apply to method claim 1."
• The TBA could have cited G 5/83 r.11: "The European Patent Convention, in general, allows both method claims and use claims but whether any activity is claimed as a method of carrying out the activity (setting out a sequence of steps) or as the use of a thing for a stated purpose (the sequence of steps being implied), is, in the opinion of the Enlarged Board, a matter of preference. For the European Patent Office there is no difference of substance. In the context of the present case" (and for that reason,  Art. 53(c) EPC is not escaped by rephrasing a medical method claim as a use claim). 
• G 2/88: The TBA does not cite the part of G 2/88 that deals with novelty of use claims and the limiting effect of a recited purpose for such claims. That part of G 2/88 speaks only of uses of known compounds, not of methods (The key part is in r.9: " In relation to a claim whose wording clearly defines a new use of a known compound, depending upon its particular wording in the context of the remainder of the patent, the proper interpretation of the claim will normally be such that the attaining of a new technical effect which underlies the new use is a technical feature of the claimed invention. ").
•  R. 2.2 of G 2/88, cited by the TBA, in fact states a terminology that the EBA did not adopt in G 2/88 ("There are basically two different types of claim, namely a claim to a physical entity (e.g. product, apparatus) and a claim to a physical activity (e.g. method, process, use). These two basic types of claim are sometimes referred to as the two possible "categories" of claim. In this decision [i.e., G 2/88], however, the word category is used to refer generally to the various different possible classifications of claim. "
• See also CLBA I.C.8.1.3.

EPO 

The link to the decision is provided after the jump.

T 0324/24 - Undisclosed disclaimer for accidental anticipation

Key points

•  Claim 1 of the main request includes a disclaimer: "except a solution of 60 U/100 myl transglutaminase in 50% glycerol, 1 mM glutathione, 150 mM NaCl"
• " Claim 1 concerns a liquid enzyme preparation that has a basis in claims 1 and 3 of the application as filed, further amended by the introduction of the disclaimer  "
• "The opposition division considered that this disclaimer was allowable because it excluded an accidental disclosure in document D1, a doctoral thesis  "
• "G 1/03, a disclaimer which is not disclosed in the application as filed is allowable to restore novelty by delimiting a claim against, inter alia, an accidental anticipation under Article 54(2) EPC. An anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention"
• "D1 is therefore concerned with the preparation and use of a liquid transglutaminase solution for non-toxic cross-linking of a product for use in humans. This is a similar purpose as that described in the patent for the claimed preparation which [is ~PdL]  the cross-linking of proteins in food industry (paragraphs [0002] and [0003] of the patent). The disclosure in D1 is hence not so unrelated and remote from the patent that a skilled person would never have taken it into account when working on the invention, as required by G 1/03"
• "As to the [patentee's]' assertion that if the appellant's arguments were followed, an undisclosed disclaimer could never be drafted, the board notes that an undisclosed disclaimer is indeed an exception that is allowable only under very particular circumstances. The conditions for qualifying as an accidental disclosure are therefore by its very definition rarely met. Hence, this argument is unconvincing. 
• The auxiliary request deleting the product claim, keeping the method claim, was filed after the Board issued their preliminary opinion and is not admitted. 

EPO 

The link to the decision is provided after the jump.

T 0633/24 - Removing dental plaque is medical method

Key points

• Claim 1 as granted reads: "Use of a whitening dentifrice composition for whitening a tooth surface in a human or animal, wherein the whitening dentifrice composition comprises: a blue dye; [and] a zinc salt, wherein the whitening dentifrice composition provides a greater whitening benefit to a tooth surface in comparison to a dentifrice composition that does not contain the zinc salt; and an orally acceptable vehicle." 
• "Independent claims 1 and 8 as granted relate to the use of a whitening dentifrice composition for whitening a tooth surface in a human or animal."
• The question is whether use claim 1 is prohibited by Art. 53(c) (note, according to G 5/83, hn.1, Art. 53(c) applies equally to claims written as use claims).
The Board: "[the] mere whitening effect resulting from the deposition of the blue dye [...] in the dentifrice appears to represent a purely cosmetic effect, which is not necessarily linked to any therapeutic or related prophylactic effect.". The Board also agrees with the patentee that "any inherent antibacterial activity of the zinc salt comprised in the composition does not necessarily result in a therapeutic effect"
• However, "[the] whitening dentifrice composition [specified in the claim] is defined in an open manner to comprise a blue dye and a zinc salt. The defined uses of this whitening dentifrice composition [therefore] encompass embodiments in which the whitening effect, defined as the purpose of the claimed uses, results at least partially from the removal of plaque [...]. In such embodiments, the defined whitening effect is inseparably linked to the therapeutic or prophylactic effect of plaque [] removal conventionally associated with the use of a dentifrice composition, as indeed foreseen in the patent [...] These embodiments are not excluded from the scope of granted claims 1 and 8, which therefore encompass subject-matter excluded from patentability under Article 53(c) EPC."
• A bit more explanation would have been useful.  I infer that the Board considers that a dentrifice composition implicitly comprises a third component, besides the dye and the zinc salt, and that this third component provides for plaque removal in use. 
• See  T 0290/86 ( "removal of plaque from human teeth may also be considered to be a method excluded from patentability"). See also T 2071/15: "The [dental care] product's capacity of preventing acid formation achieves the therapeutic effect of preventing [...] caries and tooth erosion."
• 
  
