T 0151/13 - Mere explanation

EPO Headnote
" Purpose of a particular reagent in a known chemical process is not a functional technical feature in the sense of G 2/88 and does not render said process novel"

Key points

" The Appellant argued, that claim 1 was, however, a "use" claim in the sense of decision G 2/88, such that the subject-matter thereof was novel over document (2) in view of the previously undisclosed technical effect of the use of superatmospheric partial pressure of hydrogen chloride [] in order to reduce the level of 1,2,3 trichloropropane, chlorinated ethers and oligomers in the product.

In the present case, the Board holds that the otherwise identical process disclosed in document (2) []must result in the same levels of 1,2,3 trichloropropane, chlorinated ethers and oligomers being produced as in the process defined in claim 1 of auxiliary request 2, i.e. there is no reduction in the level of these compounds vis-à-vis Example 1 of document (2)." 

T 0151/13 - link

Summary of Facts and Submissions

I. The Appellant (Proprietor of the Patent) lodged an appeal against the decision of the Opposition Division revoking European patent No. 1 771 403. []

Claim 1 of auxiliary request 2 reads as follows:

"The use in a process for producing a chlorohydrin, an ester of a chlorohydrin, or a mixture thereof, which process comprises the step of contacting a multihydroxylated-aliphatic hydrocarbon, an ester of a multihydroxylated-aliphatic hydrocarbon, or a mixture thereof with hydrogen chloride, in the presence of a catalyst to produce a chlorohydrin, an ester of a chlorohydrin, or a mixture thereof, of a source of a superatmospheric partial pressure of said hydrogen chloride, and of carrying out said contacting step carried out without substantial removal of water, in order to reduce the level of 1,2,3 trichloropropane, chlorinated ethers and oligomers in the product."

Reasons for the Decision

[] Auxiliary request 2

3. Clarity and amendments (Articles 84 and 123(2) EPC)

Respondent II submitted that claim 1 of auxiliary request 2 was unclear and contained subject-matter extending beyond the content of the application as filed. In view of the negative conclusion in respect of novelty as set out in point 4 below, a decision of the Board on these issues is unnecessary.

4. Novelty

4.1 Document (2) discloses a process for making pentaerythritol trichlorohydrin by contacting pentaerythritol with hydrogen chloride under pressure in the presence of a monocarboxylic acid, such as acetic acid (see page 1, lines 17 to 26 and Example 1 on page 2, lines 45 to 56). Since said reaction is carried out in an autoclave, water is not removed and superatmospheric partial pressure of hydrogen chloride is an inevitable consequence, as concluded in the decision under appeal (see point 9.1.2, 4th paragraph). The Board agrees with this conclusion of the Opposition Division, the Appellant not having provided any arguments against this conclusion in the course of the appeal proceedings.

Document (2) thus discloses all the process features of claim 1 of auxiliary request 2.

4.2 The Appellant argued, that claim 1 was, however, a "use" claim in the sense of decision G 2/88, such that the subject-matter thereof was novel over document (2) in view of the previously undisclosed technical effect of the use of superatmospheric partial pressure of hydrogen chloride, without the substantial removal of water during the contacting step, in order to reduce the level of 1,2,3 trichloropropane, chlorinated ethers and oligomers in the product.

4.3 According to decision G 2/88 (ibid., see point 10.3 of the Reasons in combination with question (iii) in point I of the Summary), novelty within the meaning of Article 54(1) can be acknowledged in cases where the discovery of a new technical effect of a known substance leads to an invention which is defined in the claim in terms of a use of that substance for a hitherto unknown, new non-medical purpose reflecting said effect (i.e. a new functional technical feature), even if the only novel feature in that claim is the purpose for which the substance is used (emphasis added).

4.4 In the present case, the Board holds that the otherwise identical process disclosed in document (2) (see point 4.1 above) must result in the same levels of 1,2,3 trichloropropane, chlorinated ethers and oligomers being produced as in the process defined in claim 1 of auxiliary request 2, i.e. there is no reduction in the level of these compounds vis-à-vis Example 1 of document (2). There may indeed be no corresponding statement of intended purpose in document (2), namely that the use of a source of superatmospheric partial pressure of hydrogen chloride, without the substantial removal of water during the contacting step, is responsible for the levels of 1,2,3 trichloropropane, chlorinated ethers and oligomers obtained in the product, but ascertaining that said levels are due to said use is a mere discovery, this additional information contained in the patent in suit not teaching the skilled person to do anything over and above what is already disclosed in document (2) which would not have been done without knowing the content of the patent in suit. Thus, the claim is not directed to a new use of a source of superatmospheric partial pressure of hydrogen chloride without the substantial removal of water in the sense of G 2/88, but amounts to the mere explanation of an effect obtained when using said features in a known process. As such, "The use in a process for producing a chlorohydrin" of certain process features "in order to reduce the level of 1,2,3 trichloropropane, chlorinated ethers and oligomers in the product" does not represent a new functional technical feature in the sense of G 2/88, with the result that said "use in a process" is nothing but that very same process, i.e. the process of granted claim 1. Therefore, said use is not novel for the same reasons given in the contested decision (see point 19.1.2 thereof) as to why the process of granted claim 1 was not novel, said reasons also being given in point 4.1 above.

4.5 This reasoning is in line with decision T 279/93 (see point 5ff of the Reasons, not published in OJ EPO), wherein a claim directed to the use of an alkanolamine in a known process for preparing hydroxy-functional melamine derivatives in order to reduce the formation of isomelamine impurities was found not to be novel, since said use was considered to merely represent a discovery. In said decision, it is indicated (see point 5.4 of the Reasons) that in order to convert this discovery into a patentable invention, and to show the characteristic of a new technical effect as required by decision G 2/88, the use referred to in the claim would have to be some new use which exploits this discovery for some new technical purpose.

4.6 As a result, auxiliary request 2 is not allowable as the subject-matter of claim 1 lacks novelty within the meaning of Articles 52(1) and 54(1) and (2) EPC.

Order

For these reasons it is decided that:

The appeal is dismissed.