T 2170/13 - Preamble of method claim

Key points

• In the present case, the Board follows the approach of T 1822/12 that the preamble of a method claim means "suitable for" . Hence, if a method claims recites a purpose of the method in the preamble, this feature can not provide novelty over a prior art method having all other features. 

EPO T 2170/13 - link

The final claimed feature is therefore implicitly disclosed in D1, and hence the subject-matter of claim 1 of the main request is not new within the meaning of Article 52(1) EPC and Article 54 EPC 1973.

4. Auxiliary Request

4.1 The auxiliary request was filed approximately one month before the oral proceedings. In response to a question from the Chairman, the opponent stated that it had no objection to this request being admitted into the proceedings, and hence the Board sees no reason not to admit it.

4.2 The sole issue to decide in relation to novelty is whether the re-drafting of claim 1 as a method claim, in particular having a first line reading "A method for neutralizing electrical charge on a work piece ...", alters the conclusion reached in the case of the main request.

4.3 In this respect, the findings in decision T 1822/12 appear to the Board to be particularly pertinent. In that case, claim 1 of the main request started as follows:

"A method for reducing acrylamide formation in thermally processed foods, said method comprising the steps of ..."

In arguing that the claimed subject-matter was novel, the appellant-proprietor acknowledged that the actual steps recited in the claim were known in the prior art, but cited the following passage from G 2/88 and G 6/88:

"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 Article 54(1) EPC provided that such technical feature has not previously been made available to the public" (G 2/88, Order, point (iii); G 6/88, Order).

The appellant argued that the provisions of G 2/88 and G 6/88 were general and were not linked to any specific claim category, and that novelty should therefore be acknowledged, since the cited prior art documents did not disclose the functional technical feature of reducing acrylamide.

4.4 The deciding Board did not agree, noting that the order in G 2/88 related "only to a use claim, namely to a claim for the new use of a known compound" (T 1822/12, Reasons, point 3.1.1, emphasis in the original). Under point 3.1.2, the Board stated the following:

"Furthermore the case law has constantly interpreted G 2/88 in a very restrictive manner, i.e. in a manner that only claims related to the use of a known compound for a particular purpose, based on a technical effect described in the patent, should be interpreted as including that technical effect as a functional technical feature, provided that such technical feature has not previously been made available to the public."

Numerous cases were cited in T 1822/12 in support of this restrictive approach (T 1343/04, points 2.1 and 2.2 of the reasons; T 304/08, section 3.3.2 of the reasons; T 1179/07, section 2.1.3 of the reasons; T 1049/99, section 8.5 of the reasons; T 2215/08, section 2.4.1 of the reasons and T 910/98, section 2.2.2 of the reasons).

The Board concluded (Reasons, point 3.1.3) that there was "no possibility to expand the ruling in G 2/88 and G 6/88 to a claim worded otherwise, namely a claim relating to a known method for a new purpose", and hence that the undisclosed purpose of reducing acrylamide formation could not be considered to be a distinguishing functional technical feature of the claim.

The wording of claim 1 had to be "construed as concerning a method 'suitable' for reducing acrylamide formation", and since it was not disputed that the prior art methods would be thus suitable, this feature did not confer novelty (Reasons, point 3.1.4).

4.5 The Board in the present case endorses this approach, and therefore interprets the opening wording of claim 1 to define a method suitable for neutralizing electrical charge on a work piece.

4.6 Document D1 discloses a particle beam device including a detector. Also disclosed, at least implicitly, is a method of operating the disclosed device (including the provision of the disclosed concrete features, the voltages to be applied, the pressure levels in the chamber, creation of gas cascades etc.).

The Board has already concluded that the detector of Fig. 4 of D1, when used for the disclosed purpose of detecting secondary electrons from the sample, would also have the effect of ejecting ions from the ionization chamber thereby neutralizing at least some of the electrical charge on the work piece. The method of operating the detector in D1 would therefore be suitable to provide the effect of neutralising the sample. In the light of the considerations set out above, neither the opening statement of purpose in claim 1 nor the final feature defining the effect establish novelty over document D1.

The remaining features of claim 1 of the auxiliary request are essentially the corresponding features of claim 1 of the main request, adapted to a method claim. The proprietor has not argued that these features further distinguish the claimed subject-matter over the prior art, and the Board judges them to be disclosed in D1.

4.7 The subject-matter of claim 1 of the auxiliary request is therefore not new within the meaning of Article 52(1) EPC and Article 54 EPC 1973.

5. Thus, in the absence of an allowable claim set, the patent must be revoked (Articles 101(2) and 101(3)(b) in conjunction with Article 111(1), second sentence, EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.