• The auxiliary requests inserting the term "cosmetic" are not admitted under Art. 13(2) RPBA. The Board adds that: "In any case, the introduction of the term "cosmetic" is not equivalent to a disclaimer excluding therapeutic methods as envisaged in G 1/03. It is not apparent that the mere introduction of the qualification "cosmetic" is apt to overcome the objection under Article 53(c) EPC, since it does not exclude embodiments in which the whitening effect results from plaque or tartar removal."
• Possibly, the disclaimer "non-medical use" would be held unclear under Article 84.

Art. 123(3)

• The further auxiliary request with product claims has a problem under Art. 123(3): "the claims of auxiliary requests 7-11 define products for use in a method which is not directed exclusively to a therapeutic effect and may therefore not qualify as purpose-limited product claims within the meaning of Article 54(5) EPC. They are therefore directed to products, with the consequence that the manufacture of the defined products falls within their scope of protection, unlike the granted claims. Accordingly, and in line with T 1635/09 (Reasons 15.1), auxiliary requests 7-11 contravene Article 123(3) EPC."
• However, see G 2/88 hn.1: "A change of category of granted claims in opposition proceedings is not open to objection under Article 123(3) EPC, if it does not result in extension of the protection conferred by the claims as a whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context, the national laws of the Contracting States relating to infringement should not be considered." 
• I do not find G2/88 hn.1 very easy to understand when it instructs that national law is not to be considered. Applied to the present case: how do we know that the manufacture of the product is within the "scope of protection" of a product claim, if we are not allowed to consult national patent laws? (see e.g. Art. 25(a) UPCA) ?

EPO 

The link to the decision is provided after the jump.

T 1168/24 - Prohibition of reformatio in peius

Key points

•  This is the second appeal. In the first appeal decision, the Board found a violation of the opponent's right to be heard in connection with AR-1 filed during the first oral proceedings before the OD, set aside the first OD decision to maintain the patent in amended form, and remitted the case. In particular, the OD had decided on the wrong version of claim 1 of AR-1 by assuming that it contained a feature that was not actually recited in the claim.
• The current decision does not really explain the relevant facts, but it appears that the proprietor filed amended claims after the remittal that were broader than the set of claims upheld by the OD in the first decision. Moreover, the proprietor had withdrawn its appeal in the first appeal procedure, thereby becoming the respondent. The OD therefore did not admit the amended claims, based on the prohibition of reformatio in peius. 
•  The question is whether the prohibition of reformatio in peius applied.
• "The proprietor has argued that PRP does not apply in the second first instance proceedings if the board finds that the first instance decision suffered from a substantial procedural violation and remits the case back to the first instance department. It based this argument upon T 727/19 and T 2086/13."
• "The Board does not agree that PRP does not apply in this case. The exception recognised in T 727/19 arose in fundamentally different circumstances from those of the present case: there was an objectively justified suspicion of partiality on the part of the opposition division (T 727/19, Reasons 2.18). A finding of partiality undermines the legitimacy of the entire earlier decision making process and accordingly justifies an exceptional departure from PRP. 
• "By contrast, in the First Board Decision, the substantial procedural violation was a violation of the right to be heard with respect to auxiliary request 1 submitted at the oral proceedings before the opposition division (see T 505/20, Reasons 14). This violation of the right to be heard, while serious, does not undermine the legitimacy of the entire earlier decision making process. 
• The Board, obiter: "Even if it is assumed that the present case falls into one of the exceptions to PRP, the Board notes that a proprietor is first expected to attempt to comply with PRP by filing restricted claims according to the following scheme [the three steps, as set out by G 1/99]
• G 1/99 indeed specifies the three steps for the event of an "objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment". 
• "The principles of G 1/99 are of general applicability, thus the Board does not see any reason to limit the above principles, which derive from G 1/99, solely to the fact situation of G 1/99."
• I am not sure if the three steps of G 1/99 should also apply in a case of suspected partiality (e.g.  T 727/19 said that the PRP principle did not apply at all after the remittal). At any rate, the present decision is obiter on that point. 

EPO 

The link to the decision is provided after the jump.

T 0944/24 - Main request rejected, appeal inadmissible

Key points

• In the case at hand, the opposition division decided that the patent proprietor's main request did not meet the requirements of Rule 80 EPC ...
• The proprietor appeals. What can go wrong?
• " ... [the OD] admitted the new main request and new auxiliary request 1 submitted by the patent proprietor during the oral proceedings into the proceedings, and considered that the new main request [was allowable]"
• "according to its reasons, the decision under appeal did not accede to the patent proprietor's initial main request. However, it is clear from the file, in particular from the cover page of the decision, point 9 of section I and section III of the decision and section 6.1 of the minutes of the oral proceedings, that the patent has been maintained in amended form based on the main request and the amended description submitted during the oral proceedings. The final main request of the patent proprietor was therefore granted. "
• The proprietor was therefore not adversely affected by the OD's decision, and its appeal was inadmissible.

EPO 

The link to the decision is provided after the jump.

T 0546/26 - Generating synthetic training data

Key points

• The application was filed in 2024, with a priority date in 2023. The refusal decision was issued on 26.03.2026, as a "decision according to the state of the file" not containing substantive reasons but referring to an earlier Communication, namely the Annex to the summons to oral proceedings (EPO Form 2061). The Notice of appeal, including the Statement of grounds, was filed the next day. The Board's decision was issued on 26.08.2026, so within five months.
• The Examining Division rejected this application, directed to "Generating synthetic training data", as lacking an inventive step.
• Regrettably, the Board does not decide whether the claimed method is inventive or whether the distinguishing features (relating to AI) are technical for the purposes of the Comvik approach.
• Indeed, the Board notes that the Examining Division had overlooked in the preliminary opinion (summons) one of the features that were added to the claims by the earlier amendment.
• This is a substantial procedural violation, and the case is remitted.
• Hiccups with Form 2061 were more frequent in the past (see here). 
• After receiving the summons, the applicant expressly requested a written decision (see the letter). The applicant, however, did not point out, at that time, that the ED overlooked one of the features in the Annex. 

EPO 

The link to the decision is provided after the jump.

T 0642/25 - AI is still not technical

Key points

• "The application relates to fraud detection in digital transaction data. A machine learning system is to be configured to produce, for a proposed transaction received as input, [an output] value [...] indicative of whether the proposed transaction represents an "anomaly"
• "Neither a machine learning model (or "system") nor the training (be it supervised or not) of such a model has per se a technical character. In the present case, the trained machine learning model serves the purpose of determining the likelihood that a transaction is an anomalous one, which is not a technical purpose. Consequently, achieving this purpose at a high degree of accuracy is not a technical problem"
• The claimed method comprised generating an "augmented labelled training set" and training a machine learning system with that data set.
• The Board: "Determining whether a (financial) transaction presents an "anomaly" is not per se a technical problem. Hence, it is not apparent that the trained supervised machine learning system, when used to measure a degree of anomaly for a given transaction, produces any "further technical effect". In particular, no technical effect is implied by the fact that the system has been trained with the augmented, labelled training set. Consequently, the "trained supervised machined learning system" has no technical character and, hence, its production does not represent or imply a technical effect."
• "In its preliminary opinion (point 13), the board additionally expressed doubts that the claimed method actually solved the problem formulated by the appellant (see point 5.2 above) over the whole scope of the claim, but this issue was ultimately left open."
• I'm still looking forward to a published decision where there is no doubt at that point, i.e., that the claimed method provides a better machine learning system (e.g., more hardware-efficient or energy-efficient). 

EPO 

The link to the decision is provided after the jump.